Supreme Court Grants Cert in Ultramercial v. WildTangent

Posted Tuesday, May 29, 2012.

In March, the U.S. Supreme Court issued a decision regarding patent-eligibility in Mayo v. Prometheus. The patent in question related to a method of conducting a medical test. The Court invalidated the patent, holding that the test merely leveraged a law of nature.

Laws of nature have long been held to be not patent-eligible. However, in the Prometheus case, the patent claim which was invalidated recited steps related to administering and interpreting the test. Holding that these steps were well-known, Justice Breyer (writing for a unanimous court) essentially said that adding well-known steps to a law of nature made the invention not patent-eligible.

Since that time, commentators have suggested that the Court conflated patent-eligibility (an inquiry under 35 U.S.C. §101) with novelty and nonobviousness (inquiries under 35 U.S.C. §§102 and 103, respectively). After all, if the steps are well-known, then they aren’t novel. The steps themselves are patent-eligible under §101, however. “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor…” (emphasis is mine).

You can read more about that court decision here, in a blog post in which I wondered whether this might apply to other types of claims other than medical tests that invoked a law of nature. Again, commentators have been worried about the Supreme Court’s approach to Prometheus, but the thinking is that the Court of Appeals for the Federal Circuit - the appellate court that issues many more precedential patent law decisions than SCOTUS - would limit its application to cases with claims similar to those of Mayo v. Prometheus.

Last week, however, the Supreme Court granted certiorari in Ultramercial v. WildTangent (formerly Ultramercial v. Hulu, but Hulu was dismissed from the case, leaving WildTangent as the sole defendant-appellant). I wrote about Ultramercial v. Hulu here, but it was another patent-eligibility case.

The patent-in-suit in Ultramercial was a business method patent regarding a way of doing business on the Internet. I wouldn’t have thought the Prometheus holding would be applied to Ultramercial. However, after granting cert in Ultramercial, the Supreme Court remanded the case to the Federal Circuit for further consideration in light of Prometheus. In other words, what is at stake is a possible expansion of the rationale behind Prometheus to business method patents in general.

Business method patents have been on quite a ride the past few years when it comes to patent eligibility. Many software patents are articulated as business methods too. The Federal Circuit’s reconsideration of the Ultramercial case will be watched very carefully in the Seattle area. One of the parties is local, after all (WildTangent, of Redmond, WA, located just down the road from my office in Bellevue), but Seattle-area firms in general pay particularly close attention to court holdings regarding software patents and business method patents. Seattle patent attorneys and patent agents will obviously be monitoring the situation too.

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