Another recent decision from the Federal circuit court addresses computer implemented related business methods: Utramercial Inc. et al v. Hulu, LLC et al. In this litigation, the defense to allegations of patent infringement was that the patented distribution of media products was not patent eligible because it was merely an abstract idea. The representative sentence which designated this method included (i) a step for receiving media product (ii) selection of a sponsor message for the media product, (iii) providing the media product for sale on the Internet (iv) restricting general public access to the media product (v) offering a consumer access to the medial product if the consumer views the sponsor’s message; and (vi) in receipt of the consumer’s request for the media product and corresponding sponsor message.
The Hulu court initially observed that a patent eligible request for protection of this particular business method should be to (i) an application of an abstract financial idea, and (ii) not a mere request to own the abstract idea itself. The challenge to the application is the determination of whether a request for protection of a business method is (i) an application of the abstract idea (ii) or merely an unlimited request for ownership of the abstract idea itself.
The Hulu court then observed that the relevant inquiry is whether the purported invention as a whole includes (i) meaningful features that restrict the invention to an application of, rather than merely (ii) an abstract idea. Even if they apparently restrict the invention, those features cannot be merely adding insignificant initial- or post- solution activities surrounding an abstract idea. These features also (i) cannot be overly generalized or (ii) otherwise provide no real direction to implementing the invention.
For example, a proposed invention may be meaningful limited if it requires a particular machine or a specific transformation of matter. The inventive process may also be sufficiently limited when there are features, in addition to the abstract idea, which are essential to the operation of the invention. In these situations the abstract idea is truly an implementation when it is combined with necessary invention features. The focus for patent eligible business methods tied to computer implementation is whether the abstract idea is a (i) specific manner of doing something with a comp outer or (ii) a specific computer for doing something. In this context meaningful features may include the computer as (i) part of the solution (ii) integral to the method, or (iii) containing an improvement in computer technology.
The court then reviewed the patent’s method for distributing media products over the Internet as designated by the six steps chronologically provided above. The court stated that several steps of the method would require computers with complex computer programming. The court also concluded that complex computer programming creates a new machine, and that these computer programming improvements in combination with a ‘computer’ deserve patent protection. The court further concluded that this method of distribution over the Internet was not a series of purely mental steps, because the process required an internet website.
In sum, the appellate court provided an example of a business method that could be considered patent eligible, at least initially at this early stage of the litigation. It is noteworthy that the court did not require details of the computer instrumentality in the patent disclosure if the patent otherwise provides (i) sufficient disclosure to enable a person of ordinary computer skills to practice the invention and (ii) sufficient detail to conclude that the inventor was in complete possession of the invention technology at the time of filing the original patent application.
© 2013 Adrienne B. Naumann
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