The Software IP Report

Supreme Court to Federal Circuit: Reconsider the Patent-Eligibility of Ultramercial’s Patent Claims

By Charles Bieneman

Categories: Patent Eligibility, Software Patents, The Software IP Report

Last fall, in Ultramercial, LLC v. Hulu, LLC, the Federal Circuit Court of Appeals surprised many people by upholding patent claims directed to a “method for distribution of products over the Internet via a facilitator.”  As already reported on the PatentlyO blog and elsewhere, the U.S. Supreme Court has now granted defendant Wild Tangent’s petition for certoriari, challenging the patent-eligibility of claims of Ultramercial’s U.S. Patent No. 7,346,545.  The cert. petition was filed before the Supreme Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc.; the Court has now vacated the Federal Circuit’s decision and remanded the case to the Federal Circuit with instructions to reconsider its earlier decision (holding that the claims recited patentable subject matter under 35 U.S.C. § 101) in light of Prometheus.

Although at least one district court used Ultramercial to justify upholding the patentability of a claim, many people have felt that the Federal Circuit’s Ultramercial decision was an outlier.  This action by the Supreme Court certainly reinforces that view.  While the uncertainty surrounding software and business methods patents that has persisted since the Supreme Court’s decision in Bilski v. Kappos is far from over, the Federal Circuit’s decision on remand will be closely watched for a possible further point of clarity concerning the boundaries of patentable subject matter.

A representative claim of Ultramercial’s patent is reproduced at the end of this post.