The Software IP Report

Will the Supreme Court Revisit Software Patents?

By Charles Bieneman

Categories: Patent Eligibility, The Software IP Report

Last fall, in Ultramercial, LLC v. Hulu, LLC [1], the Federal Circuit Court of Appeals surprised many people by upholding a patent claim, reproduced in footnote [2], directed to a “method for distribution of products over the Internet via a facilitator.”  One of the defendants in that case, game provider WildTangent, recently asked the U.S. Supreme Court to take the case.  Specifically, WildTangent asks the Supreme Court to consider:

Whether, or in what circumstances, a patent’s general and indeterminate references to “over the Internet” or “at an Internet website” are sufficient to transform an unpatentable abstract idea into a patentable process for purposes of 35 USC § 101. [3]

I am not an expert Supreme Court watcher, so I will (mostly) refrain from prognosticating on what the Court will do.  WildTangent argues that, under the Ultramercial decision, “all the patent holder in Bilski had to do was add a step saying ‘over the Internet,’ and the patent would have survived.”  As WildTangent also acknowledges, the Court is already busy considering questions of patentable subject matter, having heard oral argument late last year in Mayo Collaborative Services v. Prometheus Laboratories, a case that also concerns 35 U.S.C. § 101, albeit in the different context of patent claims directed to analyzing blood tests.

So for the moment, let’s just say it will be interesting to see what happens.  Stay tuned.


[1] Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323 (Fed. Cir. 2011) (reh’g. en banc den., 2011 U.S. App. LEXIS 25055 (Fed. Cir., Nov. 18, 2011)).  Here is a link to the Federal Circuit slip opinion.

[2] Here is a link to the patent in question, and the following is the representative patent claim considered by the Federal Circuit:

A method for distribution of products over the Internet via a facilitator, said method comprising the steps of:
    a first step of receiving, from a content provider, media products that are covered by intellectual property rights protection and are available for pur-chase, wherein each said media product being comprised of at least one of text data, music data, and video data;
    a second step of selecting a sponsor message to be associated with the media product, said sponsor message being selected from a plurality of sponsor messages, said second step including accessing an activity log to verify that the total number of times which the sponsor message has been previously presented is less than the number of transaction cycles contracted by the sponsor of the sponsor message;
    a third step of providing the media product for sale at an Internet website;
    a fourth step of restricting general public access to said media product;
    a fifth step of offering to a consumer access to the media product without charge to the consumer on the precondition that the consumer views the sponsor message;
    a sixth step of receiving from the consumer a request to view the sponsor message, wherein the consumer submits said request in response to being offered access to the media product;
    a seventh step of, in response to receiving the request from the consumer, facilitating the display of a sponsor message to the consumer;
an eighth step of, if the sponsor message is not an interactive message, allowing said consumer access to said media product after said step of facilitating the display of said sponsor message;
    a ninth step of, if the sponsor message is an in-teractive message, pre-senting at least one query to the consumer and allowing said consumer ac-cess to said media product after receiving a response to said at least one query;
    a tenth step of recording the transaction event to the activity log, said tenth step including updating the total number of times the sponsor message has been presented; and
   an eleventh step of receiving payment from the sponsor of the sponsor message displayed.

[3] I apologize for not linking to the Petition for Certiorari; I have not been able to find a copy that is not behind a pay wall.