__::Ultramercial, LLC et al. v. Hulu, LLC, et al.
2010 WL 3360098::__
Facts: Plaintiff, Ultramericial, is the holder of the 545 patent. The patent is for the invention of distributing copyrighted material over the internet free of charge in exchange for viewing advertisement. There are two independent claims in the patent. The first claim describes, in a number of steps, the process of viewing copyrighted material over the internet in after the user views advertisement. The steps are “1) receiving media form content provider, 2) selecting an ad after consulting an activity log to determine how many times the ad has been played and how many more times it need be played, 3) offering media products on the internet, 4) restricting general public access to the media, 5) offering various media to customers for free in exchange for their watching the selected ad, 6) receiving a request to view the media format the internet user, 7) facilitating the display of the ad, 8) allowing the internet user access to the media, 9) same as 8 but for interactive media, 10) recording the transaction in the activity log, and 11) receiving payment from sponsor for the ad.†The rest of the claims in the patent are not material to the issue at bar.
Procedural Posture: Plaintiff brings suit against defendant for infringement of their patent. Defendant brings summary judgement motion alleging Plaintiffs patent does not cover patentable subject matter. The Central District Court of California grant defendants the motion.
Issue: Whether plaintiff’s patent contains patentable subject matter?
Holding: No. “Not only does the patent fail the machine or transformation test, it claims an abstract idea.†Therefore, it is unpatentable subject matter.
Rationale: Under the Patent Act of 1952, subject matter patentability is a threshold requirement. “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter ... may obtain a patent.†In determining if the subject matter of a patent conforms to this definition, courts refer to the machine or transformation test. “The machine or transformation test, according to the Supreme Court, provided a useful and important clue, but it was not determinative in all situations.†However, the test is not dispositive on whether the subject matter qualifies. The test provides a useful and important clue but is not determinative in all situations. However, even though the test is no long “the litmus test for patentability, the court will use it ... as a key indicator of patentability.
Here, plaintiffs patent does not meet the machine test. Contrary to the argument that plaintiff’s puts forth, the term “facilitator†is not tied to a machine. “The specification make sit clear, that the patent is not aimed at a computer-specific application; it is a broad claim to the concept of exchanging media for advertisement viewing.â€
The fact that the ‘invention’ is used over the internet does not save the patent either. “Over the internet recitation does not make an otherwise unpatentable idea patentable.†“One can touch a computer or a network cable, but one cannot touch the internet.â€
Finally, the mere act of storing media on computer memory does not tie the invention to a machine in any meaningful way. There is nothing is nothing inherently computer-specific about receiving media from a content provider.
Plaintiff’s invention does not transform an article. “Transformation and reduction of an article to a different state or thing is the clue to the patentability of a process claim that does not include particular machines.†However, plaintiff’s invention does no such thing. Despite plaintiff’s claims to the contrary, the mere transfer of data from one memory disk on one computer to another memory space in a second computer is not a transformation under § 101. The nature of computer memory does not vary based on what is stored in it.
Plaintiff’s invention discloses an abstract idea. At the core of the patent is the basic idea that one can use advertisement as an exchange or currency. Indeed, public television channels have used the same basic idea for years to provide free media to their viewers.
Analysis: The holding in Bilski emphasized the machine or transformation test is not the touchstone of patentability. It is useful, but not dispositive on the determination. However, in their holding, the Court did not provide any examples of an invention that failed the machine or transformation test but was still patentable subject matter. Thus, courts are left with little guidance on how to use the test in the manner proscribed by the Bilski opinion. As a result, reliance on the test by lower courts to determine patentable subject matter may be greater than the Supreme Court intended.
2010 WL 3360098::__
Facts: Plaintiff, Ultramericial, is the holder of the 545 patent. The patent is for the invention of distributing copyrighted material over the internet free of charge in exchange for viewing advertisement. There are two independent claims in the patent. The first claim describes, in a number of steps, the process of viewing copyrighted material over the internet in after the user views advertisement. The steps are “1) receiving media form content provider, 2) selecting an ad after consulting an activity log to determine how many times the ad has been played and how many more times it need be played, 3) offering media products on the internet, 4) restricting general public access to the media, 5) offering various media to customers for free in exchange for their watching the selected ad, 6) receiving a request to view the media format the internet user, 7) facilitating the display of the ad, 8) allowing the internet user access to the media, 9) same as 8 but for interactive media, 10) recording the transaction in the activity log, and 11) receiving payment from sponsor for the ad.†The rest of the claims in the patent are not material to the issue at bar.
Procedural Posture: Plaintiff brings suit against defendant for infringement of their patent. Defendant brings summary judgement motion alleging Plaintiffs patent does not cover patentable subject matter. The Central District Court of California grant defendants the motion.
Issue: Whether plaintiff’s patent contains patentable subject matter?
Holding: No. “Not only does the patent fail the machine or transformation test, it claims an abstract idea.†Therefore, it is unpatentable subject matter.
Rationale: Under the Patent Act of 1952, subject matter patentability is a threshold requirement. “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter ... may obtain a patent.†In determining if the subject matter of a patent conforms to this definition, courts refer to the machine or transformation test. “The machine or transformation test, according to the Supreme Court, provided a useful and important clue, but it was not determinative in all situations.†However, the test is not dispositive on whether the subject matter qualifies. The test provides a useful and important clue but is not determinative in all situations. However, even though the test is no long “the litmus test for patentability, the court will use it ... as a key indicator of patentability.
Here, plaintiffs patent does not meet the machine test. Contrary to the argument that plaintiff’s puts forth, the term “facilitator†is not tied to a machine. “The specification make sit clear, that the patent is not aimed at a computer-specific application; it is a broad claim to the concept of exchanging media for advertisement viewing.â€
The fact that the ‘invention’ is used over the internet does not save the patent either. “Over the internet recitation does not make an otherwise unpatentable idea patentable.†“One can touch a computer or a network cable, but one cannot touch the internet.â€
Finally, the mere act of storing media on computer memory does not tie the invention to a machine in any meaningful way. There is nothing is nothing inherently computer-specific about receiving media from a content provider.
Plaintiff’s invention does not transform an article. “Transformation and reduction of an article to a different state or thing is the clue to the patentability of a process claim that does not include particular machines.†However, plaintiff’s invention does no such thing. Despite plaintiff’s claims to the contrary, the mere transfer of data from one memory disk on one computer to another memory space in a second computer is not a transformation under § 101. The nature of computer memory does not vary based on what is stored in it.
Plaintiff’s invention discloses an abstract idea. At the core of the patent is the basic idea that one can use advertisement as an exchange or currency. Indeed, public television channels have used the same basic idea for years to provide free media to their viewers.
Analysis: The holding in Bilski emphasized the machine or transformation test is not the touchstone of patentability. It is useful, but not dispositive on the determination. However, in their holding, the Court did not provide any examples of an invention that failed the machine or transformation test but was still patentable subject matter. Thus, courts are left with little guidance on how to use the test in the manner proscribed by the Bilski opinion. As a result, reliance on the test by lower courts to determine patentable subject matter may be greater than the Supreme Court intended.