Cursory analysis of “abstract” by Bilski Court followed in Ultramercial case


The following guest post comes from Stuart Meyer,  a Partner with Fenwick & West.

Not saying, “We told you so, but…”

A decision from the Central District of California in August in the Ultramercial v Hulu case showcases a concern that we expressed about how cursory reliance on a claim being unpatentable because it is “abstract” can lead to unfortunate results. An amicus brief we filed in the Bilski case warned of the problems that could result if the Court applied the term “abstract” without providing a clear indication of the sense in which that term was being used. See amicus brief of On Time Systems.

A claim that is just a vague expression of a concept may be considered “abstract” and therefore correctly be held unpatentable. On the other hand, there are many claims that clearly are eligible for patent protection even though they deal with abstractions. For instance, any use of a sensor deals with something that is abstract – the example we gave in the brief was that a signal produced by a wind sensor is an abstraction of the force of air molecules striking the sensor. Just because a claim is based on a signal from a wind sensor does not mean that it is abstract and therefore unpatentable.

Unfortunately, the apparent deadlock among the Justices that led to the Bilski decision turning on a cursory statement that Bilski’s claims were abstract, rather than either a detailed discussion of what that meant or a different ground (e.g., one of the issues presented as the ones that were before the Court) has encouraged other courts to likewise look to a quick “abstract” route to invalidating patents.

In the Ultramercial case, the court undertook analysis to determine whether the method claims in suit satisfied the Machine or Transformation Test, and found that they did not. Recognizing that under Bilski this is not the sole test, the Ultramercial court nonetheless did not attempt to consider any other subject matter test. Instead, it followed the formula the Supreme Court used in Bilski and took another analytical path – considering whether the claims were “abstract.”

Actually, the Ultramercial court’s approach was not even that precise, as it spoke in several places about how the method “disclosed in the patent” was abstract, apparently not even really focusing on the specific language of the claims but on the disclosure (i.e., the “teaching” part of the patent) instead. Indeed, the Ultramercial court expressly stated that it could make its determinination without putting the claims under the rigor of a Markman analysis to determine what the claim terms meant.

More importantly, though, even if one reads the Ultramercial opinion as focusing on the claim language, the court’s treatment of whether the subject matter is “abstract” was limited to generalizations rather than specifics. For example, the analysis in this area began, “At the core of the ‘545 patent is the basic idea that one can use advertisement as an exchange or currency.” The court immediately characterized this “core principle” of the patent as an abstract idea, without providing any basis for its reasoning. Instead, the court in the next sentence provided what sounds like a prior art argument, stating, “public television channels have used the same basic idea for years.” The one-paragraph analysis concluded by asserting, “At its heart, therefore, the patent does no more than disclose an abstract idea.”

In the next paragraph, the court essentially ignored the “added features, examples and limitations” of the patent as not limiting it “in a meaningful way.” Such broad and conclusory analysis is contrary to the careful parsing and detailed review of specific claim terms that courts typically undertake before countering a patent’s presumption of validity and holding it to be invalid.

We can only hope that future courts do not take up the Bilski decision’s invitation to summarily rubber-stamp as “abstract” claims that just seem to them, at a gut level, to be not the sort of thing they would like to have patents protect. One wonders whether future courts will even bother going through the motions of the Machine or Transformation Test if they can just jump directly to the “abstract” rejection as an alternate ground.

For the full publication check out the BILSKIBLOG. P4VFMAJ4DQFS

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