As I read Judge Lourie’s opinion for the court in Ultramercial et al. v. Hulu et al., 2010-1544 (Fed. Cir. Nov. 13, 2014), I was reminded of these previous comments by Judge Lourie with respect to judicial notice:
We have an examination system based on citation of references. I may have used the word ‘slippery slope’ already. But, I worry about that — where an examiner who is of some skill and training in a particular art could simply say ‘Aha, I think, I think, and it is my common knowledge . . . .’ And, they start rejecting claims based on what they ‘think.’ Isn’t that a serious departure from our system of citation of references to reject claims? [Listen]
It doesn’t seem to me to be the function of the appellate court to take judicial notice of the ordinariness of certain decided claim limitations. We can take judicial notice that ‘today is Wednesday’ and ‘we had snow earlier in the week’ — I’m glad you made it through the snow — but, we don’t make rejections based on judicial notice of . . . finding a claim limitation to be common sense. [Listen] See Oral Argument for HIMPP v. HEAR-WEAR TECHNOLOGIES, LLC, No. 2013-1549 (Fed. Cir. May 27, 2014).
The reason those comments stand out in my mind are that in Ultramercial Judge Lourie makes the following comment for the court without citing to any evidence:
This ordered combination of steps recites an abstraction—an idea, having no particular concrete or tangible form. The process of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad all describe an abstract idea, devoid of a concrete or tangible application. Although certain additional limitations, such as consulting an activity log, add a degree of particularity, the concept embodied by the majority of the limitations describes only the abstract idea of showing an advertisement before delivering free content.
It strikes me that such a statement is the taking of judicial notice.
It is also interesting to note that the court identifies three different abstract ideas when assessing the claim. First, the court writes:
The district court found that the abstract idea at the heart of the ’545 patent was “that one can use [an] advertisement as an exchange or currency.” Ultramercial, 2010 WL 3360098, at *6. We agree.
See Ultramercial, slip opinion at page 9.
Later on, the court writes:
“the majority of the limitations describes only the abstract idea of showing an advertisement before delivering free content.”
See Ultramercial, slip opinion at page 10.
And finally, the court states that:
“The majority of those steps comprise the abstract concept of offering media content in exchange for viewing an advertisement.”
See Ultramercial, slip opinion at page 11.
So, the Federal Circuit has identified three different abstract ideas with respect to the claim: (1) “that one can use [an] advertisement as an exchange or currency;” (2) “showing an advertisement before delivering free content;” and (3) “offering media content in exchange for viewing an advertisement.”
In my heart of hearts (no pun intended) I like to think that the panel in Ultramercial — well, at least Judges Lourie and O’Malley — are discreetly serving up some softball issues for appeal to the Supreme Court:
1) Can a court’s patent eligibility analysis be correct if it recites three different “abstract” ideas when assessing a claim;
2) In a matter concerning a taking of property rights, can an appellate court take judicial notice of an abstract idea without citation of evidence;
3) By choosing to refer to the “abstract” idea as the “heart of the ‘545” patent, can the Supreme Court rationalize this analysis with its decision in Aro I.
4) By discounting several claim limitations, can the Supreme Court rationalize its §101 analysis with 35 U.S.C. §271. For example, how irrational would it sound if a court wrote the following when assessing patent infringement under 35 U.S.C. §271:
The accused infringer has infringed the heart of the claim. The process of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad all describe the heart of the claim when the remaining claim limitations are not assessed. Although certain additional limitations, such as consulting an activity log, add a degree of particularity, the concept embodied by the majority of the limitations, i.e., at least half, describes the heart of the claim of showing an advertisement before delivering free content. We therefore find that the accused infringer performed the majority of the claim limitations, infringed the heart of the claim, and thus infringed claim 1. The claim limitations that were not performed by the accused infringer are mere extra-solution activity.