Oral Argument of the Month: Ultramercial v. Hulu

The oral argument in Ultramercial, LLC  et al. v. Hulu LLC et al., 2010-1544 (Fed. Cir. September 15, 2011) is one that I think will interest many practitioners.  The case deals with the issue of subject matter eligibility under 35 U.S.C. section 101 for a claim directed at distributing copyrighted products (e.g., songs, movies, and books) over the Internet.  Claim 1 reads as follows:

1)  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 purchase, 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 interactive message, presenting at least one query to the consumer and allowing said consumer access 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.

‘545 patent col.8 ll.5-48.

Judge Lourie inquired that one looks to the claim language to determine the steps of a method rather than relying on some sort of general idea: [Listen].

His statement for the court in Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1347 (Fed. Cir. 2010)(en banc) is consistent with the approach that claims define subject matter:

Claims define the subject matter that, after examination, has been found to meet the statutory requirements for a patent. See In re Vamco Mach. & Tool, Inc., 752 F.2d 1564, 1577 n. 5 (Fed.Cir.1985). Their principal function, therefore, is to provide notice of the boundaries of the right to exclude and to define limits; it is not to describe the invention, although their original language contributes to the description and in certain cases satisfies it. Claims define and circumscribe, the written description discloses and teaches.

But, Chief Judge Rader asked why in a section 101 analysis does one have to worry about particular claim terms, since all one is evaluating is subject matter eligibility. Shouldn’t one just look to the field that “this” is in in order to see if that field is precluded under 35 U.S.C. section 101: [Listen].  This line of questioning would echo his questions from the oral argument in Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010): [Listen]. 

At another point in the oral argument, Judges Rader and O’Malley took defendant-appellee’s counsel to task for asserting that economic ideas such as a “transaction” were by definition abstract: [Listen].

Finally, Judge O’Malley echoed the sentiment of the patent bar when she commented that she wasn’t sure what the Supreme Court made clear in Bilski: [Listen].

You can listen to the entire oral argument here: [Listen].
You can read the court’s opinion here: [Read].

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