WildTangent v. Ultramercial and Patentable Subject Matter Under Section 101

The Supreme Court again GVRed (Grant, Vacate, Remand) a Federal Circuit case related to patentable subject matter in light of Mayo v. Prometheus.  Earlier, they had done the same with the Myriad decision.  The procedure sends the case back to the Federal Circuit to be re-decided in light of the Supreme Court’s other opinion.

What separates the WildTangent GVR from the Myriad one is the subject matter involved.  Myriad’s patent, like Prometheus’, related to medical diagnostics so the review of the claims would be, at least in some part, analogous.  However, Ultramercial patent claims relate to a computer system for distributing copyrighted material over the internet.

Clearly, the Supreme Court would extend its holding related to medical diagnostics to other areas of art and possibly reign in patentable subject matter as it applies to software.  The results could be interesting as the language of the Mayo decision may be difficult to apply in this context. While the Mayo decision focuses on the “Law of Nature” exception to patent eligibility under §101, the analysis in this case will revolve around what is an “Abstract Idea.” It’s not entirely clear how the Court’s analysis regarding “Laws of Nature” would apply. The crux of the issue will be the determination of what portions of the Ultramercial claims are merely “Abstract Ideas” and does the rest of the claim sufficiently carve out a patentable method.

Claim 1 of the Ultramercial patent reads:

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.

Under Mayo, the Federal Circuit will likely have to carve out those parts of the claims that are “abstract ideas” and then determine if what is left constitutes an otherwise patentable invention. It is unclear to me how this will be done, but it is quite possible that the Federal Circuit will arrive at the same conclusion as before but this time using language from the Mayo decision. The result will be another appeal to the Supreme Court (unless the case settles) that puts everything in the same position a year from now.

Myriad Case Sent back to the Federal Circuit after Mayo v. Prometheus

The Myriad case has been sent back to the Federal Circuit to review that court’s previous decision in view of last weeks Supreme Court decision in Mayo v. Prometheus.  I discussed the Mayo decision, which dealt with medical diagnostic claims.  The myriad claims are also diagnostic in nature in that they relate to testing patients for particular genetic mutations that can be contributing factors for ovarian cancer.

Here is the entirety of the order:

The petition for a writ of certiorari is granted. The
judgment is vacated, and the case is remanded to the United States Court of Appeals for the Federal Circuit for further consideration in light of Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. ___ (2012).

Myriad’s stock took a beating after the Mayo decision as many suspect that a majority of the court would invalidate the claims in the Myriad case.  However, with the remand order today, Myriad’s stock is, oddly enough, benefiting from the uncertainty.  The new procedural posture means it will likely be at least a year, and more likely two, before the case is taken up by the Supreme Court again.  That gives Myriad another year or two where prospective competitors may not be willing to enter the market for these gene diagnostic tests.

Mayo v. Prometheus: Potentially Far Reaching Effects

Yesterday the Supreme Court, by a unanimous decision, invalidated the claims of a patent exclusively licensed to Prometheus.  Claim 1 is representative of the claims as a whole and reads as follows:

A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:

(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointesti­nal disorder; and

(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointesti­nal disorder,

wherein the level of 6-thioguanine less than about 230 pmol per 8×10^8 red blood cells indicates a need to increase the amount of said drug subsequently admin­istered to said subject and

wherein the level of 6-thioguanine greater than about 400 pmol per 8×10^8 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.

Some sites, like ipwatchdog.com, have already written that the sky is falling.  The criticisms I have read thus far focus on the supposedly terrible impact this case will have on investment in medical diagnostics and biotech companies.  However, in this case, an obviousness analysis may well have invalidated the claims as well.

Steps (a) and (b) were known in the prior art, and, according to the Court, it was already known that the metabolite concentration in the blood correlated to the drugs activity and toxicity.  Under KSR, it likely would not have been too difficult to combine the prior art and invalidate the claims.  Claims like those of the Prometheus patent would still not be valid, but at least there wouldn’t be a new and ambiguous standard for patent eligible subject matter.

My personal feeling is that invalidating the claims under §103 would have been more appropriate.  There is a principle in law that cases should be decided narrowly if possible.  Had an obviousness analysis been used, the precedent would have applied to similar claims having only known steps and the recitation of a “natural law.” Invalidating the claims under §101 provides a very wide reaching precedent that will need to be applied in a variety of other contexts.  For example, Dennis Crouch at PatentlyO has written on the Mayo decision and potential implications on the Myriad case relating to isolated DNA.  He speculates that the Court will vacate and remand the Myriad cast to the Federal Circuit and that the claims, drawn to isolated and purified DNA, may very well be declared ineligible subject matter.

Methods of Treatment

Another possible implication of the decision could be the invalidation of claims to method of treating a disease.  After all, administering a medication in a particular way is likely known in the art.  The beneficial results of the drug in the human body could be considered a natural outcome, even if it was not previously known.  We don’t know if It will make a difference if the drug is naturally occurring or synthetic.

Chemical Formulations

What about the combination of known chemical species into a novel combination?  Would the Court hold that the synergistic effects or unexpected results of the combination are merely the natural consequence of the combination?  Again, what if one or more of the components is a synthetic compound?  While “unexpected results” are typically discussed in the context of an obviousness analysis, this is an illustration of how the decision may conflate obviousness and subject matter eligibility and the confusion that may result.

Unfortunately, the decision creates uncertainty that Congress will have to fix. Otherwise, it may take years for the courts to determine the reach of §101.

Facebook Sued for Custom URLs

EveryMD v. Rick Santorum, Mitt Romney, and Newt Gingrich (C.D. California)

PatentlyO made me aware of an interesting story this morning.  Their write up is a good summary about the complaint and how the plaintiff is suing the Republican presidential candidates and others who have created business pages on Facebook, Facebook itself, and other business page users for infringing U.S. Patent No. 7,644,122.  What I find interesting is the language of the claim 1.

1. A method for providing individual online presences for a each of a plurality of members of a group of members by an interface server computer comprising the steps of:

maintaining a database comprising information associated with each of said plurality of members at a database system connected to said interface server computer;

allotting individual URLS to each of said plurality of members by associating an individual URL with each individual member of said plurality of members in said database system;

associating an individual home page for each said individual member of said plurality of members with said individual URL allotted to said individual member in said database system, said individual home page comprising information from said database associated with said individual member; a first control for submitting a comment about said individual member; and a second control separate from said first control for sending a message other than said comment to said individual member;

receiving by said interface server an online request for said individual URL from a requesting source;

providing said individual home page by said interface server computer to said requesting source.

All the steps (maintaining, allotting, associating, receiving, and providing) would arguably be done only by Facebook, not the individual users.  The complaint makes no reference to it, but I assume there must be a theory of vicarious liability.  Either the users are liable for contributory infringement, or actively inducing infringement by Facebook.  I don’t see a strong argument for inducement, but contributory infringement could be applied.

One possible argument would be that a request, sent by a user, for an individual URL, is required for Facebook to carry out the second-to-last step of the claim.  Those requests arguably have no substantial non-infringing use because they can only be denied or granted.  Granting the request results in providing the individual homepage (i.e., the last step).

The infringement issues are intriguing, but we may never hear a court rule on them.  The claims are very broad and could be invalidated in a pending inter partes reexamination with Facebook.

Here is a comment I left on the PatentlyO blog:

Sean Connolly said…

I agree that all the elements seem to read only on the entity operating the system, not the individual users. I don’t see where the individual business owners have liability unless the plaintiff has some new theory of contributory infringement. The claim can’t be infringed without the actions of a user.

One element of the independent claim is “receiving by said interface server an online request for said individual URL from a requesting source…” Does a request from a business user for a static URL have a non-infringing use? Would it matter?

Now I’m wondering about other services.  The patent has a priority date of 1999.  Were there any web services before then offering custom URLs?  I’m thinking of early blogging sites, bulletin boards, and other such services.  Does a “individual URL” include any static URL?  Does the broadest reasonable reading of claim 1 cover the simple act of registering a domain name?


Patenting for Myself

Over the years I’ve had some ideas that I could have filed patent applications on, but I never did. One of these ideas showed up in a product later, and when I checked the filing dates of the patent listed on the product package, it was about six months after I had first thought of the idea. Thankfully I am not flexible enough to do much damage when kicking myself.

I recently had another idea, and will be filing an application. I’ll have to piece enough time to prepare it in my spare time, so this may take a little while. I will disclose it here when the application publishes. I don’t know if it will be commercially successful, but I think the ensuing process will be interesting to write about.

I will provide updates as the application progresses and think this could provide a series of posts that, in sum, will give other inventors and idea of how the process works.