Ad-Supported Internet Content Patent To Be Reconsidered in Light of Alice Ruling

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By Anandashankar Mazumdar

June 30 — In light of the Supreme Court's recent ruling on patentability of computer-implemented methods, it has issued a summary ruling in a similar case involving a patent on advertising-supported Internet publishing.

On June 19, the court issued a decision in Alice Corp. Pty Ltd. v. CLS Bank Int'l, 2014 BL 170103 (U.S. June 19, 2014), holding that mere implementation of an abstract idea with a computer is not patent-eligible.

A petition for a writ of certiorari had been pending in WildTangent while Alice was under consideration.

In this case, Ultramercial LLC held a patent (U.S. Patent No. 7,346,545) on a method for allowing Internet users to view copyrighted material free of charge in exchange for watching advertisements.

Ultramercial sued Hulu LLC, YouTube LLC, and WildTangent Inc., alleging infringement of this patent. A federal district court ruled that the patent did not cover patentable subject matter and the U.S. Court of Appeals for the Federal Circuit reversed. 657 F.3d 1323, 100 U.S.P.Q.2d 1140 (Fed. Cir. 2011).

While a cert petition appealing this decision was pending, the Supreme Court ruled in Mayo Collaborative Services v. Prometheus Laboratories Inc., 132 S. Ct. 1289, 101 U.S.P.Q.2d 1961 (2012), which held that a medical diagnostic method claim had failed to “add enough” to the “inventive concept” of the patents asserted.

As a result, the Supreme Court granted certiorari in the Ultramercial case, vacated the Federal Circuit's ruling, and remanded the matter for reconsideration in light of Mayo.

In the meantime, the Alice case was addressed by the Federal Circuit and the court then turned to the Ultramercial remand.

This time around, the court ruled that the Internet advertising patent claims were patent eligible under 35 U.S.C. §101. WildTangent again filed for cert, on the question: “When is a patent's reference to a computer, or computer-implemented service like the Internet, sufficient to make an unpatentable abstract concept patent eligible under 35 U.S.C. §101?”

Again, this petition waited in line while Alice was being considered by the Supreme Court and the matter has been sent back to the Federal Circuit a second time, this time for reconsideration in light of Alice.

To contact the reporter on this story: Anandashankar Mazumdar in Washington at amazumdar@bna.com

To contact the editor responsible for this story: Naresh Sritharan at nsritharan@bna.com