Ultramercial, Inc. v. Hulu, Llc
722 F.3d 1335
| Fed. Cir. | 2013Background
- District court dismissed Ultramercial's claim for lack of patent-eligible subject matter under §101; ruling later reviewed on appeal.
- This court previously reversed a district-court dismissal in Ultramercial v. Hulu and then vacated, remanding for new consideration in light of Mayo.
- The '545 patent claims a method for monetizing and distributing copyrighted products over the Internet using sponsor ads; claim 1 sets forth eleven steps including ad viewing, logging, and advertiser payment.
- Hulu and YouTube were dismissed; WildTangent moved to dismiss under Rule 12(b)(6) for ineligibility; the district court granted that motion.
- This appeal proceeds de novo on §101 eligibility; the court discusses the breadth of §101, the role of abstract ideas, and the potential need for claim construction.
- The court ultimately holds the district court erred and reverses, remanding for further proceedings, without deciding the merits under other Patent Act provisions.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the district court properly dismissed under §101 at pleadings stage | Ultramercial argues eligibility exists and dismissal was improper. | WildTangent contends claims are abstract and ineligible under §101. | Dismissal reversed; subject matter eligibility survives at pleadings stage. |
| Whether the '545 patent claims a patent-eligible process or an abstract idea | Claims apply advertising as currency to a specific Internet-based process. | Claims are abstract and preempt core idea of advertising as currency. | Claims described as a practical application with computer implementation; not merely abstract. |
| Whether claim construction is required to assess §101 eligibility | Formal construction not necessary at this stage; a broad reading is possible. | Claim construction may be required to determine eligibility. | No formal construction required for this stage; may proceed with eligibility analysis. |
| Whether the claims contain meaningful limitations tying to an application of the abstract idea | The ten-step, computer-implemented method provides meaningful limits. | Abstract idea dominates; lack of meaningful limits. | The limitations are meaningful, tying the abstract idea to a practical application. |
Key Cases Cited
- CLS Bank Int'l v. Alice Corp., 717 F.3d 1269 (Fed. Cir. 2013) (two-step Mayo/CLS Bank analysis for eligibility)
- Bilski v. Kappos, 130 S. Ct. 3218 (Supreme Court 2010) (abstract ideas and machine-or-transformation guidance)
- Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (Supreme Court 2012) (limits on abstract ideas; preemption concerns)
- Diehr, 450 U.S. 175 (Supreme Court 1981) (integration of abstract idea with meaningful limitations; not preempting all applications)
- Gottschalk v. Benson, 409 U.S. 63 (Supreme Court 1972) (illustrates limits of abstract ideas and preemption concerns)
- Prometheus, 132 S. Ct. 1294 (Supreme Court 2012) (inventive concept and meaningful limitations to tie to applications)