• Unanimous Ultramercial  Court finds “complex computer programming” required to implement claimed software steps persuasive factor in upholding software patent on internet advertising method 

On September 15, 2011, the Federal Circuit rendered its decision in Ultramercial v. Hula, which provides further needed guidance on how to determine whether software claims are subject matter patentable under 35 U.S.C. 101.  In Ultramercial, the Federal Circuit was asked to decide whether a method for distributing copyrighted products over the Internet was subject matter patentable.  In a unanimous decision written by Chief Judge Rader, the Court reversed the lower court in finding the 7,346,545 patent “process” claims to be patent-eligible subject matter within the meaning of 35 U.S.C. 101.

As the Court opined, these claims were subject matter patentable because they required “complex programming” to implement and they recited a “specific application to the Internet and a cyber-market environment”.  Slip Op. 11  The Court explained that “one clear example is the third step, “providing said media products for sale on an Internet website,” and another is that “they must be “restricted” – step four – by complex computer programming as well.”  Id.  The Court was careful to point out that the limitation of a software claim to a “specific application to the Internet” is not a measure of subject matter patentability in all cases; even though this factor is one that contributed to the finding of the Court that the ‘545 patent contains patent-eligible subject matter.  “Complex computer programming”, on the other hand, provides that measure of subject matter patentability the Court impliedly explained when stating that “[t]his court does not define the level of programming complexity required before a computer-implemented method can be patent-eligible.”  Id.  (“Viewing the subject matter as a whole, the invention involves an extensive computer interface.” Id.)

Still, the Court appears reluctant to expressly pronounce “complex computer programming” as the measure for gauging subject matter patentability of software, perhaps wary that limiting the measure to any one test might be viewed as a “bright-line rule” that recent history has shown to find disfavor with the Supreme Court.

Ultramercial is also significant in the absence of any discussion of the “functional and palpable test”, which was articulated by Chief Judge Rader in Research Tech last December for use in determining subject matter patentability questions.  This may indicate a growing realization of the Court about the subjectivity of the “functional and palpable test” for use as a yardstick for measuring subject matter patentability questions; a concern that we voiced as well in our Juhasz Burge PC Blog on Research Tech.  While more subjective than the “functional and palpable test”, the “complex computer programming test” of Ultramercial still begs the question of just what amount of programming is required before the computer programming may be deemed to be “complex computer programming” sufficient to allow the software claims to pass through the subject matter patentability filter.  In our Juhasz Blog on Cybersource, we voiced the same concern with the “performed in the human mind, or by a human using a pen and paper” test espoused by the Court in Cybersource (i.e., just how many calculations must the claim perform before a software claim satisfies that test).  Thus, Ultramercial, like its predecessor Cybersource, is likely to go down only as an important next step in the evolution of jurisprudence in this area toward a test that can be more objectively applied and lead to more consistent results.

At Juhasz Burge PC, we have suggested in the past that the test for accurately defining the boundary line beyond which a business, software, or diagnostic method preempts a fundamental idea may lie in whether the method steps recite a physical or virtual link to something real. There must be a physical or virtual link of data manipulated by the software, for instance, to a physical or tangible object.  That is, a real or tangible object must be manipulated by data as in Diehr.  Or data representing a real or tangible object must be manipulated as in the Fifth claim of Morse. Both Ultramercial and Cybersource cases appear to support this view that the link of data to, that is, the manipulation of, something “real” may provide the clue to the patent eligibility of a business, software, or diagnostic method.  For more on “virtual links” and “physical links” and their use, go to Physical and Virtual Links.

As yet another sign that the Court may be stepping away from the use of “bright-line” rules in Federal Circuit jurisprudence is Chief Judge’s discussion in Ultramercial of the role of claim construction in determining subject matter patentability questions.  As Chief Judge Rader explained, “[t]his court has never set forth a bright line rule requiring district courts to construe claims before determining subject matter eligibility” (Slip Op. 4, 5), before the Court went on to deciding that the subject matter of the ‘545 patent does not require claim construction.  Id.  At Juhasz Burge PC, we believe that claim construction helps to clearly frame the Bilski subject matter patentability question.  For that reason, we draft claims for our clients with this in mind; specifically building into the claims the physical and virtual links that we believe minimize the exposure of the claims to a Bilski challenge.

The Juhasz Burge PC Firm can help you to better understand the effect of Ultramercial on your software patents.  For more information regarding these cases and advice on how these decisions may affect your patents, please contact The Juhasz Burge PC Firm. Your patents may be your most important asset. To help you protect your patents contact Juhasz Burge PC, the firm committed to Guiding Your Patent Beyond The Horizon℠.