Federal Circuit Acknowledges That, Yes, Alice Did Change The Game

The yo–yo of Ultramercial v. Hulu has come to rest at last, and should prove to any doubters that the Supreme Court’s Alice v. CLS Bank opinion has changed the patent litigation game. The Ultramercial case has been adrift in cross–currents between the Federal Circuit and the Supreme Court for years now. In 2010, the district court originally granted a defense motion to dismiss on the ground that Ultramercial’s patent to a method for presenting copyrighted media products over the Internet for free in exchange for viewing an advertisement did not claim patent–eligible subject matter. The Federal Circuit reversed in 2011. In 2012, the Supreme Court granted certiorari, vacated the ruling, and remanded the case for reconsideration in light of Mayo v. Prometheus. The Federal Circuit reversed the district court again in 2013. The Supreme Court returned serve in 2014, granting certiorari, vacating the ruling, and remanding the case again for reconsideration, this time in light of Alice.

In an opinion issued on November 14, 2014, the Federal Circuit affirmed the district court’s dismissal order, concluding that the asserted claims were patent ineligible when viewed with “the added benefit of the Supreme Court’s reasoning in Alice.” Under the now–familiar two–step test, the patent claimed an abstract idea—showing an ad in exchange for free online content—and the claims did not contain an innovative concept that sufficiently narrowed that abstract concept to render them patent–eligible.

In a concurring opinion, Judge Mayer took a stand on the next post–Alice issue the Federal Circuit must address—whether a reviewing court should apply a presumption of patent–eligibility to an issued patent under Alice as it does to the validity of issued claims. Noting that the Supreme Court “has taken up several Section 101 cases in recent years, [but] has never mentioned—much less applied—any presumption of eligibility,” Judge Mayer concludes that no such presumption applies. Whether his colleagues will agree with this assessment remains to be seen.