WildTangent’s Wild Ride Back To The Federal Circuit

In a five–line order this morning, the Supreme Court hit the reset button on the patent dispute between Ultramercial and WildTangent. Recall that in August 2010, a district court in the Central District of California dismissed Ultramercial’s case against Hulu and WildTangent, concluding that the Ultramercial patent at issue was invalid on its face because it claimed subject matter not eligible for patent protection. The Federal Circuit reversed, and WildTangent threw a Hail Mary cert. petition to the Supreme Court.

In the interim, however, that Court issued its notable opinion in Mayo v. Prometheus, an opinion which most agree is a game–changer, although many dispute whether it has leveled the playing field for accused infringers or tilted it sharply in their favor. In today’s brief order, the Supreme Court granted WildTangent’s cert. petition, then immediately kicked the case back down to the Federal Circuit for reconsideration in light of Prometheus. That leaves it for the Federal Circuit to take the first crack at characterizing whether and how Prometheus applies to software (and business method?) patents.

WildTangent’s question, “Whether, or in what circumstances, a patent’s general and indeterminate references to ‘over the Internet’ or at ‘an Internet website’ are sufficient to transform an unpatentable abstract idea into a patentable process for purposes of 35 U.S.C. § 101,” goes back to the Federal Circuit for reconsideration in light of a unanimous Supreme Court opinion which said, “A patent, for example, could not simply recite a law of nature and then add the instruction ‘apply the law.’” Can a patent that recites an abstract idea become patentable by adding the phrase “over the Internet”? Is the legal distinction between the rule for natural phenomena and the rule for abstract ideas a real one, or merely virtual?

Posted by David Swetnam-Burland