Ultramercial v Hulu addressed whether software inventions are eligible for grant as a software patent. In Ultramercial, the patent claims were directed to a method of utilizing advertising as an exchange or currency. A consumer would view a copyrighted product for free in exchange for viewing an advertisement. For example, Hulu.com allows a subscriber to watch a TV program at a reduced rate or free in exchange for the viewer watching an advertisement during the TV program.
One of the issues with software inventions is that software is not eligible for patent protection since it is an abstract idea. The fear is that allowing a patent on an abstract idea would preempt all application of the abstract idea. However, the application of the abstract idea on a computer is eligible for patent protection. For this reason, practitioners oftentimes tie steps of software to computers by merely adding the limitation “with a computer” in an attempt to transform the abstract ideas of the software steps to an application of the abstract idea. For example, a software patent with a claim directed to performing the step of “sell advertising” (i.e., an abstract idea) would be converted to a step of “sell advertising with a computer”. In Ultramercial, the court indicated that these types of “computer” claim limitations would not be effective in transforming an abstract software step into patent eligible subject matter. Rather, the software steps should be tied closer to the computer. The Ultramercial Court favorably commented on the claim language of “providing said media products for sale on an Internet website.” All three versions of the claimed step say the same thing but the last version integrates the use of the computer closer to the software step. It doesn’t merely say that a step is performed with a computer.
By integrating the software step closer to the computer, as shown in the last version, the court concludes that “with a claim tied to a computer in a specific way, such that the computer plays a meaningful role in the performance of the claimed invention, it is a matter of fact not likely to pre-empt virtually all uses of an underlying abstract idea, leaving the invention patent eligible.” The court looked to each of the steps and determined that they were not highly generalized but specific. There was no danger in allowing the abstract claim to preempt an entire field of use. Hence, the Court reversed the lower court’s holding that the software was not eligible for patent protection.
Practically speaking, depending on the circumstances, one should craft a claim set that is layered. The governmental filing fee allows the patent application to include three independent claims, 20 claims total. As such, the generic software step may be used in the independent claims. Alternatively, one of the independent claims may use generic language for all of the steps except one which is integrally and specifically tied to the computer as the case shows above. The “with a computer” language in conjunction with the software step may be dependent upon the independent claim. The integrated and specific computer claim as recommended above may be included in a claim dependent upon the “with a computer” claim. There are many different permutations that could be and should be used in the claim set in order to obtain the proper scope of patent protection. By layering the claim set, it gives the examiner an opportunity to allow a broader claim. Also, during litigation, the layered claim set increases the probability of surviving an invalidity challenge based on patentable subject matter issues.
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