In ULTRAMERCIAL, INC. v. HULU, LLC, Appeal No. 2010-1544, the Federal Circuit affirmed a motion to dismiss under Fed. R. Civ. P. 12(b)(6) because a patent did not contain patent-eligible subject matter under 35 U.S.C. § 101.

The case has a long history of appeals to the Supreme Court, where it was vacated and remanded to be reconsidered under Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012) and then more recently under Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014).  The patent claims a method of distributing copyrighted media products over the Internet, in which the consumer receives the copyrighted material at no cost in return for viewing an advertisement.  On remand from the Supreme Court, the Federal Circuit held that the claims recited patent-ineligible subject matter on the abstract idea of showing an advertisement before delivering free content.  The claims added nothing to transform the claims to patent-eligible subject matter and only implemented the abstract idea with routine, conventional activity.

Judge Mayer agreed with the majority’s finding, but wrote a concurring opinion to emphasize the following points: (1) questions under § 101 should be addressed at the beginning of litigation; (2) there is no presumption of eligibility under § 101; and (3) Alice sets forth a technological-arts test for patent eligibility.  Judge Mayer applied the technological-arts test to the present claims and found the claims were directed to an entrepreneurial objective rather than a technical objective.  Implementing an abstract idea on a generic computer does not create patent-eligible subject matter.

All four amicus briefs supported the defendant and argued that the claims recited patent-ineligible subject matter.