Where precisely shall the line be drawn between patentable subject matter and unpatentable laws of nature or abstract ideas? Earlier this year, the Supreme Court revived the jurisprudence in this field with its unanimous decision on March 20 in Mayo Collaborative Services v. Prometheus Laboratories, Inc. 556 U.S. ____ (2012), invalidating a patent claim relating to dosing processes for medicine. More recently, this Mathe Court has likewise signaled its potential willingness to shake things up in computer related fields with its order granting certiorari, vacating, and remanding the case WildTangent v. Ultramercial (Supreme Court 2012, Docket 11- 962.) for further consideration by the Court of Appeals for the Federal Circuit in light of its decision in Mayo.
In its Mayo analysis, the Supreme Court found that the claims at issue covered “processes that help doctors who use thiopurine drugs to treat patients with autoimmune diseases determine whether a given dosage level is too low or too high. … We must determine whether the claimed processes have transformed these unpatentable natural laws into patent eligible applications of those laws.” Ultimately, the Court concluded that the Mayo claims had not transformed the natural laws into patent eligible applications. Particularly, the Court found that, 1) a law of nature is unpatentable subject matter, and 2) an application of a law of nature is unpatentable if said application merely uses elements well known in the art. The “law of nature” in these claims was the relationship between levels of a certain chemical in the blood, and the knowledge that a drug dosage was too high or too low. The “elements well known in the art” were steps adjusting the dosage based on the law of nature. These elements could not make these claims patent eligible subject matter because, as Justice Breyer explained, “[t]he steps in the claimed processes (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field.”
Ultramercial’s claims, on the other hand, are not about medicine or laws of nature at all - rather, they are directed to “a method for distributing copyrighted products (e.g., song, movies, books) over the Internet where the consumer receives a copyrighted product for free in exchange for viewing an advertisement, and the advertiser pays for the copyrighted content.” Ultramercial v. Hulu, (CAFC 2011.) But, what does this have to do with Mayo and its limitation on claiming laws of nature?
The answer to this question will not be known at least until Ultramercial is decided again by at least the Federal Circuit, and perhaps the Supreme Court, which is likely to be several years from now. One possibility, however, is to be found in a comparison of the Supreme Court’s analysis in Mayo with the Federal Circuit’s analysis of Ultramercial’s claim. In Ultramercial, the Federal Circuit describes the ‘545 patent as “not simply claim[ing] the age-old idea that advertising can serve as currency. Instead the ‘545 patent discloses a practical application of this idea,” and goes on to recite the ten steps required by the ‘545 claims, and discuss the complexity of the computer programming required to implement them.
The contrast arises because, in Mayo, the Supreme Court found that a patent effectively claiming a law of nature is not saved by simply adding other elements, unless those elements go beyond “wellunderstood, routine, conventional activity previously engaged in by researchers in the field.” On the other hand, in Ultramercial, the Federal Circuit found that a practical application of an abstract idea is brought within the realm of patent eligibility when implemented by specific technological steps.
If the Court is thinking along these lines, it creates two possibilities. First, the Court may want to expand the Mayo style analysis to encompass not just claims that include “laws of nature” but also claims that encompass “abstract ideas.” In other words, if Mayo’s “law of nature” is not saved by well-known elements, then neither should Ultramercial’s “abstract idea.”
On the other hand, it is equally possible that the Court may have remanded Ultramercial because it wants to limit it’s Mayo analysis to “law of nature” cases, and exclude the other traditional categories of non-statutory subject matter: “natural phenomena” and “abstract ideas.” There is some historical precedent in this approach, if one looks to the Supreme Court’s patent-eligibility trilogy. In Gottschalk v Benson and Parker v Flook, the Supreme Court seemed to “narrow” the field of patentable inventions by restricting subject matter eligibility. However, shortly thereafter, in Diamond v. Chakrabarty, the Court backed away from the narrowing analysis, giving the patent law a wide scope of eligibility which continues to this day.