September 2, 2014 | By Daniel Nazer

Supreme Court Sends Stupid Software Patent Back To Federal Circuit, Again

Update: On August 28, 2014, EFF asked the Federal Circuit for permission to file a short amicus brief in this appeal. Our brief argues that the Supreme Court’s decision in Alice v. CLS Bank requires that Ultramercial’s patent on showing ads before content (but on the Internet!) be invalidated as abstract. Since this case has bounced back and forth between the Supreme Court and the Federal Circuit, this is now the fourth amicus brief EFF has prepared arguing that the patent is invalid.

Is adding “do it on the Internet” enough to make an abstract idea patentable? That’s the question for the Federal Circuit when it considers, for the third time, Ultramercial’s idiotic patent on showing an online advertisement before a “media product.” The Ultramercial case is the first big test for the Supreme Court’s landmark ruling in Alice v. CLS Bank. If the patent stands, the Federal Circuit will be insisting on business as usual. If it falls, many other abstract software and Internet patents should soon fall with it.

The Ultramercial case has been bouncing around the federal courts for years. In 2010, a trial court held the patent invalid on the grounds it claimed an abstract idea. On appeal, the Federal Circuit reversed, finding the patent non-abstract because it “clearly require[s] specific application to the Internet and a cyber-market environment.” The Supreme Court then sent the case back to the Federal Circuit for reconsideration. In a remarkable decision by former Chief Judge Randall Rader, the lower court thumbed its nose at Supreme Court authority and upheld the patent for a second time. The defendants returned to the Supreme Court. EFF filed an amicus brief urging the Court to take the case and find the patent abstract.

While the second Ultramercial petition was pending, the Supreme Court decided Alice v CLS Bank, holding that adding “do it on a computer” does not make an otherwise abstract idea patentable. Today, rather than issue a ruling on the merits in Ultramercial, the Supreme Court issued what's known as a "GVR order," sending the case back to the Federal Circuit (again) for reconsideration in light of its Alice ruling.

In a sane world, Ultramercial would be an easy case. Tying an abstract idea to the Internet (or even a “cyber-market environment”) should not render it patentable. Also, courts must not be conned by the faux-complexity of the claims. The Supreme Court cautioned in Alice that patent eligibility should not “depend simply on the draftsman’s art.” The techno-babble in Ultramercial’s patent, and the Federal Circuit’s credulous treatment of it, is a good example of exactly the opposite.

Patents like this one, which are the favorite weapon of patent trolls, should never have been granted in the first place. But since the USPTO has already flooded the system with thousands of similarly vague and abstract patents, we need courts to strike them down before they do any more damage. And we need judges to rule early in litigation (like here and here) so that defendants—especially small businesses and startups—don’t have to spend millions to defeat a bad patent.

Back in 2010, after the original trial court decision, Mike Masnick of Techdirt wrote that the Ultramercial case would be “worth watching.” Since then, the patent has become a poster child for stupid software patents. Nearly four years later, we’re still watching to see if the courts will protect innovators from a patent that should never have issued.


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