What does it take to transform an abstract idea into patentable subject matter? How much do you have to add to an abstract idea before its worthy of patent protection? Can abstract ideas turn into patentable subject matter simply by stating that part of it is conducted over the internet? They're seemingly simple questions that warrant complicated answers. And while we shouldn't expect the courts to give us definitive answers to these questions for every case and scenario, the US Supreme Court is tweaking the broad guidelines.
As we reported last month, Google and Verizon filed a joint amicus curiae ("friend of the court") brief in the case of WildTangent v. Ultramercial, asking the US Supreme Court to weigh in on the topic of patenting high-level ideas in the field of technology. The court has now ruled on the issue, sort of — it vacated the lower appellate court's broad interpretation of the subject patent and remanded the case back for further consideration in view of recent Supreme Court precedent. It's not exactly a clear victory for anyone, but we imagine Google and Verizon are quite pleased to see that the issue is getting focused attention from the country's highest court.
Is application over the internet enough to warrant patent protection?
The case centers around Ultramercial's US patent no. 7,346,545, which covers monetizing and distributing products over the internet. There's no arguing that the patent claims are lacking on specifics, hardware or software, required to carry out the purported invention — and that's the crux of the debate. Can an otherwise abstract idea transform into patentable subject matter simply by stating that one or more of the method steps is conducted over the internet? The lower Court of Appeals for the Federal Circuit reasoned that "many of these steps are likely to require intricate and complex computer programming" and "certain of these steps clearly require specific application to the internet and a cyber-market environment." Google and Verizon disagree, saying that the patent covers no more than an abstract, high-level idea and fails to provide the requisite technological details needed to inform the public of the real bounds of the patent. It looks like the Supreme Court might take issue with the decision as well.
It should be noted that we don't know exactly where the Supreme Court stands on the issues in this particular case because it didn't issue a substantive decision. It just told the lower court to reconsider the case in light of a recent decision the Supreme Court issued on the broader topic back in March — a legal precedent that wasn't available at the time the original WildTangent decision was handed down. However, based on the instructions to the lower court, and the substance of that prior ruling, we have a pretty good idea of which way the Supremes are leaning.
It's a controversial topic with huge implications
The Supreme Court precedent is Mayo Collaborative Services v. Prometheus Laboratories, which comes with its own controversial baggage. While the technology at issue in that case was much different — determining metabolic concentrations and administering a drug according to those concentrations — the underlying legal principle may be very applicable here. Right or wrong (and that's hugely debated by patent attorneys and academics alike) the Supreme Court ruling in the Prometheus case provided a legal standard it obviously wants applied to the WildTangent case: abstract ideas, laws of nature, and mathematical formulas can't be patented, and you can't transform these things into patentable subject matter simply by using them in a known, real-world application.
The corollary is clear: the lower appellate court here will be tasked with deciding whether the advertising and monetization elements of the '545 patent (which Google and Verizon argue are nothing more than abstract ideas) can be transformed into patentable subject matter simply by performing some of the steps over the internet. It's an important discussion that could have wide-ranging implications for the future of technology and software patents — not to mention the possible ramifications a shift in the law could have on the uncountable number of patents already issued and in the wild. Imagine the potential implications for broad patents on mobile OS features, many of which recast well-known abstract ideas onto mobile devices or the internet. It may ultimately come down to how forward-looking (or lucky!) patent drafters were in including hardware and related details in their patent claims. It will certainly be interesting to see how the appellate court deals with this case, knowing that the Supreme Court is watching with elevated interest. We'll be sure to let you know of future developments in the case.