Abstract ideas, laws of nature, and mathematical formulas can't be patented under US law, and both Google and Verizon want the US Supreme Court to better define the bounds of that legal tenet as it applies to Internet technologies. Google and Verizon recently filed a joint amicus curiae ("friend of the court") brief in the case of WildTangent v. Ultramercial, asking America's highest court to formally clarify that an unpatentable abstract idea, such as a method of advertising, can't magically become patentable subject matter by simply implementing it over the Internet. The Electronic Frontier Foundation has also filed an amicus brief in the case similarly asking the court to assign understandable boundaries to patentable subject matter.
Ultramercial's patent in this case, US 7,346,545, claims priority back to 2000 and covers monetizing and distributing products via the following steps:
- receiving media content covered by intellectual property (e.g., copyright) rights;
- selecting a sponsor message to be associated with the content;
- providing the content for sale at or on "an Internet website;"
- restricting access to the content; and
- displaying and facilitating access to the content.
As you can see, the patent claims don't call out any specific technology, hardware or software, for carrying out the purported invention, other than mentioning that the sales will take place over the Internet. That's where the controversy lies. There's a dispute over whether an otherwise abstract idea can be transformed into patentable subject matter by adding that one or more of the method steps is conducted over the Internet. The decision from the lower Court of Appeals for the Federal Circuit opined that the claimed invention was sufficiently eligible for protection — under 35 USC Sec. 101. That court reasoned that "many of these steps are likely to require intricate and complex computer programming. In addition, certain of these steps clearly require specific application to the Internet and a cyber-market environment."
"The drafter's effort to stretch this simple, abstract business model into 11 separate steps does not render the abstract patentable."
Google and Verizon obviously disagree, arguing that the lower court's decision, and others like it, "expose high-tech companies to increased litigation risk by sanctioning sketchy, high-level claims that lack the specifics that transform abstract ideas into patentable processes." Their brief goes on to assert that the court's ruling fails to properly consider and apply the Supreme Court's 2010 decision in Bilski v. Kappos, and that a simple recitation of "over the Internet" in a patent claim is ubiquitous and fundamentally lacking in light of the Bilski precedent:
"The decision would impede innovation by allowing a person to exclude others from practicing every application of an abstract idea related to conducting business online — including implementations that the 'inventor' never contemplated and that have not yet been invented. That would turn the patent system upside down by converting it into a tax, instead of an incentive, for actual innovation."
"At their limit, abstract patents claim everything and contribute nothing."
The crux of the disagreement is over how much technology, or specificity on implementation, a patent claim must carry with it to render such an advertising method eligible for patentability. What did you invent? How are you doing it? How do you practice the invention online? Those are the questions at the center of this particular debate. While the legitimacy and bounds of software and method patents have certainly been a hot topic in the legal and technology communities for some time now, it's difficult to gauge whether the Supreme Court will find the facts of this particular case interesting enough to warrant review. And even if the court does decide to hear the case, don't expect a ruling abolishing software or business method patents. That's not going to happen. Google, with it's portfolio of software patents, obviously doesn't want that and the Supreme Court has made it clear — in Bilski, for example — that it has no intention of doing any such thing. Moreover, that's not what this case is about. You can see that the issue here is more nuanced than that. And while clarification on this subject would certainly be welcomed by many on both sides of the debate, we'll just have to see if it sufficiently sparks the interest of a certain nine justices in Washington.