Hulu TV fait invalider le processus d’affaire de Ultramercial

*Ce qu’il faut retenir:

Il est de plus en plus difficile de protéger un processus d’affaire aux États-Unis. Mauvaise nouvelle si vous avez un brevet sur un tel procédé. Bonne nouvelle si ce sont vos concurents qui en ont un!

**Pour ceux qui veulent en savoir plus:

Ultramercial, LLC a poursuivi Hulu TV pour contrefaçon de son brevet portant sur un procédé d’affaire visant à forcer un utilisateur à voir de la publicité pour avoir accès à de la programmation télévisuelle gratuite.

La Federal District Court a toutefois déclaré le brevet de Ultramercial invalide puisque le procédé n’implique aucune machine ni la transformation d’un article en une chose différente. La cour a ainsi appliqué le “machine or transformation test” que la Supreme Court a déclaré dans la célèbre cause Bilski comme le seul test valide pour la brevetabilité des procédés d’affaire. De plus la cour a statué que le procédé en cause n’impliquait qu’une idée abstraite et de ce fait n’était pas brevetable.

***Pour les praticiens de la propriété intellectuel

Extrait de l’arrêt ULTRAMERCIAL, LLC et al. v. HULU, LLC, et al. (Case 2:09-cv-06918-RGK-PLA)


The ‘545 patent claims an invention for distributing copyrighted products over the Internet (or
other networks). In particular, the ‘545 patent discloses a method for allowing Internet users to view
copyrighted material free of charge in exchange for watching certain advertisements. A computer or a
server acts as a gateway between the Internet user and the copyrighted material. An advertisement
sponsor may purchase advertising space for a particular copyrighted material (a television show episode
for example). Upon attempting to stream a “free” television show episode, for example, the Internet user
will be presented with advertisement.

The two independent claims of the ‘545 patent are claims 1 and 8. Claim 1, in its entirety,
discloses a number of steps that comprise the process of displaying advertisement in exchange for
access to copyrighted media. The steps are 1) receiving media from content provider, 2) selecting an ad
after consulting an activity log to determine how many times the ad has been played and how many
more times it need be played, 3) offering media products on the Internet, 4) restricting general public
access to the media, 5) offering various media to customers for free in exchange for their watching the
selected ad, 6) receiving a request to view the media from the Internet user, 7) facilitating the display of
the ad, 8) allowing the Internet user access to the media, 9) same as 8 but for interactive media, 10)
recording the transaction in the activity log, and 11) receiving payment from sponsor for the ad.


After having reviewed the filings and the relevant case law in full, this Court finds that the ‘545 patent does not
disclose patentable subject matter. Not only does the patent fail the machine or transformation test, it
claims an abstract idea. Therefore, Plaintiff’s Complaint should be dismissed.

A. The ‘545 Patent Does Not Satisfy the Machine or Transformation Test

The machine or transformation test, according to the Supreme Court, provided a “useful and important clue,”

but it was not determinative in all situations. Id. at 3227.

Instead, the inquiry should be whether the claimed invention is a “law of nature, physical
phenomena,” or an “abstract idea[].”

1. The ‘545 Patent Is Not Tied to a Machine
Yet, physical steps are not needed to
allow a process claim to be patentable. In re Bilski, 545 F.3d at 961. As long as the invention is tied to a
machine or transforms an article, it may be patentable notwithstanding its lack of physical steps. Id.
The two independent claims of the ‘545 patent recite the steps of exchanging media for
advertisement viewing. There are only three points in the ‘545 patent that the parties have identified as a
possible reference to a machine. The first two (“facilitator” and “Internet”) appear in the independent
claims (1 and 8): “A method for distribution of products over the Internet via a facilitator.” The third
appears in dependent claim 16: “The method . . . wherein media product accessed by the consumer is
downloaded to a memory of a personal computer of the consumer.” The Court finds that none of the
three satisfy the machine prong of the test.

Despite Plaintiff’s argument, the “facilitator” recitation does not meet the machine requirement.
First, there is no reason to read “facilitator” as a machine such as a computer. Indeed, the patent
specification suggests the contrary: the schematics in the patent specification depict the facilitator as a
person. Moreover, the ‘545 patent explains that the facilitator may “communicate through . . . telephony,
facsimile, courier, mail or even person-to-person meeting.” The specification makes it clear, therefore,
that the ‘545 patent is not aimed at a computer-specific application; it is a broad claim to the concept of
exchanging media for advertisement viewing.
Neither does the “Internet” recitation save the patent. First, this Court agrees with the District
Court in the Northern District of California that held the Internet is not a machine. CyberSource Corp. v.
Retail Decisions, Inc., 620 F. Supp. 2d 1068 (N.D. Cal. 2009) (“[T]he Internet is an abstraction.” “One
can touch a computer or a network cable, but one cannot touch ‘the internet.’”). In CyberSource, the
court held that methods for “detecting fraud in credit card transaction between consumer and merchant
over the Internet were not tied to a specific machine.” Id. at 1077-78 (emphasis added). This Court
agrees in full with the court’s reasoning in CyberSource to the effect that the “over the Internet”
recitation does not make an otherwise unpatentable idea patentable. Id.

Finally, the mere act of storing media on computer memory does not tie the ‘545 invention to a
machine in any meaningful way. Since Plaintiff does not argue this point, the Court will not address it in
detail. It suffices to say, however, that the argument would have been too farfetched and hence futile.

Plaintiff makes two counter arguments that need be addressed. First, Plaintiff points to many
steps in the ‘545 patent that, according to Plaintiff, address computer-specific functions (such as issuing
and verifying passwords, transmitting an ad until it is timed out, making content physically available to
the consumer, etc.). (Pl. Opp., at 16.) Second, Plaintiff argues that the segments of the patent
specification quoted here only says that “some communication [may] take place without a programmed
machine (e.g., communication between a IP rights holder and interposed sponsor),” but “all
communication between the consumer and facilitator take place utilizing a specifically-programmed
computer.”3 (Pl. Opp., at 17:25-18:15.) In sum, Plaintiff argues that the ‘545 patent is computer-specific
and not a broad invention that may be performed by a person. As a result, Plaintiff suggests that the ‘545
patent meets the machine prong of the test.

Plaintiff’s argument is unavailing. There is nothing inherently computer-specific about receiving

media from a content provider, choosing a sponsor for the media, selecting an ad for the sponsor,
verifying the viewer’s activity, assigning passwords, charging the sponsor for the advertisement, or any
of the remaining steps.

Similarly in the case of the ‘545 patent, the
concept of advertisement-media-exchange does not become patentable simply because the patentee
claims to have limited its application to the Internet or computers. Therefore, the ‘545 patent fails the
machine test.
2. The ‘545 Patent Does Not Transform an Article

There can be little dispute that the ‘545 patent does not transform an article. “Transformation and
reduction of an article ‘to a different state or thing’ is the clue to the patentability of a process claim that
does not include particular machines.” Id. at 70. None of the patent claims disclose a transformation.
Plaintiff points to claim 16, which recites, “The method . . . wherein media product accessed by the
consumer is downloaded to a memory of a personal computer of the consumer.” Yet the mere transfer of
data from one memory disk on one computer to another memory space in a second computer is not
“transformation of article” under § 101.

At the core of the ‘545 patent is the basic idea that one can use
advertisement as an exchange or currency. An Internet user can pay for copyrighted media by sitting
through a sponsored message instead of paying money to download the media. This core principle,
similar to the core of the Bilski patent, is an abstract idea. Indeed, public television channels have used
the same basic idea for years to provide free (or offset the cost of) media to their viewers.6 At its heart,
therefore, the patent does no more than disclose an abstract idea.
Also similar to the patent in Bilski, the added features, examples, or limitations of the ‘545 patent
do not make it patentable. That the exchange (advertisement for media) is carried over the Internet,
through a facilitator, using passwords and activity logs, does not limit the patent in a meaningful way.
The patent still discloses an abstract idea garnished with accessories. If the claimed invention here were
patentable, it would “preempt use of this [method] in all fields.”

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