In the last five years, we have seen multiple decisions Supreme Court decisions impacting patentability of software under section 101 and a recent Court of Appeals for the Federal Circuit (CAFC) case of Ultramercial v. Hulu is a good illustration of how the standards set by these decisions differ. The case concerns U.S. patent no. 7,346,545, which covers a method of distributing copyrighted media to consumers over the Internet in exchange for having the consumers view advertisements. CAFC had to consider the validity of this patent on section 101 grounds for a total of three times, in 2011, 2013, and 2014, with the Supreme Court vacating CAFC decisions and remanding the case for reconsideration as additional Supreme Court cases were decided. Initially, CAFC decided the case under the law as set by Bilski v. Kappos, and held the patent valid due to the patent claims requiring an extensive computer interface and complex computer programming. CAFC reconsidered and again upheld the patent for similar reasons under the standard set by the Supreme Court decision of Mayo v. Prometheus, concluding that the claims of the patent were not abstract enough as to be patent ineligible. When faced with the patent for the third time, now under the law set by Alice Corp., CAFC struck down the patent as invalid, ruling that the claims were directed towards an abstract idea and did not have additional elements necessary to transform the claims into a patent eligible application of the idea. CAFC also held that the claim did not satisfy the machine-or-transformation due to not being tied to a novel machine or apparatus and not covering a transformation of a physical matter or something that represents the physical matter.
Court decisions shape patent examination policies and as this case illustrates, the law guiding such policies can change within a few years, and a patent application written with one standard in mind may be examined under a different set of rules. Accordingly, one writing a patent application would be wise to attempt to anticipate a possible tightening of section 101 examination standard and put sufficient support into the specification to allow for claim amendments necessary in light of such a tightening.