Ultramercial back to Federal Circuit. Accenture & Bancorp done

By: Robert R. Sachs

On the final day of its 2013 term, the Supreme Court issued some interesting orders in Section 101 cases dealing with computer-implemented business methods.

First, in WildTangent, Inc. v. Ultramercial, LLC (13-255), the Court granted certiorari, vacated, and remanded back to the Federal Circuit for reconsideration in view of Alice. This is important because the Federal Circuit twice affirmed the patent eligibility of Ultramercial's claims, first back in 2011, Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323 (Fed. Cir. 2011), and then again in 2013 after the Supreme Court vacated that decision and remanded in view of Mayo. Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335 (Fed. Cir. 2013). In the second decision, Judge Rader attempted to reconcile his theory of patent eligibility with that of Judge Lourie. Now that Judge Rader has retired, the case will be decided by just Judges Lourie and O'Malley. If these judges do not agree on the eligibility of Ultramercial's claim--a likely outcome--then an additional judge will be assigned. How Ultramercial turns out will very likely depend on which judge is assigned--resulting in yet another panel dependent outcome.

In addition, the Court denied certiorari in both Accenture Global Servs. v. Guidewire Software, Inc. (No. 13-918) and Bancorp Servs., LLC v. Sun Life Assurance Co. (No. 13-584). In both of these cases, the Federal Circuit previously found the patent claims ineligible. Accenture Global Services, GmbH v. Guidewire Software, Inc., 728 F.3d 1336 (Fed. Cir. 2013); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada, 687 F.3d 1266 (Fed. Cir. 2012).

Upshot: where the Federal Circuit found a business method claim patent-eligible (Ultramercial), the Supreme Court sent it back for a do-over, ostensibly over doubts as to the patent's validity. Where the Federal Circuit found such a claim ineligible (Accenture and Bancorp), the Supreme Court was fine with that outcome. Thus, even though the Alice majority opinion made no mention of business method patents directly, the Court clearly does not have much tolerance for them.

*The perspectives expressed in the Bilski Blog, as well as in various sources cited therein from time to time, are those of the respective authors and do not necessarily represent the views of Fenwick & West LLP or its clients.