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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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Friday
Sep162011

Interaction Between Claim Construction and Patent-Eligible Subject Matter

Ultramercial, LLC v. Hulu, LLC (Fed. Cir. Sept. 15, 2011)

In this case, the Federal Circuit reversed the district court's finding that the patent-in-suit, related to a method of distributing copyrighted products over the Internet where the consumer receives a copyrighted product for free in exchange for viewing an advertisement and the advertiser pays for the copyrighted content, did not claim patent-eligible subject matter. 

While the Court did not ultimately use claim construction in making its Section 101 determination, Chief Judge Rader, writing for the panel, did provide commentary on the interaction between claim construction and Section 101:

This court has never set forth a bright line rule requiring district courts to construe claims before determining subject matter eligibility.  Indeed, because eligibility is a "coarse" gauge of the suitability of broad subject matter categories for patent protection, Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859, 869 (Fed. Cir. 2010), claim construction may not always be necessary for a § 101 analysis.  See, e.g., Bilski v. Kappos, 130 S. Ct. 3218, 3231 (2010) (finding subject matter ineligible for patent protection without claim construction).  On many occasions, however, a definition of the invention via claim construction can clarify the basic character of the subject matter of the invention.  Thus, claim meaning may clarify the actual subject matter at stake in the invention and can enlighten, or even answer, questions about subject matter abstractness.