Page 50 - IP Record
P. 50
48 The IP Record - 2014
IPO’s 4-Star Federal Circuit Summaries™
Ultramercial, Inc. v. Hulu, LLC 10-1544
PROCESS FOR PROVIDING COPY- to an application, rather than merely an abstract
RIGHTED WORKS OVER THE INTERNET idea.” Ultramercial’s claim was “not so mani-
FREE IN EXCHANGE FOR VIEWING AD- festly abstract as to override the statutory lan-
VERTISING WAS PATENT-ELIGIBLE — guage of section 101.” It required “an extensive
June 21, 2013 — In an opinion by Chief Judge computer interface” and included “eleven sepa-
RADER, the Federal Circuit held that a district rate and specifc steps with many limitations and
court erred in dismissing Ultramercial’s infringe- sub-steps.” There was no risk of preempting all
ment suit for failing to claim patent-eligible sub- forms of advertising because there were myriad
ject matter. The Supreme Court had remanded ways to accomplish the underlying abstract idea
the case in 2012 for consideration in light of its that would not infringe the claim. By requiring
Mayo Collaborative Services opinion, after the “a controlled interaction with a consumer over
Federal Circuit overturned an earlier dismissal an Internet website,” the claim was “far removed
by the district court. The claim was for a method from purelymental steps.” Judge LOURIE con-
of providing copyrighted works over the Inter- curred in the result, but said the court should
net for free in exchange for viewing advertising. “concisely and faithfully follow” Supreme Court
The inquiry was whether the claim as a whole precedent rather than set out its own independent
included “meaningful limitations restricting it views.
Federal Trade Commission v. Actavis, Inc. 12-416
U.S. SUPREME COURT HOLDS PAY- market and Actavis agreed not to challenge the
MENTS BETWEEN BRAND-NAME DRUG patent. The FTC fled suit alleging the agree-
MANUFACTURER AND GENERIC FIRM ment violated antitrust law. The Supreme Court
NOT PRESUMPTIVELY UNLAWFUL BUT declined to hold reverse payments presumptively
SUBJECT TO ANTITRUST RULE OF REA- unlawful. They may be unlawful, however, un-
SON — June 17, 2013 — In an opinion by der an antitrust “rule-of-reason” analysis that
Justice BREYER, a split U.S. Supreme Court takes into account payment size, anticipated liti-
overturned a decision of the 11th Circuit Court gation costs, services rendered, and “lack of any
of Appeals dismissing the FTC’s suit. Solvay other convincing justifcations.” Chief Justice
Pharmaceuticals owned a patent for the brand- ROBERTS, joined by Justices THOMAS and
name drug AndroGel. Actavis sought FDA ap- SCALIA, argued that a reverse payment agree-
proval for a generic version of the drug and al- ment should be presumptively lawful unless the
leged that Solvay’s patent was invalid and not underlying patent litigation was a sham or the
infringed. Solvay sued Actavis for infringement. patent was obtained by fraud.
The parties settled after several years of litigation
and entered into a “reverse payment agreement”
in which Solvay paid Actavis to stay out of the
Intellectual Property Owners Association
IPO’s 4-Star Federal Circuit Summaries™
Ultramercial, Inc. v. Hulu, LLC 10-1544
PROCESS FOR PROVIDING COPY- to an application, rather than merely an abstract
RIGHTED WORKS OVER THE INTERNET idea.” Ultramercial’s claim was “not so mani-
FREE IN EXCHANGE FOR VIEWING AD- festly abstract as to override the statutory lan-
VERTISING WAS PATENT-ELIGIBLE — guage of section 101.” It required “an extensive
June 21, 2013 — In an opinion by Chief Judge computer interface” and included “eleven sepa-
RADER, the Federal Circuit held that a district rate and specifc steps with many limitations and
court erred in dismissing Ultramercial’s infringe- sub-steps.” There was no risk of preempting all
ment suit for failing to claim patent-eligible sub- forms of advertising because there were myriad
ject matter. The Supreme Court had remanded ways to accomplish the underlying abstract idea
the case in 2012 for consideration in light of its that would not infringe the claim. By requiring
Mayo Collaborative Services opinion, after the “a controlled interaction with a consumer over
Federal Circuit overturned an earlier dismissal an Internet website,” the claim was “far removed
by the district court. The claim was for a method from purelymental steps.” Judge LOURIE con-
of providing copyrighted works over the Inter- curred in the result, but said the court should
net for free in exchange for viewing advertising. “concisely and faithfully follow” Supreme Court
The inquiry was whether the claim as a whole precedent rather than set out its own independent
included “meaningful limitations restricting it views.
Federal Trade Commission v. Actavis, Inc. 12-416
U.S. SUPREME COURT HOLDS PAY- market and Actavis agreed not to challenge the
MENTS BETWEEN BRAND-NAME DRUG patent. The FTC fled suit alleging the agree-
MANUFACTURER AND GENERIC FIRM ment violated antitrust law. The Supreme Court
NOT PRESUMPTIVELY UNLAWFUL BUT declined to hold reverse payments presumptively
SUBJECT TO ANTITRUST RULE OF REA- unlawful. They may be unlawful, however, un-
SON — June 17, 2013 — In an opinion by der an antitrust “rule-of-reason” analysis that
Justice BREYER, a split U.S. Supreme Court takes into account payment size, anticipated liti-
overturned a decision of the 11th Circuit Court gation costs, services rendered, and “lack of any
of Appeals dismissing the FTC’s suit. Solvay other convincing justifcations.” Chief Justice
Pharmaceuticals owned a patent for the brand- ROBERTS, joined by Justices THOMAS and
name drug AndroGel. Actavis sought FDA ap- SCALIA, argued that a reverse payment agree-
proval for a generic version of the drug and al- ment should be presumptively lawful unless the
leged that Solvay’s patent was invalid and not underlying patent litigation was a sham or the
infringed. Solvay sued Actavis for infringement. patent was obtained by fraud.
The parties settled after several years of litigation
and entered into a “reverse payment agreement”
in which Solvay paid Actavis to stay out of the
Intellectual Property Owners Association
