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Applying the Supreme Court’s more recent framework set forth in Alice Corp. v. CLS Bank Int’l, 573 U.S. __, 134 S. Ct. 2347 (2014), the court held that the claim of the Ultramerical patent is not directed to patent-eligible subject matter under Section 101.  This is a reversal of the Federal Circuit’s two prior opinions holding that the same claim was directed to patent-eligible subject matter—the second time applying the Supreme Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. __, 132 S. Ct. 1289 (2012).  Further, while acknowledging that the “machine-or-transformation” test, described in Bilski, was not the sole test under Section 101, the court applied that test to also hold that the claims “are not tied to any particular novel machine or apparatus, only a general purpose computer.”  Judge Mayer raised three important points in his concurrence:  (1) the issue of patentable subject matter is a threshold question that must be addressed at the outset of the litigation; (2) no presumption of patent eligibility attends the Section 101 inquiry; and (3) Alice Corp. set out a technological arts test for patent eligibility.

Ultramercial, Inc. v. Hulu, LLC, Case No. 2010-1544 (November 14, 2014); Opinion By:  Lourie, joined by Mayer, O’Malley, Mayer, Concurring; Appealed From:  Central District of California, Klausner, J. To read the court's opinion, click here.

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