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IP: The machines fight back

Federal Circuit panel says “nevermind” to Cybersource.

A few weeks ago I celebrated in this column a recent Federal Circuit decision, Cybersource Corp. v. Retail Decisions, Inc., in which the court held that a process is not “tied to a machine” if the steps can be performed, however impractically, without it. That is (or was) a good rule, and one that lawyers and judges can apply (or could have applied) easily. But on Sept. 15—exactly 30 days later—a different Federal Circuit panel held the exact opposite, dismissing the court’s earlier decision. 

In Ultramercial, LLC. v. Hulu, LLC, the court considered a patent that claimed a method of having someone pay for another guy’s lunch, only here the lunch was copyrighted material—e.g., music—that advertisers (the proverbial other guys) purchased so that subscribers could listen for free. Of course, the method used the Internet, and so the plaintiff argued it was “tied to a machine” and thus was patent-eligible subject matter. Naturally, the district court was unpersuaded and, thankfully, killed the patent.


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Jeffrey Dean

Jeffrey Dean is a partner of Marshall, Gerstein & Borun LLP, and concentrates on the defense of patent infringement claims on behalf of corporations....

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