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Slow Down, You Are Going Too Fast! The CAFC Again Remands Hulu Back to the District Court

by Orlando Lopez

After the Supreme Court granted certiorari, vacated and remanded ULTRAMERCIAL, INC. v. HULU, LLC, the District Court dismissed, without interpreting (construing) the claims, for failure to state a claim for which relief can be granted (in response to a 12 b(6) motion). The District Court accepted the argument presented by Ultramercial in their motion that Hulu’s patent, the ’545 patent, did not claim patent-eligible subject matter and did not require Hulu to file an answer to Ultramercial’s motion. The Court of Appeals for the Federal Circuit (CAFC) reversed and remanded Hulu back to the District Court.

The decision of the CAFC is based on the dependency of the patent eligibility analysis (the 35 USC 101 analysis) on factual issues. However the second pass on Hulu (which could be called “Hulu Hulu” at the risk of sounding like a college song from one of the many universities I attended) is interesting because it comes on the heels of CLS v. Alice. This second Hulu CAFC opinion provides a good discussion by the panel (Judges Rader, Lourie and O’Malley) on the analysis of patent  ineligibility. Judge Rader summarizes the analysis as the determination of whether the claim, taken as a whole, includes meaningful limitations restricting the claimed invention to an application rather than preempting the use of the abstract idea by others and for other applications.

After the plurality of decisions in CLS v. Alice, we will need to collect opinions like this from other panels in order to arrive at a view of the approach to determination of patent eligibility by the CAFC. As opinions on patentable subject matter from other panels are available, we will comment in future posts.


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