A short observation about Ultramercial v. Hulu

An off-topic early morning rant.

I teach civil procedure (and ethics, and patent law), and I'm just boggled by some of the amici briefs (I haven't read the petition for cert itself) in Ultramercial v. Hulu.  The case involved the appeal of a 12(b)(6) dismissal.  That requires that, on the face of the patent itself there is clear and convincing evidence the patent was invalid.  (Why?  If 101 matters at all, then it is a basis for invalidity, and so an affirmative defense, and so under long-standing case law, the patentee has to "plead into" the affirmative defense.  Here, that means the patent alone must show clear and convincing evidence of "invalidity" under 101.)

The burden is actually even higher than that.  At the start of Ultramercial, the court wrote:  

Further, if Rule 12(b)(6) is used to assert an affirmative defense, dismissal is appropriate only if the well-pleaded factual allegations in the complaint, construed in the light most favorable to the plaintiff, suffice to establish the defense.See Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007)Jones v. Bock, 549 U.S. 199, 215 (2007). Thus, the only plausible reading of the patent must be that there is clear and convincing evidence of ineligibility. For those reasons, Rule 12(b)(6) dismissal for lack of eligible subject matter will be the exception, not the rule.

So… how can you ever grant a 12(b)(6) motion granted with that standard?  Imagine a court saying "as a matter of law there is clear and convincing evidence that there is no plausible way this patent is enabled" without considering anything but the patent. 

So, with that background , what is really, um, peculiar to me is lawyers putting in amicus briefs with "evidence" in the appendix about how the claim could be done in 16 lines of code.  One is here.  If one of my civ pro students in their first semester said this was proper, they'd get a zero on that answer.

So, whatever the merits of this patent, I'll bet a metaphorical dollar that the Supreme Court will take one look and say, "12(b)(6)?  cert denied."

But then again, it's early and I've only had one cup of coffee.  So tell me what I'm missing.

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

16 thoughts on “A short observation about Ultramercial v. Hulu

  1. 11

    I think I said it before, but writing a book on statutory interpretation changed fundamentally how I look at the role of courts. “Activism” can come in many forms….

  2. 10

    “a lot of folks”

    Really Ned? ‘A lot of folks’ is simply not persuasive here.

    I see your bias to treating method claims as a second class patent eligible category sneaking back into the picture.

  3. 9

    I agree with you completely.

    A whole lot of nonsense attacking the patent system, when the plain words of the statute are not getting to the philosophical point desired.

  4. 8

    I know that is one opinion, that on 12(b)(6) you can decide such things based upon, I guess, what a judge thinks is “abstract.” But, where do you draw the line between “abstract” and “broad”? Is a “broad” claim “abstract,” too? Further, if this is 16 lines of code (which seems like proof) that sounds like it’s not abstract, unless all software is abstract? If a process can be boiled down to 16 steps, how is that abstract? Put the other way, if a 16 step process is abstract, aren’t all of them?

    Do you do like you did and analyze each element (unlike any other aspect of patent law I can think of this early).

    And, I thought “abstractness” had something to do with “preemption” of alternatives (which seems more like breadth than abstractness, but what do I know), and if alternatives matter, does a judge just make up her mind on what might be available, or do we use evidence? Or, if it’s “too abstract” does the fact that there are lots of non-infringing alternatives not matter?

    This is nonsense “analysis”, is I guess my point. It’s the pre-1952 “invention” stuff coming back to haunt us, despite what Congress tried to do.

  5. 7

    David, reading the claim, it is directed to a method, every element of which is abstract within to the extent that term is understood by reference to Bilksi or Benson.

    I think there are a lot of folks who believe such claims are invalid on their face. 12(b) is quite appropriate.

    As to Amicus Briefs and evidence, I don’t know whether the simplicity of coding the invention is even relevant to 101. It might be to obviousness.

  6. 5

    That’s not nearly as crazy as you might think Prof. Hricik.

    And “abstract” is not the only pitfall, for example: the aftermath of Nuitjen.

    In reality, Nuitjen is simply a bad decision from a reality based viewpoint. There are plenty of patents (otherwise perfectly valid), that can be easily argued to be INvalid based on the (poor) reasoning in Nuitjen.

    Semi-recent posts on the main Patently-O blog showed a retreat from the full reasoning of Nuitjen and a pure dependence on the “transience” prong of the argument. I have provided many (unrebutted) posts about how that “transience” prong is simply wrong.


    Nuitjen is controlling law.

  7. 4

    E.g., patent says “what we claim here, of course, is nothing but an abstract idea.” Seems to me that’d be an admission, and, so, evidence.

    Like I said, us law profs get paid to think of crazy stuff like that. BUt I agree with your point.

  8. 3

    I am still uncertain as to what you mean Prof. Hricik.

    As far as I know, attorney argument is not – and cannot take the place of – evidence. Even if that argument is merely trying to point to the face of the patent.

    Patents have a legal presumption of validity, and the patent itself, then – standing alone and on its own face – cannot be evidence of its own invalidity. An attorney’s argument that rests only on the patent – without other evidence MUST fail by law.

  9. 2

    If there is clear and convincing evidence on the face of the patent, it could be enough, in a 12(b)(6). But… I can make up something like that as a law professor, but can’t imagine it happening in the real world.

  10. 1

    Are you implying that mere argument alone cannot be clear and convincing evidence?

    I see nothing else in the brief.

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