In Enfish, LLC. V. Microsoft Corp., the Federal Circuit reversed the district court’s summary judgment of invalidity under §101 (subject matter) and §102 (anticipation). In reviewing the lower court’s decision, the Federal Circuit focused analysis on the first part of the Alice Corp. test for determining patent-eligible subject matter. The Federal Circuit placed particular emphasis on the first step of the two-part test: Are the claims directed to an abstract idea? The Federal Circuit noted that the “formulation [of the test] plainly contemplates that the first step of the inquiry is a meaningful one, i.e., that a substantial class of claims are not directed to a patent-ineligible concept.”
What This Means to You:
Subject matter rejections of software cases can be challenging to overcome. Enfish provides a roadmap for ending the subject matter analysis at the first part of the Mayo/Alice test.
Claims that are directed to improvements of the computer itself should meet the requirements of §101 without having to establish the “significantly more” determination made in the second part of the test. Claims directed to detailed technical features now stand a much better chance of surviving §101 analysis. In practice:
- Challenge any rejection that skips or assumes the first step of the Mayo/Alice
- In prosecution, examiners should provide reasoning as to why their abstract idea aligns with existing cases.
The patents-in-suit are directed to an “innovative logical model for a computer database.” Contrary to conventional logical models, the patented model includes all data entities in a single “self-referential” table. The Federal Circuit explained that the patents teach multiple benefits that stem from the self-referential design. For example, the patents disclose an indexing technique for faster searching, and all data entities can be stored in a single table, simplifying storage tasks.
In reviewing the claims, the district court concluded that the claims were directed to the abstract idea of “storing, organizing, and retrieving memory in a logical table” or, more simply, “the concept of organizing information using tabular formats” and ruled the claims ineligible.
On review, the Federal Circuit held that the claimed invention was not directed to an abstract idea in the first instance. It criticized the district court’s approach of “describing the claims at such a high level of abstraction and untethered from the language of the claims” that “all but ensures that the exceptions to §101 swallow the rule.”
The court cautioned that Alice Corp. should not be read so broadly as to hold that all improvements in computer-related technology are inherently abstract and therefore must be considered at step two of the test. Rather, software can make non-abstract improvements to computer technology just as hardware can. Thus, the first step in the Alice inquiry should ask whether the focus of the claim is on a specific asserted improvement (e.g., the self-referential table) and eligible, or on a process for which computers are invoked merely as a tool and ineligible.
The Federal Circuit found that the plain focus of the claim was on an improvement to the computer functionality itself, and not on tasks for which a computer is used in its conventional capacity.
The court also indicated that the invention’s ability to run on a general-purpose computer does not necessarily doom the claims. More broadly, the court stated that claimed improvements not defined by a physical component are not doomed by Alice; “much of the advances made in computer technology consists of improvements to software,” which may not be defined by physical features. Having found the claims subject matter eligible, the court dismissed Microsoft’s allegation of indefiniteness, and the lower court’s finding of anticipation.
As the second Federal Circuit case to uphold software-based claims under §101, Enfish has been praised by patent applicants seeking to protect software-based inventions.
Enfish should be helpful in arguing against allegations of claiming an abstract idea or allegations that involving a general purpose computer renders claims abstract. On May 4 and 19, 2016, the USPTO issued new guidance in light of the Enfish decision enumerating how abstract idea rejections should be handled.