On May 9, Mercury navigated its way between the earth and the sun (a “transit “in astronomical terms), an event that will not occur again until 2019. The Federal Circuit in Enfish, LLC v. Microsoft Corp (2015-1244) provided a legal equivalent this month by holding that claims directed to a data storage and retrieval system for computer memory successfully transited the two-pronged Alice test and were valid under 35 USC §101.
In 2012 Enfish asserted U.S. Patent Nos. 6,151,604 and 6,163,775 against several parties, including Microsoft. The Federal Circuit described the claims as a logical model (a model of data explaining how the various elements of information in a computer database are related to one another) that included all data entities in a single table, with column definitions provided by rows in that same table (i.e., a “self-referential” database). The prior art computer databases are relational (each type of information is provided in a separate table of rows and columns with relationships between those tables informing the relationships between rows in different tables). Advantages of the self-referential database (from the specification) included faster searching of data, more effective storage of data and added flexibility in configuring the database.
Claim 17 of the ‘604 patent was exemplary of the claims at issue:
A data storage and retrieval system for a computer memory comprising means for configuring said memory according to a logical table, including:
- A plurality of logical rows, with each said logical row including an object identification number (OID) to identify each said logical row, each said logical row corresponding to a record of information;
- A plurality of logical columns intersecting said plurality of logical rows to define a plurality of logical cells, each said logical column including an OID to identify each said logical column; and
- Means for indexing data stored in said table.
The district court found all asserted claims invalid under §101. The district court analyzed the claim limitation “means for configuring” under 35 USC 112(6), thereby limiting the term to the four-step algorithm described in the specification and concluded the claims were directed to “the concept of organizing information using tabular formats” which amounts to an abstract idea under current law.
The Federal Circuit analyzed the claims under the traditional two-part test in Alice. In step one of the analysis, a court must determine whether the claims at issue are “directed to” a patent-ineligible concept and, if so, determine in step two whether any element or combination of elements in the claims is enough to ensure that the claims cover something more than the judicial exception. The court characterized the “directed to” inquiry in step one as “meaningful” and one that “cannot simply ask whether the claims involve a patent-ineligible concept.” Rather the “directed to” inquiry applies a filter to the claims, considered in light of the specification, to determine if their character as a whole is directed to excluded subject matter, citing Internet Patents Corp. and the search for an inventive concept analysis which “is facilitated by considerations analogous to those of the §§102 and 103…”.
The court declined to read Alice broadly to mean all improvements in computer-related technology are inherently abstract and concluded that where the claims are not squarely directed to excluded subject matter (for example, fundamental economic and conventional business practices), the “directed to” inquiry in step one can include the inventive concept analysis.
As a result, the court’s first step in the Alice inquiry here focused on whether the claims directed to self-referential databases were improvements in computer operation or were directed to the process of organizing information where the computer is merely a tool (an abstract idea). The Federal Circuit reached the conclusion that the claims “…are directed to a specific improvement to the way computers operate, embodied in the self-referential table” and as such were more than a mere abstract idea. Because the court found step one of the Alice inquiry was satisfied, the step two analysis was not required.
In sum, the self-referential table recited in the claims on appeal is a specific type of data structure designed to improve the way a computer stores and retrieves data in memory.
The court criticized the district court’s analysis of the claims as being conducted at “a high level of abstraction and untethered from the language of the claims” that would all but ensure the exceptions to §101 will swallow the rule. The court viewed the claims as not directed to any form of storing tabular data, but to the disclosed self-referential table for a computer database resulting from the four-step algorithm, thereby limiting the scope of the claims (a factor which distanced the claimed from an abstract idea, see Internet Patents Corp.). The court noted that the function of the self-referential tables were different from conventional database structures and that these structures provided distinct advantages over the prior art (in both cases, relying heavily on the specification).
In the Enfish analysis, the court altered the Alice test, providing a way to avoid the full two-step analysis if the claimed invention is clearly not abstract (which is still determined in large part based on comparison of the invention to prior 101 case-law). In such cases, Alice is now a one-prong analysis. The Federal Circuit also recognized the improvement can be implemented on a general-purpose computer and is not defined by a physical component, concluding these factors do not always indicate an abstract idea. The court distinguished prior decisions as adding conventional computer components to well-known business practices or reciting general steps to be carried out on a computer using conventional computer activity and noted that “Much of the advancement made in computer technology consists of improvements to software that, by their very nature, may not be defined by particular physical features but rather by logical structures and processes.”
A claim drafting consideration as a result of this decision is to consider describing how the invention is an improvement over the prior art, particularly when improving the operation of a computer or system is at issue. As the claims in this case point out, the improvements described do not need to be presented in the independent claims. Of course, when pointing out the benefits of the invention, thought must be given to how these statements could result in estoppel. Enfish also makes it clear that the claims are not required to include a physical/hardware component to comply with section §101. Finally, methodology for applying invention should be disclosed and support for tailored claims should be provided in order to avoid the rejections based on undue breadth of the claims.