The case of Enfish v. MSFT (Fed. Cir. 2016) is one of the rare Section 101 case in which the Federal Circuit identified claims for software inventions as eligible for patent protection after the Supreme Court’s decision in Alice and Mayo. In this blog post, we will review why the claimed software invention was deemed eligible for patent protection while so many others software inventions were categorized as an abstract idea and not eligible for patent protection.
I. Section 101 Framework for determining eligibility for patent protection
In general, anything under the sun made by man is eligible for patent protection except for laws of nature, natural phenomena and abstract ideas. The Section 101 framework for determining whether a claimed invention is eligible for patent protection has two steps. First, determine whether the claims are directed to a patent ineligible concept (e.g., laws of nature, natural phenomenon or abstract idea). Second, if so, determine if the elements of each claim both individually and as an ordered combination transform the nature of the claim into patent eligible subject matter. The Enfish case clarifies the first step in this Section 101 framework.
Previously, the Federal Circuit and the Supreme Court encouraged courts to compare the claim being examined to the other claims in prior cases which were found to be ineligible for patent protection. Depending on the extent of the similarities, the claim was eligible or ineligible for patent protection. Under this process the patent examiners, the PTAB and trial courts began finding the vast majority of software inventions and business methods ineligible for patent protection. The current case is one of the few cases after Alice and Mayo where the Federal Circuit found the claims were eligible for patent protection.
II. Ct. encourages critical analysis of claimed software inventions
In Enfish, the Federal Circuit continued to encourage lower courts to compare the claims with claims of previously decided cases but also encouraged the lower courts to take a more critical analysis of whether the claim is “directed to” a patent eligible subject matter by looking at the specification, the claims and then characterizing the invention using language tethered to the claim rather than using abstract characterizations untethered to the claims. Without tethering the characterization of the invention to the claim, in practice, many software inventions could be described as an abstract idea by generalizing the invention too much. To support its opinion, the Federal Circuit noted that the Supreme Court’s decision in Alice did not make all improvements in computer-related technology (e.g., software inventions) inherently abstract.
A. Focus on the claims
The first step in determining whether the claim is “directed to” patent ineligible subject matter is to initially ask whether the focus of the claims is on an improvement or a process that qualifies as an abstract idea. In the instant case, the invention involved computer databases. The Federal Circuit phrased the issue in the first step as whether the claim was directed to improving computer functionality, and thus eligible for patent protection or to an abstract idea, and thus ineligible for patent protection.
To support its rationale, the Federal Circuit quoted the Supreme Court of the United States which stated that claims purporting to improve the functioning of the computer itself or improving an existing technological purpose might not succumb to the abstract idea exception. It also identified computer chip architecture, LED displays and the like as not being directed to an abstract idea but to the improvement in technology, and thus eligible for patent protection.
In the present case, the Federal Circuit focused on the claims and found that the “plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity.” Based on this and other statements, the Federal Circuit appears to be signaling that the rate of software inventions being invalidated for not being eligible for patent protection should slow down.
B. Find the benefits of the claimed software inventions
More particularly, the Enfish patent was directed to a computer database, and specifically to a self–referential model that can store all entity types in a single table and also define the table’s columns by rows in that same table. By doing so, benefits are realized such as faster searching of data, effective storage of data, flexibility in configuring the database and the ability to deploy relational databases on-the-fly .
C. Tether the description of the invention to the claim language
The lower court erroneously characterized the claimed invention as merely storing, organizing and retrieving memory in a logical table or even more simply as the concept of organizing information using tabular formats. In reviewing the lower court’s characterization of the invention, the Federal Circuit criticized the oversimplification of the claimed software invention. The Federal Circuit described the lower court’s description as “a high level of abstraction and untethered from the language of the claims” so as to all but ensure that the exceptions to patentable eligible subject matter under Section 101 swallow the general rule that anything under the sun made by man is patentable.
The Federal Circuit reviewed the claims and determined that the claims were directed to achieving specific improvements in computer technology as discussed above. More importantly, the Federal Circuit appears to have recognized that the loose characterizations of software inventions untethered to the claim language has been misused to justify finding claims to software inventions as an abstract idea when the actual claim language was directed to narrower, defined improvements.
D. Review the specification for the benefits and its characterization of the invention
The Federal Circuit also looked to the specification and gave weight to the specification’s disparagement of prior art data structures and how the specification defined the present invention. The Federal Circuit found that this was important in confirming its understanding of the benefits of the claimed invention. Hence, the Federal Circuit held that the claimed invention in this patent was not directed to an abstract idea, and thus eligible for patent protection because it involved improving the functioning of a computer.
III. Comments on prior Section 101 cases
The Federal Circuit clarified its position on prior Section 101 cases. The Federal Circuit made clear that the first step in the patent eligibility standard is not a question of whether the claimed invention involves a patent ineligible concept. Rather, the issue is whether the invention as claimed is directed to a patent ineligible concept because every claim or at least most claims will involve some sort of law of nature, natural phenomena or abstract idea underlying the claim.
A. Software inventions directed to improved computer functionality are eligible for patent protection
The inquiry is whether the claims are directed to a patent ineligible concept when read in light of the specification, based on whether the claimed invention as a whole is directed to patent ineligible subject matter. One way to determine whether the claimed invention is directed to patent ineligible subject matter or an abstract idea is to determine if the claimed invention is directed to the improved functionality of a computer or software inventions or whether it is directed to an abstract idea. Accordingly, in writing a patent specification and the claims, the patent drafter should consider infusing these sections with functional language and implementing hardware in order to contrast the claimed invention from that of the prior art.
B. Tether characterization of software inventions to the claim language to avoid over simplification
The Federal Circuit also warned the lower courts about oversimplifying the characterization of the claimed invention. To mitigate such oversimplification, the Federal Circuit appears to encourage lower courts to characterize the claimed invention with language tethered to the claim language rather than using broad characterizations that omit key claim features and limitations.
C. Review the specification for its characterization of software inventions
Moreover, the Federal Circuit thought that it was beneficial for the specification to define the benefits of the present invention and also compare the advantages of the present invention to the deficiencies of the prior art. Defining the present invention in the specification and disparaging the prior art can raise potential problems as I’ve previously written but it may be necessary in applications for software inventions in order to overcome the current apparent bias against protecting software inventions with a patent.
D. Comment on Versata case
The Federal Circuit also clarified the holding of Versata which is often cited for saying that that adding a computer to the claims does not transform patent ineligible subject matter into eligible subject matter. The Federal Circuit clarified that there is a distinction between claims directed to an improvement in the functionality of a computer versus adding conventional computer components to a well-known business practice or abstract idea. The basic distinction is whether the claimed invention is adding computer hardware to a claim directed to an abstract idea or whether the claimed invention is directed to a specific improvement in functionality that utilizes computer hardware. In the former case, reciting computer components does not transform the claims from ineligible to patent eligible subject matter.
I invite you to contact me with your patent questions at (949) 78. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.