Legal decision:

Federal Circuit goes Enfish-ing for eligibility

THE CASE: Enfish, LLC v Corp The Court of Appeals for the Federal Circuit 12 May 2016

The Federal Circuit has affirmed that software remains patent-eligible subject matter

In Enfish v Microsoft, which was decided abstract idea applied by the district court. In memory” – are “a specific implementation of a on 12 May, the Federal Circuit has provided doing so, the court found that the claims are solution to a problem in the software arts” and much needed clarification to the Alice test directed to an improvement over an existing are not an abstract idea. Because the claims at for patent-eligible subject matter under and conventional database, as evidenced issue are not directed to an abstract idea and 35 USC § 101. Under the framework set forth by benefits “such as increased flexibility, pass the first step of the Alice/Mayo test, the in Mayo Collaborative Services v Prometheus faster search times and smaller memory court did not proceed to the second step of the Laboratories and applied in Alice Corp v CLS requirements”. In contrast, the district court’s Alice/Mayo test. The court also reversed the Bank Intl, patent claims are ineligible for abstract idea was an oversimplification of “the district court’s grant of summary judgment on if they are directed to a patent- self-referential component of the claims” that invalidity under § 102 and affirmed the district ineligible concept, such as an abstract idea and downplayed the benefits of the court’s grant of summary judgment of non- do not include significantly more to transform described in the ’ specification. infringement for one of the claims at issue. the patent-ineligible concept into a patent- Unlike the claims in Alice, the Enfish As Enfish makes clear, software is not eligible application. In Enfish, the Federal Circuit court also found that the claims at issue do generally excluded from patent protection has affirmed that software remains patent- not simply add a conventional computer to under the Alice test, even in the absence of eligible subject matter and, more importantly, known business practices. Instead, the claims specific physical components in the claims that software claims lacking any physical to the self-referential database are “directed of software patents and patent applications. components are not necessarily directed to an to an improvement in the functioning of a In view of the guidance provided in Enfish, abstract idea. In doing so, the court has provided computer”. The court also found that the lack patent applicants have specific points to critical guidance to patent applicants and patent of physical components in the claims was not consider when seeking protection on software holders on the contours of the first inquiry of fatal to the abstract idea determination, as and the threat of ineligibility under the Alice/Mayo test for patent-eligible subject doing so “risks resurrecting…the machine-or- the Alice test. Software patent claims that matter: whether claims are directed to a patent- transformation test” or “creating a categorical provide improvements to the functioning of ineligible concept such as an abstract idea. ban on software patents”. The court addressed a computer and benefits over existing and The patents at issue in Enfish are directed the issue of software patentability head on conventional software should have better to a logical model for a computer database: the and stated that neither Bilski nor Alice created chances of overcoming issues of patent patents describe a self-referential technique in “an exclusion to patenting this large field of eligibility under § 101. which all data entities are included in a single technological progress”. Authors table and column definitions are provided The court said that claims directed to by the rows of the table. The district court software are not inherently abstract and granted summary judgment of invalidity § that “software can make non-abstract 101 on all asserted claims, finding that the improvements to computer technology just as asserted claims were directed to an abstract hardware improvements can, and sometimes idea. In applying the first step of the Alice/ the improvements can be accomplished Mayo test for patent eligibility under § 101, through either route”. Based on this, the the district court found that the asserted court concluded it is relevant to ask “whether claims were directed to the abstract idea of the claims are directed to an improvement to Brad Chin (top left) is storing, organising and retrieving memory in a computer functionality versus being directed to the head of Bracewell’s logical table or, more generally, the concept of an abstract idea, even at the first step of the IP practice group. organising information using tabular formats. Alice analysis”. Brian Tompkins (top In its reapplication of the first step of the In concluding its analysis under the first step right) and Chris Alice/Mayo test, the Enfish court examined the of the Alice/Mayo test, the Enfish court found Drymalla (left) are claims and specification of the patents at issue that the claims at issue – directed to “a specific senior counsels in Bracewell’s technology and found significant differences between type of data structure designed to improve the practice in Austin. the claimed invention and the general way a computer stores and retrieves data in

www.intellectualpropertymagazine.com July/August 2016 Magazine 65