United States: Major 101 Decision – Enfish v. Microsoft

Today in Enfish v. Microsoft, the Federal Circuit held software claims patent eligible, reversing the district court's grant of summary judgment on 101. This is a major decision because it is only the second since Alice where the Federal Circuit has held patent claims eligible (DDR being the first). Further, the case heavily emphasizes that disembodied software can be patent eligible when it provides improvements to specific computer technology. This decision should quickly become a go-to case for software patent owners facing 101 challenges.

Judge Hughes wrote for a unanimous panel, including Judges Moore and Taranto, which adds some additional interest, because in his brief time on the Court thus far, Judge Hughes has been fairly tough on patents and tough on the 101 issue in particular. At a high level, the Court decided the issue on the first Alice prong, holding that the claims were not directed to an abstract idea. The patent at issue concerns self-referential tables. The Court characterized the patent-in-suit as follows:

The '604 and '775 patents are directed to an innovative logical model for a computer database. A logical model is a model of data for a computer database explaining how the various elements of information are related to one another. A logical model generally results in the creation of particular tables of data, but it does not describe how the bits and bytes of those tables are arranged in physical memory devices. Contrary to conventional logical models, the patented logical model includes all data entities in a single table, with column definitions provided by rows in that same table. The patents describe this as the "self-referential" property of the database. '604 patent, col. 2 ll. 44–52.

(Opinion at 2-3.) The Court went on to contrast the self-referential model with the more standard "relational" model. According to the Court, in contrast to the relational model, the patented self-referential model has two features that are not found in the relational model: first, the self-referential model can store all entity types in a single table, and second, the self-referential model can define the table's columns by rows in that same table.

An example claim reads as follows:

A data storage and retrieval system for a computer memory, comprising:

  • means for configuring said memory according to a logical table, said logical table including:
  • a plurality of logical rows, 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.

As can be seen, this claim has two means-plus-function elements (means for configuring... and means for indexing...), which raised the question in my mind of how the district court construed these elements. In other words, what was the "corresponding structure" for each element? The district court construed the "means for configuring" as covering a four-step algorithm, and the "means for indexing" as covering a three-step algorithm. The Court affirmed both of these constructions. Thus, under this construction, we have a system claim comprising method steps combined with a "logical table" made up of logical rows and logical columns.

For software-related inventions, the following paragraph from the Court's opinion is particularly interesting:

We do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two. Indeed, some improvements in computer-related technology when appropriately claimed are undoubtedly not abstract, such as a chip architecture, an LED display, and the like. Nor do we think that claims directed to software, as opposed to hardware, are inherently abstract and therefore only properly analyzed at the second step of the Alice analysis. Software can make non-abstract improvements to computer technology just as hardware improvements can, and sometimes the improvements can be accomplished through either route. We thus see no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice, nor do we believe that Alice so directs. Therefore, we find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis.

For that reason, the first step in the Alice inquiry in this case asks whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an "abstract idea" for which computers are invoked merely as a tool. As noted infra, in Bilski and Alice and virtually all of the computer-related § 101 cases we have issued in light of those Supreme Court decisions, it was clear that the claims were of the latter type—requiring that the analysis proceed to the second step of the Alice inquiry, which asks if nevertheless there is some inventive concept in the application of the abstract idea. See Alice, 134 S. Ct. at 2355, 2357–59. In this case, however, 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.

(Opinion at 11-12, emphasis supplied.)

The Court declined to accept the characterization of the abstract idea as "the concepts of organizing data into a logical table with identified columns and rows where one or more rows are used to store an index or information defining columns." As the Court put it: "describing the claims at such a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the rule." (Opinion at 14.)

The Court was particularly swayed by the description of the claims as "specifically directed to a self-referential table for a computer database" as laid out in a four-step algorithm. As such, the Court concluded that the claims were directed to an improvement of existing technology, which included benefits to the programmer and the resulting database, like flexibility, speed, and memory requirements. (Opinion at 15.)

The Court also was not persuaded by the invention's "ability to run on a general-purpose computer," because the claims nonetheless were directed to a "specific improvement to computer functionality." Such an improvement does not require reference to "physical components" because "[m]uch 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." (Opinion at 17-18.)

When describing the bulk of post-Alice cases that have gone the other way, the Court described them as situations where "general-purpose computer components are added post-hoc to a fundamental economic practice or mathematical equation" rather than the situation in this case, where "the claims are directed to a specific implementation of a solution to a problem in the software arts." (Opinion at 18.)

The Court considered several other issues (112, 102, IPR-based estoppel and infringement), all of which resulted in a remand back to the district court for further proceedings.

This decision seems to further cement DDR's focus on identifying the improvement offered by the claimed invention and inquiring as to whether that improvement is fundamentally technological. Although Alice is the universal test at this point for 101, perhaps the most straightforward way of explaining why an invention survives Alice is to show how, like DDR and Enfish, the claim offers a technological solution to a technological problem.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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