United States: Federal Circuit's Enfish Is An Important 101 Decision

Applicants for software-related patents will be interested in the Court of Appeals for the Federal Circuit's decision in the matter of Enfish v. Microsoft Corp., 2015-1244 (Fed. Cir. May 12, 2016). This decision sheds further light on how applicants should draft and prosecute patent applications directed to software in order to increase the likelihood of securing allowance and overcoming future section 101 attacks by infringers.

The Enfish Decision

In Enfish, the Federal Circuit considered an appeal from the Central District of California's decision in Enfish, LLC v. Microsoft Corp., 56 F. Supp. 3d 1167 (C.D. Cal. 2014), which found that claims directed to a "self-referential database" were invalid under 35 U.S.C. section 101. In other words, the court held that the claims were not patent eligible because the claims were directed to an abstract idea, not a tangible invention. The patents claimed an improvement over the relational database model that allows storing information describing a relation in a single table, as opposed to multiple tables used by relational databases, by making use of a "special row," which "defines the characteristics of a column in that same table." The claimed improvement provided for "faster searching of data than with the relational model," "more efficient storage" of certain types of data, and "more flexibility in configuring the database."

On summary judgment, the district court found every claim of the asserted patents invalid as ineligible under section 101 by applying the two-step test affirmed by Alice. 56 F. Supp. At 1173-75 (quoting Alice, 134 S. Ct. at 2355). At step one, the district court characterized the asserted claims directed to "storing, organizing, and retrieving memory in a logical table," that "[f]or millennia, humans have used tables to store information," and that "the pervasive concept of tables would preempt too much future inventive activity." Id. at 1175-76. At step two, the district court analyzed claim 47 of patent no. 6,151,604 (the "'604 patent"), as representative of the patents in general. Claim 47 recites:

[a] method for storing and retrieving data in a computer memory, comprising the steps of:

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 indexing data stored in said table.

Id. at 1176-77. Addressing each recited element, the court found that the additional features are all conventional, thus "not enough to make an abstract idea patentable." Id. 1177-78. Enfish appealed.

The Federal Circuit begins its analysis by reviewing the district court's construction and characterization of the claims, finding that the district court's characterization of 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;" and instead, the Federal Circuit noted that the claims exemplified by the '604 patent are "specifically directed to a self-referential table for a computer database." Enfish v. Microsoft Corp., 2015-1244, opinion at 14 (citing Alice, 134 S. Ct. at 2354) (emphasis in original). In arriving at this characterization, the Federal Circuit read the claims in light of the specification to determine that a table embodying the claimed features is directed to a "self-referential table." Id. at 18. The court based its holding on the specification's disparagement of conventional data structures, combined with language describing the 'present invention' as including the features that make up a self-referential table." Id. In bolstering its support for this characterization, the Federal Circuit additionally relies on the specification's disclosure of a number of improvements over prior art databases, and emphasizes that "the present invention comprises a flexible, self-referential table that stores data." Id. at 15. "In finding that the claims were directed simply to 'the concept of organizing information using tabular formats, . . ., the district court oversimplifies the self-referential component of the claims and downplayed the invention's benefits.'" Id. Importantly, the Enfish court also describes the claims as "an innovative logical model for a computer database." Id. at 2 (emphasis added).

Determining that the claims are directed to a self-referential table for a computer database, the court states, "the claims are not simply directed to any form of storing tabular data, but instead are specifically directed" to a particular type of table. Id. at 14 (emphasis in original). Thus, the claims were not (1) "simply adding conventional computer components to well-known business practices"1; (2) mathematical formulas performed on any general purpose computer2; or (3) "generalized steps performed on a computer using conventional computer activity."3 Id. at 17. The court also notes that they do not read Supreme Court precedent to presumptively exclude (1) patents not defined by reference to "physical" components, or (2) software patents. Id. Instead, the Federal Circuit reminds us that "[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 or processes." Id. at 17-18.

In summarizing their holding, the Federal Circuit provides some useful guidance to patent practitioners. The self-referential table recited in the claims is a "specific type of data structure designed to improve the way a computer stores and retrieves data in memory." The specification's disparagement of conventional data structures, combined with language describing the "present invention" as including the features that make up a self-referential table, confirmed the Enfish court's characterization of the invention for purposes of the section 101 analysis. In particular, the claims are directed to a specific implementation of a solution to a problem in the software arts, and thus are not directed to an abstract idea, and thus the analysis ends (i.e., no need to evaluate the claims under Alice step two).

The May 2016 Update on Subject Matter Eligibility

On May 6, 2016, 2016, the USPTO issued updated guidance on subject matter eligibility. This update included a Memorandum – Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant's Response to a Subject Matter Eligibility Rejection. By this memorandum, the USPTO instructs examiners to:

  • Identify the judicial exception by referring to what is recited in the claim and explain why it is considered a judicial exception
  • Identify any additional elements recited in the claim beyond the judicial exception by specifically pointing to claimed features
  • Explain the reasoning that the additional elements individually or in combination do not result in the claim as a whole

These instructions generally require that the examiner must articulate a rationale based on the language of the claims. This should reduce the all-too-common occurrences of boilerplate rejections in which an examiner recites the entire software-related claim, and then concludes that it is directed to an abstract idea that is stated at a much higher level of abstraction than is warranted in light of the claims. A more thorough review of the May 2016 Update can be found in this client alert. The May 2016 Update also encourages examiners to tie the asserted abstract idea to a concept that the Federal Circuit has identified as an abstract idea, and to cite appropriate court decisions that support their position.

In light of the Federal Circuit's Enfish decision, applicants for patents related to improvements in computer science have a new tool to rely on in overcoming a section 101 rejection. By requiring an examiner to adhere to the claimed features when identifying what abstract idea a claim is directed to, examiners should be precluded from generalizing a claim such that "the exceptions to § 101 swallow the rule." For example, the district court's argument in Enfish abstracted the specific type of database table that was claimed – a self-referential table – to one for "storing, organizing, and retrieving memory in a logical table," in a way that would preempt a human practice that has been known for thousands of years; but the Federal Circuit held that this particular abstract idea was "untethered from the language of the claims," as was "underscored by the specification's emphasis" that the claims were directed to a "flexible, self-referential table that stores data."

Summary for Applicants and Patent Practitioners

The Federal Circuit in Enfish has confirmed what many patent practitioners have continued to assume: improvements in computer sciences are not always, by definition, abstract ideas under Alice step one; claims directed to computer sciences are not required to be defined by reference to "physical" components; and that a properly claimed "innovative logical model" is not necessarily an abstract idea. In order to improve the value of a software patent, a patent drafter should set forth the claims to recite enough detail that an examiner (or a court) can reliably determine what the claim "is directed towards."

Properly drafted, a claim to an improvement of the computer science arts should minimize the likelihood of success of an examiner's (or an infringer's) section 101 arguments under the two-step Alice analysis. This analysis will be bolstered by a specification that clearly sets forth why the claimed software is an improvement over the art by specifically describing why the embodiments are "implementations of a solution to a problem in the software arts," and thus more than simple recitations of well-known processes executed by a computer.


1. As in Alice, Versata Dev. Grp. V. SAP America, Inc., 793 F.3d 1306 (Fed. Cir. 2015)(determining a purchase price); Mortgage Grader, Inc v. First Choice Loans Servs. Inc., 811 F.3d 1314, 1324-25 (Fed. Cir. 2016) (anonymous loan shopping); Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367-69 (Fed. Cir. 2015)(financial budgeting); OIP Techs., 788 F.3d at 1362-64 (price optimization); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714-17 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1340, 1354-55 (Fed. Cir. 2014)(forming guaranteed contract relationships).

2. As in Gottschalk v. Benson, 409 U.S. 63, 93 (1972); Parker v. Flook, 437 U.S. 584, 594 (1978).

2. Internet Patents, 790 F.3d 1348-49 (maintaining a computer state); Digitech Image Techs., LLC v. Electrs. For Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014)(organizing information through mathematical correlations).

This article is presented for informational purposes only and is not intended to constitute legal advice.

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