Thomas Brown | June 24, 2016
Enfish, LLC v Microsoft Corp.
May 12, 2016
Precedential Opinion by Hughes, joined by Moore and Taranto.
Enfish sued Microsoft for infringement of several patents related to a “self-referential” table for a database. The district court found all claims invalid as ineligible under § 101 on summary judgment. The CAFC reversed the summary judgment based on § 101 by finding that claims drawn to a “self-referential” table for a data base are not directed to an abstract idea under step one of the Alice analysis.
Enfish owns US Patent Nos. 6,151,604 and 6,163,775, which are directed to an “self-referential” table for a database that includes all data entities in a single table, with column definitions provided by rows in that same table. In a conventional “relational” database, each entity that is modeled is provided in a separate table, with relationships between the tables being provided in the rows of the different tables, as shown below:
In contrast, in the patented “self-referential” model 1) all the entity types are stored in a single table and 2) the “self-referential” model can define the table’s columns by rows in the same table, as shown below:
The “self-referential” model allows for faster searching, more effective storage and more flexibility in configuring the database that the conventional “relational” database.
Enfish sued Microsoft for infringement in district court in California and the district court granted summary judgment finding all claims invalid under 35 USC § 101 as directed to an abstract idea. Enfish appealed the summary judgment finding to the CAFC.
The two step test in the Alice inquiry requires a determination as to whether the claim at issue is directed to a patent ineligible concept (abstract idea) and if so, is followed by the determination as to whether the additional elements in the claims transform the claim into a patent-eligible application (substantially more than an abstract idea).
Surprisingly, the CAFC focused on the first prong of the Alice inquiry, and not the second prong, in determining § 101 issue in this case. Specifically the CAFC found the claims as not being directed to an abstract idea and instead being directed to “a specific improvement to the way computers operate, embodied in the self-referential table”. The court wrote further:
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.
For example, claim 17 of the ‘604 patent recites:
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.
The district court construed the “means for configuring” step of claim 17 under 35 U.S.C. § 112, paragraph 6, as requiring a four-step algorithm, which the CAFC agreed with. However, the CAFC did not agree with the conclusion of the district court that the claims were directed to the abstract idea of “storing, organizing, and retrieving memory in a logical table” or, more simply, “the concept of organizing information using tabular formats.” Instead, the CAFC found that “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.” The CAFC appeared to rely heavily on the advantages disclosed in the specification regarding the “self-referential” table in finding that the claims “are specifically directed to a self-referential table for a computer database.”
The CAFC also distinguished the claims from Alice and other cases by finding “the claims here are directed to an improvement in the functioning of a computer [while] the claims at issue in Alice and Versata can readily be understood as simply adding conventional computer components to well-known business practices.”
The CAFC also found that the lack of claimed physical components does not doom the claims and to hold otherwise would resurrect the bright-line machine-or-transformation test of Bilski or improperly “creat[e] a categorical ban on software patents.”
In summary, the CAFC concluded that the claims were not abstract under prong one of Alice, and therefore prong two of that test need not be carried out.
This case represents a very powerful tool, maybe the most powerful so far, in dealing with 35 USC 101 rejections (so long as you are not are trying to patent a business method or economic principle).