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On May 12th the Federal Circuit in Enfish, LLC v. Microsoft Corprotation (2:12-cv-07360-MRP-MRW) vacated an order from the Central District of California granting summary judgement of invalidity under 35 U.S.C. § 101. The decision is a significant push back against the current, anti-software patent Alice regime in that it conclusively states that software patents “can make non-abstract improvements to computer technology” and thus are not necessarily relegated to step two of the Alice inquiry.
In 2012, Enfish sued Microsoft for infringement of U.S. Patent Nos. 6,151,604 and 6,163,775 which are directed to a logical model for a computer database i.e. a model of data for a computer database explaining how the various elements of information are related to one another. The patents teach multiple benefits:
1) an indexing technique that allow for faster searching of data than would be possible with the relational model
2) a self-relational model to allow for more effective storage of data other than structured text such as images and unstructured text
3) more flexibility in configuring a database
In its analysis the Court focused on Claim 17 of the ‘604 patent, which 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.
Turning to the Alice analysis, the Court stated that it does not believe that patents 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.”
The Court distinguished over previous decisions such as Bilski and Alice noting 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” rather the claims of Enfish’s patents “are directed to a specific improvement to the way computers operate, embodied in the self-referential table.” Turning to the District Court ruling, the Court found that the lower court had fallen into the trap of oversimplifying the claims to a level that would invalidate most if not all patents: “The District Court concluded 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.’…”However, 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 Court then turned to the specification of the patents in suit to bolster its conclusion that “the claims are directed to an improvement of an existing technology” noting that “the claimed invention achieves other benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements.” The Court also noted that it does not believe that “invention’s ability to run on a general purpose computer dooms the claims” unlike the those in Alice or Versata Development Group v. SAP America which “can readily be understood as simply adding conventional computer components to well-known business practices.” Similarly, that the improvement “is not defined by reference to ‘physical’ components does not doom the claims. To hold otherwise risks resurrecting a bright-line machine or transformation test,…or creating a categorical ban on software patents.”
Summing up its reasoning the Court noted that “we are not faced with a situation where general-purpose computer components are added post-hoc to a fundamental economic practice or mathematical equation. Rather, the claims are directed to a specific implementation of a solution to a problem in the software arts.”
If one were to attempt to distill a rule regarding software patents and § 101 from this decision, it might be that claims of limited scope, directed to a computer specific process, with a specification that describes a computer specific problem can be non-abstract and safe under the Alice regime. It will be interesting to see new district court rulings citing this holding, and we will be following those cases closely.
Read: Judge Robinson: No Certification for Denied 101 Motion
Read: Tumultuous Alice Landscape Justifies Denying Fees Under 285