The US software patent environment is very different in the year following Alice v. CLS than in the year after State Street v. Signature . It was expected that when the Supreme Court finally had to take a view on eligibility of subject matter, things would change. After years of waiting for the other shoe to drop, it did (in a strange multi-stage process involving Bilski v. Kappos, Mayo v. Prometheus and Alice) – but nobody seems terribly sure where it landed.
Mayo and Alice did provide a test of sorts, or rather a “two-step enquiry”. The first step is to “determine whether the claims at issue are directed to a patent-ineligible concept”, and if this threshold is met, then to “consider the elements of each claim both individually and as ‘an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application”. This test is conceptually closer to the Aerotel-Macrossan test used in the UK than to the European approach, where it is easy to pass the excluded subject matter test, but much harder to find inventive step following the line of cases from T641/00 (Comvik).
Like almost everyone else even involved in this process, the Supreme Court has stopped short of defining what an abstract idea is, but it has at least provided some guidance. The practical problem is that elements of this guidance (“patent-ineligible concept”, “transform the nature of the claim”) are not only abstract but also hard to define in any objective way. The Supreme Court in Alice did suggest that claims “purporting to improve the functioning of the computer itself” or “improving an existing technological process” had the potential to pass the first step, but did not provide more detailed guidance. The general approach taken both by the USPTO (which has done its best to provide guidance and made it available to the public as well as to examiners here) and by the US courts has been to open a much broader range of patents to a s.101 attack, with affected patents falling like ducks in December over Chesapeake Bay.
It has been difficult for the USPTO and the District Courts to provide any additional useful structure (beyond sampling many decisions to see which the case in suit was most like – providing guidance by example a bit like this), but the Court of Appeals for the Federal Circuit is now starting to provide another level of explanation at Enfish v. Microsoft.
This is a good judgement to read – it is relatively short, it contains a clear and cogent analysis of the claimed invention and the technical context, and it uses an analytical process to assess whether the invention qualifies under s. 101 that could be used by practitioners on other cases without resorting to ex post facto analysis or wishful thinking.
Enfish relates to US 6151604 and US 6163775, both of which relate to a database operating according to a different logical model from a conventional relational database. In the Enfish self-referential model, all entity types can be stored in the same table with new columns defined by rows in the table, as opposed to a conventional relational database which will instead define a set of tables and relationships between them (if this terse description is insufficient, I would recommend going to pages 2 to 7 of the judgement).
The court in Enfish decided that the relevant claims passed the first of the Mayo/Alice steps – that they were in fact directed to a patent eligible concept, “a specific improvement in the way computers, operate, embodied in the self-referential table”. The court considered that these claims were directed at more than the abstract idea of organising data in a table – the different database structure operated in a functionally different way from existing relational databases. The court indicated that the possibility of implementing the invention on a general-purpose computer did not doom the claims – to do so would be to impose the machine-or-transformation test as the only possible test, which had been explicitly disavowed in Bilski v. Kappos. The court also explicitly distinguished the patent in Enfish from cases where general-purpose computer components are added post hoc to “a fundamental economic practice or mathematical equation” – this was “a specific implementation of a solution to a problem in the software arts”.
This test is also applied by the CAFC in TLI Communications v. AV Automotive, with the judgement again written by Judge Hughes. This time, the subject matter of the claims (of US 6038295) was found not to be patent eligible, but the facts were very different. In TLI Communications, the invention was directed to capturing digital images and automatically or manually adding classification data – the images were then uploaded to a server and stored so as to take into consideration the classification data. The court did not accept that this passed either of the Mayo/Alice steps – the claims were not directed to “a specific improvement to computer functionality” but rather to “the use of conventional or generic technology in a nascent but well-known environment, without any claim that the invention reflects an inventive solution to any problem presented by combining the two”. No new hardware was required, and the server was only required to operate in a conventional manner to perform the abstract idea of classifying and storing digital images in an organized manner. In considering the second step of Mayo/Alice, the function of each hardware element was considered but each was found to behave “exactly as expected given its ordinary use”.
There’s been some forensic analysis to attempt to gauge the overall attitude of the CAFC to software patent protection on the basis of these and other judgements, but Enfish and TLI Communications seem well differentiated using a common analytical approach. The point of novelty found in Enfish was a new kind of data structure that was held to result in a different mode of operation of a general purpose computer. In TLI Communications, the court considered carefully whether any of the actions involved led to any such different mode of operation, but instead found that all hardware elements involved in the invention was used in a conventional way.
I am advised that Enfish has impacted at least two District court cases wherein the summary judgment motions granted on grounds of lack of patent eligibility under s.101: in Mobile Telecommunications Technologies v. Blackberry Corp (ND Texas) the Judge requested supplemental briefs on the Enfish decision; and in Activision Publishing Inc. v. xTV Networks, Ltd., the Central District of California court vacated a hearing date and requested technology tutorials on the importance of Enfish.
The USPTO has also updated its guidance on eligible subject matter following Enfish – this can be found here.
My thanks to Mercedes Meyer of Drinker Biddle for information used in putting together this piece (though all views expressed here are my own).
Richard Lawrence 24 May 2015