Federal Circuit Upholds Database Patent
Software patent applicants and patent holders were provided with a boost to their portfolios with a recent Federal Circuit decision in Enfish v. Microsoft. Those who follow software patents are no doubt aware of the large number of patents that have been invalidated since the Supreme Court issued its 2014 decision in Alice v. CLS. Prior to the Enfish ruling, only one Federal Circuit case addressing Section 101 patent eligibility pertaining to computer inventions had upheld a patent in view of the Alice decision. As more cases are evaluated in view of Alice, more clarity and certainty are provided to those evaluating validity of issued patents and preparing new applications for filing.
The Enfish decision provides significant interpretation to the first step in the two-step Mayo/Alice analysis, which involves determining:
1. Is a claim directed to a patent-ineligible concept
2. Whether something more is claimed that will transform the claim to a patent-eligible invention
The claims at issue in the Enfish case relate to what is described as a “self-referential” database, wherein all data entities are included in a single table with column definitions provided in rows of the same table. Within the specification, the patents describe that using the “self-referential” model allows for faster searching, more effective storage of data other than structured text and flexibility in database configuration.
In discussing the first step in the Mayo/Alice inquiry, the Federal Circuit states, “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.” Based on this reasoning, the court analyzed whether the claims were directed to improvement of computer functionality or an abstract idea. In distinguishing the claims from Alice, the Federal Circuit noted that the claims were directed to “an improvement in the functioning of a computer” as opposed to conventional computer components implementing well-known business practices. As the claims in the Enfish case were determined to be directed to a patent-eligible concept, analysis of the second stage was not necessary.
Adopting the Two-Step Approach
Given the Enfish decision, those analyzing issued patents as well as those preparing new applications would be well served by focusing on whether there exists a problem/solution approach to the claims. In particular, the Federal Circuit notes, “…the claims are directed to a specific implementation of a solution to a problem in the software arts”. This approach to examination of claims is utilized in the Europe Patent Office’s Guidelines for Examination. US practitioners in the software arts would best be served by considering adoption of a similar approach.