By Stephen B. Schott
Software patents are alive. Again. Many pundits have been saying it since the Supreme Court’s Alice decision on patentable subject matter in 2014 but there has been little guidance on the topic from the leading courts until now.
On Thursday, the Federal Circuit ruled unanimously that software and data structures were not inherently abstract ideas and were therefore patentable under the Supreme Court’s two-part Alice test. Enfish, LLC v. Microsoft Corp (Fed. Cir. 2016).
The Technology: Self Referential Database
Software and database-related patents have taken a beating in the post-Alice world, so it’s interesting that this case relates to a database, and in particular a self-referential database. To set the technical context, the Federal Circuit explained the more common relational database in contrast to the claimed self-referential one.
With the relational model, each entity (i.e., each type of thing) that is modeled is provided in a separate table. For instance, a relational model for a corporate file repository might include the following tables: document table, person table, company table. The court went on to explain how users and programs populate these tables and relate them to one another through defined relationships between the tables.
A self-referential database like those described in US Patents 6,151,604 and 6,163,775 at issue, “has two features that are not found in the relational model: first the self-referential model can store all entity types in a single table, and second the self-referential model can define the table’s columns by rows in that same table.”
The Claims in US Patents 6,151,604 and 6,163,775
The Federal Circuit looked at both patents but used the ‘604 patent claim 17 as its example in its analysis:
17. 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.
This claim has two means plus function elements, which means that it incorporates even more limitations into the claim. Means plus functions claims force a court into a two-step inquiry during claim interpretation: (1) identify the function, for example in this claim one function is “indexing a data stored in said table,” and then (2) identify the structure in the specification that performs the function—which is where the additional limitations may be added to the claim itself.
The Federal Circuit’s Analysis
The Federal Circuit, which has been on the wrong side of almost every subject matter case appealed to the Supreme Court, started its analysis by noting that the Supreme Court and Federal Circuit have together grappled with the issues of patentable subject matter, presenting an argument that to an outside observer would almost seem like the two courts are in sync on this topic, contrary to the track record of their differences.
The Federal Circuit introduced the Supreme Court’s Alice
two-part test of patentable subject matter: (1) Determine whether the claim is directed to an abstract idea, and (2) If an abstract idea is present in the claim, determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Unlike the Federal Circuit’s earlier DDR Holdings
case that only analyzed the second part of this test, the Enfish
court focused solely on the first part.
The Supreme Court has suggested that claims “purport[ ing] to improve the functioning of the computer itself,” or “improv[ing] an existing technological process” might not succumb to the abstract idea exception. While it is true that the Court discussed improvements to computer-related technology in the second step of its analysis in Alice, that was because the Court did not need to discuss the first step of its analysis at any considerable length, (“Petitioner acknowledges that its claims describe intermediate settlement….”).
But then the Federal Circuit offered the quote that will be part of every subject matter case and response to a subject matter rejection for the near future:
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.
The court then dove a little deeper into the ‘604 patent’s specification to support how the claimed technology improves a computer’s functionality.
The specification also teaches that the self-referential table functions differently than conventional database structures. According to the specification, traditional databases, such as “those that follow the relational model and those that follow the object oriented model,” ’604 patent, col. 1 ll. 37–40, are inferior to the claimed invention. While “[t]he structural requirements of current databases require a programmer to predefine a structure and subsequent [data] entry must conform to that structure,” id. at col. 2 ll. 10–13, the “database of the present invention does not require a programmer to preconfigure a structure to which a user must adapt data entry.” Id. at col 2 ll. 27–29. Moreover, our conclusion that the claims are directed to an improvement of an existing technology is bolstered by the specification’s teachings that the claimed invention achieves other benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements.
The Federal Circuit went on to note that just because the claimed technology could be run on any general computer, it was not doomed by Alice’s warning that well-known business practices carried out on general purpose computers are unpatentable subject matter. “[T]he claims here are directed to an improvement in the functioning of a computer.”
Practice Notes for Practitioners
Enfish replaces DDR Holdings as the “must-cite” case when prosecuting patents at the USPTO. It avoids Alice’s “substantially more” vagueness as long as the skilled practitioner can convince a court that what is claimed improves a computer’s functionality. Claims and specifications in software-related arts should be carefully crafted with Enfish in mind.
We will keep a watch for any appeal to the Supreme Court.
If you have questions, contact me.
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