On May 12, 2016, the Fed. Cir. in Enfish, LLC v. Microsoft Corp. (Fed. Cir. 2016) reversed a summary judgment holding that the claims of U.S. Patent No. 6,151,604 (the “‘604 Patent”) and the U.S. Patent No. 6,163,775 (the “‘775 Patent”) lack patent-eligibility under 35 USC §101.
The ‘604 and ‘775 Patents, which shared a common specification, were both directed to “an innovative logical model for a computer database.” “A logical model,” the Court stated, “is a model of data for a computer database explaining how the various elements of information are related to one another.” Unlike conventional logical models, however, the ‘604 and ‘775 Patents disclosed a “self-referential” logical model that includes “all data entries in a single table, with column definitions provided by rows in that same table.” In other words, when storing multiple types of entities (objects) in a database, instead of creating a separate table for each entity and its attributes, a self-referential table allows for storage of all the entities in a single table, while each attribute can be defined by the same table as an entity itself.
The Court noted that the self-referential model disclosed by the ‘604 and ‘775 Patents provides multiple benefits over the prior art. First, the Court stated that the ‘604 and ‘775 Patents “disclos[ed] an indexing technique that allows for faster searching of data” than that provided by the prior art. Second, the self-referential model “allows for more effective storage of data other than structured text, such as images and unstructured text.” Third, the self-referential model can be launched without “extensive modeling and configuration of tables and relationships,” and instead can be “configured on-the-fly.”
The five claims under consideration by the Court were claims 17, 31, and 32 of the ‘604 Patent and claims 31 and 32 of the ‘775 Patent. Below is independent claim 31 of the ‘604 Patent, which relates to a method for configuring a self-referential logic table. Independent claim 31 of the ‘604 Patent recites: “A method for storing and retrieving data in a computer system having a memory, a central processing unit and a display,” where the method comprises the steps of:
configuring said memory according to a logical table, said logical table including:
a plurality of cells, each said cell having a first address segment and a second address segment;
a plurality of attribute sets, each said attribute set including a series of cells having the same second address segment, each said attribute set including an object identification number (OID) to identify each said attribute set; and
a plurality of records, each said record including a series of cells having the same first address segment, each said record including an OID to identify each said record, wherein at least one of said records has an OID equal to the OID of a corresponding one of said attribute sets, and at least one of said records includes attribute set information defining each of said attribute sets.
Claim 17 of the ‘604 Patent and claim 31 of the ‘775 Patent recite substantially the same concept.
The Court started its analysis by first clarifying step one of the two-part Alice test laid out by the Supreme Court in Alice Corp. v. CLS Bank, 134 S.Ct. 2347 (2014). The Court stated that the first step of the Alice inquiry should ask “whether the focus of the claims is on the specific asserted improvement in computer capabilities … or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.”
The Court emphasized that the test is not whether the claims merely “involve” an abstract idea, but “whether ‘their character as a whole is directed to excluded subject matter.’” The Court further stated that, as suggested by the Supreme Court, “claims ‘purport[ing] to improve the functioning of the computer itself,” or “‘improve[ing] an existing technological process might not succumb to the abstract exception.’” The Court clarified that labeling all software-related improvements in computer-related technology abstract and moving to the second step of the two-part test is a misapplication of the Supreme Court’s holding in Alice. This is because even though the Supreme 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…”
Applying the test to the claims at issue, the Court found the claims to be directed to a specific improvement to the way computers operate and, therefore, not abstract. The Court disagreed with the lower court’s conclusion that the claims were directed to the abstract idea of “storing, organizing, and retrieving memory in a logical table.” The Court held that “describing the claims at such a high level of abstraction and unthetered from the language of the claims all but ensures that the exceptions to §101 swallow the rule.”
A few factors played a major role in the Court’s finding that the claims at issue were directed to an improvement of an existing technology:
- The claims were not “simply directed to any form of storing tabular data, but instead [were] specifically directed to a self-referential table for a computer database.”
- The self-referential table, as taught by the specification, functions differently than conventional database structures. The self-referential table does not require a programmer to predefine a structure, to which a user must adapt data entry.
- Multiple benefits result from the implementation of the self-referential table, which conventional database structures do not provide. These benefits include: increased flexibility, faster search times, and smaller memory requirements.
Based on the factors above, the Court held that “the district court oversimplified the self-referential component of the claims and downplayed the invention’s benefits.” In addition, the Court stated that invention’s ability to run on a general-purpose computer did not “doom the claims.” Unlike the claims at issue in Alice, which simply “added conventional computer components to well-known business practices,” here the claims were “directed to an improvement in the functionality of a computer.”
The invention’s lack of reference to physical components “did not doom the claims” either. The Court reasoned that “[m]uch of the advancement made in computer technology consists of improvements to software that, by their very nature, may not be defined by particular physical features but rather by logical structures and processes.”
In conclusion, the Court held that “the self-referential table was a specific type of data structures designed to improve the way a computer stores and retrieves data in memory.” The Court further emphasized that this was not “a situation where general-purpose computer components are added post-hoc to a fundamental economic practice or mathematical equation.” Because the Court found the claims not to be directed to an abstract idea under step one of the Alice analysis, the Court did not address step two.