Reflections on Enfish v. Microsoft Penn State Law Review Online Companion Penn State Law Review

Reflections on Enfish v. Microsoft

By Marcus Barry


Currently, there is a great deal of unknown surrounding software patents and rejections of software patents under § 101 patentable subject matter.  Since the decision in Alice, legal professionals are scrambling to understand what is meant to be patent eligible for software applications.  Enfish v. Microsoft is the continuation from the Federal Circuit to help clarify as to what is considered patentable subject matter.

Enfish received U.S. Patents 6,151,604 (‘604 patent) and 6,163,775 (‘775 patent).  The ‘604 and ‘775 patents are directed to an innovative logical model for a computer database.  A logical model is a model of data for a computer database explaining how the various elements of information are related to one another.  Enfish uses the model to include all data entities into a single table.  The patents describe this as the “self-referential” property of the database.  Enfish asserts that the self-referential table has several advantages such as faster look-ups and more efficient storage of data other than structured text.

Enfish filed suit against Microsoft in district court in California and alleged that Microsoft infringed on the ‘604 and ‘775 patents.  The district court entered summary judgment in favor of Microsoft and held all of the claims invalid under 35 U.S.C. § 101.  The United States Federal Circuit reversed the district court’s grant of summary judgment based on § 101 to conclude that all claims on appeal are patent eligible.

The district court held that the fact that the patents claim a “logical table” demonstrated abstractness.  However, the Federal Circuit interpreted the first step of the Alice analysis as asking whether the focus of the claims is on the specific asserted improvement or on a process that qualifies as an abstract idea.  The Federal Circuit does not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two of the Alice analysis.  Since there is a specific claim of computer improvement that is not directed to an abstract idea within the meaning of Alice, the claims are held to be valid under § 101.

Section 101 has traditionally been considered the initial gateway to obtaining a patent, which is usually a low bar to hurdle.  Colloquially, section 101 is your ticket to the patent dance.  Since the Supreme Court ruling in Alice, there is confusion as to what is needed to get an invite through the gateway.  It would have been clearer had the Supreme Court rejected Alice on either § 102 or § 103.  Instead, the Federal Circuit, and eventually the Supreme Court, is stuck explaining the ruling to not apply a broad interpretation on an abstract idea in regards to computer software programs.  Enfish is the beginning of the narrowing of the Alice holding.  The Federal Circuit made clear to look at the specific improvement the software program offers, and not lumping it into an abstract idea just because it is related to software.  Hopefully, as more cases are heard before the Federal Circuit, there will be uniformity concerning abstract ideas and software applications.

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