The Federal Circuit’s May 10, 2016 decision in Enfish v. Microsoft confirms guidance that I have been offering for patenting inventions relating to computer software. That guidance has been, where possible, to characterize the invention not as solving a business problem, but as offering an improvement to the functioning of a computer, and to back it up with a detailed, well crafted specification.
The key passage:
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 improve ments 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 specification, which gave details and pointed out that the invention was essential to allowing the court to characterize the invention as claimed as an improvement of computer technology, as opposed to being merely a claim to an abstract idea whose use was being limited to a particular technological environment. The opinion characterizes cases in which the patent was found to be invalid under Section 101 as involving merely using the computer as a tool.
Although the opinion exposes one possible path to follow to avoid falling into the subject matter eligibility abyss that the Supreme Court has created, it hardly resolves the confusing, contradictory jurisprudence of the Supreme Court, or changes the fact that the Court’s jurisprudence stands in direct contradiction to the statute.
The following passage illustrates how the specification was used to support the conclusion:
Here, the claims are not simply directed to any form of storing tabular data, but instead are specifically directed to a self-referential table for a computer database. For claim 17, this is reflected in step three of the “means for configuring” algorithm described above. For both pairs of claims 31 and 32, this is reflected in other claim language, discussed infra at 20. The necessity of describing the claims in such a way is underscored by the specification’s emphasis that “the present invention comprises a flexible, self-referential table that stores data.” ’604 patent at Abstract; see also id. at col. 2 ll. 44–46 (“The present invention improves upon prior art information search and retrieval systems by employing a flexible, selfreferential table to store data.”).
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. See id. at col 2 ll. 23–27; see also Openwave Sys., Inc. v. Apple Inc. 808 F.3d 509, 513–14 (Fed. Cir. 2015) (finding that a specification’s disparagement of the prior art is relevant to determine the scope of the invention).
This case offers some encouragement that patents on relating to computer implemented inventions can be eligible if time and care is taken to write a proper specification. But, it’s important to note that the patents involved here were written in early 1995. I fear that many patent specifications from the late 1990s and 2000s were written to achieve the greatest possible claim breadth, at the least possible price. These patents are not fairing well in courts today.
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