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Software That Improves Computer Functioning Is Not Directed to Abstract Ideas

Software claimed in a patent that improves computer functioning with an innovative logical model for a computer database is not “directed to” an abstract idea under the first step of the Supreme Court’s patent eligibility test, according to the Federal Circuit. Enfish, LLC v. Microsoft Corp., Fed. Cir., No. 2015-1244, 5/1​2/2016.

The Court said the eligibility test asks if the claims are “directed to” an abstract idea in light of the specification, not whether they “involve” an abstract idea. “We do not read [Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347 (2014)] to broadly hold that all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two,” according to the court.

Background

Enfish owns patents directed to an innovative logical model for a computer database which it calls “self-referential.” A logical model of data for a relational computer database explains how the various elements of information placed in tables of data relate to one another. However, the claimed logical model includes all data entities in a single table, with column definitions provided by rows in that same table. Enfish sued Microsoft, alleging that its ADO.NET product infringes the Enfish patents covering self-referential tables.

The district court entered a summary judgment that the claims are patent-ineligible under 35 U.S.C. 101 as directed to an abstract idea, invalid as anticipated by Microsoft’s Excel spreadsheet program, and not infringed.

“Directed to,” Not “Involving” Abstract Idea

The Federal Circuit reversed the district court’s decision that the patent claims are patent-ineligible as directed to an abstract idea.

The appellate court reviewed the two-step analysis for determining patent eligibility under Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012), and Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347 (2014): (1) determine if the claims at issue are “directed to” a patent-ineligible concept; and (2) determine if the elements of each claim, both individually and as an ordered combination, transform the nature of the claim into a patent-eligible application.

The Court found that the formulation of the first step of the analysis “plainly contemplates” a meaningful inquiry, “i.e., that a substantial class of claims are not directed to a patent-ineligible concept.

The “directed to” inquiry, therefore, cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon—after all, they take place in the physical world. See Mayo, 132 S. Ct. at 1293 (“For all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.”) Rather, the “directed to” inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether “their character as a whole is directed to excluded subject matter.”

Improving Computer Functioning

Judge Hughes noted that the Alice decision acknowledged that claims purporting to improve the functioning of the computer itself might not succumb to the “abstract idea” exception. Although the Alice Court made that consideration in the second step of the analysis, he acknowledged, but said that was only because the claims were admittedly directed to the abstract concept of dispute settlements by an intermediary.

The Court made the following observation:

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.

For that reason, the first step in the Alice inquiry in this case asks whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool. As noted infra, in Bilski and Alice and virtually all of the computer-related § 101 cases we have issued in light of those Supreme Court decisions, it was clear that the claims were of the latter type—requiring that the analysis proceed to the second step of the Alice inquiry, which asks if nevertheless there is some inventive concept in the application of the abstract idea. See Alice, 134 S. Ct. at 2355, 2357–59. In this case, however, the plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity.

Accordingly, we find that the claims at issue in this appeal are not directed to an abstract idea within the meaning of Alice. Rather, they are directed to a specific improvement to the way computers operate, embodied in the self-referential table. 

The Court observed that the district court oversimplified the claims here by finding that they were directed merely to the concept of organizing information using tabular formats. Describing the claims at such a high level of abstraction and untethered from the language of the claims, Judge Hughes observed, all but ensures that the exceptions to §101 will swallow the rule.

General Purpose Computer

The Court also stated that an invention’s ability to run on a general purpose computer does not doom the claims. Judge Hughes explained that the claims here are directed to an improvement in the functioning of a computer. By contrast, the cases where that a general purpose computer was a factor involved claims that simply added conventional computer components to well-known business practices or the execution of an abstract mathematical formula.

Nor are the claims doomed because the improvement is not defined by reference to physical components, the Court continued, expressing concerns about resurrecting the bright-line machine-or-transformation test, or creating a categorical ban on software patents. Much of the advancement made in computer technology, it said, is in improvements to software that, by their very nature, may not be defined by particular physical features, but rather by logical structures and processes.

The Court was confident that it has not been deceived "by the draftsman’s art," pointing to the disparagement of conventional data structures in the specification. This is not the post-hoc addition of a general purpose computer to a fundamental economic practice or mathematical algorithm; rather these claims are directed to a specific implementation of a solution to a problem in the software arts, the Court explained.

There is no need here to proceed to the second step in the Alice/Mayo analysis, according to the Court. However, it acknowledged that there may be other cases with close calls about how to characterize what the claims are directed to, and they may require an analysis of whether there are concrete improvements in the recited computer technology.

The Federal Circuit also vacated the summary judgment of invalidity for anticipation by the Microsoft Excel spreadsheet program, but affirmed the summary judgment of noninfringement. The case was remanded for further proceedings.

To read the Federal Circuit opinion in this case, click here​.