Enfish Hooks a Keeper Under § 101: Software Can Be Non-Abstract, Patent-Eligible Improvement To Computer Technology

In Enfish, LLC v. Microsoft Corp., No. 15-1244 (Fed. Cir. May 12, 2016), the Federal Circuit reversed the district court’s grant of summary judgment, which found the claims not patent eligible under 35 U.S.C. § 101. In reversing, the Court held, among other rulings, that the claims were not directed to an abstract idea under the first prong of the Alice test.

Enfish sued Microsoft, among other companies, alleging that certain Microsoft software infringed two patents related to a “self-referential” database. The district court entered summary judgment in favor of Microsoft, finding five claims invalid under 35 U.S.C. § 101, among other findings. Enfish appealed.

On appeal, the Federal Circuit reversed. The Court explained that the first step of the Alice test—whether the claims are directed to an abstract idea—“is a meaningful one” and “cannot simply ask whether the claims involve a patent-ineligible concept.” Rather, the inquiry considers whether the claims’ “character as a whole is directed to excluded subject matter.” Rejecting the idea that software claims are “inherently abstract,” the Court explained that software can “make non-abstract improvements to computer technology” under the first Alice prong. The Court focused on the self-referential nature of the claimed database as a “specific type of data structure” to improve the operation of a computer. That the claims could be implemented on a general purpose computer was also not fatal because the computer components were not “added post-hoc to a fundamental economic practice or mathematical equation.” Because the claims recite a specific implementation of a solution to a problem in the software arts, the Court held that the claims are patent-eligible.

If you’d like to learn more about the Enfish decision, please visit Finnegan's Prosecution First Blog post for further reading on the topic.