Not So Abstract: The USPTO Weighs in on Recent CAFC Software Patent Decisions

On May 19, 2016, the US Patent and Trademark Office (USPTO) released a 2-page memo on "Recent Subject Matter Eligibility Decisions (Enfish, LLC v. Microsoft Corp. and TLI Communications LLC v. A. V Automotive, LLC)." The memo brings good news for software patents, which have seen relentless attacks under 35 U.S.C. § 101 since the Supreme Court's Alice decision in 2014.

The majority of the memo discusses the Enfish decision issued on May 12, 2016, in which the Federal Circuit not only found claims directed to database software to be patent-eligible under § 101, but also made generalized, pro-patent comments about software inventions. The USPTO memo summarized the Federal Circuit's pro-patent commentary, and included statements that may help to reign in overreaching § 101 rejections that have little or no basis. Some notable directives from the memo include:

• "[W]hen determining whether a claim is directed to an abstract idea, it is appropriate to compare the claim to claims already found to be directed to an abstract idea in a previous court decision."
• "[T]he Federal Circuit cautioned against describing a claim at a high level of abstraction untethered from the language of the claim when determining the focus of the claimed invention."
• "[A]n invention's ability to run on a general purpose computer does not automatically doom the claim."
• "[A] claim directed to an improvement to computer-related technology (e.g., computer functionality) is likely not similar to claims that have previously been identified as abstract by the courts."
• The USPTO also emphasized that the Enfish claims "were not ones in which general-purpose computer components are added after the fact to a fundamental economic practice or mathematical equation, but were directed to a specific implementation of a solution to a problem in the software arts, and concluded that the Enfish claims were thus not directed to an abstract idea (under Step 2A)."

Though the pendulum has not swung completely back to the "patent-eligible" corner, the Enfish decision and the USPTO memo are certainly helpful tools for patent applicants facing Alice-type 101 rejections. For example, the quotes above may be helpful to traverse rejections that mischaracterize claims or fail to properly identify an abstract idea. The Enfish decision also contradicts allegations in some Office Actions suggesting that general purpose computers weigh against patentability.

Unfortunately, the USPTO memo was not all positive news for patent applicants. The memo also discussed the recent Federal Circuit decision in TLI Communications LLC v. A. V. Automotive, LLC (May 17, 2016), in which the Federal Circuit found claims directed to digital image recording, administration, and archival to be "directed to the abstract idea of classifying and storing digital images in an organized manner." The memo did not comment extensively on the TLI Communications decision, but noted that the TLI Communication claims were directed to "generalized steps" performed using "conventional computer activity," whereas the Enfish claims embodied a non-abstract "improvement to computer functionality."

The gray line between "abstract" and "non-abstract" remains vague, but the Enfish decision and USPTO memo are steps in the right direction for patent applicants.

If you'd like to read more about the Enfish decision, please visit the case summary published on Finnegan's Federal Circuit IP Blog.