June 2016 Issue

Rule Review
Latest Guidance to USPTO Examiners Regarding § 101 After Enfish v. Microsoft Decision
by David R. Lefebvre

Following the Federal Circuit’s decision in Enfish, LLC v. Microsoft Corp., No. 2015-1244 (Fed. Cir. May 12, 2016), the U.S. Patent and Trademark Office (USPTO) issued another memorandum¹ on May 19, 2016, providing further guidance to examiners regarding 35 U.S.C. § 101 subject matter eligibility for patents.

In Enfish, the Federal Circuit held that software claims can be patent eligible when the claims are directed to improvements in computer-related technology. Slip op. at 11. In its opinion, the Federal Circuit also provided further guidance on the subject matter eligibility framework under § 101. Id. at 11-14. Because Enfish is only the second decision by the Federal Circuit that has held software-related claims patent eligible since the Supreme Court’s decision in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), this decision will likely prove valuable to some software patent owners facing § 101 challenges and software patent applicants facing § 101 rejections.²

The USPTO, likely anticipating arguments relying on Enfish, issued the Memo to provide guidance to examiners based on the Federal Circuit’s reasoning for its decision in Enfish. The Memo begins by setting out the subject matter eligibility framework established by the Supreme Court in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012), which was not modified by Alice. Memo at 1. Then, the Memo highlights for examiners several points made by the Federal Circuit in Enfish regarding whether a claim is directed to an abstract idea (i.e., Step 2A of the subject matter eligibility examination guidelines). Id. These points are as follows:

(1) It is appropriate to compare claims at issue to claims already found to be directed to an abstract idea in a previous case when determining whether a claim is directed to an abstract idea;

(2) The “directed to” inquiry of Step 2A applies a filter to claims, when interpreted in view of the specification, based on whether their character as a whole is directed to excluded subject matter;

(3) When determining the focus of the claimed invention, caution should be taken against describing a claim at such a high level of abstraction untethered from the language of the claims; and

(4) An invention’s ability to run on a general purpose computer does not automatically make it patent ineligible. Id.

The Memo makes clear that the earlier subject matter eligibility examination instructions set out in the 2014 Interim Eligibility Guidance, July 2015 Update, and May 4, 2016, memorandum to examiners are consistent with these points, and thus still applicable. Id.

The Memo explains that the Federal Circuit in Enfish reiterated that claims directed to improvements in computer-related technology, including claims directed to software, are not necessarily abstract. Id. at 1-2. Some examples the court gives of improvements in computer-related technology that are undoubtedly not abstract, when appropriately claimed, include, for example, chip architecture or an LED display. Id. at 1. The Memo also emphasizes the Federal Circuit’s holding that software, like hardware, is not inherently abstract, and software, like hardware, can make nonabstract improvements to computer technology. Id.

The Memo clarifies that an examiner may determine that a claim directed to improvements in computer-related technology is not directed to an abstract idea under Step 2A. Id. at 2. And as a result, the examiner may find that the claims are patent eligible without needing to analyze the additional elements under Step 2B. Id.. The Memo points out to examiners that a claim directed to an improvement to computer-related technology (e.g., computer functionality) is likely not similar to claims that have been previously identified as abstract by the courts. Id.

The Memo also briefly summarizes the facts of Enfish and the Federal Circuit’s analysis. In particular, it explains to the examiners the court’s position that the improvement does not have to be defined by reference to “physical” components, but rather may be defined by logical structures and process, as is the case in Enfish. Id.

The more recent case TLI Communications LLC v. A.V. Automotive, L.L.C., No. 15-1372 (Fed. Cir. May 17, 2016), in which the Federal Circuit held that the claims directed to recording, administration, and archiving of digital images were directed to the abstract idea of classifying and storing digital images in an organized manner, is also discussed in the Memo. Memo at 2. In particular, the Memo notes that the Federal Circuit found under the Step 2B analysis that the use of a telephone unit and a server did not add significantly more to the abstract idea. Id.

The Memo concludes by reminding examiners that they should continue to determine if the claims recite a concept similar to concepts previously found abstract by the courts. Id.

In light of Enfish and this latest guidance to examiners, it may prove fruitful when preparing software and computer-related applications to consider including disclosure explaining how the technology being claimed is an improvement over existing technology, as well as illustrative examples. And for applications currently being prosecuted, it may be beneficial to articulate to the examiner the claimed improvement to the technology, to the extent there is support in the application. Of course, characterizations of the application over the prior art are to be done with caution to avoid potential disclaimer issues down the road.