Enfish, LLC versus Microsoft Corp. (Fed. Cir. 2016)

In 2012, Enfish sued Microsoft and several other parties in the Central District of California for infringement of U.S. Patent Nos. 6,151,604 and 6,163,775. The District Court found all claims invalid under § 101 because they were directed to the abstract idea of "storing, organizing, and retrieving memory in a logical table" or "the concept of organizing information using tabular formats".Both patents claim ways of manipulating a new type of database table.

The court dismissed District Judge Pfaelzer’s conclusion that Enfish’s claims were abstract and rejected Microsoft’s argument that claims were directed to "the concepts of organizing data into a logical table with identified columns and rows where one or more rows are used to store an index or information defining columns". Instead, the court found that "describing the claims at such a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the rule". The Court further observed that"the district court oversimplified the self-referential component of the claims and downplayed the invention's benefits".

The court quoted: “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, are inferior to the claimed invention. While the structural requirements of current databases require a programmer to predefine a structure and subsequent data entry must conform to that structure, the database of the present invention does not require a programmer to preconfigure a structure to which a user must adapt data entry. 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.”

Clearly, a practice point to take away is that describing how an invention improves over the prior art, especially if it improves the operation of a computer, can be advantageous. Of course, for purposes of avoiding estoppel, one should be careful when pointing out the deficiencies of what came before. Additionally, it appears as if the claims do not need to explicitly recite such improvements.

Another interesting aspect of this decision is that the Federal Circuit subtly changed the nature of the Alice test. Now, one can short-circuit the full analysis if the claimed invention is clearly not abstract, and doing so may involve determining whether the invention improves the operation of a computer or technological process. In a sense, the two-prong test is being compressed into a one-prong test. The impact of this approach may be significant, especially if it is adopted by district courts and the USPTO.


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