Federal Circuit Holds Claims Patent-Eligible as “Not Directed to an Abstract Idea” Under Alice


    On May 12, 2016, Enfish LLC v. Microsoft Corp. et al.[i] was decided by the Federal Circuit.

    In contrast with several cases decided by the Federal Circuit in the aftermath of the Alice decision by the Supreme Court, the claims in the patents-in-suit in Enfish were determined as being "not directed to an abstract idea" and therefore patent-eligible under 35 U.S.C. §101. The Court first lays out a detailed discussion of the relevant technology, which is "an innovative logical model for a computer database" that uses a "self-referential table." The use of the self-referential table is repeatedly invoked as an indicator that the claims are directed to an improvement in the functionality of a computer, as opposed to use of a computer as a tool for performing routine computational tasks.

    Importantly, in its analysis of the first step under the two-step Alice test, the Court explains that the fact that the claims are focused on a "specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database)" and not "on a process for which computers are invoked merely as a tool" is sufficient to support a determination that the claims are not directed to an abstract idea:

While it is true that the Court discussed improvements to computer-related technology in the second step of its analysis in Alice, that was because the Court did not need to discuss the first step of its analysis at any considerable length. . . . 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.. . .
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

    Notably, the Court also emphasizes that under the two-step Alice test, if the claims are not found to be directed to an abstract idea in the first step, there is no need to proceed to the second step: "Here, though, we think it is clear for the reasons stated that the claims are not directed to an abstract idea, and so we stop at step one."

    As a guideline for attorneys and practitioners, Enfish provides the following framework with respect to improvements in computer functionality: Are the claims focused on a "specific asserted improvement in computer capabilities" versus "a process that qualifies as an 'abstract idea' for which computers are merely invoked as a tool"? Stated another way, "improvement to computer functionality itself" versus "economic or other tasks for which a computer is used in its ordinary capacity": The former is patent-eligible, and the latter is patent-ineligible.