Database Software Patent Valid Under Alice: Fed. Cir. | Practical Law

Database Software Patent Valid Under Alice: Fed. Cir. | Practical Law

In Enfish, LLC v. Microsoft Corp., the US Court of Appeals for the Federal Circuit ruled that a software patent related to a "self-referential" database was valid under 35 U.S.C. § 101 because it was directed to a non-abstract improvement in computer technology.

Database Software Patent Valid Under Alice: Fed. Cir.

Practical Law Legal Update w-002-2802 (Approx. 3 pages)

Database Software Patent Valid Under Alice: Fed. Cir.

by Practical Law Intellectual Property & Technology
Published on 13 May 2016 • USA (National/Federal)
In Enfish, LLC v. Microsoft Corp., the US Court of Appeals for the Federal Circuit ruled that a software patent related to a "self-referential" database was valid under 35 U.S.C. § 101 because it was directed to a non-abstract improvement in computer technology.
On May 12, 2016, in Enfish, LLC v. Microsoft Corp., the US Court of Appeals for the Federal Circuit reversed in relevant part the US District Court for the Central District of California, ruling that a software patent related to a "self-referential" database was valid under 35 U.S.C. § 101 because it was directed to a non-abstract improvement in computer technology ( (Fed. Cir. 2016)).
Enfish, LLC, owns US Patent Nos. 6,151,604 and 6,163,775, relating to a model for a self-referential computer database. Enfish sued Microsoft Corp., asserting that Microsoft software infringed the patents.
The district court granted summary judgment, ruling that all asserted claims are invalid under Section 101 because they cover the abstract idea of organizing information in a table. Under the two-step Alice test outlined by the US Supreme Court, the district court first found that the claims are directed to a patent-ineligible abstract idea (organizing information in a table) under Alice Corp. Pty. Ltd. v. CLS Bank Int'l (134 S. Ct. 2347, 2355 (2014)). Proceeding to the second step, the district court then found that the claims did not contain sufficient additional elements to make them patent-eligible under Mayo Collaborative Servs. v. Prometheus Labs., Inc. (132 S. Ct. 1289, 1297, 1298 (2012)).
The district court also ruled that:
  • Some of the claims are invalid under 35 U.S.C. § 102(b) because they are anticipated.
  • One of the claims is not infringed.
The Federal Circuit reversed the district court in part, ruling that the claims do not cover an abstract idea and are not invalid as anticipated. The Federal Circuit upheld the district court's non-infringement ruling.
The Federal Circuit found that the claims are not directed to an abstract idea under the first step of the Alice analysis, and therefore the court did not proceed to the second step of the test. The Federal Circuit explained that Alice does not mean that all improvements in computer-related technology are inherently abstract. The Federal Circuit found that the asserted claims are not abstract because they:
  • Are focused on specific improvements to computer functionality (a self-referential computer database).
  • Do not cover potentially abstract ideas, such as:
    • tasks for which a computer is used in an ordinary capacity; and
    • organizing data generally.
The court also held that none of the claims are invalid as anticipated because the prior art reference failed to disclose a required claim element.