Breaking Down § 101 Barriers To Patentability For Software-Related Patents
By Ross E. Alexander // May 23, 2016
IDENTIFYING PRACTICAL TAKEAWAYS FROM ENFISH, LLC v. MICROSOFT CORP. AND TLI COMM. LLC v. A.V. AUTOMOTIVE, LLC
Two recent Federal Circuit cases (Enfish, LLC v. Microsoft Corp. and TLI Comm. LLC v. A.V. Automotive, LLC) have helped give some much needed guidance to patent-eligible subject matter for the claims of software-related patents. More importantly, these cases provide a detailed analysis of the claims of the patents at issue under the first step of the Mayo/Alice analysis for patent-eligibility under § 101, for which we have received little to no guidance.
In each of these cases, the claims have many similarities. Looking at the claims below, they both 1) relate to storing data on computing systems; 2) recite hardware components and software components of a computing system; and 3) are directed to improving processing speed/efficiency of a computing system.
|ENFISH, LLC, v. MICROSOFT CORP.||TLI COMM. LLC v. A.V. AUTOMOTIVE, LLC|
|17. A data storage and retrieval system for a computer memory, comprising:
means for configuring said memory according to a logical table, said logical table including:
a plurality of logical rows, each said logical row including an object identification number (OID) to identify each said logical row, each said logical row corresponding to a record of information;
a plurality of logical columns intersecting said plurality of logical rows to define a plurality of logical cells, each said logical column including an OID to identify each said logical column; and
means for indexing data stored in said table.
|17. A method for recording and administering digital images, comprising the steps of:
recording images using a digital pick up unit in a telephone unit, storing the images recorded by the digital pick up unit in a digital form as digital images,
transmitting data including at least the digital images and classification information to a server, wherein said classification information is prescribable by a user of the telephone unit for allocation to the digital images,
receiving the data by the server, extracting classification information which characterizes the digital images from the received data, and
storing the digital images in the server, said step of storing taking into consideration the classification information.
However, each claim had a very different outcome when analyzed by the Federal Circuit under the first step of the Mayo/Alice analysis for determining patent eligibility under § 101.
The first step of the Mayo/Alice analysis requires a determination of “whether the claims at issue are directed to a patentineligible concept.” Enfish, LLC v. Microsoft Corp., 2015-1244, opinion at 9 (Fed. Cir. May 12, 2016). The Enfish opinion goes on to state that “[t]he ‘directed to’ inquiry . . . cannot simply ask whether the claims involve a patent-ineligible concept . . . Rather, the ‘directed to’ inquiry applies a stage-one filter to claims. . . ” Id. As described in Enfish, there is “no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice . . .” Enfish, LLC v. Microsoft Corp., 2015-1244, opinion at 11 (Fed. Cir. May 12, 2016). Instead, “it [is] relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis.” Id.
When the Federal Circuit analyzed the claims in Enfish and TLI Comm. under the first step of the Mayo/Alice analysis, the Federal Circuit identified the following claim features as being of primary importance with regard to the patentability of the claims:
|1ST STEP CONSIDERATIONS IN MAYO/ALICE ANALYSIS||ENFISH, LLC, v. MICROSOFT CORPORATION||TLI COMMUNICATIONS LLC v. A.V. AUTOMOTIVE, LLC|
|Claimed Invention Primarily Found to be “Directed To” Physical Components or Software Components?||Software Components:
Database Configuration for Storing Data
Classifying and Storing Digital Images on Computing Devices
|Claims at Issue “Directed To” Specifically Asserted Improvement in Computer Capabilities or an Abstract Idea?||Improvement in Computer Capabilities:
Structure of Self-Referential Database Stored in Computer Memory
Classifying and Storing Digital Images in Organized Manner Using Known Computing Devices
|Improvements to Computer Systems Resulting from Functions of Claimed Subject Matter?||Increased Flexibility, Faster Processing, and Smaller Memory Requirements||None:
Generic Computing Functionality Being Claimed
As illustrated above, the primary practical differences are not that the claimed invention in one case was primarily directed to software components, while the claimed invention of the other case were primarily directed to hardware components. Instead, the claims being asserted in Enfish were directed to specifically asserted improvement in computer capabilities, while the claims being asserted in TLI Comm. were directed to an abstract idea implemented using generally known computing devices. Though the claims asserted in TLI Comm. were directed to improving a deficiency in current computing systems (faster processing of image data), the claims were found not to specifically assert a technical improvement in computer capabilities to achieve such improvements. See TLI Comm. LLC v. A.V. Automotive, LLC, 2015-1372, opinion at 9 (Fed. Cir. May 17, 2016). Instead, the claims being asserted in TLI Comm. recited generic computing devices and functionality that is generally known to be performed by such computing devices. See Id. As a result, the claims were found to be directed to an abstract idea and were further analyzed under the second step of the Mayo/Alice analysis.
Though I’m sure we will continue to receive further guidance from the Federal Circuit on the first step of the Mayo/Alice analysis, what can we take away from these cases to help avoid § 101 issues when drafting claims and applications?
√ Draft Applications with Problem-Solution Approach In Mind
√ Specifically Identify Technical Improvements (g., in processing, memory, display, etc.) to Computing Devices in Specification
√ Specifically Recite Technical Improvements (g., in processing, memory, display, etc.) to Computing Devices in Claims
√ Do Not Rely on Known Functionality of Generic Computing Devices in Claims or Specification
√ Describe Technical Details for Improved Software Components in Specification