Enfish, LLC v. Microsoft Corporation et al.

Docket No. 2015-1244

May 12, 2016

Brief Summary: DC finding that database-related patents are invalid under § 101 reversed; grant of SJ for anticipation vacated; and judgment of non-infringement affirmed.

Summary: Enfish appealed DC finding that the claims of US 6,151,604 and 6,163,775 invalid under § 101, some anticipated under § 102, and one claim not infringed by Microsoft’s ADO.NET product. The patents related to “self-referential” databases in which data generated using a new type of “logical model” is presented in a single table (as opposed to “more standard ‘relational’ models” in which tables that are presented separately (e.g., separate document table, person table, and company table v. storing all of this information in one table)). “[T]he patent describes a model where the table’s columns are defined by rows in that same table” (i.e., “self-referential”), and that this provides “for faster searching of data”, “more effective storage of data other than structured text, such as images and unstructured text”, and “more flexibility in configuring the database.” Invalidity under § 101 was reviewed de novo (OIP Techs., FC 2015; Myriad, US 2013; Alice, US 2014). The opinion explains that the first Alice step determines whether, “in light of the specification”, the claims “character as a whole is directed to excluded subject matter” with the understanding that “essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon”. It also explained that the court “does not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two” (of Alice) and does not “think that claims directed to software, as opposed to hardware, are inherently abstract and therefore only properly analyzed at the second step of the Alice analysis.” In this case, the panel explained, “the plain focus of the claims is on an improvement to computer functionality itself [embodied in the self-referential table], not on economic or other tasks for which a computer is used in its ordinary capacity” and there “not directed to an abstract idea within the meaning of Alice.” “Here”, the court found “the claims are not simply directed to any form of storing tabular data, but instead are specifically directed to a self-referential table” (the DC “oversimplified the self-referential component of the claims and downplayed the invention’s benefits”). It was also “not persuaded that the invention’s ability to run on a general-purpose computer dooms the claims” since “the claims here are directed to an improvement in the functioning of a computer” (unlike Alice or Versata, FC 2015). And that fact “that the improvement is not defined by reference to ‘physical’ components does not doom the claims”; “[t]o hold otherwise risks resurrecting a bright-line machine-or-transformation test” (Bilski, US 2010). Thus, the FC panel “conclude[d] the claims are patent-eligible.” The FC panel disagreed with MSFT that the means-plus-function limitation of claim 17 is indefinite (“sufficient structure” disclosed (Typhoon, FC 2011; Biomedino, FC 2007). The FC panel also found the DC erroneously granted SJ for anticipation as the prior art (Excel 5.0) did not “describe [the claimed] elements ‘arranged as in the claim” (NetMoney, FC 2008). It agreed with the DC finding of no infringement (“ADO.NET does not use the identical or equivalent structure as disclosed in the patents for the ‘means for indexing’”.)

This entry was posted in Anticipation (35 USC 102), Claim Construction, Means-plus-function, Patentability. Bookmark the permalink.

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