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Patent case

Enfish v. Microsoft

Practice Note:

Recent Supreme Court decisions have made patenting software related innovations more and more challenging.  It is becoming increasingly more important to describe in the application how the invention improves the functionality of the computer, rather than just an addition of conventional computer components to well-known business practices.  To do so, the application may describe the problems associated with the prior art and the advantages of the invention over the prior art.  For example, in this case, the application specifically described that the innovative data storage scheme enables i) faster data searching in the “self-relational” model; ii) more effective storage of data, other than structured text (images, and unstructured text); and iii) flexible way of configuring the database “on the fly.”

 

Enfish v. Microsoft Corporation

 

Case Summary:

The Federal Circuit reversed the district court’s grant of summary judgment based on 35 U.S.C. § 101 and concluded that all five claims on appeal are directed toward a patent-eligible subject matter and not an abstract idea because the claims improve the functionality of the computer.

 

Enfish sued Microsoft for infringement of several patents related to a “self-referential” database. Enfish received patents 6,151,604 and 6,163,775, which discussed an innovative logical model (model of data for a computer database explaining how the different elements of information are related to each other, which results in the creation of particular tables of data) for a computer database. “The patented logical model has all data entities in a single table with column definitions provided by rows in that same table”—this is described as the “self-referential” property of the database. However, the standard relational model captures information about each entity in separate tables with the relationships between the tables explaining what the relationships are between the rows of different tables.

 

The self-referential table has two contrasting features from the relational model:

 

  1. The self-referential model can store all types of information into a single table.
  2. It can define the table’s columns by rows in that same table—it stores the same information as the relational model but all information about companies, persons, and documents are kept in one table. The table also has an additional row that can be used to define other characteristics of the column.

 

The benefits disclosed in the patent application:

  1. An indexing technique that allows for faster data searching in the “self-relational” model.
  2. A more effective storage of data, other than structured text (images, and unstructured text).
  3. A more flexible way of configuring the database “on the fly,” has minimal column definitions, and people can easily insert a new row defining column.

 

Enfish filed a suit against Microsoft claiming that Microsoft’s ADO.NET infringed on patents ‘604 and ‘775.  The claims at issue included:

 

  1. Claim 17 of patent ‘604: “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,” (Patent ‘604).

 

  1. Claim 31 of patent ‘604: “A method for storing and retrieving data in a computer memory, comprising the steps of: 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 wherein at least one of said logical rows has an OID equal to the OID to a corresponding one of said logical columns, and at least one of said logical rows includes logical column information defining each of said logical columns,” (Patent ‘604).

 

  1. Claim 32 of patent ‘604: “The method of claim 31 wherein said logical column information defines one of said logical columns to contain information for enabling determination of OIDs from text entry,” (Patent ‘604).

 

  1. Claim 31 of patent ‘775: “A method for storing and retrieving data in a computer system having a memory, a central processing unit and a display, comprising the steps of: configuring said memory according to a logical table, said logical table including: a plurality of cells, each said cell having a first address segment and a second address segment; a plurality of attribute sets, each said attribute set including a series of cells having the same second address segment, each said attribute set including an object identification number (OID) to identify each said attribute set; and a plurality of records, each said record including a series of cells having the same first address segment, each said record including an OID to identify each said record, wherein at least one of said records has an OID equal to the OID of a corresponding one of said attribute sets, and at least one of said records includes attribute set information defining each of said attribute sets,” (Patent ‘775).

 

  1. Claim 32 of patent ‘775: “The method of claim 31 wherein said attribute set information defines one of said attribute sets to contain information for enabling determination of OIDs from text entry,” (Patent ‘775).

 

The district court held that all claims are invalid under 35 U.S.C §101 as directed to a patent ineligible subject matter.  Patent ineligible subject matters include laws of nature, natural phenomena, and abstract ideas.  Under the Supreme Court’s Alice decision, to determine whether the patent claims are directed toward a patent ineligible subject matter, it must first be determined whether the claims at issue are directed to a patent-ineligible concept; if this first step has been met, then move on to the second step of inquiry and consider the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application.

 

The Supreme Court has suggested that claims declaring to improve the functioning of the computer itself or to improve an existing technological process are not directed toward an abstract idea.  Therefore, the first step in this case is to ask whether the claims are directed toward an abstract idea.  If so, the analysis needs to proceed to the second step, which asks if there is some inventive concept in the application of the abstract idea. However, in this specific case, the Federal Circuit Court found that the claims at issue in this appeal are not directed to an abstract idea based on the Alice precedent, but instead they are directed to a specific improvement to the way computers operate via the self-referential table.

 

The district court found that the claims were directed to the abstract idea of “storing organizing, and retrieving memory in a logical table” or the concept of organizing information through the use of tabular formats. However, the district court oversimplified the self-referential component of the claims and downplayed the invention’s benefits. Unlike the Alice and Versata cases, the claims at issue are directed to the actual improvement in the functioning of a computer, not just the addition of conventional computer components to well-known business practices.

 

In conclusion, the self-referential table described “in the claims on appeal is a specific type of data structure designed to improve the way a computer stores and retrieves data in memory” (Enfish LLC v. Microsoft Corporation). The claims involve a specific implementation of a solution to a problem found in the software arts.  Therefore, the Federal Circuit Court found that the claims at issue were not directed to an abstract idea. As a result, the Federal Circuit held that it does not need to advance to the second step of the Alice analysis because the claims are not directed to an abstract idea under step one; the court concludes that the claims are patent-eligible.

About the Author

Babak Akhlaghi is a registered patent attorney and the Managing Director at NovoTech Patent Firm, where he assists inventors in protecting and monetizing their inventions. He is also a co-author of the "Patent Applications Handbook," which has been updated and published annually by West Publications (Clark Boardman Division) since 1992. Additionally, Babak is a former adjunct faculty member at the University of Maryland, where he taught legal aspects of entrepreneurship. One of his notable achievements includes successfully prosecuting a patent application for a startup, resulting in licensing fees totalling over a hundred million dollars.

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