Enfish and Patent Elibigility

Past posts have discussed the relationship between the technical problem and solution approach to analyzing an invention and Section 101 abstract idea analysis for patent eligibility.  The Federal Circuit's recent Enfish case confirms that this relationship is strong and, in this case, outcome-determinative. The interplay between this decision and the USPTO's recently updated Section 101 guidelines raises interesting questions, and we are likely to see still further "updates" from the USPTO. 

Looking to Enfish, the details of the invention are discussed at length by the Court in order to put the claims in context.  Much effort is spent to explain the “self-referential” database.  Specifically, the Court explains how the self-referential database includes all data entities in a single table, with column definitions provided by rows in that same table.  Importantly, there are technical benefits to this approach, as the patents teach that the self-referential model allows more flexibility in configuring the database.  Specifically, while prior approaches involved extensive modeling and configuration of the various tables and relationships in advance of launching the database, the self-referential database can be launched without such tasks and instead configured on-the-fly. Key to the Court's decision was language in the specification that some would say was "poor" drafting since the specification referred to features of the "invention" that were not in the claim, but that addressed the technical advantages (emphasis added):

In sum, the self-referential table recited 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. The specification’s disparagement of conventional data structures, combined with language describing the “present invention” as including the features that make up a self-referential table, confirm that our characterization of the “invention” for purposes of the §101 analysis has not been deceived by the “draftsman’s art.” Cf. Alice, 134 S. Ct. at 2360. In other words, we are not faced with a situation where general-purpose computer components are added post-hoc to a fundamental economic practice or mathematical equation. Rather, the claims are directed to a specific implementation of a solution to a problem in the software arts. Accordingly, we find the claims at issue are not directed to an abstract idea.

So, the specification drafting here, using an approach many skilled patent attorneys would eschew, seems to have saved the claims under the Section 101 analysis. Namely, calling out a "problem" with the prior art, and explaining how the claimed features solve that problem and provide a technical advantage, is explicitly noted by the Court as the reason why the claims are not abstract under Alice.