It is no secret that those in the patent world have struggled with the Supreme Court’s decision in Alice since it issued in 2014. However, the Federal Circuit decision, Enfish LLC v. Microsoft Corp., issued May 12, 2016, may bring some guidance to patent holders and applicants as it is the second Federal Circuit decision since Alice that has reversed the district court’s finding of patent ineligibility due to the claimed invention being abstract.
The disputed patent in Enfish is directed towards a self-referential database that allowed for faster searching of data using a specialized indexing technique. A representative claim, Claim 17, is included below.
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.
The Federal Circuit rejected the district court’s conclusion that the claims, including Claim 17, were directed to an abstract idea of “storing, organizing and retrieving memory in a logical table,” finding that the claims are not simply directed to any form of storing tabular data, but instead are specifically directed to a self-referential table for a computer database. The Federal Circuit also stated that the district court oversimplified the self-referential component of the claims and downplayed the invention’s benefits. Overall, the Federal Circuit found the claimed invention is not one where general-purpose computer components are added to a fundamental economic practice or mathematical equation, but rather, are directed to the software arts.
Days before this Federal Circuit decision, the Patent Trial and Appeal Board (PTAB) issued its decision for Informatica Corp. v. Protegrity Corp. The patent at issue in this case – U.S. Patent No. 8,402,281 – is directed to a database management system that includes an operative database and an information assets manager database. According to the patent, it is an “object of the present invention is to provide an improved method for processing information, by means of which it is possible to increase the protection against unauthorised access to sensitive information.”
The operative database contains data that is to be protected, while the information assets manager database contains a data element protection catalogue with protection attributes for such element types that are associated with data element values in records in the operative database. The specific claims at issue, Claim 33 and 47, are included below. In utilizing the Broadest Reasonable Interpretation (BRI) standard of claim construction, the Board found that the claimed invention is directed to the abstract idea of determining whether access to data should be granted based on whether one or more rules are satisfied.
Claim 33 – A computer implemented data processing method comprising:
maintaining a database comprising a plurality of data portions, each data portion associated with a data category;
maintaining a separate data protection table comprising, for at least one data category, one or more data processing rules associated with the data category that must each be satisfied before a data portion associated with the data category can be accessed;
receiving a request to access a data portion associated with a first data category from a user;
determining whether ach of the one or more data processing rules associated with the requested data portion are satisfied; and
granting the user access to the requested data portion responsive to each of the retrieved one or more data processing rules being satisfied.
Claim 47 – A computer system, comprising:
a database storing a plurality of data portions, each data portion associated with a data category;
a data protection table comprising, for at least one data category, one or more data processing rules associated with the data category that must each be satisfied before a data portion associated with the data category can be accessed; and
a processor configured to:
in response to a request to access a data portion associated with a first data category from a user, determine whether each of the one or more data processing rules associated with the requested data portion are satisfied; and
grant access to the requested data portion responsive to each of the retrieved one or more data processing rules being satisfied.
It appears that the PTAB’s construction of the invention in Informatica could also be an oversimplification of the claimed invention and a downplay of the invention’s benefits, particularly if the Federal Circuit’s decision in Enfish is a guide.
It is conceivable that the Board erred by pushing past the initial Mayo/Alice question and finding that these claims, which cover a data storage innovation of the kind found in Enfish, may have been erroneous. In other other words, when the Board determined that the combination of the methods did not add significantly more than the already determined abstract idea, that question might have never been properly reached in the first place. The invention in question in the ‘281 patent does seem to provide improvements, which would mean – at least according to Enfish – that the proper first inquiry in the Mayo/Alice framework is not simply to ask whether the claim covers an abstract idea. For example, the Federal Circuit in Enfish explained: “we find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea…”
Given the ruling in Enfish, and the fact that the claimed invention in Enfish provided an improvement, which was so important to the overall inquiry of the panel, it seems that the claims in Informatica deserve a second look to determine whether or not the claimed invention is patent eligible. Whether the improvement to processing that better protects sensitive information will be sufficient to make the ‘281 patent more like the one at issue in Enfish remains to be seen.
As the summer season begins, we will have the opportunity to see how the state of abstract claims plays out over the next few months. Within the next few weeks, the Supreme Court will consider the Vehicle Intelligence petition, which presents the question of whether the Alice test for patent eligibility actually states that the use of an abstract idea is conclusive proof of preemption of the abstract idea. The Federal Circuit will also likely issue several important software decisions over the next few months as well.
For now, it will be interesting to see how the PTAB and district courts apply the reasoning of Enfish, as this could be the shift in reasoning that some have been waiting for after the Supreme Court’s decision in Alice.