Posts Tagged: "Enfish LLC"

Software Patent Drafting Lessons from the Key Lighthouse Cases

Obtaining a U.S. software patent is still harder than it was five years ago, but studying these “lighthouse” cases can improve one’s chances of success. While the Federal Circuit’s decision in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) and the USPTO’s guidance to patent examiners on the Berkheimer decision have recently improved the landscape for software patents, the following cases contain critical lessons for drafters that can further ensure claims are patent eligible.

A Guide to Software Patent Eligibility at the Federal Circuit

The Alice/Mayo framework is the decisional approach adopted by the United States Supreme Court for determining whether a patent claim exhibits, such as software patent claims, embody patent eligible subject matter… Over the last six months the Federal Circuit has provided a great deal of clarity, with 9 judges (Judges Moore, Taranto, Hughes, Chen, Newman, O’Malley, Reyna, Stoll, and Plager) signing on to decisions that found software patent claims to be patent eligible. What follows is a a summary of the significant developments over the last six months.

How to Patent Software in a Post Alice Era

In a nutshell, if you are going to write a patent application in such a way that at the end of the it the reader is left wondering what the innovation is, what the problem being solved is, or the technical particulars on how the innovation actually solves the problem, you should not expect a patent. In other words, if you write your patent applications without actually defining the technological solution and how it is implementing the desired functionality you describe, and how that is an improvement, you will not get a patent because the claims will be patent ineligible. On the other hand, if you write your patent applications to describe (and claim) an invention that is adequately described so that someone of skill in the art will understand what is innovative (i.e., how and why), thick with technical disclosure and explanation as to how computer functionality is being improved, or even generic components are working in unconventional ways, then you will get a patent because your claims will be patent eligible.

The Enfish Decision: Some Light at the End of the Tunnel for Software Patents Since Alice?

What makes the Enfish case particularly interesting is that the court found that the software patent at issue was not even an abstract idea. As such, the inquiry as to patent eligibility did not proceed beyond the abstract idea analysis step. Basically the Enfish court used the wording in Alice to refute post-Alice perceptions that all improvements in computer related technology and/or software inventions are inherently abstract and therefore “are only properly analyzed at the second step of the Alice analysis.” Enfish at 11. This interpretation represents what could be a meaningful shift in the interpretation of software patent validity.

Is Enfish Much Ado About Nothing?

Enfish bothers me. The Federal Circuit decision puts forth some great phrases, but I am concerned that Enfish will not be as useful as hoped in overcoming §101 Alice rejections. The patents at stake in Enfish appear to have been written with a confident view of the prior art and of the invention. So, if a specification does not confidently emphasize the “invention,” its “benefits over” conventional prior art, and “disparage” the prior art, will examiners and judges continue Step 1 characterizations at “such a high level of abstraction”? Is Enfish merely much ado about nothing?