By Jason Rantanen
Enfish v. Microsoft (Fed. Cir. 2016) Download Enfish
Moore, Taranto, Hughes (author)
In re TLI Communications Patent Litigation (Fed. Cir. 2016) Download TLI
Panel: Dyk, Schall, Hughes (author)
This month’s decision in Enfish was an overnight sensation—almost literally, as mere days later the PTO issued the new examiner guidance to implement the decision that Dennis wrote about last week. That guidance emphasizes the Federal Circuit’s recognition of Mayo Step-1 as a meaningful inquiry and focuses on particular aspects of Enfish that relate to that inquiry: comparisons to prior abstract idea determinations; a caution against operating at too high a level of abstraction of the claims, and the rejection of the tissue-paper argument that use of a computer automatically dooms the claim (it doesn’t).
Although receiving only light treatment in the guidance, in my view the critical analytical move in Enfish is more than just the court’s recognition of Mayo Step 1 as meaningful—it is the analytical framework that the Federal Circuit constructs that ultimately determines the outcome. At its heart, Enfish contains a seemingly simple categorization scheme, one that offers the promise of a quick and easy way out of the § 101 maelstrom. Yet, looking deeper, my sense is that it would be a mistake to rely too heavily on the Enfish framework as a universal solution, even in the computer technology space.
On its own terms, the Enfish framework sets up a choice between “whether the focus of the claims is on the specific asserted improvement in computer capabilities…or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool.” Enfish Slip Op. at 11. In other words, is the claimed invention something that makes a computer work better? Or are computers merely being used to do another task? If the former, the subject matter is patentable; if the latter, the claim must be subjected to Mayo Step-2. This distinction sets up the ultimate conclusion in Enfish that the claims are not directed to an abstract idea and serves as the analytical difference between Enfish and In re TLI Patent Litigation, a subsequent opinion concluding that the challenged claims are not directed to patentable subject matter.
In Enfish, Judge Hughes introduced the “improvement in computer capabilities”/”invoked merely as a tool” dichotomy after rejecting the idea that “all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two.” Id. In broad terms, the inquiry involves considering “whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea,” but the framework is made more concrete in the next sentence. That sentence contains the language quoted above, a binary categorization whose importance grows as it is repeated throughout the remainder of the discussion of patentable subject matter:
- “In this case  the plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity.” Id. at 12.
- “we find that the claims at issue in this appeal are not directed to an abstract idea within the meaning of Alice. Rather, they are directed to a specific improvement to the way computers operate.” Id.
- “the claims here are directed to an improvement in the functioning of a computer. In contrast, the claims at issue in Alice and Versata can readily be understood as imply adding conventional computer components to well-known business practices.” Id. at 16.
- “And unlike the claims here that are directed to a specific improvement to computer functionality, the patent ineligible claims at issue in other cases recited use of an abstract mathematical formula on any general purpose computer.” Id. at 17.
- “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. Id. at 18.
Central to the Enfish framework is a recognition and definition of what is not patentable subject matter. The opinion does not try to fight the idea that there is some subject matter that is not patentable. Instead, it acknowledges that there are limits on patentable subject matter and works with those limits. Judge Hughes considers the precedents in this area and identifies them as fundamentally involving the use of a computer as a general-purpose tool. By defining what is not patentable subject matter in this way, Judge Hughes is freed to identify some “other” that is outside that impermissible category: developments that improve on the operation of the computer itself. Here, although the claimed invention could conceivably be articulated as an abstract idea, placing it within the framework leads to only one outcome: it is an improvement in computer capability, and thus patentable subject matter.
But viewing Enfish as the end-all of abstract ideas analysis, while appealing, would a mistake. Judge Hughes’ next patentable subject matter opinion, issued just a few days latter, suggests that there is more to the analysis than just mechanically applying the Enfish framework. At first, In re TLI Patent Litigation starts out with the Enfish framework: that “a relevant inquiry at step one is ‘to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea.'” TLI Slip Op. at 8, quoting Enfish. In Enfish, he observed,:
“We contrasted claims ‘directed to an improvement in the functioning of a computer’ with claims ‘simply adding conventional computer components to well-known business practices,’ or claims reciting ‘use of an abstract mathematical formula on any general purpose computer,” or “a purely conventional computer implementation of a mathematical formula,’ or ‘generalized steps to be performed on a computer using conventional computer activity.'”
Id., quoting Enfish. Unlike in Enfish, however, “the claims here are not directed to a specific improvement to computer functionality. Rather, they are directed to the use of conventional or generic technology in a nascent but well-known environment, without any claim that the invention reflects an inventive solution to any problem presented by combining the two.” Id.
In re TLI raises two additional points to consider, however. First, in addition to defining what is not patentable subject matter, Judge Hughes articulates some characteristics of subject matter that is patentable: “a solution to a ‘technological problem’ as was the case in Diamond v. Diehr” or an “attempt to solve a challenge particular to the Internet.” Id. at 10. Left unclear is the meaning of this discussion: does one only get to the solution to a technological problem inquiry if the claims are not directed to a specific improvement to computer functionality? Or is the analysis more flexible than Enfish implies?
More significant are concerns about the bright-line nature of the Enfish approach. While bright-line rules can be helpful, Bilski v. Kappos demonstrates the risk associated with their use in the patentable subject matter area. Judge Hughes recognizes this concern in TLI, noting “the Supreme Court’s rejection of ‘categorical rules’ to decide subject matter eligibility.'” Id. The Federal Circuit will need to be careful to avoid becoming overly reliant on the Enfish framework, especially in areas where it does not fit well. With the benefit of the last few years of experience, hopefully the Federal Circuit will be able to avoid this pitfall. Even as this issue works its way out, however, I suspect to see the Enfish framework drawn upon heavily at the PTO and in district courts in the near future.