Federal Circuit says software patent claims not abstract, are patent eligible

Judge Todd Hughes of the United States Court of Appeals for the Federal Circuit

Judge Todd Hughes of the United States Court of Appeals for the Federal Circuit

Yesterday, the United States Court of Appeals for the Federal Circuit issued an important decision on software patent eligibility in Enfish LLC v. Microsoft. The opinion by Judge Hughes, who was joined by Judge Moore and Judge Taranto, doubles the total of Federal Circuit decisions where claims in a software patent were deemed to be patent eligible because they are not abstract. In other words, DDR Holdings is no longer the only point of hope for innovators and patent owners in the software space.

This case stared when Enfish sued Microsoft for patent infringement. The patents at issue were U.S. Patent No. 6,151,604 and U.S. Patent No. 6,163,775, both issued in late 2000 and both claiming priority to the same application filed in March 1995. The ’604 and ’775 patents are directed to an innovative logical model for a computer database. A logical model is a model of data for a computer database explaining how the various elements of information are related to one another. Contrary to conventional logical models, the patented logical model includes all data entities in a single table, with column definitions provided by rows in that same table. The patents describe this as the “self-referential” property of the database.

The patents explain that the claimed invention is an improvement, which the Federal Circuit would make a great deal about in their patent eligibility analysis.

The patents teach that multiple benefits flow from this design. First, the patents disclose an indexing technique that allows for faster searching of data than would be possible with the relational model. Second, the patents teach that the self-referential model allows for more effective storage of data other than structured text, such as images and unstructured text. Finally, the patents teach that the self-referential model allows more flexibility in configuring the database.

Microsoft filed a motion for summary judgment arguing that the claims were invalid as ineligible under 35 U.S.C. § 101. The district court agreed. The district court also ruled that some claims invalid as anticipated under 35 U.S.C. § 102, and one claim was not infringed. Enfish appealed. The Federal Circuit did not even find it necessary to reach the second step of the Mayo/Alice framework, instead finding that the claims at issue were not directed to an abstract idea. The Federal Circuit also found that the prior art did not anticipate the “self- referential” feature of the claims and, therefore, vacated the summary judgment based on § 102. The Federal Circuit found no error in the district court’s determination on non-infringement and affirmed the summary judgment of non-infringement.



Patent Eligibility

The major issue in this decision relates to patent eligibility under § 101.

So many in the patent community who represent innovators seeking patents, and innovators themselves, have long complained that the Supreme Court has never given a definition of what constitutes an “abstract idea.” Of course, that has not stopped the Supreme Court, or other courts or tribunals, from liberally applying the so-called abstract idea exception, which is a judicially created exception to patent eligibility. The Federal Circuit recognized that the Supreme Court has never defined the critical term, even expressly saying that such a definition is unnecessary because all that is required is comparison to other inventions that have either been deemed patent eligible or patent ineligible and then working backwards.

Judge Hughes wrote:

The Supreme Court has not established a definitive rule to determine what constitutes an “abstract idea” sufficient to satisfy the first step of the Mayo/Alice inquiry. Rather, both this court and the Supreme Court have found it sufficient to compare claims at issue to those claims already found to be directed to an abstract idea in previous cases.

Hughes would go on to cite the language from Alice where the Supreme Court explained that laboring to define what is an abstract idea is not necessary. To me this seemed to be a bit of a poke in the eye to the Supreme Court. Essentially, it seems the Federal Circuit is saying that if the Supreme Court doesn’t have to define the critical term then neither do we. What is good for the goose is good for the gander, which apparently makes patent eligibility of computer implemented inventions best understood by the familiar “I know it when I see it” test that the Supreme Court uses to define obscenity.

The Federal Circuit would go on to explain that the Supreme Court suggested in Alice that claims that improve the functioning of a computer might not succumb to the abstract idea exception.

From there the Federal Circuit said:

We do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two. Indeed, some improvements in computer-related technology when appropriately claimed are undoubtedly not abstract, such as a chip architecture, an LED display, and the like. Nor do we think that claims directed to software, as opposed to hardware, are inherently abstract and therefore only properly analyzed at the second step of the Alice analysis. Software can make non-abstract improvements to computer technology just as hardware improvements can, and sometimes the improvements can be accomplished through either route. We thus see no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice, nor do we believe that Alice so directs. Therefore, we find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis.

The Federal Circuit explained that the claims at issue plainly focus on improvements to computer functionality. This led the panel to unanimously conclude, “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, embodied in the self-referential table.” That being the case, it was not necessary for the Federal Circuit to address the second step of Mayo/Alice, which asks whether there is substantially more than an abstract idea being claimed.

The Federal Circuit also explicitly put a nail in the coffin of the ridiculous argument that software shouldn’t be patent eligible if it could run on a general-purpose computer. The Federal Circuit explained: “We are not persuaded that the invention’s ability to run on a general-purpose computer dooms the claims.” Some jurists have long claimed that if software can run on a general-purpose computer it cannot be patented, which is utterly asinine given that software is most useful when it can run regardless of the platform selected. This statement, as correct as it is profound, will no doubt lead those in the anti-patent community to fly into an apoplectic fit.

The Federal Circuit also explained that physical elements are not a prerequisite for a claim to be patent eligible. The Court explained:

Similarly, that the improvement is not defined by reference to “physical” components does not doom the claims. To hold otherwise risks resurrecting a bright-line ma- chine-or-transformation testMuch of the advancement made in computer technology consists of improvements to software that, by their very nature, may not be defined by particular physical features but rather by logical structures and processes. We do not see in Bilski or Alice, or our cases, an exclusion to patenting this large field of technological progress.

There will no doubt be much more written about this case in the coming days and weeks. If I had to guess I’d say I expect Microsoft with file a petition for en banc rehearing, and ultimately will probably file a petition for certiorari to the United States Supreme Court. In the meantime, however, this case will bring cheer to the heart of those who have been long frustrated by what had seemingly become a de facto rule that software was not patent eligible in the United States.

For now, however, one more item is deserving of comment. The passage from this case relating to software being as capable of offering an improvement as hardware is at least somewhat ironic. It is, of course, absolutely truthful to acknowledge software can make improvements just as hardware can make improvements. In fact, the choice whether to implement a solution in software or hardware is a design choice. David Kappos has made this exact point in the past. So too has Microsoft’s own Chief Patent Counsel, Micky Minhas. While I do expect Microsoft will be inclined to seek en banc rehearing and perhaps file a petition for certiorari, like so many big tech companies there are two faces to Microsoft’s patent policy. On the one side Microsoft is one of the largest patent accumulators because they are one of the largest innovators in the world. On the other side Microsoft is frequently the target of other patent owners who believe their patent rights are being infringed. Microsoft will need to walk a careful line here. This decision is very good for their patent holding, pending applications and future innovation, but far less than ideal from the standpoint of litigation.



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Join the Discussion

58 comments so far.

  • [Avatar for staff]
    May 19, 2016 02:05 pm

    ‘claims in a software patent were deemed to be patent eligible’

    We applaud the court for its decision to reverse the 101 based invalidation. Some courts have become far too restrictive and weak on property rights for inventors. Patents are simply too hard, expensive, and lengthy to get and enforce. The courts as judge Michel has said do seem to be struggling with patentability, which to the court’s credit they readily admit.

    We believe the best course when doubt creeps in is to always return to the Constitution and the fundamental natural and common law rights of inventors it sought to acknowledge and protect. Stare Decisis should never be forgotten and faithfully adhered to. The true test and principal considerations for patentability, as in the statute, should always be 1) is the invention new, and 2) is it useful as recited in the Constitution. Secondary questions which seem to be giving the courts so much pause, such as abstraction, should only be secondary questions or tests at most.

    For our position and the changes we advocate to truly reform the patent system, or to join our effort, please visit us at https://aminventorsforjustice.wordpress.com/category/our-position/
    or, contact us at [email protected]

  • [Avatar for Mark Nowotarski]
    Mark Nowotarski
    May 19, 2016 09:16 am


    What then is Versata a method for? I see the structure of the two related hierarchical trees (organizational groups and product groups), but I don’t see a strictly technological invention related to that structure with a strictly technological effect. I’m not saying it isn’t there, I’m saying it might be quite a challenge for a practitioner to get there so that this invention would be classified in a technology art unit and not a business method art unit.

  • [Avatar for Anon]
    May 17, 2016 05:48 pm

    Mr. Heller has retreated to his false premise that MoT is more than just a clue and is somehow law.

    Mr. Heller, can you count the number of times that you have been caught trying to employ this fallacious tactic?

  • [Avatar for step back]
    step back
    May 17, 2016 03:31 pm


    THIS Enfish-directed post is not showing up on your general IPWatchdog web page. It shows up in the /blog version.


  • [Avatar for Edward Heller]
    Edward Heller
    May 17, 2016 01:28 pm

    And, Benson’s “idea,” which made little sense at the time as a basis for holding the claim invalid, came back with a vengeance in Bilski. Chen, now of the Federal Circuit, began talking about business methods as abstract ideas in Comiskey as solicitor.

    “The PTO argued that Comiskey’s independent claims were directed at an unpatentable abstract idea, and not a patentable process, because they neither were tied to a particular machine nor operated to change materials to a different state or thing.” In re Comiskey, 554 F.3d 967, 973 (Fed. Cir. 2009).

    Again the real problem is that the business method claims are non statutory because the not directed to improvements in manufactures, which include machines and composition or processes that pass the MOT. Obviously, software inventions are directed to statutory subject matter.

  • [Avatar for Edward Heller]
    Edward Heller
    May 17, 2016 01:18 pm

    Mark, I would remove price from the claims and substitute “result.” I would then emphasize Enfish.

  • [Avatar for step back]
    step back
    May 17, 2016 01:16 pm

    The Lord giveth and the Lord takeith back

  • [Avatar for step back]
    step back
    May 17, 2016 10:43 am

    Benson did not involve math.
    Not true math.

    In Benson (v. Gotchalk for those who don’t understand our code talk) you already had an answer, a number. Except it was expressed in binary.

    As far as true, anthromorphic-free math is concerned, there is no problem. The answer is already there. There is no math problem to solve.

    It is the frailty of the organic brains of we ten fingered apes that is the problem. We are such sorry specimens that we can’t even understand binary. So we need an electronic crutch machine to convert the binary into BCD for us.

    Crutches, be they wood or electronic are machines and manufactures. They are not true, pure math.

    Speaking of feeble minds, the Justices of Benson’s time could not comprehend that. Many people today (justices and mortals alike) still don’t get it.

    That is because we all are vain supremes or creatures apart and above all of God’s other creations. To think otherwise would be sheer blasphemy. Don’t dare do it.

  • [Avatar for Mark Nowotarski]
    Mark Nowotarski
    May 17, 2016 08:49 am

    Edward Heller@40: You say that I would say that Versata was not a business method at all because its software inovations were technological.

    Thank you for emphasizing Versata. I took some time to read the decision and follow up on the continuing applications. They are still stuck in business methods as a method of pricing. The claims are still being held abstract notwithstanding incorporating all of the guidance put forth by the CAFC.

    Do you think it would be possible to draft Versata claims without making reference to “price” to get it out of business methods? What technology art unit would you target?

  • [Avatar for Edward Heller]
    Edward Heller
    May 17, 2016 08:16 am

    But, Night, the claims in Benson (save for the shift register claim) were not really limited to anything new in a computer. They effectively said just do it on a computer. They could have said just do it on a abacus or mechanical calculator.

  • [Avatar for Night Writer]
    Night Writer
    May 17, 2016 06:21 am

    Ned, “Night, I agree that Benson confused. After Alice, Benson is now best understood that math was non statutory; and limiting the claims to generic computers was effectively saying, do it on a computer. As the Benson court observed, limiting the claims to doing the math with pen and paper would have added nothing. So too, it eventually held, doing it on a computer.”

    Ned, these are machines and methods for information processing. Before the “math” was a tool that all shared and now the “math” is the answer. It is the machine and method that solves the problem and is technical. Any other view is ridiculous and based on philosophy and science of before the 1920’s.

  • [Avatar for Anon]
    May 17, 2016 06:17 am

    step back,

    Software-as-theory – as you appear to use the term, is not software.

    MathS, as I have seen that term used, is the philosophical/theory component of “math.”

    So you have what normal people consider “math” (pure math, or normal math theory),
    you have what people trained as engineers use (applied math), and
    you have what philosophers of math are concerned about (mathS – see http://www.britannica.com/topic/philosophy-of-mathematics for example – and to which the Tegmarks of the world belong to).

    Do not confuse the constructs of “software” that are merely “thought experiments” for pursuing philosophy** with the “ware” of software that is built as a manufacture for the machine known as the computer. Software claims, as that term is understood by PHOSITA, is about applied math – and applied for a certain utility.

    All the hub-bub about 101 can be directly traced back to a philosophical desire to deny patent protection to a form of innovation that is entirely unnecessarily pursued by the wrong branch of the government. 101 (without being mashed like a nose of wax) already has sufficient directives as the wide open welcoming gate that Congress wrote that law to be, and has the two – and only two – requirements that already sufficiently exist to control eligibility: an invention needs to fit one or more of the statutory categories (and explicitly here, Mr. Heller’s version of constrained manufactures and a degenerative sub-categorization of methods are not the proper view of the statutory categories), and the utility of the invention must be within the Useful Arts (read that as outside of the Fine Arts (so examples in literature are not apt examples for any attempt to discuss aspects of patent law).

    **(the tip-off should have been building ANYTHING that has “infinite” ANYTHING).

    And yes – you are quite correct in that if anyone mistakenly believes that such software-as-theory is what a software claim covers, let them have it and let them find an infringer of that “infinite” component.

  • [Avatar for step back]
    step back
    May 17, 2016 01:51 am

    Show me an example of software that is not meant to be a machine component and I will show you someone who does not understand what software is.

    Anon @44,

    I am afraid you are going to have to count me in among the class of misunderstanders then.

    The word “software” is an ambiguous one and not well defined. There is a certain sense of “software” that is purely theoretical in nature and thus abstract.

    Take for example (please) the Turing Machine.
    According to software-as-theory it is possible to build in one’s mind a machine having an infinitely long tape that spools at infinite speeds so that a fixed magnetic head can address any spot on this tape in zero time and read from or write to that spot, process corresponding data, and move on.

    Of course in the physical real world it is impossible to build such a machine because one would need all the atoms in the universe just to manufacture the tape, in which case there will be no atoms left to build the read write head or the spool motors.

    Then again, don’t get us started on Einstein’s equation (E=mc^2) and why it would take all the energy in the universe to try to move the tape and even then we won’t succeed. 😉

    With that said, no rational person is trying to patent “software” in that sense, and if they are, let them find an infringer if they can.

  • [Avatar for Anon]
    May 16, 2016 09:50 pm

    You quite miss the point Mr. Heller: software is not math.

    Your tendency to miss the obvious is well understood by those for whom conversations with you have been tried in earnest.

    It is as if on purpose you misstate what software is. It is as if on purpose you refuse to acknowledge the critical dimensions of equivalency when it comes to machines – and yes, manufactures that are machine components.

    Show me an example of software that is not meant to be a machine component and I will show you someone who does not understand what software is.

    And it is not as if all of this has been explained to you – sometimes very very patiently, other times abruptly, but explained to you time and again nonetheless.

  • [Avatar for Edward Heller]
    Edward Heller
    May 16, 2016 08:39 pm

    I am sorry step back to suggest that I think the Supreme Court is composed of gods. If they were, we would not have Dred Scot, Plessy v. Ferguson; or the Lockner era. Some would toss in Roe v. Wade and the recent decision on gay marriage. Bad decisions can and should be discarded, or overruled.

    I bring up pencil and paper because the Supreme Court did. Simply saying use pen and paper to calculate this new algorithm is not the stuff of patents if the algorithm itself was unpatentable. The Court did not condemn all possible patents involving pen and paper.

    Regarding the shift register, yes, I think that was improperly ignored. Had the applicant focused solely on that claim, they may have won. But, one must view Benson for what it held: math is non statutory (Flook said that that was Benson’s holding) and limiting its use to generic computers did not render the claims patentable for the same reason that limiting their claims the use of pencil and paper would not.

  • [Avatar for step back]
    step back
    May 16, 2016 08:12 pm

    Ed @41

    The Supremes are not gods. Not even close.
    Pencil and paper are manufactures.
    New uses for pencil and paper can be patent eligible process.
    Causing an electronic device (i.e. re-entrant register) to appear to carry out mathematical operations is not math per se. It is machine and machine process.

    We cannot help it if the supremes do not know all 100 variations of the Booth algorithm. For them, the magic words, ‘apply it’ is the end of the comprehensible story. Sad –and worse than that, destructive of invention in America.

  • [Avatar for Edward Heller]
    Edward Heller
    May 16, 2016 05:55 pm

    Night, I agree that Benson confused. After Alice, Benson is now best understood that math was non statutory; and limiting the claims to generic computers was effectively saying, do it on a computer. As the Benson court observed, limiting the claims to doing the math with pen and paper would have added nothing. So too, it eventually held, doing it on a computer.

  • [Avatar for Edward Heller]
    Edward Heller
    May 16, 2016 05:53 pm

    Night, Ned, what is a business method? I actually wouldn’t have a problem with methods that do not require a machine to be non-statutory as long as that definition was carefully construed not to swallow up everything.

    A quite reasonable position.

    One can see that Congress was careful to limit Covered Business Methods to “financial.”

    “For purposes of this section, the term ‘‘covered business method patent’’ means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.”

    AIA, Section 18(d)(1).

    Now, based on Enfish, we begin to see that “technological” includes innovations in software. That should be true even if the software were to be used in a method that was otherwise a business method. Thus, I would say that Versata was not a business method at all because its software inovations were technological.

    Actually, the decision to institute a CBM essentially must include a finding that the subject matter of the claim is not within 101. Why bother with trial? Simply confess final judgment and appeal to the Federal Circuit on the instution decision — either that or make the decision to institute appealable on the issue of whether the inventon was technological.

  • [Avatar for Anon]
    May 16, 2016 05:18 pm

    Mr Heller, your view on business method patents is the one that needs to “get a grip.”

    Countless arguments have been presented to you, all but begging you to partake in a full and honest discussion – a discussion that you have never engaged in.

    It simply is beyond belief that you want to carry your discordant rhetoric to such a level on yet another forum.

    Shall we list the fine points for you? Shall we expect you to finally treat these points with intellectual honesty? Shall we expect you to fully engage? Or shall we merely expect more of the chicanery that you have doled out since before Bilski?

    Since you have already failed to engage in an intellectually honest manner on this forum, I sadly expect no difference from you on this matter.

  • [Avatar for Night Writer]
    Night Writer
    May 16, 2016 05:06 pm

    Also, Ned, the problem is Benson. Benson is the root of all evil. What Benson did was confuse everything and attempt to justify the PTO not learning how to examine a huge class of patent applications.

    The reality is that the problems we are having is from the anti-patent judicial activist like you.

  • [Avatar for Night Writer]
    Night Writer
    May 16, 2016 05:04 pm

    @35 Ned: Took you long enough to respond. At least we see some of the real Ned and his nonsense.

    Ned, what is a business method? I actually wouldn’t have a problem with methods that do not require a machine to be non-statutory as long as that definition was carefully construed not to swallow up everything.

    The problem is you are trying to say that a business method is equivalent to any information processing method. Now come on….you have gone this far. Out yourself the rest of the way.

  • [Avatar for Edward Heller]
    Edward Heller
    May 16, 2016 02:43 pm

    Ternary@23: The problem still is that “invoking a computer merely as a tool” renders a claim to be directed to an abstract idea according to this court.

    With all due respect, it is not the use of a computer that renders the claims abstract. It is that claims directed to “abstract” matter as in Bilski are not rendered patentable by generically referencing the use of a computer.

    Mr. Ternary, I do not know whether you misunderstand, or misrepresent. But, in either case, you need to be set straight.

  • [Avatar for Edward Heller]
    Edward Heller
    May 16, 2016 02:35 pm

    Night@15: Ned, did the SCOTUS just say that they do not hold them to be unstatutory? Yes. So, you are misrepresenting aren’t you. Congress just passed the AIA where they affirmed business methods. Please stop these misrepresentations.

    Night, to the extent that you implicitly argue that Bilski/Congress held business methods are statutory, it is you who are misrepresenting things. Business methods were never considered to be patentable subject matter by the courts. When Kennedy asked counsel for Alice of one single example, just one, that was patentable, he got no answer.

    So get a grip, business methods are non statutory.

    But, because people like you begged and pleaded that the Supreme Court not declare them non statutory in Bilksi, we instead got that business methods were abstract. You know how that turned out. Things are a lot worse from a point of clarity.

    But the bottom line to me, however, is that it is guys like you who push business method patents who are causing the patent system so much grief. First you got the PTO to back you. Then the Federal Circuit in State Street Bank. Then we got the troll problem caused by business method patents. Now the whole patent system is under attack.

    Thank you, Night.

  • [Avatar for angry dude]
    angry dude
    May 16, 2016 06:25 am


    “An FFT is a “mere” processing of data

    Excuse me ? And what is not “processing of data” ?

    Whatever you do in your life is just “mere processing of data”, from your cell phone talks to your typing on keyboard down to your digestive tract which is also some type of data processing – breaking higher level organics into lower level “products” thus increasing the entropy of this “data”

    Ever heard of FFT chips, or RSA chips or whatever algo they want to steal-chips ?

  • [Avatar for step back]
    step back
    May 15, 2016 04:56 pm

    @32 … Also there is the Emperor Hath Not Clothes effect of the amicus briefs.

    Emperors and alike supremes like to be told how smart they are. How they see things that mere mortals cannot see. Because, after all, they are supreme.

    That is how the amici who are the “true” friends of the court sell the court on ridiculous notions such as molecular biology being as simple as plucking bananas off of trees and computer technology being as simple as finding a geek in a Silicon Valley coffee shop and telling him your “idea” in a 3 minute java sip sitting.

  • [Avatar for Night Writer]
    Night Writer
    May 15, 2016 04:42 pm

    @31 I agree step back. You should add the contribution of the pseudo-intellectuals like Lemley that intentionally misrepresent facts and science in a way that the ignorant judges and justices cannot discern. Lemley and his ilk are at the heart of this. They provide the intellectual justification for the nonsensical opinions that are flowing…

  • [Avatar for step back]
    step back
    May 15, 2016 03:47 pm

    Anon did a hit and run back at #8 (IMHO).


    Remember Justice Stewart Potter’s imbecile proclamation of “I know it when I see it” back in 1964?


    Well, actually, he didn’t know it. He didn’t know much of anything about the workings of the human brain and how it reacts to exposure to content which might be labeled pornographic. This is true even though he owned one (a brain) and supposedly used it every day.

    Here we are some 50 years later and dealing with judges who still don’t know how the human brain works even though they too own and daily use one (more or less).

    Some of them may also own and daily use a computer, and even use that there Internets thing, although they barely have a clue of how that “generic” computing stuff works. They “feel” that they understand. But they don’t. Just like they may philosophically feel “I think therefore I am” without knowing what the “I” is is. Or the illogic of the statement. A rock “is”. But a rock doesn’t think. The “I” is. But the “I” doesn’t know what it is. (Talk to a neurobiologist for deeper insight on that question.)

    When it comes to subject matter eligibility of computers, abstract ideas of the “mind” and “business” methods we have a compounding of incompetent thought patterns. Justice Potter was incompetent when it comes to understanding pornography. Many of our current judges are incompetent when it comes to understanding computers, science, laws of nature and the abstractitude of their abstract ideas. That is why we have the explosion of nonsensical talk emerging from their latest opinions.

    I know it when I see it indeed!

  • [Avatar for Night Writer]
    Night Writer
    May 15, 2016 10:32 am

    @30 as an example. Read Deener. What is the interaction between the method of Deener and current technology at the time? Think about that and technological advances that are intertwined as they are in Deener. An underlying technology improves and then new methods are invented that take advantage of the new technology which generates newer technology, etc.

    Anyway, let’s fact it. This is about Google, K-Street, and the pseudointellectuals like Lemley trying to burn down the patent system.

  • [Avatar for Night Writer]
    Night Writer
    May 15, 2016 10:29 am

    >>The courts are not able to get fully rid of this type of inventions,

    The problem is what is that type of invention. Some try to use this to swallow all software. Moreover, the other problem is that the underlying assumptions the justices are using are flatly wrong. The methods and machines are intertwined where the methods would not have been thought of nor are they possible to implement without a computer. Moreover, one cannot simply say “drive to the nearest convenience store.” Does anyone know why not? Because one skilled in the art would not know how to build the invention.

    You see the game that is being played by the anti-patent forces. Nothing I said above can be ignored with anything regarding information processing. And, frankly, I think the likes of Lemley intentionally misrepresents the above facts.

  • [Avatar for Ternary]
    May 15, 2016 10:11 am

    @24 and @25: you know it, I know it, almost every PHOSITA knows it. But not so the courts.

    USPTO Examiners in tech groups realize that most of this is nonsense anyway and mostly ignore the fact of “computer as a tool” ineligibility. Look for recently issued patents that for instance require a FFT (a fast Fourier Transform) in the claims. An FFT is a “mere” processing of data by a computer. The computer in this case is a tool. Clearly, something physical, novel and useful happens with the result of the FFT (usually some spectral component of a signal is determined, whatever that is and that is not the issue here).

    The business method aspect (“the directed to”) or specific application of the computer is what ticks off interest groups and the courts. They try to follow the EPO, but there is no firm basis in patent law for that. Based on the attitude of “I know it when I see it” there is this dislike for business methods implemented in software. But no rational and technological argument exists that explains why one set of computer inventions is ok but another one is ineligible. The Abstract Idea argument in the context of inventions in this digital age is probably one of the worst and outdated arguments one can come up with.

    This fight about “business methods in software” has been going on for over a decade now. It goes beyond the rationality of technology and science in the courts. The courts are not able to get fully rid of this type of inventions, though they clearly want to and they are damaging the patent system. Congress should do its job and resolve this issue. The courts cannot and should not. Congress probably does not want to touch this because it clearly would have to follow the wishes of pressure groups a bit too overtly and to which it already gave the CBM procedure based on no rational arguments whatsoever.

  • [Avatar for Night Writer]
    Night Writer
    May 15, 2016 09:52 am

    And everyone should contemplate 112 in relation to the judges/justices game of saying merely using a computer. It has hidden with it many false assumptions.

  • [Avatar for Night Writer]
    Night Writer
    May 15, 2016 09:49 am

    @Anon, 112 actually offers a lot of help for this outrageous statement, “invoke a computer.” One cannot invoke a computer to “identify a species of bird.” One must do more. One cannot invoke a computer to “add x and y, if they are both small integers.”

    So, what is missing from their jurisprudence is whether one skilled in the art could actually build the invention recited in the claims. That is the key to understanding their little game.

    The judges/justices/Lemleys are just shameful people. The fact that they use difficult subjects to dodge behind to advance their judicial activism is just—well–shameful.

  • [Avatar for Anon]
    May 15, 2016 08:50 am

    There is more than a bit of “self-circularity” in the phrase “invoking a computer merely as a tool,” and the immediate question that comes to mind is whether this phrase survives a proper legal analysis based on 102/103.

    One cannot “invoke” a tool that itself is not known or obvious. If one wants to “invoke” the phrase, then to back up that phrase, one must first establish that the claimed aspect is itself already present in the computer. Elsewhere, this concept has been “put on the table for discussion” under the “proper” patent doctrine of inherency. Does a “standard computer” (whatever that means at whatever time of reference) inherently have the claimed capability – without more – already in there?

    Whenever I have seen the thought of using the proper patent doctrine of inherency being advanced, I only see the usual result of those advocating for “no patents for software on a per se basis” not engaging the conversation anymore with any sense of an intellectually honest basis.

    This type of “well, just use the computer for what it is for” is akin to the fallacy propounded by Dr. House on the medical tv show of the same name. It is a mindless aphorism lacking any critical thinking – a populist sound byte that should not – and cannot – be accepted at face value, because it assumes a conclusion that is the opposite of the lesson learned in the old Morse patent case.

    If one were to have allowed Morse to capture all future inventions concerning the “at a distance” aspect, one would have presumed that all such future inventions were “already in there” from an inherency doctrine point of view.

    That was just not the case – and so too – exactly like not everything “already in there” for Morse, the computer – “standard or otherwise” – also does not have everything “already in there.”

    An easy point to remember: one cannot “just use” until the machine known as a computer has first been changed – with some manufactured “ware” added to and changing the machine. Only after that change can the additional capability be “just used.”

    I look forward to the day when some fearless attorney brings two identical “standard” computers into a court room, changes only one of them with the addition of the manufacture of a ware, and then demands that the judges (or Justices) just “use” both computers to arrive at the same place as captured by a claim in question.

  • [Avatar for Night Writer]
    Night Writer
    May 14, 2016 08:17 pm

    @23: basically, they are trying to legislate the technological test of the EPO. It is pretty clear what they are up to. I agree basically with your post. The reality is that computers are a tool and the methods (and new computers) are interacting and creating lots of innovation. This opinion is a much as a bad thing for anything that is not technological as it is a good thing for anything that is technological.

    I am a bit surprised that anyone is surprised by this opinion. Many of the Fed. Cir. judges have been saying for a long time they wanted something like the EPO test and now they have legislated it.

  • [Avatar for Ternary]
    May 14, 2016 06:44 pm


    “For that reason, the first step in the Alice inquiry in this case asks whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool. “


    “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.”

    While it seems that we are now in a better or more rational position with regard to software claims, I believe we are still at square one with this.

    The problem still is that “invoking a computer merely as a tool” renders a claim to be directed to an abstract idea according to this court. Why would using a tool either in a device or in a method claim make an invention an abstract idea? This court still has it backwards. Some of the original concepts around business methods or mathematical methods are “abstract ideas” that cannot be reasonably executed by humans. It is the computer as a tool that converts the abstract idea into a real-life useful device. Look around you for the last 2, no 3 , no 4 decades! The frigging CD player is a computer. Your TV is a computer. A learning device using a support vector machine is a computer.

    I am not as optimistic as others that technological sanity has enlightened the spirits of the justices in this case. In fact I see this as a straight-forward confirmation of Alice. Infringers who want to invalidate a business method claim will find much to like in this decision.

  • [Avatar for Mark Nowotarski]
    Mark Nowotarski
    May 14, 2016 05:42 pm

    @21 Most excellent

    “lest it swallow all”

  • [Avatar for Anon]
    May 14, 2016 03:34 pm


    I tried to provide a YouTube link to Soundgarden’s “Black Hole Sun.”

  • [Avatar for Night Writer]
    Night Writer
    May 14, 2016 03:24 pm

    @18 Anon, thanks. It doesn’t matter how many times substantive points are raised Ned just refuses to engage and maintains his unethical positions. I think that the root cause is Lemley. Lemley has gotten away with unethical conduct and been quoted by the SCOTUS. Patent law would take a giant leap forward if Lemley were held accountable for his repeated and continued unethical conduct.

    Tell us Mark, does software have structure? Did you clear that with the scientist at Stanford? You feel safe because you know that Stanford Law School will defend you no matter what you do.

  • [Avatar for Anon]
    May 14, 2016 01:24 pm


    Like this: https://www.youtube.com/watch?v=3mbBbFH9fAg ?

  • [Avatar for Mark Nowotarski]
    Mark Nowotarski
    May 14, 2016 12:17 pm

    @16. I’m not sure I follow. The sun is black, not green.

  • [Avatar for Anon]
    May 14, 2016 12:11 pm

    Mr. Heller @ 13,

    It is you that needs to “get a grip,” with your constant anti-business methods mantra.

    Your “arguments” have been refuted constantly, and the counter points brought up for you to integrate into your understanding have been constantly neglected by you.

    One small example: If Congress wanted to eliminate business method patents, they could have (and would have) simply stated so.

    But that is not the case.

    It was not the case BEFORE the AIA.
    It is not the case AFTER the AIA.

    Instead, Congress has offered a review period for a SUBSET of business method patents.

    Like Justice Stevens, who lost his majority writing position in Bilski, your “version” must directly rewrite the words of Congress were your version to be accurate.

    Those who thought like Stevens (and who would gladly turn a blind eye to a violation of the separation of powers) have diminished in number since the Bilski case. The “four” led by Stevens has been reduced to “three.”

    There are at least half a dozen other points that have been presented to you on this topic, and for which, you have engaged not at all.

    That you wish to call out Night Writer” on this is beyond preposterous.
    That – my dear friend – is reality.

  • [Avatar for Night Writer]
    Night Writer
    May 14, 2016 11:09 am

    @15 If a blue fly was red, then why isn’t the sun green?

  • [Avatar for Mark Nowotarski]
    Mark Nowotarski
    May 14, 2016 09:51 am

    If the examples are about “companies” and “employees”, then why isn’t the claimed invention directed to an economic task?

  • [Avatar for Night Writer]
    Night Writer
    May 14, 2016 09:42 am

    Ned, did the SCOTUS just say that they do not hold them to be unstatutory? Yes. So, you are misrepresenting aren’t you. Congress just passed the AIA where they affirmed business methods. Please stop these misrepresentations. Lawyers should not misrepresent the law even on a blog Ned. I think your nonsense is very close to justifying a complaint with your state bar.

    And your game is try to come up with another label, “business methods” that have no definition to swallow information processing.

  • [Avatar for Edward Heller]
    Edward Heller
    May 14, 2016 08:59 am

    Night, “No one that understands information technology would push your nonsense.”

    Seriously, Night. Get a grip. Business methods are not patentable. They never were, are not now, and will not be in the future. There was a short interlude where the PTO granted them — State Street Bank ->> Bilski. But all those patents were invalid on issue.

    Congress is against them. The Supreme Court is against them. And calling people who do not agree with you names is not going to change reality.

  • [Avatar for Night Writer]
    Night Writer
    May 14, 2016 08:48 am

    >>Night@9, where in the world is your problem? Calculating price is non statutory. Simply using a computer adds nothing.

    Ned, are you really that ignorant or is that you are getting money to push these views? No one that understands information technology would push your nonsense.

    Again, you avoided the substance of what I wrote. (And according to your ilk software is logic because logic is graphic shaped in a certain way.)

    Information processing methods and machines are statutory. Calculating a price is not per se unstatutory Ned. You are misrepresenting again.

  • [Avatar for Edward Heller]
    Edward Heller
    May 14, 2016 08:27 am

    Appearance@7, hardly. They are interpreting Alice properly. But, they could have royally screwed up given their very bad Versata precedent.

    Night@9, where in the world is your problem? Calculating price is non statutory. Simply using a computer adds nothing.

    Versata did not simply recite the use of a computer to compute price, it claimed improved software techniques that calculated price much faster than prior software.

    If you keep it up with your nonsense, Night, you will doom valid inventions such as Versata.

  • [Avatar for Roxana Dastur Malladi]
    Roxana Dastur Malladi
    May 14, 2016 12:36 am

    Can you post a follow up to this post elaborating on the infringement aspect of the case? It will be very interesting to see the thoughts and comments on this case as a whole.

  • [Avatar for Night Writer]
    Night Writer
    May 13, 2016 11:05 pm

    They are putting the EPO test in front of Alice and they acknowledged the equivalence of software and hardware. I hope this doesn’t mean that they are going to start giving short shrift to anything that isn’t a technological improvement from a hardware point of view. Boy, the EPO has struggled mightily with this test and found it to be a total mess. There are whole articles on whole to get around the test with business methods.

    “In this case, however, 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. Accordingly, 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, embodied in the self-referential table..”

  • [Avatar for Night Writer]
    Night Writer
    May 13, 2016 10:59 pm

    @6 Ned: >a pricing algorithm where the computer was incidental

    The computer is not incidental. The reason these types of information methods are being developed is because of computers. Without the computers these methods would not be developed.

    Just continue anti-patent nonsense from Ned. In Deener was the equipment incidental? No. The method was developed to take advantage of the machines. Just as all these information processing methods are being invented in conjunction with the computer. (Ned likely will whine out some fact distinguishing nonsense.)

  • [Avatar for Anon]
    May 13, 2016 09:54 pm

    “I know it when I see it” is analogous to “void for vagueness.”

    It is also the “interpretive” power completely swallowing the written words of Congress, because those words simply don’t matter when a judge (or Justice) can take any old parsed “Gist” and use that as some “thing” that the claim is “directed to” as a basis for this ephemeral “abstract.”

  • [Avatar for Appearance of ...]
    Appearance of …
    May 13, 2016 09:50 pm

    It looks to me as if the Federal Circuit, upon finding the Alice rules unworkable, is instead more or less going with the European “technical effect” rules for software.

  • [Avatar for Edward Heller]
    Edward Heller
    May 13, 2016 09:10 pm

    Because Versata’s claims were directed to improved software processing as opposed a pricing algorithm where the computer was incidental, Versata’s claims were clearly eligible under Enfish.

  • [Avatar for Gene Quinn]
    Gene Quinn
    May 13, 2016 04:53 pm


    The Patent Docs take is great. Essentially… some things are very rare… the Federal Circuit doing the right thing on patent eligibility is among those things that are very rare indeed. Hopefully this means the Court is ready to stand up and do what they should have been doing all along rather than blindly trying to channel the Supreme Court.


  • [Avatar for EG]
    May 13, 2016 04:53 pm

    Enfish is definitely a step in the right direction to end the mess created by the nonsensical Mayo/Alice framework. Now if the Royal Eight don’t muck it up again . . .

  • [Avatar for step back]
    step back
    May 13, 2016 04:14 pm

    LOL, Pat Docs says somethings are extremely rare:


  • [Avatar for B]
    May 13, 2016 03:15 pm

    This holding appears to negate every 101 Alice rejection coming out of Business Methods

  • [Avatar for step back]
    step back
    May 13, 2016 12:47 pm

    A highly transient step forward toward sanity.

    Likelihood of success is low and will require undue experimentation. 😉

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