Board Issues Mixed Rulings on Patent Eligibility After Enfish

Authored by Brian Mudge and Christopher Gresalfi

In two CBM decisions following the Federal Circuit’s recent Enfish1 opinion, the PTAB has considered patent eligibility of inventions directed to computer databases. The result: one ruling in favor of patent eligibility and one against. These decisions highlight the importance, when adjudicating section 101 challenges, of determining what problem the patent at issue is attempting to solve – and the patent specification may be critical to answering this question.

The Enfish Decision:
In Enfish, the Federal Circuit overturned a district court’s determination that a database patent did not claim patent-eligible subject matter. The Court found that the claims to a “self-referential” database – in which all data entities are provided in a single table, with column definitions provided by rows in that same table – are not directed to an ineligible abstract idea, but instead were directed toward an improvement in computer functionality. In reaching its decision, the Court noted that the specification of the patent teaches that the “self-referential” database is easier to implement and achieves increased flexibility compared to conventional databases, and additionally that the self-referential table functions differently than conventional database structures. The Court also criticized the district court’s conclusion that the claims were merely directed to the abstract idea of “storing, organizing, and retrieving memory in a logical table,” and cautioned against describing the claims at a high level of abstraction, lest the exceptions to § 101 swallow the rule.

CBM Proceedings:
In the Informatica2 case, the Board issued a final written decision on CBM review of Protegrity’s patent no. 6,321,201 under sections 101 and 103. The ’201 patent is directed to a system and methods for protecting data against unauthorized access. The claims require that an “O-DB” data base stores data element values (DV) and an IAM-DB database contains a data protection catalogue (DPC), which stores protection attributes for data element types that are associated with data element values DV. Additionally, the claims require granting access to a requested data element value if the rules associated with a data element type that is associated with the requested data element value are satisfied.

The Board grappled with the Supreme Court’s Alice3 decision, ultimately ruling that the claims did not recite patent-eligible subject matter. In regard to the first prong of the Alice inquiry, Informatica argued that claims of the ’201 patent are directed to the abstract idea of “rule based data access.” Protegrity disputed this and, relying on DDR Holdings4, argued that the solution provided by the ’201 patent is necessarily rooted in computer technology because it addresses the protection of data in a first database through rules stored in a second data base. Protegrity also contended that the claims of ’201 patent do not preempt use of the abstract idea in all fields because they are directed to a specific solution for protecting data at the data element level in a databases through use of rules stored in a separate database. But the Board rejected Protegrity’s argument and agreed with Informatica that the claims were directed to an abstract idea. Contrary to DDR Holdings – in which the invention resulted in overriding the routine and conventional sequence of events – the Board found that the database and access rules recited in the claims at issue perform their normal functions and achieve expected results. And the Board similarly rejected Protegrity’s argument regarding non-preemption, finding that it was merely an attempt to limit the abstract idea to a particular technological environment.

Though Enfish was decided after the completion of briefing and oral arguments in this case, the Board addressed the holding in regard to Alice step 1. However, the Board distinguished Enfish and concluded that the ’201 patent claims are not directed to a specific improvement in the way computers operate but, instead, that the recited databases and access rules perform normal functions and achieve expected results, and noted that storing rules in a separate database merely changes the location of the rules, not the expected operation of the rules or the database.

The Board additionally found that the claims do not give rise to an inventive concept under step 2 of the Alice test. Agreeing with Informatica, the PTAB found that the claims recited nothing more than well-understood, conventional features – such as having separate databases for data and rules, a table structure with rows and columns, and restricting access to columns or fields of a database. Even the requirement for processing requested data element values in conformity with the protection attributes was considered by the PTAB to be nothing more than conventional post-solution activity of granting user access. Accordingly, the PTAB determined that the challenged claims were ineligible as an abstract idea under section 101.

The Mirror World5 case involved a CBM petition challenging claims of Mirror World’s patent no. 6,006,227 under sections 101 and 112. The claims of the ’227 patent relate to a method/apparatus for organizing data units (documents) into streams. The ’227 patent uses a time-ordered “stream” and “substreams” as a storage model and stream filters to organize, locate, summarize, and monitor incoming information. Before reaching its institution decision, the Board received supplemental briefing to address the Enfish decision.

In challenging the claims under Alice, petitioners argued that the claims are directed to the abstract idea of organizing items of information in chronological order. According to the petitioners, this abstract process is not necessarily a computer problem, and can be performed outside of the computer. Petitioners further argued that the claims required nothing more than a generic computer system carrying out conventional activities.

Mirror World, in contrast, argued that the challenged claims are not abstract because they address the problems of organizing and finding electronic data units using a specific implementation of “streams” and “substreams.” Relying on the ’227 patent’s specification, Mirror World contended that these problems specifically arise in connection with computers and did not exist in the pre-computer world of paper documents.

In the decision denying institution, the Board ruled in favor of Mirror World and found that the ’227 patent claims are not directed to an abstract idea, but rather the to a system in which computers name, organize, and retrieve electronic documents. Rejecting petitioners’ argument that the claims could not be performed entirely by the human mind or with pen or paper, the Board agreed with Mirror World that the claims required operations that must be performed by a computer.

Of key interest to practitioners, the Board was persuaded by Mirror World’s reliance on discussion in the specification to show that the ’227 patent addresses problems arising specifically in the realm of computer systems. As highlighted by Mirror World, the ’227 patent described solving the problems of (1) naming and locating documents based on document name; (2) enabling multi-level branching tree folder systems; (3) searching for documents created by different applications; (4) archiving electronic documents. The Board accepted Mirror World’s argument that these problems, as described in the specification, were not present in the pre-computer world. Finding support in Enfish, the PTAB held that the ’227 patent claims are likewise directed to improvements in computer functionality rather than an abstract idea.

Additionally, the PTAB ruled that, like the claims in DDR Holdings, the present claims were rooted in non-abstract computer technology and, thus, petitioners could not meet their burden in step 2 of the Alice inquiry. Accordingly, the Board ruled that the claims were not shown to be directed to unpatentable subject matter under section 101.

Implications of these rulings:
Both of these decisions turned on the Board’s the conclusion as to whether the patent claimed generic computer functionality carrying out conventional activity, or a specific technical solution to a technical problem occurring only in the realm of computer processes. In the Informatica case, the Board was convinced by the arguments that the patent was directed merely to well-known computer elements carrying out routine steps. There was no discussion in the case as to whether the patent specification provided any support to the patent owner’s position that the claims were intended to solve a specific technical problem. Conversely, in Mirror World the Board was convinced that – as the specification described – the invention was directed to solving problems specifically arising in computer technology. Thus, in considering questions of patent-eligible subject matter in connection with “software” patents, the patent specification may provide important clues as to whether the invention claims an improvement to computer technology. Patent owners and challengers alike should be prepared to point out the presence (or absence) of supporting discussion from the specification.

1Enfish, LLC. v. Microsoft Corporation, No. 2015-1244 (Fed. Cir. May 12, 2016).

2Informatica Corp. v. Protegrity Corp., CBM2015-0021 (PTAB May 31, 2016) (paper 38).

3Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014).

4DDR Holdings, LLC v., L.P., 773 F.3d 1245 (Fed. Cir. 2014).

5Apple, Inc. v. Mirror World Techs., LLC, CBM2016-00019 (PTAB May 26, 2016) (paper 12).