IP Law Daily ‘Self-referential’ database software not an abstract idea
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Thursday, May 12, 2016

‘Self-referential’ database software not an abstract idea

By Mark Engstrom, J.D.

A federal district court erroneously concluded that five claims of two Enfish patents on a “logical” model for a self-referential database were directed to invalid abstract ideas, and incorrectly found that two claims of each of those patents were anticipated by the pivot tables in Microsoft Excel 5.0, the U.S. Court of Appeals for the Federal Circuit has ruled (Enfish LLC v. Microsoft Corp., May 12, 2016, Hughes, T.). In conducting an Alice analysis, the court rejected the view that the Supreme Court had broadly ruled, in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), that all improvements in computer-related technology were “inherently” abstract.

In addition, the Federal Circuit found that the district court had correctly held that Microsoft’s ADO.NET product did not infringe a patent claim that recited a storage and retrieval system for computer memory. The decision of the district court was reversed in part, vacated in part, affirmed in part, and remanded for further proceedings.

The patents in suit—U.S. Patent Nos. 6,151,604 and 6,163,775— were directed to an innovative “logical” model for constructing computer databases. Unlike traditional “relational” and “object oriented” databases, the patented “logical” model included all data entities in a single table, with column definitions provided by rows in the same table. The patents described that arrangement as the “self-referential” property of the database.

Abstract idea. The Federal Circuit noted that the U.S. Supreme Court had not established a definitive rule for determining what constituted an “abstract idea” that was sufficient to satisfy the first step of the Alice Inquiry. Nevertheless, the Federal Circuit rejected the idea that Alice had broadly held that all improvements in computer-related technology were inherently abstract. Similarly, the court rejected the idea that claims directed to software, as opposed to hardware, were inherently abstract.

For those reasons, the court could not conclude that all improvements in computer-related technology, including those that were directed to software, were necessarily analyzed in the second step of Alice (the search for an inventive concept). The court thus asked whether the asserted claims were directed to an improvement in computer functionality, rather than being directed to an abstract idea, in the first step of the Alice analysis.

Because the asserted claims focused on an improvement to computer functionality itself, not on economic or other tasks for which a computer was used in its ordinary capacity, the court found that the claims were not directed to an abstract idea. According to the court, the claims were directed to a specific improvement in the way computers operated, and that improvement was embodied in the plaintiff’s “self-referential” table.

The self-referential table was a specific type of data structure that was designed to improve the way a computer stored and retrieved data in memory, the court explained. The specification’s disparagement of conventional data structures, combined with language that described the invention as including the features that made up a self-referential table, confirmed that the court’s characterization of the invention was not deceived by the “draftsman’s art.”

According to the court, the asserted claims were directed to a specific implementation of a solution to a problem in the software arts. For that reason, the court concluded that the claims at issue were not directed to an abstract idea. Because the asserted claims are not directed to an abstract idea, the claims were patent-eligible and the court did not need to search for an “inventive concept.”

Anticipation. The district court incorrectly held that the asserted claims were anticipated by the pivot table feature of Microsoft’s Excel 5.0 spreadsheet program. According to the Federal Circuit, a finding of anticipation required an inappropriately broad reading of the asserted claims.

The district court read the features of claim 31 on a row from the raw data table and a column from the pivot table. Fundamentally, however, having a row in one table reference a column in another table was not a “self-referential” table; it was more like “referential tables” or “tables that refer[red] to one another.” Ultimately, Excel 5.0 failed to include the claimed self-referential “single table” with a row defining a column in the same table, the circuit court concluded.

For that reason, the district court erroneously granted summary judgment of anticipation. Given the Federal Circuit’s claim construction and the disclosure in Excel 5.0, the pivot table feature of Excel 5.0 did not anticipate claim 31 of the ’604 patent. Because claim 32 of the ’604 patent and claims 31 and 32 of the ’775 patent required the same self-referencing feature, the court concluded that the pivot-table feature of Excel 5.0 did not anticipate those claims.

Non-infringement. The district court found that Microsoft’s ADO.NET product did not infringe claim 17 of the ’604 patent. The district court reached that conclusion by finding that ADO.NET did not perform the “means for indexing” that was recited in claim 17. The Federal Circuit agreed. Because ADO.NET did not use the identical or equivalent structure, as disclosed in the patents, for the “means for indexing,” the ADO.NET product did not infringe claim 17.

The case is No. 2015-1244.

Attorneys: Orion Armon, James P. Brogan, and Janna Fischer (Cooley LLP) for Enfish, LLC. Chad S. Campbell, Dan L. Bagatell, Theodore H. Wimsatt, Elizabeth M. Banzhoff, and Amanda D.W. Tessar (Perkins Coie LLP) for Microsoft Corp.; Fiserv, Inc.; Intuit, Inc.; and Jack Henry & Associates, Inc.

Companies: Enfish, LLC; Microsoft Corp.; Fiserv, Inc.; Intuit, Inc.; Sage Software, Inc.; Jack Henry & Associates, Inc.

MainStory: TopStory Patent FedCirNews

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