Federal Circuit Further Clarifies Scope Of Abstract Idea Exception

A pair of recent Federal Circuit decisions have benefited software patents by clarifying restrictions imposed by the Supreme Court's decisions in Mayo and Alice. The cases emphasize that the first step in the Mayo/Alice analysis is "a meaningful one," and that "a substantial class of claims" in software and other fields are not exempt from patentability as abstract ideas.

In Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), the Federal Circuit held that database software claims were not directed to patent-ineligible abstract ideas because the patents claimed "a specific implementation of a solution to a problem in the software arts," namely, a new type of logical table. Id. at 1339. As the court explained, it takes more than mere "involvement" of an abstract concept to render a claim patent ineligible "because essentially every routinely patent eligible claim . . . involves a law of nature and/or natural phenomenon . . . ." Id. at 1335. In upholding patentability, the court also relied on the increased search speed and decreased memory requirements of the claimed invention.

In McRo, Inc. v. Bandai Namco Games Am., No. 2015-1080 (Fed. Cir. Sept. 13, 2016), the Federal Circuit similarly found software claims patent eligible because they "focused on a specific asserted improvement in computer animation." Id. at *28. The court explained that preemption is "the primary concern driving § 101 jurisprudence." Id. at *27. Because the claims did not preempt all rule-based techniques for achieving automated lip-synchronization of 3-D animated characters, but were instead directed to "a specific implementation" that animators would not necessarily have been expected to use, the claims were not directed to a patent-ineligible abstract idea. Id. at *28-33.