On May 19, 2016, Robert Bahr, Deputy Commissioner for Patent Examination Policy of the U.S. Patent and Trademark Office sent a memorandum (the "USPTO memorandum") to the Patent Examining Corps that discusses the recent decisions issued by the U.S. Court of Appeals for the Federal Circuit in Enfish, LLC v. Microsoft Corp. and TLI Communications LLC v. A.V. Automotive, LLC. The Federal Circuit in Enfish ruled that the subject patent was directed to patent eligible subject matter, whereas in TLI Communications, the subject patent was found to be directed to ineligible subject matter. These cases provide additional data points and guidance for determining where to draw the line for patent eligible subject matter for computer-related inventions. Although the USPTO's recent memorandum provides much needed guidance, the memorandum and the recent court decisions it discusses make clear that there is no bright line between patent eligible and ineligible subject matter.
The USPTO memorandum informed USPTO examiners that they should continue to (1) perform an analysis under Step 2A of the two-part Alice/Mayo test in order to decide whether or not a claim is directed to an abstract idea and (2) determine if a claim sets forth or describes a concept that a Court has previously found to be abstract. The two-part Alice/Mayo test as implemented by the USPTO is summarized in the flow chart shown below as published in the Federal Register, 79(241), 74618-74633 (2014) as interim guidelines for subject matter eligibility of products and processes.
The USPTO memorandum specifically stated that "the fact that a claim is directed to an improvement in computer-related technology may demonstrate that the claim does not recite a concept [that is] similar to previously identified abstract ideas." In other words, an examiner may be able to determine that an improvement made to computer-related technology is not abstract under Step 2A without having to perform any analysis under Step 2B. The memorandum further noted that the 2014 Interim Eligibility Guidance, July 2015 Update, and May 4, 2016 memorandum to the Patent Examining Corps are consistent with these recent decisions.
The USPTO memorandum notes that the Enfish decision provides much needed guidance on whether or not claims are directed to abstract idea. In particular, the memorandum notes the Federal Circuit's caution against "describing a claim at a high level of abstraction untethered from the language of the claim" or denying eligibility of the claim based on "an invention's ability to run on a general purpose computer." These points are consistent with concerns which have been raised by patent practitioners regarding the subject matter eligibility analysis. However, it is unclear at this point whether the Enfish decision will lead to any update or modification to the currently effective guidelines for subject matter eligibility. Since the Enfish decision is very recent, the passing of time is necessary before the full impact of the decision on the current subject matter analysis by examiners will be known. (See Brinks IP Alert (May 13, 2016) entitled "The Post-Alice Pendulum Swings Back as the Federal Circuit Finds a Database Invention to be Patent Eligible" for additional information and discussion regarding the Enfish decision.)
In addition to the USPTO memorandum, ongoing cases at the U.S. District Court level have started to take notice of the Enfish decision. At least two district courts have requested that the parties submit additional briefing on the issues relating to the Enfish decision. See, KHN Solutions Inc. v. Vertisense Inc., Case No. 16-cv-00962-HSG (D. ND Cal. 2016); Synchronoss Technologies, Inc. v. Dropbox Inc., Case No. 16-cv-00119- HSG (D. ND Cal. 2016). Two judges from the District of Delaware granted defendants' motions to dismiss after fully considering plaintiffs' arguments relying on the Enfish decision. See Visual Memory LLC v. Nvidia Corp., Civil Action No. 15-789-RGA (D.Del. 2016) and Device Enhancement LLC v. Amazon.com, Inc., Civ. No. 15-762-SLR (D.Del. 2016). In Visual Memory LLC, the Court differentiated the patent-in-suit from the claims of Enfish, explaining that the claims at issue were not directed to a specific type of data structure, but rather, to the mere idea of categorical data storage. In Device Enhancement LLC, the Court recognized that the inventive concepts in the patent-in-suit were "computer-centric," but the Court found that the claims lacked "a specificity requirement" as discussed in the Enfish decision.
These decisions and the actions of USPTO patent examiners will be informative on how the courts and the USPTO will apply the guidance provided by the recent decisions in Enfish and TLI Communications.
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