Executive Summary: In its Alice decision, the Supreme Court provided little guidance for practitioners to make patentability assessments. Comparison of two recent Federal Circuit decisions is helpful. The patents in Enfish and TLI had similar technological subject matter, but the Federal Circuit came to different conclusions regarding patentability. The Federal Circuit noted that the ill-fated TLI patent lacks detail and the disclosure describes several claim elements as “well known.” The claims also recite functional terms. In contrast, the patents in Enfish passed scrutiny under Alice. In the words of Iain Banks, “You have to have something worth saying and then the ability to say it.”
The Supreme Court’s Alice decision offers little guidance concerning how to determine whether or not a patent is directed to statutory subject matter. Comparing two recent Federal Circuit decisions, Enfish and TLI may offer some help, at least to how the Federal Circuit evaluates statutory subject matter. The Enfish decision is only the second time that the Federal Circuit overturned a finding of unpatentability pursuant to Alice. Soon after the Enfish decision was published, the Federal Circuit came to a different conclusion in TLI. Because the patents in both cases are directed to similar technology, comparing the Federal Circuit’s analysis of the patent disclosures may be helpful in a way that Alice is not.
Enfish Patents: The Enfish patents disclose a relational database, and more specifically, a “self-referential database model.” At a high level, the patent teaches that a single table can serve the role of multiple tables through use of a so-called object identifier, or “OID.” The patent claims include the OID limitation and set out its relationship to logical rows and logical columns in the claimed database. The patent specification is robust having twenty columns and twenty-three figures. The accused infringer characterized the purported invention as an abstract idea of organizing information in tabular format using a computer.
TLI Patents: The TLI patent is directed to “attaching classification data, such as dates and times, to images for purposes of storing those images in an organized manner.” The TLI claim elements include a telephone portion, a processor, a server, memory and a “digital pickup.” The TLI patent had four figures and eight columns. The district court concluded that the TLI patent claims no more than the abstract idea of classifying and storing digital images in an organized manner.
The Federal Circuit criticized the ill-fated TLI patent, stating that it lacks technical details, relies upon functional terms, and characterizes claimed components as “well known.” In contrast, the Enfish patents had a greater level of specificity and a robust disclosure. More disclosure of something that fails to include statutory subject matter cannot transform an invention from unpatentable to patentable. On the other hand, in the words of Iain Banks, “You have to have something worth saying and then the ability to say it.”