The Software IP Report
Patent-Eligibility Is Foggier after Enfish: an Illustration
By Charles Bieneman
Categories: Patent Eligibility, Software Patents, The Software IP Report
Patent claims to “[a] method for defining a personalized printed product using a data template that consists of at least one graphical component” are not directed to an abstract idea, and thus should survive a motion to dismiss based on an allegation of patent-ineligible subject matter, says an Eastern District of Texas magistrate judge. Opal Run LLC v. C & A Marketing, Inc., Case No. 2:16-cv-0024-JRG-RSP (E.D. Texas, March 14, 2017). Applying the two-part Alice/Mayo test for patentability under 35 U.S.C. § 101, the court, relying heavily on Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), found that the claims were not directed to an abstract idea.
Representative claim 10 of U.S. Patent No. 6,704,120 recites:
A method for defining a personalized printed product using a data template that consists of at least one graphical component, said method comprising:
(a) generating a data template that identifies the graphical component;
(b) encoding, in said data template, an instruction to operate upon the graphical component; and
(c) providing an application program on a computer, said application program configured to interpret said data template and to operate upon the graphical component in accordance with said instruction encoded in said data template.
The claims at issue in Enfish, the court explained, were directed to an improved logical model for a database. Comparing claim 31 of the Enfish patent to claim 10 of the ’120 patent at issue here, the court stated
Claim 31 [at issue in Enfish] recites a method of configuring a memory according to a logical table. The claim then continues to specify in some detail the structure of said logical table, said structure being what improves the logical table over the prior art. Here, claim 10 has a similar claim structure. Claim 10 recites a method for defining a personalized printed product using a data template, and then the sets out a number of structural and functional requirements for said data template element, said requirements constituting the improvement over the prior art.
What was claimed here was “a new and improved data template” with “structural improvements,” and “not merely the use of prior art data templates to further an abstract idea or concept.” Thus, the claim was not directed to an abstract idea, and the court did not need to even consider the second prong of the Alice analysis.
Lessons
The ’120 patent may have claimed an improved data template, but there was no discussion of whether the data template improved the functioning of a computer. And I thought that was the touchstone of Enfish – that the claimed data structure improved the operation of the machine. So has Enfish turned into that patent monster, a nose of wax to be twisted this way and that?