Since the Supreme Court’s holding in Alice v. CLS Bank that abstract ideas are not suddenly patentable if performed on a computer, it has become increasingly difficult for software patents to survive challenges to their validity under Section 101, which requires an invention to be new and useful. In the years following the Alice decision, nearly 70% of federal circuit decisions involving Section 101 rulings have resulted in patents being declared invalid. However, a recent decision by the U.S. Court of Appeals for the Federal Circuit may just provide the zap to the heart needed to bring some software patents back from the dead.

A three-judge panel recently oversaw a dispute between Enfish LLC and Microsoft, which led to the revival of two Enfish patents on an advanced database. The panel ruled that if the technology improves the functioning of a computer, then it deserves to be patented, agreeing with Enfish’s counsel that their technology did just that, thus deserving patent protection. The decision by the panel reversed the ruling made by late Senior U.S. District Judge Mariana Pfaelzer in Los Angeles, who declared the Enfish patents to be invalid under Section 101. In declaring the Enfish patents invalid, Pfaelzer relied on the Supreme Court’s decision in Alice.

In the 30-page opinion by Circuit Judge Todd Hughes, the panel cautioned that if judges are interpreting patents in an overly simplified and general way, that is “untethered from the language of the claims,” this will nearly guarantee that Section 101 will kill the patent. Hughes stated that Pfaelzer made a similar error in her ruling, oversimplifying Enfish’s patents and downplaying their benefits.

Many are seeing this decision as a “significant change” in Federal Circuit law, with many believing that the panel made the decision to protect software-related patents claims from being deemed as abstract. Only time will tell what implications this ruling will have, but at the moment, it appears that the decision may have given some software patents a second chance at life.

Source: http://www.reuters.com/article/ip-enfish-patent-idUSL2N18A0AH

For more information on this topic, please visit our Software Patents service page, which is part of our Software & Copyrights practice.

Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm located in Dallas, TX.  The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights.  The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution.  Additional information about the intellectual property law firm and its intellectual property attorneys may be found at www.klemchuk.com.

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