Enfish Is Not a Panacea, But TLI Communications Is Not a Death Knell
On May 17, 2016, the Federal Circuit Court of Appeals affirmed the Federal District Court for the Eastern District of Virginia’s invalidation of the claims of several TLI Communications patents on a motion to dismiss. A.V. Auto had argued that the asserted claims fell outside the realm of patent-eligible subject matter under 35 U.S.C. § 101, warranting dismissal of TLI Communication’s patent infringement suits. The asserted claims were generally directed to uploading and storing digital images and associated, user-defined classification metadata originally generated by a mobile phone to a remote server, enabling Internet-based backup and organization of digital photos.
The Court characterized the claims as being directed to “classifying and storing digital images in an organized manner.” It then concluded that such a concept constituted an abstract idea because it was a well-established basic concept, one of the “methods of organizing human activity” reserved to the public domain. The Court set aside the required technological elements in the claims, including a telephone with a camera sensor, networking capabilities, and a server with associated storage, staging that those elements were merely “a generic environment to carry out the abstract idea.” The Court concluded that the claimed subject matter did not solve a “technological problem” or a “challenge particular to the Internet.” However, the Court did not provide any reasoning or detailed comparison between the facts at issue in this case and the facts presented in those previous decisions to support its conclusion.
The Court then held that the additional elements did not amount to significantly more than the identified abstract idea. It stated that the claimed actions and required hardware implementation fell “squarely within our precedent finding generic computer components insufficient to add an inventive concept to an abstract idea.” Accordingly, the Court found the claims were directed to an ineligible abstract idea and affirmed their invalidation.
Many, including this blog, had hailed the Enfish decision from the Federal Circuit as a signal that software inventions could still secure patent protection. However, this decision makes clear that patents claiming advancements in software inventions remain on shaky ground. A primary distinction between the claims invalidated in TLI Communications and the claims held valid in Enfish is that the process of assigning categorization data, such as date or location taken, to photos and organizing them according to that data in a location separate from the camera in TLI Communications had long been performed with hard-copy photos and photo albums, whereas the scheme for generating and maintaining a database in Enfish had not previously been performed in hard-copy databases. Simply requiring that a pre-existing practice be implemented utilizing existing technological hardware leaves a patent claim vulnerable to challenge under § 101.
Unfortunately, the Court did not utilize this decision to clarify what kinds of problems and challenges are “technological” in nature, when a challenge is “particular to the Internet,” or what kinds of changes to methodology will warrant patent protection notwithstanding implementation utilizing generic hardware. For example, the claims invalidated in TLI Communications could be viewed as solving the technological problem of providing sufficient storage for the photographs taken in increasing numbers and at increasing file sizes utilizing mobile, network-connected devices while enabling users to easily find their photos. By contrast, the claims confirmed to be valid in Enfish could be viewed as solving a database organization problem in a way that could equally be implemented mentally utilizing pen-and-paper spreadsheets. Without any standards to guide the analysis, patent applicants, patent owners, patent challengers, and decision-makers cannot predict whether a given claim is patentable with an adequate degree of confidence.
James C. Watson, Registered Patent Attorney
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