Enfish Did Not Change the Law of Patent-Eligibility, Says E.D. Texas Court

Judge Schroeder in the Eastern District of Texas has declined to reconsider a prior ruling (and resulting final judgment) of patent-ineligibility of claims directed to “entering location information into a positional information device.”  Rothschild Location Technologies LLC v. Geotab USA, Inc., No. 6-15-cv-00682 (E.D. Texas Dec. 5, 2016). The court emphasized that, the patent owner’s arguments to the contrary, the Federal Circuit’s decision in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. May 12, 2016), did not represent a change in the law.

In January 2016 Magistrate Judge John Love had issued a report and recommendation granting Defendants’ FRCP 12(b)(6) Motion to Dismiss for Failure to State a Claim, holding that “claims under U.S. Patent No. 8,606,503 . . . are not patentable subject matter in accordance with 35 U.S.C. § 101.”  Judge Schroeder adopted the magistrate’s report, and entered a final judgment in May 2016, days after Enfish was decided.  The plaintiff subsequently brought a motion requesting reconsideration under FRCP 59(e), averring that “the Federal Circuit’s recent opinion in Enfish is an intervening change in law.”

Not so, said Judge Schroeder.  Quoting from the Supreme Court’s decision in Alice, Judge Schroder explained that Enfish simply reinforced Alice’s “proposition that inventions which ‘purport to improve the functioning of the computer itself’ or ‘effect an improvement in any other technology or technical field are not directed to abstract ideas.’”  And yet, “Enfish does not stand for the proposition that improvement to computer functionality is always sufficient to satisfy step one of Alice.”  Further, Enfish may have acknowledged that the lines between part one of the Alice test (abstract idea?) and part two (significant additional innovation?) may be blurred, but this was not a “drastic change” in the law, as the plaintiff had argued.  In short:

Enfish and subsequent cases confirm the overlapping and fluid nature between the two stages of Alice. Enfish does not overturn or substantially change the Alice test; rather the decision largely reaffirms the existing case law in clarifying the application of Alice to claims that as a whole are directed to a technological improvement.

Then, analyzing the ’503 patent claims sunder applicable law, including Enfish as well as Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) and In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607 (Fed. Cir. 2016), Judge Schroeder reaffirmed that those claims were patent-ineligible under Section 101.