Enfish Does Not Save Patent-Eligibility of Database Claims

The Federal Circuit has affirmed a summary judgment from the Eastern District of Texas holding that claims directed to indexing and accessing information in large databases are patent-ineligible under 35 U.S.C. § 101 and the Alice/Mayo test.  BSG Tech LLC v. BuySeasons, Inc.,No. 2017-1980 (Fed. Cir. Aug. 15, 2018) (precedential) (opinion by Judge Hughes, joined by Judges Reyna and Wallach).  The patents at issue, U.S. Patent Nos. 6,035,294,6,243,699, and 6,195,652, “have substantially overlapping specifications and are directed to a ‘self-evolving generic index’ for organizing information stored in a database.”

At step one of the patent-eligibility test, the Federal Circuit “agree[d] with the district court that the asserted claims are directed to the abstract idea of considering historical usage information while inputting data.”  The court looked at the “clearest of the four claims” at issue, claim 1 of the ’699 patent, which recites:

  1. A method of indexing and retrieving data being posted by a plurality of users to a wide area network, comprising:

providing the users with a mechanism for posting the data as parameterized items;

providing the users with listings of previously used parameters and previously used values for use in posting the data;

providing the users with summary comparison usage information corresponding to the previously used parameters and values for use in posting the data; and

providing subsequent users with the listings of previously used parameters and values, and corresponding summary comparison usage information for use in searching the network for an item of interest.

The claims recited no new way of accessing or storing data, but instead simply recited providing users with “summary comparison information” before uploading and labeling new data.  Enfish, LLC v. Microsoft Corp.,822 F.3d 1327 (Fed. Cir. 2016) and Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017) were directed improving how systems store and access data. In contrast, “the focus of BSG Tech’s claims is unrelated to how databases function.”  The claims resulted in “better user input,” but not by doing anything outside the “ordinary capacity of the database.”

At step two of the patent-eligibility test, the court saw no significant innovation beyond the abstract idea, distinguishing the present case from Berkheimer v. HP Inc.,881 F.3d 1360 (Fed. Cir 2018).  A patent claim is not patent-eligible under Alicestep two if the “claim’s only ‘inventive concept’ is the application of an abstract idea using conventional and well-understood techniques.”  Here, the alleged unconventional features of the claims were simply the abstract idea: “the requirement that users are guided by summary comparison usage information or relative historical usage information.”

Lessons for Practice

The present claims enhanced the computer user’s experience, but not the  operation of the computer itself.  And that is where the patent-eligibility line was drawn.

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