Skip to Content

Enfish Clears Up Uncertainty Created by Alice

Publications - Client Alert | May 16, 2016

Uncertainty created by a 2014 Supreme Court case, Alice Corp. Party Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014) (Alice), has significantly increased the difficulty of obtaining and enforcing software-related patents. Moreover, Alice also has been used to invalidate a large number of previously granted patents. This has led many businesses to abandon or forgo patent applications and has caused some patent owners to question the enforceability of their current patents. Although the Supreme Court cautioned examiners and the courts to “tread carefully” when applying Alice, the application of Alice by the courts and the patent office instead had the effect of forcing inventors and patent owners to tread carefully. A recent case, Enfish, LLC v. Microsoft Corp., No. 2015-1244, 2016 WL 2756255 (Fed. Cir. May 12, 2016), (Enfish) appears to put the brakes on the courts and the patent office, giving inventors and patent owners new hope.

Enfish chips away at some of the uncertainty created by Alice. First, Enfish clarifies that software for general-purpose computers is patent-eligible. Some examiners and courts previously have appeared to assume the opposite. Next, Enfish clarifies that patents need not be directed to physical components. Instead, patents can be directed solely to “logical structures and processes.” All too often, these logical structures and processes have been ignored as real claim elements. Finally, Enfish acknowledges that software can improve the functioning of a computer by increasing the flexibility of how a computer can be used, such as decreasing the amount of time a computer needs to perform a process or improving a computer’s ability to store information. Because such improvements are routinely found in novel software inventions to at least some degree, Enfish may awaken inventors and patent owners to a new generation of software-related patent protection.

Moving forward, a potential Enfish analysis could include a determination of how a software-related invention improves the functioning of a computer. Detailed information regarding the logical structures and processes of the software will likely be very useful in such a potential Enfish analysis. A detailed explanation of how new software or a new system is different from existing software or systems, however, may be even more useful. Enfish provides a valuable new tool for inventors to consider when evaluating whether to pursue new patents and for patent owners to rely on when assessing the validity of their current patents.

Additional Information

For additional information about Enfish, or for additional information regarding patent protection for software-related or other inventions, please contact your Kutak Rock attorney, the authors of this client alert or one of our patent attorneys listed below.