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Software Patents’ New Champion Enfish Comes at a Cost

Software patents consistently sacrificed in the war to determine what is patent-eligible subject matter after Alice, may have received a champion in the form Enfish.  On May 12, 2016, the Federal Circuit decided Enfish LLC  v. Microsoft Corporation, Fiserv, Inc. upholding a software patent and boldly stating: “Software can make non‑abstract improvements to computer technology.”  Id. at 11. Improvement can be defined by reference to “logical structures and processes” rather than “ ‘physical’ components[, and this] does not doom the claims.”  Id. at p. 17-18.  The business community rejoiced at the win for software.  The patent community rejoiced at finally having a case that decided a claim was non-abstract under the first prong of section 101, rather than having to go to the second prong where the claim is abstract but recites “significantly more.” 

However, the win may come at a cost the business and patent community cannot bear.  On May 19, 2016, the Patent Office issued a memorandum in response.  The Patent Office selected its own champion in the form of TLI.  The Federal Circuit in TLI Communications LLC v. AV Automotive, LLC upheld the invalidation of software claims on May 17, 2016.  This case adopted the court’s approach in Enfish in which the first step to deciding whether a claim is directed to patent ineligible subject matter is to ask “whether the focus of the claims is on the specific asserted improvement in computer capabilities.”  Enfish at 11.  In Enfish, the Court answered that question by looking at the disclosure or the specification.  In TLI the Court also looked to the specification and found that the problem faced in TLI was how to archive large numbers of digital images, and the solution in the invention was described as “archiving of digital images simply, fast and in such a way that the information therefore may be easily tracked.” TLI,  p. 4 (citing to the patent).  In the Patent Office’s memo they weaponized this approach to allow examiners to use the specification to invalidate a claim if “the character [of the specification] as a whole is directed to a patent ineligible concept.” 

A company that heralds the strengths of its invention in the patent disclosure with the language they use to sell their products to customers (“better, faster, stronger” in the words of Kanye West) may obscure the improvements to technology.  Alternatively, the disclosure may be silent as to the improvement to technology.  No patent attorney can save these flawed disclosures through claim drafting. 

There is hope for the software community going forward for drafting applications directed to patent-eligible subject matter.  In particular, the Patent Office in its memo reaffirmed its examples of patent-eligible subject matter.  Example 1 of the 2014 examples is likely to still be helpful for drafting and defending claims to patent-eligible subject matter. Enfish and its progeny, however, may require honing the skills of the draftsman to craft a description of the current state of the technology and the improvement over that technology.


Will Pagan to Present "Strategies for Arguing Against Challenges Under §101" in a webinar on March 3, 2016

Will Pagan has been selected as one of the presenters for an upcoming webinar titled, “Effective Intellectual Property Asset Protection for Biotechnology and Biopharmaceutical Facing Subject Matter Eligibility Challenges in 2016 LIVE Webcast.”  Mr. Pagan's section of the presentation will focus on strategies against challenges under §101.

The webinar will be held March 3 from 12:00 - 2:00 EST.  We have a select group of complimentary registrations available for those who are interested in attending.  Please contact Will Pagan or Shari Leon at 919-854-1844 if you would like to attend.  More information regarding the webinar can be found at

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Eli Sheets Joins Coats + Bennett's Patent Practice

Coats + Bennett, PLLC, an intellectual property law firm located in Cary, North Carolina, is pleased to announce that Eli Sheets has joined the firm as an attorney for its patent practice.  Mr. Sheets’ experience spans a variety of technologies and business sectors, including advanced wireless communications systems, processors and semiconductor devices, software, and e-commerce.

“Mr. Sheets is a great addition to our firm,” states David Bennett, Managing Member.  “His experience in the preparation and prosecution of both domestic and international patent applications within a wide variety of industries builds on the strength of our already strong team.”

Mr. Sheets has significant experience with matters before the U.S. Patent and Trademark Office, having previously worked for the agency a patent examiner.  Additionally, he has worked as a patent attorney for law offices in Minnesota and Washington D.C.  Through his roles, he has helped companies of all sizes to obtain protection for their intellectual property and to maximize the value of these assets.  In addition to patent preparation and prosecution, Mr. Sheets has significant experience advising clients regarding threatened or ongoing litigation, business formation, negotiation, IP valuation, and licensing.

“Clients clearly trust the proven technical prowess and legal experience of the Coats + Bennett team to help them confidently navigate the often confusing legal and regulatory landscape surrounding intellectual property,” states Mr. Sheets.  “I am proud to be the newest addition to such a respected group of attorneys and look forward to working diligently and creatively to ensure our clients reach their unique business goals by effectively tackling the complex problems that often arise at the intersection of law and technology.”

Mr. Sheets obtained his Bachelor of Science in Electrical Engineering from the University of Wisconsin, Madison and his Juris Doctor with honors from the University of New Hampshire School Of Law, where he served as the Editor-in-Chief of IDEA: The Intellectual Property Law Review. 

Mr. Sheets' full bio can be viewed here.



John Owen Elected to Business NC Legal Elite

Coats + Bennett, PLLC, an intellectual property law firm located in Cary, North Carolina, has announced that John Owen has been elected to the 2016 Legal Elite by Business North Carolina magazine.  Mr. Owen has previously earned this distinction eight times.  Legal Elite is an annual survey by Business North Carolina magazine asking the state’s lawyers who they consider to be the best in their field in 14 business-related specialties. Of the thousands practicing in the state, less than 3% are selected as Elite.

Mr. Owen has been with Coats + Bennett since 1996.  His client base ranges from Fortune 500 corporations to the garage inventor.  In his almost twenty years of practice, Mr. Owen has worked on a variety of mechanical, electrical and biomedical patents.  He is a strong believer that his job is to act as the confidante and counselor of inventors as their ideas become reality.

"I am extremely proud of my friend and business partner for receiving this honor,” said David Bennett, managing partner for Coats + Bennett. "John is always striving to provide the highest quality work for the benefit of his clients. That his peers recognize this and selected him among the 2016 Legal Elite for IP Law is a testament not only to the service he provides his clients, but to his standing in the legal community."

In addition to Mr. Owen, David Bennett has also previously been elected to Legal Elite.  Larry Coats and Anthony Biller have been elected to Legal Elite several times and have now been entered into the Legal Elite Hall of Fame – an honor which is awarded to those who receive the most votes in a particular category, and they are no longer eligible for the annual list.

Mr. Owen's full bio can be viewed here.

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Coats + Bennett Hosts January 2016 High-Tech Women Meeting

High-Tech Women Meeting

Wednesday, January 27, 2016

6:00 pm - 7:30 pm

Coats + Bennett, 1400 Crescent Green, Suite 300, Cary 


Please join us for an engaging presentation on the fascinating IBM Watson technology platform that uses natural language processing and machine learning to reveal insights from large amounts of unstructured data. 


Our presenter, Rich Edwards, is Program Director and Product Manager for the IBM Watson Developer Cloud, helping developers and makers add advanced cognitive computing capabilities to their applications and services. Rich's focus is leading a team of technical evangelists that help users flush out their use cases and take advantage of this rapidly expanding set of capabilities in the market.


Those interested in attending should register here:









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