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.