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`(Cite as: 2014 WL 5661456 (C.D.Cal.))
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`Only the Westlaw citation is currently available.
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`United States District Court,
`C.D. California,
`Western Division.
`ENFISH, LLC, Plaintiff,
`v.
`MICROSOFT CORPORATION; Fiserv, Inc.; Intuit,
`Inc.; Sage Software, Inc.; and Jack Henry & Associates,
`Inc., Defendants.
`
`
`
`No. 2:12–cv–07360–MRP–MRW.
`Signed Nov. 3, 2014.
`
`
`Britton F. Davis, Matthew J. Leary, James P. Brogan,
`Mark R. Schafer, Orion Armon, Peter Sauer, Sarah J.
`Guske, Cooley LLP, Broomfield, CO, J. Adam Suppes,
`Cooley LLP, Reston, VA, Robyn Gould, Cooley LLP,
`Santa Monica, CA, Thomas J. Friel, Jr., Cooley LLP, San
`Francisco, CA, for Plaintiff.
`
`Amanda J. Tessar, Perkins Coie LLP, Denver, CO, Amy
`E. Simpson, Perkins Coie LLP, San Diego, CA, Chad S.
`Campbell, Perkins Coie LLP, Phoenix, AZ, Theodore H.
`Wimsatt, Perkins Coie LLP, Phoenix, AZ, Lara J.
`Dueppen, Perkins Coie LLP, Los Angeles, CA, Yuanjun
`Lily Li, William J. Brown, Jr., Brown Wegner McNamara
`LLP, Irvine, CA, for Defendants.
`
`
`ORDER GRANTING DEFENDANTS' MOTION
`FOR SUMMARY JUDGMENT ON INELIGIBILITY
`UNDER 35 U.S.C. § 101
`MARIANA R. PFAELZER, District Judge.
`I. Introduction
`*1 Plaintiff Enfish, LLC (“Enfish”) has sued Defend-
`ants Microsoft Corporation (“Microsoft”), Fiserv, Inc.,
`
`
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`Page 1
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`Intuit, Inc., Sage Software, Inc., and Jack Henry & Asso-
`ciates, Inc. (collectively, “Defendants”) for infringement
`of two patents: U.S. Patent Nos. 6,151,604 (“the '604 Pa-
`tent”) and 6,163,775 (“the '775 Patent”).FN1 In an order
`issued March 31, 2014, the Court invalidated claims 1, 2,
`and 16 of the '604 patent as single means claims prohibit-
`ed by 35 U.S.C. § 112(a). See Enfish, LLC v. Microsoft
`Corp., 9 F.Supp.3d 1126 (C.D.Cal.2014). In a separate
`order issued March 31, 2014, the Court invalidated claims
`31, 32, 46, and 47 of the '604 patent and claims 31, 32,
`and 47 of the '775 patent as anticipated under 35 U.S.C. §
`102. See Enfish, LLC v. Microsoft Corp., No. 2:12–cv–
`07360, 2014 U.S. Dist. LEXIS 46523 (C.D.Cal. Mar. 31,
`2014).
`
`
`FN1. Both patents are continuations of applica-
`tion Ser. No. 08/383,752 filed Mar. 28, 1995,
`and their specifications are substantively the
`same. For consistency, the Court will cite to the
`specification of the '604 patent.
`
`
`
`Defendants move for summary judgment on the basis
`that all asserted claims are unpatentable under 35 U.S.C. §
`101.FN2 For the reasons set forth in this order, the Court
`grants the motion.
`
`
`FN2. In this order, the Court uses the term “pa-
`tentable” to refer to subject matter eligibility un-
`der § 101.
`
`
`
`II. Background
`The abstract of the patents provides a clear explana-
`tion of the invention. See '604 Patent, Abstract. The pa-
`tents are directed to an information management and da-
`tabase system. The patents improve upon prior art by em-
`ploying a flexible, self-referential table to store data. This
`table is composed of rows and columns. Each column and
`each row has an object identification number (“OID”).
`Rows correspond to records and columns correspond to
`attributes. The intersection of a row and column compris-
`
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`es a cell, which may contain information for a particular
`record relating to a particular attribute. A cell also may
`simply point to another record. Columns are entered as
`rows in the table. The record corresponding to a column
`contains information about the column, rendering the ta-
`ble self-referential.
`
`
`The invention includes an index structure to allow for
`searching. A key word index contains text from each cell
`in the table. This index is itself stored in the table. Text
`cells in the table contain pointers to entries in the index,
`and the index contains pointers to the cells. This arrange-
`ment provides for extended inquiries. See '604 Patent,
`2:66–3:6.
`
`
`III. Standard for Summary Judgment
`The Court shall grant summary judgment if there is
`no genuine dispute as to any material fact, as supported
`by facts on the record that would be admissible in evi-
`dence, and if the moving party is entitled to judgment as a
`matter of law. Fed.R.Civ.P. 56; see Celotex Corp. v.
`Catrett, 477 U.S. 317, 322 (1986); Anderson v. Liberty
`Lobby, Inc., 477 U.S. 242, 250 (1986). Ineligibility under
`§ 101 is a question of law.FN3 In re Comiskey, 554 F.3d
`967, 975 (Fed.Cir.2009). The Court may appropriately
`decide this issue at the summary judgment stage.
`
`
`FN3. In an order issued today by this Court in
`California Institute of Technology v. Hughes
`Communications, Inc. (Caltech ), No. 2:13–cv–
`7245, slip op. at 3 n. 6 (C.D.Cal. Nov. 3, 2014),
`the Court discusses the applicability of the clear
`and convincing evidence standard to § 101 in-
`quiries. Federal Circuit precedent requires courts
`to apply the standard to § 101 challenges. See
`Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335,
`vacated
`sub
`nom.
`1339
`(Fed.Cir.2013),
`WildTangent, Inc. v. Ultramercial, LLC, 134
`S.Ct. 2870 (2014). Despite misgivings about the
`standard's relevance to § 101, the Court must fol-
`low binding precedent. The Court therefore notes
`that the parties have identified no material dis-
`puted facts. The parties dispute only the legal
`
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`conclusions drawn from the facts.
`
`
`
`IV. Ineligibility Under 35 U.S.C. § 101
`Section 101 of the Patent Act defines patentable sub-
`ject matter: “Whoever invents or discovers any new and
`useful process, machine, manufacture, or composition of
`matter, or any new and useful improvement thereof, may
`obtain a patent therefor, subject to the conditions and re-
`quirements of this title.” 35 U.S.C. § 101. Section 101
`defines four broad categories of patentable inventions:
`processes, machines, manufactures, and compositions of
`matter. “Congress took this permissive approach to patent
`eligibility to ensure that ingenuity should receive a liberal
`encouragement.” Bilski v. Kappos, 561 U.S. 593, 601
`(2010) (internal quotation marks omitted). But § 101 does
`not encompass all products of human effort and discov-
`ery. Laws of nature, physical phenomena, and abstract
`ideas are not patentable. Diamond v. Chakrabarty, 447
`U.S. 303, 309 (1980). These exceptions are well estab-
`lished. See, e.g., Chakrabarty, 447 U.S. at 309; Diamond
`v. Diehr, 450 U.S. 175, 185 (1981); Parker v. Flook, 437
`U.S. 584, 600 (1978) (Stewart, J., dissenting); Gottschalk
`v. Benson, 409 U.S. 63, 67 (1972); Funk Bros. Seed Co. v.
`Kalo Inoculant Co., 333 U.S. 127, 130 (1948); Le Roy v.
`Tatham, 55 U.S. 156, 175 (1853).
`
`
`*2 On occasion, the Federal Circuit has described §
`101 as a “coarse eligibility filter,” barring only “manifest-
`ly abstract” inventions and leaving §§ 102, 103, and 112
`as the finer sieves. See Ultramercial, Inc. v. Hulu, LLC,
`722 F.3d 1335, 1341, 1354 (Fed.Cir.2013), vacated sub
`nom. WildTangent, Inc. v. Ultramercial, LLC, 134 S.Ct.
`2870 (2014). But in the Supreme Court's last few terms, it
`has indicated that patentability is a higher bar. See Alice
`Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S.Ct. 2347, 2334–
`35 (2014); Ass'n for Molecular Pathology v. Myriad Ge-
`netics, Inc., 133 S.Ct. 2107, 2116 (2013); Mayo Collabo-
`rative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289,
`1293–94 (2012); Bilski, 130 S.Ct. at 3230–31. As noted
`by Judge Mayer of the Federal Circuit, a “robust applica-
`tion” of § 101 ensures “that patent protection promotes,
`rather than impedes, scientific progress and technological
`innovation.” I/P Engine, Inc. v. AOL Inc., 576 F. App'x
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`982, 996 (Fed.Cir.2014) (nonprecedential) (Mayer, J.,
`concurring).
`
`
`The concern underlying § 101 is preemption: the idea
`that allowing a patent on the invention will impede inno-
`vation more than it incentivizes it. Of course, a court
`should not overstate this concern. By definition, every
`patent preempts an area of technology. A patentee with a
`groundbreaking invention is entitled to monopolize a
`segment of technology, subject to the limits of the Patent
`Act.FN4 The court must be wary of litigants who exagger-
`ate preemption concerns in order to avoid developing
`innovative workarounds. See McRO, Inc. v. Sega ofAm-
`erica,, Inc., No. 2:12–cv–10327, 2014 WL 4749601, at *7
`(C.D.Cal. Sept. 22, 2014) (Wu, J.) (“[W]e must be wary
`of facile arguments that a patent preempts all applications
`of an idea. It may often be easier for an infringer to argue
`that a patent fails § 101 than to figure out a different way
`to implement an idea, especially a way that is less com-
`plicated.” (internal quotation mark omitted)). Nonethe-
`less, § 101 prevents patentees from too broadly claiming a
`building block of research and development. Building
`blocks include basic tools of mathematics or formulas
`describing preexisting natural relationships. See Mayo,
`132 S.Ct. 1296–97; Benson, 409 U.S. at 68, 72. But “a
`novel and useful structure created with the aid of
`knowledge of scientific truth” may be patentable. Mackay
`Radio & Tel. Co. v. Radio Corp. of America, 306 U.S. 86,
`94 (1939).
`
`
`FN4. Justice Stevens in Parker v. Flook, 437
`U.S. 584 (1978), expressed skepticism at the no-
`tion of preemption as a § 101 concern, perhaps
`for this reason. Id. at 590 n. 11 (“[T]he formula
`[in Benson ] had no other practical application;
`but it is not entirely clear why a process claim is
`any more or less patentable because the specific
`end use contemplated is the only one for which
`the algorithm has any practical application.”).
`
`
`
`Concerns over preemption have called into question
`when, if ever, computer software is patentable. A basic
`truth is that algorithms comprise computer software and
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`computer codes. See J. Glenn Brookshear, Computer Sci-
`ence: An Overview 2 (6th ed. 2000) (“A machine-
`compatible representation of an algorithm is called a pro-
`gram. Programs, and the algorithms they represent, are
`collectively referred to as software.”). But Supreme
`Court precedents make clear that “a scientific truth, or the
`mathematical expression of it, is not a patentable inven-
`tion.” Benson, 409 U.S. at 67. In light of this principle,
`the Supreme Court has heavily scrutinized algorithms and
`mathematical formulas under § 101. See, e.g., Flook, 437
`U.S. at 594–95 (finding unpatentable mathematical for-
`mula for updating alarm limits); Benson, 409 U.S. at 71–
`72 (finding unpatentable mathematical formula for con-
`verting binary-coded decimal to pure binary). In early §
`101 decisions on computer technology, the Supreme
`Court suggested that Congress, rather than courts, should
`determine whether software is patentable. See Flook, 437
`U.S. at 596 (“It is our duty to construe the patent statutes
`as they now read, in light of our prior precedents, and we
`must proceed cautiously when we are asked to extend
`patent rights into areas wholly unforeseen by Congress.”);
`Benson, 409 U.S. at 73 (“If these programs are to be pa-
`tentable, considerable problems are raised which only
`committees of Congress can manage, for broad powers of
`investigation are needed, including hearings which can-
`vass the wide variety of views which those operating in
`this field entertain.”).
`
`
`*3 But intervening precedents and Congressional ac-
`tion have demonstrated that software is patentable. In
`Diamond v. Diehr, 450 U.S. 175 (1981), the Supreme
`Court found patentable a method claim implementing a
`mathematical formula on a computer. See Diehr, 450 U.S.
`at 179 n. 5, 192–93 (finding patentable claim on “method
`of operating a rubber-molding press for precision molded
`compounds with the aid of a digital computer”). More
`recently, in Alice Corp. Pty. Ltd. v. CLS Bank Interna-
`tional, 134 S.Ct. 2347 (2014), the Supreme Court again
`suggested that software is patentable. See id. at 2359
`(suggesting that software which improves function of a
`computer may be patentable).FN5 Moreover, the America
`Invents Act mentions “computer program product[s]” in a
`section discussing tax strategy patents. See Leahy–Smith
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`America Invents Act, 112 P.L. 29, § 14, 125 Stat. 284,
`327–28 (2011). This section implicitly affirms software as
`eligible subject matter. See Mark J. Patterson & M. An-
`drew Pitchford, First to File, 47 Tenn. B.J. 14, 16 (No-
`vember 2011) (“[T]ax strategies are no longer patentable,
`but ... computer implemented methods and computer pro-
`gram products (e.g., software) have been implicitly af-
`firmed as patentable subject matter.”); see also Bilski, 561
`U.S. at 595 (noting that courts should not “violate the
`canon against interpreting any statutory provision in a
`manner that would render another provision superflu-
`ous”); Cal. Inst. of Tech. v. Hughes Commc'ns, Inc. (Cal-
`tech ), No. 2:13–cv–7245, slip op. at 12–15 (C.D.Cal.
`Nov. 3, 2014)
`
`
`FN5. The Supreme Court also stated, somewhat
`cryptically, that “many computer-implemented
`claims are formally addressed to patent-eligible
`subject matter.” Alice, 134 S.Ct. at 2359 (empha-
`sis added). It is unclear whether this statement
`explicitly approves of software patents or merely
`notes that some eligible patents on industrial
`processes happen to recite computers.
`
`
`
`The aftermath of Alice tells a different but misleading
`story about software patentability. Alice brought about a
`surge of decisions finding software patents ineligible. See,
`e.g., buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355
`(Fed.Cir.2014) (invalidating claim addressed to a “trans-
`action performance guaranty” performed on a computer);
`Digitech Image Techs., LLC v. Elec. for Imaging, Inc.,
`758 F.3d 1344, 1349, 1351 (Fed.Cir.2014) (invalidating
`method claim for generating and combining data sets for
`device profile); Eclipse IP LLC v. McKinley Equip. Corp.,
`No. 8:14–cv–742, 2014 WL 4407592 (C.D.Cal. Sept. 4,
`2014) (invalidating claims reciting methods for communi-
`cations). Despite this flurry of § 101 invalidations, in real-
`ity, Alice did not significantly increase the scrutiny that
`courts must apply to software patents. It held only that an
`ineligible abstract idea does not become patentable simply
`because the claim recites a generic computer. See Alice,
`134 S.Ct. at 2360 (“[T]he claims at issue amount to ‘noth-
`ing significantly more’ than an instruction to apply the
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`abstract idea of intermediated settlement using some un-
`specified, generic computer. Under our precedents, that is
`not ‘enough’ to transform an abstract idea into a patent-
`eligible invention.” (citations omitted)). Courts must not
`extend the reach of Alice too far, lest they read in § 101
`limitations that do not exist. Cf. Bilski, 561 U.S. at 603
`(“This Court has not indicated that the existence of these
`well-established exceptions gives the Judiciary carte
`blanche to impose other limitations that are inconsistent
`with the text and the statute's purpose and design.”). In
`evaluating the patentability of computer software, courts
`must continue to rely on the Supreme Court's long line of
`§ 101 precedents. Alice's holding is only a small part of
`evaluating patentability.
`
`
`*4 Other than its narrow holding, Alice reaffirmed
`that courts must evaluate patent eligibility using the two-
`part test applied in Mayo Collaborative Services v. Pro-
`metheus Laboratories, Inc., 132 S.Ct. 1289 (2012). First,
`a court must ask if the claim is “directed to one of those
`patent-ineligible concepts”: a law of nature, physical phe-
`nomenon, or abstract idea. Alice, 134 S.Ct. at 2355. Sec-
`ond, if the claim is directed to one of these concepts, the
`court must ask “[w]hat else is there in the claims before
`us?” Mayo, 132 S.Ct. at 1297. This second step deter-
`mines whether there is an “inventive concept” that “en-
`sure[s] that the patent in practice amounts to significantly
`more than a patent upon the [ineligible concept] itself.”
`Alice, 134 S.Ct. at 2355. These steps are broadly stated
`and, without more, would be difficult to apply. Although
`the two-part test was created in Mayo, pre-Mayo prece-
`dents offer guidance in applying the steps.
`
`A. The First Step of Mayo
`At the first step of Mayo, the court must identify
`whether a claim is directed to an abstract idea. To do so,
`the court must identify the purpose of the claim—in other
`words, determine what the claimed invention is trying to
`achieve—and ask whether that purpose is abstract. For
`example, in Alice, the court concluded that the claims
`were directed to mitigating settlement risk using a third
`party, but the claims recited more. The claims outlined an
`entire process, including creating shadow records, obtain-
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`ing from an exchange institution a start-of-the-day bal-
`ance, and so on. See Alice, 134 S.Ct. at 2359. But these
`steps were meant to achieve the purpose of mitigating
`settlement risk. The Supreme Court took the same ap-
`proach in Bilski and Mayo by characterizing the claims in
`terms of the inventions' purposes: hedging risk and apply-
`ing a natural law, respectively. See Bilski, 561 U.S. at
`611; Mayo, 132 S.Ct. at 1296–97.
`
`
`Characterization of a claim is essential to the § 101
`inquiry. In Diamond v. Diehr, 450 U.S. 175 (1981), the
`dispute boiled down to what the majority and dissent were
`evaluating for abstractness. See id. at 206 (Stevens, J.,
`dissenting) (faulting majority for characterizing claim by
`its purpose, which was “constantly measuring the actual
`temperature inside a rubber molding press”). The Diehr
`majority took the correct approach by asking what the
`claim was trying to achieve, instead of examining the
`point of novelty. Id. at 207. Courts should recite a
`claim's purpose at a reasonably high level of generality.
`Step one is a sort of “quick look” test, the purpose of
`which is to identify a risk of preemption and ineligibility.
`If a claim's purpose is abstract, the court looks with more
`care at specific claim elements at step two.
`
`
`At step one, prior art plays no role in the analysis.
`The court does not filter out claim elements found in prior
`art and evaluate the remaining elements for abstractness.
`See Caltech, slip op. at 18–21; but see McRO, 2014 WL
`4749601 at *9 (claims must be evaluated in light of prior
`art because such art is “understood, routine, conventional
`activity”). Using prior art to filter out elements revives the
`point-of-novelty approach of Parker v. Flook, 437 U.S.
`584 (1978), which was rejected by Diehr. See Diehr, 450
`U.S. at 189 (noting that novelty “is of no relevance” when
`determining patentability); Flook, 437 U.S. at 586–87
`(filtering out claim elements using prior art and focusing
`only on point of novelty).FN6 The Supreme Court did not
`revive Flook's methodology in Bilski, Mayo, or Alice.
`
`
`FN6. Justice Stevens' dissent in Diehr is proof
`that the Supreme Court abandoned this method-
`ology. Justice Stevens faults the majority for not
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`focusing on the point of novelty—that is, what
`the patentee newly invented, as opposed to what
`the patentee borrowed from the prior art. See
`Diehr, 50 U.S. at 211–12 (Stevens, J., dissent-
`ing) (“[I]f the only concept that the inventor
`claims to have discovered is not patentable sub-
`ject matter, § 101 requires that the application be
`rejected without reaching any issue under § 102;
`for it is irrelevant that unpatentable subject mat-
`ter—in that case a formula for updating alarm
`limits—may in fact be novel. Proper analysis,
`therefore, must start with an understanding of
`what the inventor claims to have discovered—or
`phrased somewhat differently—what he consid-
`ers his inventive concept to be.”).
`
`
`
`*5 Using prior art at step one also impermissibly con-
`flates the two steps of Mayo. Of course, at step two,
`courts must remember that reciting purely conventional
`activity will not save a claim, and claim elements found in
`prior art may occasionally, though not always, constitute
`conventional activity. Mayo, 132 S.Ct. at 1298. But at
`step one, the court neither identifies nor disregards con-
`ventional activity. That inquiry occurs only at step two.
`
`
`Once the court has identified a claim's purpose, it
`must determine whether that purpose is abstract. This task
`is difficult, especially with regard to computer software.
`Because software is necessarily intangible, accused in-
`fringers can easily mischaracterize and oversimplify soft-
`ware patents. Cf. Oplus Techs. Ltd. v. Sears Holding
`Corp., No. 12–cv–5707, 2013 WL 1003632, at *12
`(C.D.Cal. Mar. 4, 2013) (“All software only ‘receives
`data,’ ‘applies algorithms,’ and ‘ends with decisions.’ ”).
`To avoid this trap, courts should rely on Supreme Court
`precedents to help determine whether a claim is abstract.
`Recent precedents have suggested longstanding, funda-
`mental practices may be abstract. For example, in Bilski v.
`Kappos, 561 U.S. 593 (2010), the Supreme Court invali-
`dated a claim addressed to hedging risk, a fundamental
`economic practice long in use. See id. at 611. Similarly, in
`Alice, the Supreme Court invalidated a claim addressed to
`a computerized method of intermediated settlement be-
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`cause the idea was longstanding. See Alice, 134 S.Ct. at
`2356 (noting intermediated settlement is a fundamental
`economic concept and a building block of the economy).
`Longstanding practices are often the building blocks of
`future research and development. Patents on these prac-
`tices would significantly impede productive or inventive
`activity, to the detriment of society. Section 101 ensures
`that patents remain an incentive for inventors without
`stifling too much development.
`
`B. The Second Step of Mayo
`If the court finds the claim's purpose abstract at step
`one, it must then determine whether there is an inventive
`concept that appropriately limits the claim, such that the
`claim does not preempt a significant amount of inventive
`activity. In performing the second step of analysis, the
`court must be wary of making patentability “a draftsman's
`art,” Flook, 437 U.S. at 593, but inevitably, drafting plays
`a key role. Patents that claim inventions too broadly or
`prohibit a vast amount of future applications are suspect.
`See Benson, 409 U.S. at 68; O'Reilly, 56 U.S. at 113.
`Thus, the second step should provide “additional features
`that provide practical assurance that the process is more
`than a drafting effort designed to monopolize [the ineligi-
`ble concept] itself.” Mayo, 132 S.Ct. at 1297. A claim
`cannot avoid this preemption concern by limiting itself to
`a particular technological environment. See Alice, 134
`S.Ct. at 2358 (noting that limiting an abstract idea to
`computer implementation did not mitigate preemption
`concerns).
`
`
`*6 With this concern in mind, the court must disre-
`gard “well-understood, routine, conventional activity” at
`step two. Mayo, 132 S.Ct. at 1299. FN7 A conventional
`element may be one that is ubiquitous in the field, insig-
`nificant or obvious. See Mayo, 132 S.Ct. at 1298 (“Purely
`‘conventional or obvious' ‘[pre]solution activity’ is nor-
`mally not sufficient to transform an unpatentable law of
`nature into a patent eligible application of such a law.”);
`Diehr, 450 U.S. at 191–92 (“Similarly, insignificant
`postsolution activity will not transform an unpatentable
`principle into a patentable process.”). A conventional el-
`ement may also be a necessary step, which a person or
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`device must perform in order to implement the abstract
`idea. For example, the claim elements in Mayo recited
`steps that all doctors needed to perform in order to apply
`the natural law. See Mayo, 132 S.Ct. at 1298 (“Anyone
`who wants to make use of these laws must first administer
`a thiopurine drug and measure the resulting metabolite
`concentrations, and so the combination amounts to noth-
`ing significantly more than an instruction to doctors to
`apply the applicable laws when treating their patients.”).
`As discussed above, conventional elements do not consti-
`tute everything in the prior art, although conventional
`elements and prior art may overlap. But see McRO, 2014
`WL 4749601 at *9–11 (using prior art to identify conven-
`tional elements).
`
`
`FN7. This Court will refer to this concept as
`“conventional elements.”
`
`
`
`The court must also consider the claim elements as a
`combination. A combination of conventional elements
`may be unconventional and therefore patentable. See
`Diehr, 450 U.S. at 188 (“[A] new combination of steps in
`a process may be patentable even though all the constitu-
`ents of the combination were well known and in common
`use before the combination was made.”). Courts should
`consider all elements as part of the “ordered combina-
`tion,” even those elements which, in isolation, appear
`abstract. See Diehr, 450 U.S. at 189 n. 12.
`
`
`V. Discussion
`Enfish has asserted eight claims from the '604 patent
`and three claims from the '775 patent. At step one, the
`Court determines that all of the asserted claims are ad-
`dressed to abstract ideas. At step two, the Court deter-
`mines that the claim limitations do not supply an in-
`ventive concept that sufficiently limits the scope of the
`claims. Therefore, all asserted claims are unpatentable.
`
`A. Step One: The Asserted Claims Are Directed to
`Abstract Ideas
`All asserted claims of the '604 and '775 patents are
`directed to abstract ideas. Every claim has a similar pur-
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`--- F.Supp.3d ----, 2014 WL 5661456 (C.D.Cal.)
`(Cite as: 2014 WL 5661456 (C.D.Cal.))
`pose: storing, organizing, and retrieving memory in a log-
`ical table. Memory represents data or information.FN8 For
`millennia, humans have used tables to store information.
`See Martin Campbell–Kelly et al., The History of Mathe-
`matical Tables: From Sumer to Spreadsheets 19 (Oxford
`2003) (showing example of ancient Mesopotamian table
`for year 1295 B.C.); see also id. at 86 (showing example
`of life table from seventeenth-century England). Tables
`continue to be elementary tools used by everyone from
`school children to scientists and programmers. Tables are
`a basic and convenient way to organize information on
`paper; unsurprisingly, they are a basic and convenient
`way to organize information on computers. Cf. id. at 324
`(“[A] writing surface affords the property of organizing
`information in a two-dimensional grid, and therefore ta-
`bles can be viewed almost as a historical inevitability ...
`[that] would arise spontaneously in any civilization where
`a writing surface was used.... The screen of a personal-
`computer shares the two-dimensional character of a writ-
`ing surface.”). A patent on the pervasive concept of tables
`would preempt too much future inventive activity.
`
`
`FN8. It is also irrelevant whether the information
`is represented by binary digits-information is in-
`formation, regardless of the form.
`
`
`
`*7 The fact that the patents claim a “logical table”
`demonstrates abstractness. The term “logical table” refers
`to a logical data structure, as opposed to a physical data
`structure. See Claim Construction Order at 7, Dkt. No. 86
`(“[A logical table has] a data structure that is logical as
`opposed to physical, and therefore does not need to be
`stored contiguously in memory.”). Under this construc-
`tion, it does not matter how memory is physically stored
`on the hardware. In essence, the claims capture the con-
`cept of organizing information using tabular formats. As
`such, the claims preempt a basic way of organizing in-
`formation, without regard to the physical data structure.
`There can be little argument that a patent on this concept,
`without more, would greatly impede progress.
`
`
`Given these observations, the Court determines that
`the claims are addressed to the abstract purpose of storing,
`
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`
`organizing, and retrieving memory in a logical table. This
`abstract purpose does not become tangible because it is
`necessarily limited to the technological environment of
`computers. See Alice, 134 S.Ct. at 2358 (“[M]ere recita-
`tion of a generic computer cannot transform a patent-
`ineligible abstract idea into a patent-eligible invention.”).
`Tellingly, in Alice, the Supreme Court defined the pur-
`pose of the claims as achieving intermediated settlement;
`it did not define the purpose of the claims as achieving
`intermediated settlement using a computer. See Alice, 134
`S.Ct. at 2356–57. When a claim recites a computer gener-
`ically, the Court should ignore this element in defining the
`claim's purpose.
`
`B. Step Two: Additional Limitations Do Not Supply
`Sufficiently Inventive Concepts
`Because the claims are addressed to an abstract idea,
`the Court must determine whether the claims contain ad-
`ditional limitations that amount to an inventive concept.
`The claims do not. Instead, the claims recite conventional
`elements. These elements, when viewed individually or in
`a combination, do not sufficiently cabin the claims' scope.
`
`i. Claim 47 of the '604 Patent Recites No Inventive
`Concept
`The Court begins by analyzing claim 47 of the '604
`patent, which is representative of the patents in general. It
`recites
`
`
`
`
`
`
`
`
`[a] method for storing and retrieving data in a computer
`memory, comprising the steps of:
`
`configuring said memory according to a logical table,
`said logical table including:
`
`a plurality of logical rows, each said logical row in-
`cluding an object identification number (OID) to
`identify each said logical row, each said logical row
`corresponding to a record of information;
`
`a plurality of logical columns intersecting said plural-
`ity of logical rows to define a plurality of logical
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`cells, each said logical column including an OID to
`identify each said logical column; and
`
`
`
`
`
`indexing data stored in said table.
`
`These limitations comprise a series of conventional
`elements. “[C]onfiguring said memory according to a
`logical table” simply means storing computer infor-
`mation, possibly for later retrieval. The purpose of all
`tables is to store information for later retrieval. As such,
`this limitation is conventional because it recites the obvi-
`ous purpose of all tables. The “logical table” element
`merely indicates that the table can store memory non-
`contiguously. Non-contiguous memory allocation is the
`concept of storing a program in various parts of the
`memory. The concept of non-contiguous memory is ubiq-
`uitous in the art and therefore conventional. See D.M.
`Dhamdhere, Operating Systems: A Concept–Based Ap-
`proach 213 (2d ed. 2006) (“In the noncontiguous memory
`allocation model, several non-adjacent memory areas are
`allocated to a process.”); Robert C. Daley & Jack B. Den-
`nis, Virtual Memory, Processes, and Sharing in MUL-
`TICS 309 (May 5, 1968), available at http:// us-
`Name
`Age
`Abby
`27
`Ben
`42
`Carla
`39
`
`
`To locate Carla's age, one would look at the ap-
`propriate row label (Carla) and the appropriate
`column label (Age) to locate the cell that pro-
`vides the appropriate information, which is 39.
`To locate Ben's height, one would look at the
`row labeled Ben and the column labeled Height
`to find the answer, which is 5' 8". OIDs may op-
`erate in this manner.
`
`
`
`*8 Likewise, the limitation of “indexing data stored
`in said table” is not an inventive concept. The Court has
`construed “indexing” to mean “organizing data to enable
`searching.” Enfish, 2014 U.S. Dist. LEXIS 46523 at *22.
`Humans engaged in this sort of indexing long before this
`
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`History/daley-
`ers.soe.ucsc.edu/sbrandt/221/Papers/
`cacm68.pdf (“Paging allows noncontiguous blocks of
`main memory to be referenced as a logically contiguous
`set of generalized addresses.”). The recitation of rows and
`columns is also conventional, because these elements are
`necessary to create a table. See Mayo, 132 S.Ct. at 1298.
`The recitation of OID