Since the Supreme Court handed down its decision in Alice, many in the US patent community have been searching for a case that provides greater clarity on the justices’ thinking or, at the very least, doesn’t simply see the Court of Appeals for the Federal Circuit (CAFC) affirm a lower court ruling invalidating the patent in question. Those cases have been few and far between, but there was some encouragement this week in the CAFC’s decision in Enfish LLC v Microsoft, when the majority ruling explicitly stated that Alice did not simply eliminate broad swathes of software-related inventions from patent eligibility.

Such has been the drift in the jurisprudence around Section 101 from its original moorings that any confirmation that software is indeed patentable is a welcome relief to most patent owners. For some, the suspicion remains that knocking out patents on 101 grounds using the two step process that was first established in SCOTUS’s Mayo decision and extended under Alice, has become a way for district court judges to clear patent cases from their docket – after all, the feeling is that most judges don’t actually like hearing patent cases.

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Professor Mark Lemley, Stanford Law School

Software patent holders should be breathing a sigh of relief after the Federal Circuit’s decision today in Enfish v. Microsoft.

The case pushes the courts to take seriously the Supreme Court’s notion that software patents directed to improving the functioning of computers themselves may be patentable.

But don’t hold your breath. The Supreme Court has a history of rejecting the Federal Circuit’s views on anything related to patentable subject matter. (Recall that in Bilski, Supreme Court Justices essentially said they disagreed with everything the Federal Circuit has ever said about patentable subject matter.)

In Enfish, the Federal Circuit waved a red flag for the Supreme Court, which is a dangerous thing to do. The Supreme Court has established a two-part test, putting improvements in the functioning of computers into the second step. The Federal Circuit moved that question into step one of the test, making it much easier for software patent holders to survive. This is the type of dance the Supreme Court has frowned on.