United States: Federal Circuit Rules That Claims For Programmable Tiered Computer Memory Are Patent-Eligible

Visual Memory LLC v. NVIDIA Corp., No. 2016-2254 (Fed. Cir. Aug. 15, 2017)

The U.S. Court of Appeals for the Federal Circuit reversed a district court ruling dismissing a patent infringement action on the ground that the asserted claims were not patent-eligible under Alice Corp. Pty. v. CLS Bank Int'l, 134 S.Ct. 2347 (2014). The appeals court ruled that the claims were directed to an improved computer memory system, not merely to the abstract idea of categorical data storage. The court noted that any concerns that the patent claims did not provide enough detail about how the invention actually works is a question of enablement, 35 U.S.C. § 112(a), an issue separate from eligibility.

Background

Visual Memory LLC owns U.S. Patent No. 5,953,740, titled "Computer memory system having programmable operational characteristics based on characteristics of a central processor." The '740 patent claims a three-tiered memory hierarchy for use in a computer system, employing low-cost, low-speed memory; medium speed memory; and expensive high-speed cache memory. The invention uses "programmable operational characteristics" to identify the computer processor and "self-configure" the memory hierarchy to "achieve or exceed the performance of a system utilizing a cache many times larger than the cumulative size" of the system memory cache.

Visual sued NVIDIA Corporation for infringement in the U.S. District Court for the District of Delaware. NVIDIA moved to dismiss the action for failure to state a claim under Fed. R. Civ. P. 12(b)(6), arguing that the claimed invention was not patent-eligible. The district court granted the motion to dismiss after applying Alice's two-step framework and concluding that the claimed invention was directed to the abstract idea of categorical data storage and lacked an inventive concept. Visual appealed to the Federal Circuit.

Federal Circuit Rules that Invention Is Directed to Improvement to Computer Function, Not to Abstract Idea of Tiered Memory

In a panel decision written by Circuit Judge Kara F, Stoll, the Federal Circuit reversed the district court. The appeals court stressed that the '740 patent specification identifies specific operational improvements resulting from the claimed invention, including "multiple mode operation" for different processors, an advance over prior examples of categorical memory usage requiring manual reprogramming to configure the allocation of memory to specific processor requirements. Thus, the patent's use of "programmable operational characteristics" provides a substantial advantage by "allow[ing] different types of processors to be installed with the [same] subject memory system without significantly compromising their individual performance." Slip op. at 5.

The Federal Circuit held that the claimed invention is eligible under the Alice framework, because it is not directed to an abstract idea. As a result, the court considered only "Step 1" of the Alice framework. In Alice Step 1, the court noted that its task is to "articulate with specificity what the claims are directed to and ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea." Slip op. at 7 (quotations and citations omitted). The court observed that the '740 patent invention is similar to the improvements found to be eligible in Enfish,LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) and Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017). In Enfish, the court ruled that claims directed to a self-referential data structure were not merely abstract ideas because "the plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity," 822 F.3d at 1336, and the claimed structure improved computer performance through faster searching and more efficient data storage. In Thales, the court held that an "unique configuration of inertial sensors and the use of a mathematical equation for calculating the location and orientation of an object" was not an abstract idea when the invention resulted in improved and more accurate positioning information. Slip op. at 8-9.

Using the Enfish and Thales cases as guideposts, the Federal Circuit ruled that the'740 patent claims similarly are not directed to an abstract idea because they are "directed to an improved computer memory system, not to the abstract idea of categorical data storage." Slip op. at 9.

As with Enfish's self-referential table and the motion tracking system in Thales, the claims here are directed to a technological improvement: an enhanced computer memory system. The '740 patent's claims focus on a "specific asserted improvement in computer capabilities"—the use of programmable operational characteristics that are configurable based on the type of processor— instead of "on a process that qualifies as an 'abstract idea' for which computers are invoked merely as a tool." Enfish, 822 F.3d at 1336. And like the patents at issue in Enfish and Thales, the specification discusses the advantages offered by the technological improvement. Accordingly, this is not a case where the claims merely recite the "use of an abstract mathematical formula on any general purpose computer," "a purely conventional computer implementation of a mathematical formula," or "generalized steps to be performed on a computer using conventional computer activity." Id. at 1338 (collecting cases where claims were directed to patent-ineligible subject matter).

Slip op. at 10-11.

Circuit Judge Hughes, in dissent, argued that the '740 patent claims recite a "programmable operational characteristic" without functional details, resulting in a "black box for performing the abstract idea of storing data based on its characteristic, and the patent lacks any details about how that is achieved[.]" The majority noted, however, that that issue was one of enablement and, on a motion to dismiss for failure to state a claim under Rule 12(b)(6), the detailed specification (including 263 frames of microfiche program code) was sufficient to avoid dismissal:

Alice requires no more from the claims or the specification to support our conclusion that the claims are not directed to an abstract idea. This conclusion is particularly proper on a motion to dismiss under Rule 12(b)(6), where all factual inferences drawn from the specification must be weighed in favor of Visual Memory, the non-moving party.

Slip op. at 14. Thus, the court reversed the district court's dismissal.

Practical Significance

The Visual Memory decision reinforces the "technological improvement" standard for patent eligibility set forth in Enfish and Thales, but does not further define when an "improvement" to a computer's function takes an invention out of the realm of "abstract ideas." Thus, applicants can continue to attempt to prove that their inventions represent improvements to the functioning of a computer, in order to satisfy the threshold of the Alice Step 1 inquiry without having to identify an inventive concept under Alice Step 2.

One perhaps useful advancement in the court's application of Alice is the use of the specification to support the argument that the invention as a whole is directed to an improvement to computer function. Emphasizing that the invention is a significant "improvement" in the specification can later be referenced as evidence of the fact. Of course, this language and argument likely will confine the invention to including at least the subject matter identified as an "improvement."

Also, Applicants should continue to consult the U.S. Patent and Trademark Office guidance on subject matter eligibility. The December 2016 guidance provides particularly useful examples relating to software and computer-oriented claims, with a fairly objective standard for addressing the Alice Step 1 test (requiring the claims to recite "something more" than the abstract idea itself) in the event an invention is found to be directed to an abstract idea in Alice Step 1.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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