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.


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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.