United States: Federal Circuit: Improvement To Computer Memory System Not An Unpatentable Abstract Idea

Last Updated: August 29 2017
Article by Lin F. Weeks

Lin Weeks is an associate at Holland & Knight's New York office

On August 15, the Federal Circuit issued an opinion that further shaped the contours of what subject matter is patentable under 35 U.S.C. § 101 after the Supreme Court's decision in Alice Corp. Pty. V. CLS Bank Int'l, 134 S. Ct. 2347 (2014).  The opinion, Visual Memory LLC v. NVIDIA Corp., No. 2016-2254, 2017 WL 3481288 (Aug. 15, 2017), reversed the district court's grant of defendant NVIDIA's motion to dismiss for failure to state a claim based on invalidity for lack of patentable subject matter.

The patent at issue was directed to an improvement on prior art computer memory systems through the use of "programmable operational characteristics" capable of modifying the memory system depending on what type of processor it was paired with. Visual Memory, 2017 WL 3481288, at *1-2.  An exemplary claims is:

1. A computer memory system connectable to a processor and having one or more programmable operational characteristics, said characteristics being defined through configuration by said computer based on the type of said processor, wherein said system is connectable to said processor by a bus, said system comprising:

  • a main memory connected to said bus; and
  • a cache connected to said bus;

wherein a programmable operational characteristic of said system determines a type of data stored by said cache.

U.S. Patent 5,953,740 (the '740 patent).  Several dependent claims defined other "programmable operational characteristics.

In an opinion by Judge Stoll in which Judge O'Malley joined, the Federal Circuit resolved the issue of patentability at the first step of the Alice framework, which requires a determination of whether the claims are directed to a patent-ineligible concept such as laws of nature, natural phenomena, or abstract ideas.

The Federal Circuit's analysis of whether the claims of the '740 patent were directed to an unpatentable abstract idea centered around four of its previous decisions: Enfish, LLC v. Microsoft Corp., 882 F.3d 1327 (Fed. Cir. 2016), Thales Visionix Inc v. United States, 850 F.3d 1343 (Fed. Cir. 2017), Content Extraction & Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343 (Fed. Cir. 2014), and In re TLI Communications LLC Patent Litig., 823 F.3d 607 (Fed. Cir. 2016).  A summary of the patentable subject matter at issue in those cases is instructive to the Federal Circuit's discussion. 

Claimed subject matter (2017 WL 3481288, at *3-4)
Enfish "A self-referential table for a computer database." 
Thales "A unique configuration of inertial sensors and the use of a mathematical equation for calculating the location and orientation of an object relative to a moving platform." 
Content Extraction "A series of patents claiming a method of using a computer and a scanner to extract data from hard copy documents, recognizing specific information in the extracted data, and storing that information in memory."
In re TLI "Assigning 'classification data,' such as timestamps or dates, to digital images, sending the images to a server, extracting the classification data, and having the server take the classification data into consideration when storing the digital images." 


In Enfish, the Federal Circuit laid out a number of "guideposts," 2017 WL 3481288, at *3, for determining whether claims involving computing are 'directed to' an abstract idea.  Specifically, when "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," Enfish, 882 F.3d at 1336, the claims pass muster under step 1 of the Alice analysis and step 2 need not be considered.  In other words, courts should ask "whether the focus of the claims is on the specific asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an 'abstract idea' for which computers are invoked merely as a tool." Enfish, 882 F.3d at 1335-36.  In this way, the Federal Circuit delineated Enfish and Thales, both of which dealt with claims directed to improving the functionality of a computer system.  In contrast, Content Extraction and In re TLI both dealt with claims directed to the use of computing power to improve the functionality of a memory storage system, and required an inquiry into whether their claims contained an "inventive concept" that "transform[s] the nature of the claim into a patent-eligible application." Alice, 134 S. Ct. at 2355.

In this context, the claims of the '740 patent presented a borderline case.  While the claims were directed to the improvement of a computer memory system (which would seem to fall within the rubric of "improvement to computer functionality," or a "specific asserted improvements in computer capabilities," per Enfish, 882 F.3d at 1335-36) the nature of a computer memory system provided an arguable parallel with the facts of Content Extraction and In re TLI as well.  Computer memory systems, as a general matter, are comprised of a three-tiered memory hierarchy, which might be analogized to a three-level filing cabinet.  Bulk storage takes place in low-cost, low-speed memory; a middle, medium-speed level is known as main memory; and an expensive, high-speed memory, known as the processor cache, retrieves information from the medium speed level.  This system of organization and its components are known in the prior art.  2017 WL 3481288, at *1-2.  The '740 patent's "programmable operational characteristics" sought to alleviate a common problem with prior art memory systems, namely that they are typically optimized for a specific type of processor.  Rather than one-off optimization, the claims of the '740 patent recited a memory system that would allow a computer program to automatically sense what type of processor was in place and change settings within the memory system accordingly.  2017 WL 3481288, at *2.  Thus the parallel with Content Extraction (and to a lesser extent, In re TLI) in which computing power was deployed to make more efficient prior art systems of categorizing information.

That parallel was argued by Judge Hughes in dissent, who wrote, "I would find the '740 claims are directed to the abstract idea of categorical data storage." Visual Memory, 2017 WL 3481288, at *6 (Hughes, J., dissenting).  Judge Hughes would have found that the claims of the '740 patent failed the second step under Alice, as "[t]he programmable operational characteristic is nothing more than a black box for performing the abstract idea of storing data based on its characteristic, and the patent lacks any detail about how that is achieved.  The remaining computer elements in the claims (cache, memory, bus) are nothing more than a collection of conventional computing components found in any computer." Id.

The majority disagreed, writing that its review of the claims "demonstrates that they are directed to an improved computer memory system, not to the abstract idea of categorical data storage," and noting that "none of the claims recite all types and all forms of categorical data storage," as each were constrained by a "programmable operational characteristic" limitation.  Id. at *4.  Additionally, the court focused on the cognizable improvements to computer functionality that the '740 patent claimed over the prior art.  While "prior art memory systems possessed the flexibility to operate with multiple different processors, this one-size-fits all approach frequently caused a tradeoff in processor performance.  The '740 patent's teachings obviate the need to design a separate memory system for each type of processor . . . [and] results in a memory system that can outperform a prior art memory system that is armed with a cache many times larger."  Id. (citations omitted).

The surface-level implication of the Federal Circuit's decision in Visual Memory is a strengthening of the binary between the functionality of computer systems (improvements to which the court has consistently found are not abstract ideas under Alice) and systems of categorical data storage that merely use computer systems (which have so far required analysis under Alice's second, "inventive concept," step).  However, one aspect of the '740 patent's claims that went unaddressed by the court was the fact that the metadata limitation (i.e. "programmable operational characteristics") was directed to the overlying system of computer memory storage, not to individual pieces of data (as was the case in Content Extraction and In re TLI).  One could envision a case in which a computer memory system assigns classification metadata to code and non-code data in a novel fashion in order to speed or ease that data's retrieval by a computer processor.  It is perhaps an even tougher marginal question than that presented in Visual Memory whether claims directed to such a system would be an abstract idea under step one of Alice.

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.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
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
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions