August 15, 2017

Clarity in §101: Half of the Judges Considering the Question Find Plaintiff’s Computer Memory System to be Patentable Subject Matter

By Bryan K. Wheelock, Principal

In Visual Memory LLC v. NVIDIA Corp., [2016-2254] (August 15, 2017), the Federal Circuit reversed the district court’s determination that Visual Memory’s U.S. Patent No. 5,953,740, on a memory system with programmable operational characteristics that can be tailored for use with multiple different processors, was drawn to patent ineligible subject matter.

Claim 1 states:

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.

The Federal Circuit said that the framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts comprises two steps.  The first step requires courts to determine whether the claims at issue are directed to one of those patent-ineligible concepts.  If they are, the court must then analyze whether the claim elements, either individually or as an ordered combination, contain an “inventive concept” that transforms the nature of the claim into a patent-eligible application.

At step one, the Federal Circuit asked whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea.  Analogizing to Enfish (self-referential table for a computer database) and Thales (unique configuration of inertial sensors), the Federal Circuit  found that the claims were directed to an improved computer memory system, not to the abstract idea of categorical data storage.

The Federal Circuit noted the many benefits explained in the specification: the elimination of the one-size-fits-all approach of the prior art, which resulted in trade-offs; interoperability with multiple different processors; and improved performance over prior art systems with even larger caches.  The Federal Circuit said that the claims were directed a technological improvement: an enhanced computer memory system.

The Federal Circuit said this was 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.”

The Federal Circuit went on to distinguish Content Extraction which merely employed a computer, and TLI Communications which used conventional hardware and were “not directed to a specific improvement to computer functionality.”

The opinion addressed the dissent’s contention that the claimed programmable operational characteristic is “nothing more than a black box” by pointing out there was a microfiche appendix of computer code, that enablement was a §112 issue not a §101 issue, and finally by pointing out that the innovative effort was not in the programming required, but in the creation of the memory system.

The Federal Circuit conceded that the concept of categorical data storage underlies the patent’s claims, but said that this is not enough to doom a claim under §101 because the claims are not so limited, and “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.”  The Federal Circuit ended the inquiry at Step 1 and remanded the case.

In the end, the finding of patentable subject matter was 2 judges for and 2 judges (the dissent and the district court judge) against.  If only all patentability determinations were as certain as 50-50.