The Federal Circuit recently decided a patent subject-matter eligibility case relating to computer memory in Visual Memory LLC v. Nvidia Corp. In a divided opinion, the Federal Circuit reversed the district court and held Visual’s patent relating to “an enhanced computer memory system” as patent eligible.
The majority applied the Alice/Mayo framework. This framework follows a two-step test that first determines whether “the claims at issue are directed to [an abstract idea]” (step one), and if they are, then determines whether there is an inventive concept that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [abstract idea] itself” (step two).
Because the majority found the claims at issue to be directed to a non-abstract idea, the court did not address step two of the framework.
Step One of the Alice/Mayo Framework
In Visual Memory, the Federal Circuit reviewed claim 1 of U.S. Patent No. 5,953,740. The `740 patent is directed to a computer memory system improvement. Prior art memory systems lack versatility because they are designed and optimized for specific types of processors. The `740 patent attempts to improve memory system versatility by creating a memory system with programmable operational characteristics tailored for use with different processors.
Claim 1 recites:
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.
In its decision, the district court ruled that claim 1 is directed to the abstract idea of categorical data storage. The majority disagreed with the district court decision.
The majority begins its analysis by identifying two of its earlier decisions as guideposts for analyzing the present case. In the first, Enfish, the Federal Circuit held that claims reciting a self-referential table were directed to an improvement in the computer’s functionality. In the second, Thales, the Federal Circuit held that the claims were directed to the “use of inertial sensors in a non-conventional manner to reduce errors in measuring the relative position and orientation of a moving object on a moving reference frame.” In both cases, the claims were held to be patent eligible.
With the above guideposts in mind, the majority relied on claim 1 (including its preamble) and several dependent claims to conclude that the claims are directed to a patent-eligible, technological improvement. In so finding, the Federal Circuit relied on claim language indicating that the programmable operational characteristics of the memory system control the type of data stored in the memory system’s cache.
In the majority’s view, none of the claims recite all types and forms of categorical data storage. Instead, the majority found that, like the self-referential table in Enfish and the motion tracking system in Thales, claim 1 of the `740 patent is directed to a technological improvement comprising an enhanced computer memory system. Further, like the patents in Enfish and Thales, the specification of the `740 patent describes multiple benefits and advantages offered by the technological improvements.
The majority held that the claims are directed to the non-abstract concept of configuring the memory system based on the type of processor connected to the memory system. Because the claims are held to be directed to a non-abstract concept, the majority declined to analyze the claims under step two of the Alice/Mayo framework.
The dissent believes that claim 1 cannot be described at a lower level of abstraction than categorical data storage because the claims are not directed to a specific means or method of implementing a “programmable operational characteristic.” The dissent asserts that as claim 1 does not provide any specific limitations on the “programmable operational characteristic,” it is a purely functional component that is nothing more than a black box. Further, the dissent states that the `740 patent does not describe how to implement the “programmable operational characteristic.” Accordingly, the dissent believes that the majority has described claim 1 at an improper level of abstraction.
Besides providing another example of a patent-eligible claim, this case is important because it demonstrates the importance of 1) the preamble, and 2) the specification in performing a patent-eligibility claim analysis. Much of the majority’s analysis hinged on language found in the preamble of claim 1. Further, the majority used the specification’s description of technical benefits and advantages provided by the claimed memory system to support its decision. Thus, whether attempting to attack or to defend the patent eligibility of a patent claim, a practitioner should consider both the preamble of the claim and the description in the patent, or lack thereof, of technical benefits provided by the claim.