The Federal Circuit’s Visual Memory decision continues to accentuate the need for technical advantages in patent specifications to avoid eligibility issues in the US and could emphasise the advantages of US attorneys drafting more detailed patent specifications. As we explore, these two points could have knock-on positive effects around the world, especially in Europe.

Quick read

In a recent Federal Circuit decision focused on the application of the two-part Alice test, the Federal Circuit overturned the District Court to find the subject matter to relate to eligible subject matter. The Federal Circuit followed previous decisions by accentuating the need to spell out technical advantages in patent specifications to show subject matter is patent eligible. One interesting aspect was the dissent of one of the Federal Circuit judges who asserted that the invention was not patent eligible because there was insufficient disclosure of key features of the invention. As a result it was, according to this judge, an abstract idea. The view of this one judge was overruled by the others. However, this lone voice has attracted the interest of US patent prosecutors trying to stay one step ahead of the USPTO and preparing patents for the US courts. In particular, suggestions are being made of the need for a thorough description of the technical working of an invention in US specifications in case this lone voice becomes more prominent.

For Europeans, it feels as if Alice may finally be arriving in Wonderland. Many of the patent eligibility issues us European attorneys experience before the EPO arise due to patent specifications being drafted without sufficient detail of the technical working of the invention and a lack of identification of technical advantages. If US drafting practice starts to shift towards more detailed technical explanations and incorporating more technical advantages, this may help improve the chances and reduce the cost of getting software patents granted at the EPO.

Detailed article

It is becoming a rare occurrence to see the Federal Circuit reverse a district court’s patent-eligibility holding, but in Visual Memory LLC v NVIDIA Corp. (Visual Memory) the Federal Circuit did just that.

Let’s firstly take a look at the patent to see what that was about, and then we’ll delve into what the Federal Circuit had to say and why we think it has ramifications way beyond the US.

The Patent

The U.S. patent in suit, US 5,953,740, describes a computer memory system having a cache memory resource configurable to operate efficiently with different processor types. The memory has three separate caches each of which possesses a “programmable operational characteristic (POC)”. When the system is turned on, information about the connected processor self-configures the programmable operational characteristic, which determines the type of information stored in each of the caches.

Technical advantages: a plus on both sides of the Atlantic

Where the Federal Circuit diverged from the District Court was in their application of the Enfish LLC v Microsoft Corp (Enfish) and Thales Visionix Inc. v United States (Thales) “guideposts” on eligibility. In particular, the Federal Circuit noted the claim states “having one or more programmable operational characteristics . . . defined through configuration by . . . [a] computer based on the type of . . . processor” and “determ[ing] a type of data stored by said cache” and the related benefits of the claimed memory system, as described in the specification. And it was these related benefits that were important in the Judges’ final conclusion that the subject matter was patent eligible.

From a European perspective, it is interesting to see that the related benefits were seen as being key by the judges because showing the “technical effect”, as we formally call such technical advantages in Europe, is also an essential requirement for getting similar subject matter granted before the EPO. Having seen similar conclusions and needs for technical advantages being identified in both Enfish and Thales, this continuing theme is great news not only for European practitioners, but for US patent proprietors seeking protection in Europe. This is because even if we are not seeing a complete alignment of US and European patent laws in relation to patent eligibility, it seems we are seeing an alignment in what needs to be in a patent specification to have valid granted patents in both jurisdictions. This should help European patent prosecutors and in turn assist in reducing the cost of prosecuting patents before the EPO because with clear advantages present in a specification the EPO is more easily convinced about the technical advantages of an invention.

The deviation of Visual Memory

So, we have seen that Visual Memory follows Enfish and Thales by finding the claims relate to eligible subject matter due to the judges seeing the invention as being focused on new and useful improvements. However, where Visual Memory differs is in that the judges did not reach a unanimous decision in this regard. Interestingly, it was in fact the author of the Enfish decision, Judge Hughes, who took a different view point to the other judges.

Judge Hughes, disagreed with his fellow judges in that he believed the claims could not be described at a lower level of abstraction than categorical data storage. Hughes believed that there was no description of how the POC of the claim could be implemented. Furthermore, Judge Hughes indicated that in his view everything else in the claim only described generic computer components. For him, the lack of a description for the POC was critical to the first step of the test set out in Alice Corp v CLS Bank International (Alice) in determining whether the invention relates to an abstract idea. Judge Hughes suggests that the lack of a proper technical description renders the invention abstract in nature.

The majority of the judges concluded that the patent eligibility issue should not focus on the POC because this description was not the pertinent factor to consider under Step 1 of the Alice test. According to the majority, Step 1 of Alice is concerned with the innovation envisioned by the inventors and whether that innovation, as reflected in the claims and specification, is patent eligible or an abstract idea. As the claims were focused on configuring a memory system based on the type of processor connected to the memory system, not how to configure that memory system using a POC, the absence of a detailed description of the POC was not seen to be of concern because the POC was not the “innovation” to which the claims were directed. Interestingly, the majority of judges in this case therefore placed far more emphasis on what the inventors identified the invention as relating to, while Judge Hughes was more focused on the quality of the overall technical disclosure. 

Obviously European practice differs considerably in relation to the conclusion reached by the majority of the judges in Visual Memory. At the EPO, we need to show that there is technical solution to a technical problem based on the rather artificial “closest prior art”. Because of the EPO’s eligible subject matter test relying upon this artificial concept of the closest prior art, we are less concerned about what the inventors identify the invention as being. Instead, in Europe we are focused on the technical advantages associated with the features that differ between the claimed invention and the closest prior art.

Impact on drafting practice

Interestingly, since this decision was handed down rumbles have been heard of US practitioners taking note of some of the reasoning from Judge Hughes. With the continued uncertainty over Alice and in particular the twists and turns of direction in terms of how it is applied, US patent practitioners are always trying to second guess what might come next. There is now talk amongst US patent prosecutors of including more technical detail when drafting just in case Judge Hughes’s lone voice later becomes the voice of the majority.

From a European perspective, these rumbles can only be seen as a positive.

For European practitioners, many of the uphill struggles at the EPO in terms of patent eligibility come from having to attempt to explain the features of a claimed invention are technically advantageous, or as we say in Europe ‘have a technical effect’, when the description provides little explanation of the invention or its advantages. The decision of the majority in Visual Memory to follow Enfish and Thales by looking for technical advantages in the description can only help those same inventions before the EPO. However, importantly, the dissenting voice, while it may add to the confusion in the US, can only help in Europe because it may result in more US drafted patent specifications including more technical advantages and technical detail of how the invention works.

While it often takes years before changes in practices in US drafting take effect amongst US practitioners and those patent applications finally find their way into Europe, as European practitioners we see the slow shift in US practice post-Alice with a generally warm glow because it should help to mitigate some of the fundamental problems European attorneys face relating to patent eligibility before the EPO. Positively, for patentees, applying these changes in drafting practice should not only improve chances of avoiding Alice rejections in the US but also bring down prosecution costs in Europe, which can only be a good thing.