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 LLCPatent 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.

Case

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.