In Part 1 of this post series, several decisions from the Court of Appeals for the Federal Circuit (CAFC) were analyzed to explore factors that may lead a court to find patent claims ineligible under §101. The cases discussed were Credit Acceptance Corp. v. Westlake Services (June 9, 2017), Prism Technologies LLC v. T-Mobile USA, Inc. (June 23, 2017), and Return Mail, Inc., v. United States Postal Service (August 28, 2017).
During this same period of time, the CAFC decided Visual Memory LLC v. Nvidia Corporation (August 15, 2017) in which the claims were found to be patent eligible under §101. As each of these cases was decided in a relatively narrow three-month window from June to August 2017, they offer insight into the logic of the CAFC in analyzing patent eligibility issues, particularly in regard to computer arts.
Part 2 of this post examines those factors in Visual Memory that the CAFC relied on in determining the claims were patent eligible under §101. While no one characteristic of a claim is outcome determinative, Visual Memory serves as a guidepost in drafting patent eligible claims.
The patent at issue in Visual Memory was US Patent No. 5,953,740. Claim 1 of the ‘740 patent was found to be representative (shown below).
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 claims are directed to a computer memory system comprising at least one memory cache with the computer memory system having one or more “programmable operating characteristics” that are configured by the computer based on the type of processor contained in the computer. In essence, the cache element(s) are configured to store specific sets of data (for example, code data and non-code data) and/or communicate with specified components of the computer based on the type of processor contained in the computer. The specification provides several examples of specific programmable operational characteristics and how they are varied depending on processor type, as well as providing an appendix of computer code for carrying out such operations.
The district court, on a motion to dismiss for failure to state a claim, found claim 1 f the ‘740 patent was directed to the abstract idea of “categorical data storage” under step 1 of the Alice framework and found the claims did not recite inventive concepts under step 2 of the Alice framework. The district court held the “programmable operating characteristics” limitation represented only a generic concept that determined the type of data to be stored in the cache and the specification failed to explain the mechanisms for accomplishing the result.
The CAFC reversed, finding claim 1 of the ‘740 patent was directed to an improved memory system per se, as can be seen in the previous cases in this area, the specificity in which the claims are defined under the “directed to” inquiry is often dispositive of the ultimate patent eligibility issue.
In reaching this conclusion, the CAFC relied on several factors that led to a more specific description of the claims under the “directed to” inquiry mandated in step 1 of the Alice framework. First, the court stressed that the specification described the benefits of the claimed computer memory system. The specification provided the advantages of computer memory system, such as allowing different processors to be used with the memory system without compromising the performance of either the processor or the memory system, as well as the improved performance of the claimed memory system in comparison to prior art memory systems.
To be clear, describing the benefits of the system alone is not always enough to obtain a favorable outcome under the “directed to” inquiry, as many prior cases have provided such descriptions and still found the claims characterized at a high level. However, a discussion of the benefits and advantages of the invention and how the invention overcomes problems noted in the art, particularly when specifically related to the claimed elements, gives a court the opportunity to resist a high-level characterization of the claims and provide a more specific description of what the claims are “directed to” under step 1 of the Alice framework. As noted in prior precedent, courts must “articulate with specificity what the claims are directed to” in order that the step 1 inquiry under the Alice framework is a meaningful one.
The court also noted that the focus of the claims was on the improvement to computer functionality itself in contrast to improvements in a method in which the computer is used only as a tool. In claim 1 above, note the claimed element “cache” is modified to store only a specific type of data by the “programmable operational characteristic” of the claim. The opinion drew analogies to the claims in Enfish (claiming a specified self-referential data table that improved the function of a computer) and Thales Visionix (claiming a unique configuration of two inertial sensors that improved the accuracy of the system). By focusing the claims on the claimed improvement, the content of the claims is linked to the description of the computer memory system and thereby, indirectly, to the benefits/advantage of the system.
Importantly, the claims at issue here and in Thales Visionix did not specify the exact method by which the invention was carried out. In this case, claim 1 did not specifically describe how the “programmable operating characteristic” determines the type of data stored by the cache. The same fact pattern was also present in MCRO where the claims described a generic rule set for animating lip synchronization and facial expression. The operational details and implementation were described in the specification, and to varying degrees, in the dependent claims in each of these cases.
While the specific description of how the object of the invention is carried out in the claims is not absolutely required, thought should be given to providing dependent claims providing such details when possible. Furthermore, the role of the specification is describing how the claimed invention is implemented cannot be underestimated. The dissent in this case argued that the term “programmable operational characteristic” was nothing more than a black box and the claims provided no meaningful limitations on how the “programmable operational characteristics” were implemented. In essence, the dissent argued that the claims failed patent eligibility, at least in part, for failure to satisfy the requirements of 35 USC §112. The majority stated that while §112 issues must be considered for patent validity, they are not a part of the §101 eligibility analysis (however, see a differing approach in dicta from Trading Technologies, a non-precedential decision). In short, while various panels have differing opinions on the role of written description/enablement issues in the patent eligibility analysis, using the specification to describe how the claims are implemented allows the patentee to address such issues if they arise.
Another aspect worth noting is that while the claims in Visual Memory recited “generic” computer elements (similar to the claims in Credit Acceptance Corp., Prism Technologies and Return Mail), the function of the generic computer elements in the current case was altered. Specifically, the cache element, while arguably generic, functioned in a different manner than the cache components of the prior art as a result of the modification implemented by the programmable operating characteristics. Contrast this with Credit Acceptance Corp., where the concept of linking two previously unlinked databases together to enhance the financing options was not enough to confer patent eligibility when each database functioned in an art-recognized manner. Courts are willing to find claims patent eligible even when the claims recite generic components when the claims are properly structured (see also Bascom).
What Can We Learn
A number of lessons can be gleaned from Visual Memory and the CAFC’s commentary on the claims.
- Use the specification to specifically describe the innovation(s) presented in the claims to avoid a high-level characterization of the claims at the directed inquiry of Alice step 1.
- Use the specification to describe the benefits of the claimed invention, with specific reference to the features claimed.
- Provide as much detail as possible on the operation of the claimed invention, with specific attention to the unique claim elements.
- Use the specification to tie the solution of art-recognized problems to specific elements identified in the claims.
- Describe any ways in which the claimed elements are modified as compared to corresponding prior art elements, emphasizing any new functions that result from the modification.
- Tailor the claims to support a specific characterization of the claims under the “directed to” inquiry of Alice step 1 based on the description in the specification.
While there are no guarantees when arguing patent eligibility, realizing the importance of the specification in setting up successful arguments for overcoming §101 rejections is critical.