U.S. Patent Nos. 6,574,759 and 6,704,891 are directed to “Verifying and Improving Run-Time of a Memory Test.” This seeming technical improvement, deemed by the court to be a mere automation of a known manual process, was not enough to save the patent claims from a finding of invalidity under 35 U.S.C. § 101 after the defendant filed a motion for judgment on the pleadings. Papst Licensing GmbH & Co. KG v. Xilinx Inc., Nos. 16-CV-00925-LHK, 16-CV-00926-LHK (N.D. Cal. June 9, 2016). Along the way, the court interestingly distinguished Enfish, LLC v. Microsoft Corp., No. 2015-1244 (Fed. Cir. May 12, 2016), explaining that, unlike the claims here, which could have provided, but did not require, a technical improvement, in Enfish, the technical improvement was recited in the clams.
In this case, the defendants argued, and the court agreed, “that each of the asserted claims, at its heart, is directed to the use of a simulator to determine whether a memory test violates a set of rules.” The plaintiff could not save the claims by pointing to “error message” limitations. It is true that, as the Enfish court cautioned, “determining the concept to which a claim is directed at the first step of the Alice framework cannot be ‘untethered from the language of the claims.’” However, “it is equally clear that the Court's formulation of the basic concept reflected by the claim need not expressly recite every limitation of a claim.” Here, it was fair to reduce the claims to their “simplest form.”
One claim did recite a limitation that the plaintiff persuasively argued needed to be considered. This limitation, directed to a “packer” (i.e., code condensation), required claim 14 of the ’759 patent to be “characterized as being directed to the concepts of (1) using a simulator to determine whether a memory test violates a set of rules; and (2) using a packer to optimize the memory test.”
However characterized, the claims were directed to an unpatentable abstract idea, the court concluded. Unlike the claims in Enfish, the claims here “are directed to methods of verifying and optimizing memory tests, not to improving the computer or software components used to carry out those methods.” The claims were distinguishable from those found patent-eligible in Enfish because they “do not purport to improve the underlying technology of memory devices or particular techniques of testing memory devices.”
Moreover, the court agreed with the defendants that “that the steps of the asserted claims reflect activity described by the specification as previously having been carried out by humans, and which are capable of being performed mentally or with pencil and paper.” Simply requiring the use of software, or the fact that the claimed packer operates differently from a human optimizer, was not enough to save the claims from this fatal defect. Further, this operational complexity was not reflected in the claim limitation.
Turning to the second part of the Mayo/Alice test, the court found that elements identified by the plaintiff as overcoming the abstract idea “do not sufficiently narrow the claims in a manner sufficient to avoid preemption of the abstract idea itself.” For example, the claims recited no novel manner of an error message or adjustment provided by a simulator.
The takeaway: plaintiffs should strive to identify patent claim elements that could not be performed manually, and that have no analogue in the manual world. Otherwise, defendants who can show that patent claims lack such elements, i.e., a “technical improvement,” are likely to prevail, no matter how “technical” the environment of the patent claims may seem.