A split Federal Circuit panel held that claims of U.S. Patent No. 5,953,740 are directed to “an improvement to computer memory systems” and “not to the abstract idea of categorical data storage.” Visual Memory, LLC v. NVIDIA Corp., No. 2016-2254 (Fed. Cir. Aug. 15, 2017) (majority op. by Judge Stoll, joined by Judge O’Malley; Judge Hughes dissenting) (precedential). Accordingly, the court reversed the district court’s Rule 12(b)(6) dismissal for failure to state a claim, hold that the ’740 patent was not, as the lower court had found, invalid under 35 U.S.C. § 101 and the Alice test.
Claim 1 of the ’740 patent 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.
Drawing from the ’740 patent specification, the court pointed to advantages over the prior art from a “memory system with programmable operational characteristics defined by the processor connected to the memory system.” Thus, patent-eligibility of the present claims was supported by Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), and Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017).
NVIDIA argued that the “programmable operational characteristic” was simply functionality for storing data. Not so, said the panel majority: “[e]ven the broadest claim, claim 1, requires a memory system with a main memory and a cache memory, where the memory system is configured by a computer to store a type of data in the cache memory based on the type of processor connected to the memory system.”
Further, for three reasons the majority disagreed with the dissent that the ’740 patent simply claimed a “black box” with no explanation as to how the claimed functionality would be implemented. First, the ’740 patent included computer code in a microfiche appendix. Second, support or lack thereof in the Specification is an enablement question under 35 U.S.C. § 112, not an eligibility question under 35 U.S.C. § 101. Third, the dissent wrongly assumed that the innovative effort lay in the programming, whereas in fact the “improved memory system is achieved by configuring a programmable operational characteristic of a cache memory based on the type of processor connected to the memory system.”
Finally, said the majority, the fact that “the concept of categorical data storage underlies the ’740 patent’s claims” did not make the claims patent-ineligible. All inventions use abstract ideas. Here, the claims improve functioning of a computer, and are patent-eligible.
In dissent, Judge Hughes disagreed “that we can describe the fundamental concept behind the ’740 claims at a lower level of abstraction than categorical data storage.” As noted above, Judge Hughes thought that the recited “programmable operational characteristic” was “nothing more than a black box for performing the abstract idea of storing data based on its characteristic,” objecting that “the patent lacks any details about how that is achieved.” The appended microfiche code was irrelevant, because it did not limit the claims, and considering it would improperly untether the Section 101 inquiry from the claims. According to Judge Hughes, the claims simply applied the abstract idea of categorical data storage in a generic computing environment.
Lessons for Practice
Judge Hughes’ statement of his point of disagreement with the majority nicely sums up the conundrum of patent-eligibility law in general: at what level of abstractedness do we consider claims for purposes of the Alice test? Here, Judge Hughes’ position is that the analysis should strip out all hardware, and simply consider whether claimed programming was an unpatentable abstract idea. But this seems to ignore the possibility that even conventional hardware elements, when claimed in combination with programming (no matter how high-level or abstract the programming is) can provide improvements to technology, and can be patent-eligible. In any event, this case is another lesson that a specification that explains how technology is improved will provide patent-eligibility ammunition.