Patent Claims to “Printed Circuit Board Configuration” Survive Alice Challenge

A Central District of California court denied a motion to dismiss claims of infringement of two patents directed to the arrangement of memory chips on a computer memory card, the defendant having alleged patent-ineligible subject matter under 35 U.S.C . § 101. Polaris Innovations Ltd v. Kingston Technology Co., Inc., No. SACV 16-00300-CJC(RAOx) (C.D. Cal. July 21, 2016).  The court found, under the Mayo/Alice test, that the claims are not abstract, but rather “concern physical layouts for particular memory cards that enable the cards to either have a slimmer profile or have more memory chips on it than it otherwise would have had,” and are therefore patent eligible.

U.S. Patent No. 6,850,414 and U.S. Patent No. 7,315,454 are both directed to layouts for computer memory cards. The ‘414 patent indicates that it solves the problem of reducing the height of the memory card while maintaining the same amount of storage. The ‘454 patent solves the problem of increasing the amount of storage on the memory card while maintaining the dimensions of the card.

Independent claim 1 from the ‘414 patent is representative. It recites:

An electronic printed circuit board configuration, comprising:

an electronic printed circuit board having a contact strip for insertion into another electronic unit; and

a memory module having at least nine identically designed integrated semiconductor memories;

each one of said semiconductor memories being encapsulated in a rectangular housing having a shorter dimension and a longer dimension;

said housing of each one of said semiconductor memories being identically designed and being individually connected to said printed circuit board;

one of said semiconductor memories being connected as an error correction chip;

said longer dimension of said housing of said error correction chip being oriented perpendicular to said contact strip; and

said longer dimension of said housing of each one of said semiconductor memories, other than said error correction chip, being oriented parallel with said contact strip.

The ‘454 patent is also directed to specifically orienting memory chips on a memory board. In the ‘454 patent, the claimed orientation purportedly achieves an optimization of space utilization on an electronic printed circuit board relative to prior art layouts.

Kingston, the defendant, argued that the patents were directed to the abstract idea of “physically arranging objects in a confined space,” and that this abstract idea was dressed up through the recitation of “generic, well-known components of a semiconductor memory module.” (Citing Kinglite Holdngs Inc. v. Micro-Star Int’l Co. Ltd., No. 14-3009-JVS, Dkt. (C.D. Cal. May 26, 2014)), Kingston argued that claims that are tied to computer technology, but that do not recite new functions, are unpatentably abstract.

The court rejected Kingston’s argument and found that the patents resulted in the optimized use of space in memory cards. “This is not a case where an inventor is trying to get around the prohibition of patenting abstract processes by tying an abstract process . . . to a generic computer setup that executes the abstract idea.” The ‘414’ and ‘454 patents pertain to patent eligible machines.

The court further noted that the patent claims may fail to satisfy the statutory conditions of novelty under § 102 or non-obviousness under § 103. Invalidity on these grounds would, however, not affect the determination that the patents recite patent-eligible subject matter under §101.

It is reassuring that the court found that a specific arrangement of hardware elements in a specific application was patent eligible. The consequences of an opposite result are difficult to imagine.