iIn a rare reversal of a district court’s patent-ineligibility holding, the Federal Circuit found the claims at issue in Visual Memory LLC v NVIDIA Corp. patent-eligible under Step 1 of the Supreme Court’s two-part eligibility test in Alice v. CLS Bank. The Federal Circuit found that the claims (directed to computer memory) were, for purposes of the Alice test, analogous to the claims reviewed under the Court’s patent-favorable decisions in Enfish v. Microsoft [1] and Thales v. United States. [2]
Step 1 of the two-part Alice test asks whether the claims are directed to an abstract idea. If the claim is focused on a new and useful improvement, and not merely something that qualifies as an abstract idea, the claim is patent-eligible. The Enfishand Thales claims were eligible under Step 1 because they were focused on a new and useful improvements. The court in Visual Memory believed the claims were similarly focused on a new and useful improvement, but not by unanimous decision. Notably, the author of the Enfish decision, Judge Hughes, dissents in Visual Memory.
The ‘740 Patent
U.S. Patent 5,953,740 describes a computer memory system having a cache memory resource configurable to operate efficiently with different processor types. The memory system includes three separate caches, each possessing a “programmable operational characteristic.” When the system is turned on, information about the connected processor self-configures the programmable operational characteristic, which determines the type of information (non-code data, code data or both) stored in each of the caches.
Federal Circuit
The district court found the ‘740 patent claims ineligible as directed to the abstract idea of categorical data classification. The Federal Circuit reversed. Relying on Enfish and Thales as “guideposts” on eligibility, the Court noted the claim phrases “having one or more programmable operational characteristics . . . defined through configuration by . . . [a] computer based on the type of . . . processor” and “determ[ing] a type of data stored by said cache” and the related benefits of the claimed memory system, as described in the specification. The Court then sums up its opinion: “[a]s with the Enfish self-referential table and the motion tracking system in Thales, the claims here are directed to a technological improvement: an enhanced computer memory system.” Quoting Enfish, the Court further said the claims focus on a “‘specific asserted’ improvement in computer capabilities” instead of “on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” And, like the patents at issue in Enfish and Thales, the specification discussed the advantages offered by the technological improvement.
In Part Two of this post I will turn to Hughes’ dissent and the majority’s response to Hughes, then conclude with thoughts on longer term implications for the Alice test gleaned from this exchange.
[1] See Why Fed. Circ. Treated Software Claims Differently In Enfish for my insights on this decision, which is commonly cited as precedent for Step 1 of the Alice eligibility test.
[2] See Patent Eligibility And Fed. Circ. F-35 Helmet Case for my insights on this decision, which relates to patent-eligibility for inventions that rely on mathematical algorithms to solve technology problems.
