Computer Memory Claims are Held as Patent Eligible Subject Matter in the US (Yes, Really!)

by Joshua B. Goldberg, Nath, Goldberg & Meyer, U.S.A.

The US Court of Appeals for the Federal Circuit (CAFC) recently overruled a District Court judgment that certain claims directed to a “computer memory system” improperly encompass an abstract idea, and this should be subject matter ineligible. In reaching the opposite conclusion, the CAFC concluded the claims at issue were directed to “a technological improvement: an enhanced computer memory system.” While not dispositive, it is nice to see at least one CAFC panel find patent eligibility for a high-tech invention. See Visual Memory LLC v. NVIDIA Corporation, (Fed. Cir. 2017).

On August 15, 2017, a three-judge panel at the CAFC overturned a district court judgment of patent ineligible subject matter, for claims relating to “an abstract idea”. In this case, claim 1 of US Patent No. 5953740 at issue and obtained by Visual Memory was directed to a “computer memory system” including a “main memory” and a “cache” both connected to a bus that can then be connected to a processor. The key feature of the claim is that the cache’s operation is programmable. This can be seen from the claim language requiring “a programmable operational characteristic of said system determines a type of data stored by said cache.”

Initially, Visual Memory sued NVIDIA for patent infringement in the District Court of Delaware. The district court dismissed this suit, agreeing with NVIDIA’s motion that Visual Memory had “failed to state a claim upon which relief could be granted. In reaching this decision, the district court ruled that the patent was directed to the “abstract idea of categorical data storage” – something humans have allegedly been doing for many years. The CAFC applied the Supreme Court’s two-part test from Alice Corp. Pty. Ltd. v. CLS Bank International to determine patent eligible subject matter here. Using this two-part test, one must first determine whether the claim at hand is directed to a judicially-excluded law of nature, a natural phenomenon, or an abstract idea. If so, then one must further determine whether any element or combination of elements in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exclusion.

Step 2 of the Supreme Court’s test was at particular issue here, as the district court found that the cache, bus, and processor were all conventional and the claimed “programmable operational characteristic” was merely a vaguely described “generic computer element[s]”. On appeal, the CAFC disagreed, finding that the claims at issue were not abstract.

In reviewing the district court’s decision, the CAFC panel looked to the patent specification to find any technological improvements associated with the invention. The CAFC concluded that the patent specification disclosed a clear technological improvement over the art, namely “an enhanced computer memory system”, based at least in part on the specification’s disclosure of multiple benefits derived from this enhanced memory system. This conclusion was supplemented by the inclusion in the specification of an appendix of 200+ pages of computer code for actually implementing the process. Further, the CAFC made a very clear distinction between patent eligible subject matter and enablement, which had never been previously raised as an issue.

The message here seems to be that, under current US jurisprudence, relatively brief, high-level claims may be patent-eligible based on the technical improvements attributed to these claims by their accompanying specification. This is an important lesson for all application drafters to keep in mind.