By Michael Borella --
When considering the patent-eligibility of claims, size usually matters. Claims that are longer and recite more detailed inventions tend to be more likely to survive 35 U.S.C. § 101 challenges than those that are shorter and high level. But not in all cases. Continuing a trend that we've seen in Amdocs (Israel) Limited v. Openet Telecom, Inc. and Thales Visionix Inc. v. U.S., the Federal Circuit has found relatively brief, high-level claims to be patent-eligible based on the technical improvements attributed to these claims by their accompanying specification. Judge O'Malley joined Judge Stoll's majority opinion, while Judge Hughes wrote in dissent.
Visual Memory is the owner of U.S. Patent No. 5,953,740, which describes "a memory system with programmable operational characteristics that can be tailored for use with multiple different processors without the accompanying reduction in performance." As any computer science student will be able to explain, computer memories are roughly organized in a three-tier hierarchy. At the lowest tier is long-term storage on non-volatile media such as flash drives, disk drives, and solid state drives. The middle tier includes volatile main memories that contain instructions and data for running programs. The highest level is cache memory, typically disposed within a processor, containing only instructions and data that are being used, are about to be used, or were recently used by the processor. As one moves up the hierarchy, the memories become faster, smaller, and more expensive per byte.
A well-known challenge of the hierarchy is how to move instructions and data in and out of cache memory so that the processor does not have to wait for this information to be fetched from main memory.
According to the '740 patent, "prior art memory systems lacked versatility because they were designed and optimized based on the specific type of processor selected for use in that system." This resulted in inflexible systems, as well as the expense of designing a new memory system for each processor.
The claimed invention alleges to address this issue "by creating a memory system with programmable operational characteristics that can be tailored for use with multiple different processors without the accompanying reduction in performance." Particularly, it proposes use of three different cache memories: an internal cache, a pre-fetch cache, and a write buffer cache. The operations of these caches depend on the characteristics of the processor with which they operate. For instance, the internal cache "can store both code and noncode data, or it can store only code data," and the write buffer cache "can be programmed to buffer data solely from a bus master other than the system processor, or to buffer data writes by any bus master including the system processor." Doing so results in a system that "can achieve or exceed the performance of a system utilizing a cache many times larger than the cumulative size of the subject caches" while being capable of pairing with multiple types of processors.
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.
Visual Memory sued NVIDIA in the District of Delaware. On a 12(b)(6) motion, NVIDIA contended that the claims were invalid because they were directed to patent-ineligible subject matter.
The Supreme Court's Alice Corp. Pty. Ltd. v. CLS Bank Int'l case set forth a two-part test to determine whether claims are directed to patent-eligible subject matter. 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. But, generic computer implementation of an otherwise abstract process does not qualify as "significantly more." On the other hand, a claimed improvement to a computer or technological process is not abstract.
The District Court agreed with NVIDIA, finding that "the claims were directed to the abstract idea of categorical data storage" and that their additional elements of a memory, cache, bus, and processor were too generic and conventional to be significantly more. Furthermore, the District Court stated that the "programmable operational characteristics did not provide the inventive concept . . . because they represent generic concepts that determine the type of data to be stored by the cache, and the patent fails to explain the mechanism for accomplishing the result."
On appeal, the Federal Circuit reiterated that, under part one of the Alice test, claims that focus on "an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity," are not abstract, and that one should look to the patent's specification to make this determination. Additionally, well-known prior art may be considered as establishing what is generic and conventional when conducting this evaluation.
The Court rapidly concluded that the claims were indeed not abstract. In doing so, the Court looked to the language of claim 1, as well as that of some of the dependent claims. Moreover, the Court considered the multiple benefits of the claimed invention as described in the specification. Particularly, allowing "different types of processors to be installed with the subject memory system without significantly compromising their individual performance" and that this performance "can outperform a prior art memory system that is armed with a cache many times larger than the cumulative size of the subject caches." Thus, the Court found that the claims are directed to the technological improvement of an enhanced computer memory system.
The Court also differentiated claim 1 from those of Content Extraction & Transmission LLC v. Wells Fargo Bank and In re TLI Communications LLC Patent Litigation. These two cases, in the Court's view, involved claims covering abstract ideas operating on generic computer hardware, and neither improved the operation of these components.
In the dissent, Judge Hughes took the position that since claim 1 on its face is broad and somewhat vague, the Court should not consider the improvements described in the specification. He wrote that the Court should not "describe the fundamental concept behind the '740 claims at a lower level of abstraction than categorical data storage." His concern was that "the '740 claims are not directed to a specific means or method of implementing a programmable operational characteristic" and this feature is just a black box. Judge Hughes also noted that "the lack of specificity supports the notion that the claims are directed to an abstract idea" and that merely purporting that an invention improves a computer is insufficient if it requires "someone else to provide all the innovation."
The majority disagreed with the dissent in three ways. First, the majority noted that the patent included a microfiche appendix with 263 frames of computer code, which provide a significant amount of technical specificity. Second, the majority took issue with the dissent's contention regarding a lack of specificity, stating that such considerations fall under § 112 rather than § 101. Third, the majority asserted that the invention's flexible caching technique was the non-abstract aspect of the claims, rather than the programming required to implement it.
Ultimately, the majority and the dissent are talking past each other, as their disagreement is about whether any of the specification should be read into the claims. The majority answers that question in the positive, because under Rule 12(b)(6) all factual inferences must be drawn in favor of the non-moving party. The dissent does not explicitly address the procedural posture.
Regardless, this case once again reminds us that when dealing with a § 101 contention, what is said in the specification is important. Of further importance is whether a finder of fact is willing to consider the totality of the claim language and the specification's disclosure in the Alice analysis. The answers to these questions often determine the outcome of the § 101 inquiry, even at the Federal Circuit.
Visual Memory LLC v. NVIDIA Corp. (Fed. Cir. 2017)
Panel: Circuit Judges O'Malley, Hughes, and Stoll
Opinion by Circuit Judge Stoll; dissenting opinion by Circuit Judge Hughes