Claims to a “Computer Memory System” Patent-Ineligible Even After Enfish

Claims of U.S. Patent No. 5,953,740, directed to “a computer memory system connectable to a processor and having one or more programmable operational characteristics,” were held invalid under 35 U.S.C. § 101 in Visual Memory, LLC v. NVIDIA Corp., No. 15-789-RGA (D. Del. May 27, 2016).  Accordingly, the court granted the defendant’s motion, brought under FRCP 12(b)(6), to dismiss for failure to state a claim.

The ’740 patent proposed to solve the problem that, when “’both code and non-code data are being cached, there will be overlap in their respective’ physical locations in the cache, which may result in a significant decline in performance (known as ‘thrashing’) ‘as data is replaced in response to memory accesses.’”  The ’740 patent’s solution to this problem was to segregate processor caches and/or pages of main memory to contain “either code or non-code data.”

Claim 1 of the ’740 patent, the shortest of the three independent claims, is reproduced below:

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.

Turning to the first prong of the Mayo/Alice patent-eligibility test, the court agreed with the defendant “that the claims are directed to the abstract idea of categorical data storage.”  The court rejected the plaintiff’s attempt to rely on the recent Federal Circuit case of Enfish, LLC v. Microsoft Corp., explaining that Enfish did not stand for the proposition that a claim would be patent-eligible merely on the basis of improving the operation of a computer.  The court here noted that the Federal Circuit in Enfish:

described the central question as “whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.”

Citing the Federal Circuit’s TLI Communications decision a week after Enfish, the court then added that:

Enfish is thus best understood as a case which cautions against oversimplification during step one of Mayo/Alice, rather than a case which exempts from § 101 scrutiny all patents which purport to improve the functioning of a computer.

Here, the claims of the ’740 patent, considered as a whole, are directed to the broad “concept of categorical data storage,” which “is an abstract idea” even if limited “to a particular technological environment.”

Turning to the second prong of the Mayo/Alice test, the court found that the claims did not recite a specific improvement to computing technology sufficient to transform the abstract idea into patent-eligible subject matter.  The claims simply recited generic computer components, and did not specify any specific programming, relying instead on a recitation of a “programmable operational characteristic” without any explanation, to determine data types to be stored in a cache.

The takeaway from this case is that, even after Enfish, courts are going to continue to look at very broad claims with a jaundiced eye.  The claims here certainly solved a problem that occurred only in a technical environment, i.e., thrashing.  But they are very broad.  Indeed – pardon the speculation – it certainly seems surprising that these claims survived prior art rejections.  In any event, the present case signals that broad claims that can be analogized to manual processes, e.g., here, categorizing data, will continue to face challenges under Alice and Section 101 regardless of the technical problem that they solve.

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