IP Law Daily, PATENT—D. Del.: Computer memory system patent claimed ineligible abstract idea, (May 31, 2016)

By Cheryl Beise, J.D.

A 1999 patent claiming a computer memory system for reducing memory access time has been invalidated by the federal district court in Wilmington, Delaware, as being directed to the ineligible abstract idea of categorical data storage. The court granted NVIDIA Corporation’s motion to dismiss patent infringement claims asserted by Visual Memory LLC (Visual Memory LLC v. NVIDIA Corporation, May 27, 2016, Andrews, R.).

Visual Memory is the assignee of U.S. Patent No. 5,953,740 (the ’740 patent), issued on September 14, 1999, and entitled “Computer memory system having programmable operational characteristics based on characteristics of a central processor.” The claimed memory system is designed to reduce memory access time.

In September 2015, Visual Memory filed suit against NVIDIA Corporation, accusing its memory storage systems, including graphics cards and products based on Fermi or Kepler architecture, of infringing the ’740 patent. NVIDIA moved to dismiss the complaint pursuant to Fed. R. Civ. P. 12(b)(6), arguing that the ’740 patent was directed to patent-ineligible subject matter.

It is well settled that abstract ideas in and of themselves are not eligible for patent protection under Section 101 of the Patent Act. However, patent claims drawn to an abstract idea nevertheless may be patentable if they recite an “inventive concept.”

Contrary to Visual Memory’s assertion, patent eligibility under Section 101 is a question of law suitable for resolution on a motion to dismiss, the court noted. Visual Memory failed to offer any proposed claim construction that would impact the Section 101 analysis. Visual Memory also failed to identify any relevant facts that needed to be resolved in order to determine eligibility.

Under the Supreme Court’s Mayo/Alice framework for determining patent eligibility, a court first must determine whether the claims are drawn to a patent-ineligible concept. If the answer is yes, the court must next examine “the elements of the claim both individually and as an ‘ordered combination’” to see if they include an “inventive concept.”

Step one—abstract idea. The court first considered whether the claims of the ’740 patent were directed to an abstract idea.

The ’740 patent contains nine claims, three of which are independent. The patent describes a computer memory system connectable to a processor and having one or more programmable operational characteristics. The "characteristics" of the memory are "programmable as a function of characteristics based on processor type." During the system's operation, data is "transferred from system memory to the cache memory in order to have quick access to the variables of the currently executing program."

Citing the Federal Circuit’s May 12, 2016 decision in Enfish LLC v. Microsoft Corp., Visual Memory argued that its claims were patent eligible because they “improve the functioning of a computer itself.”

However, the Federal Circuit in Enfish did not state that an improvement to computer functionality was determinative of eligibility, the court corrected. Rather, the Federal Circuit 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.”

The court concluded that the claims of the ’740 patent, considered in their entirety, were not directed to a “specific” or “concrete” improvement in the way software operates, but instead were directed to the “abstract idea of categorical data storage.”

Step two—inventive concept. Having decided that the patent's claims were directed to an abstract idea, the court next addressed whether the claims recited an inventive concept.

Relying on DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), Visual Memory argued that the claims of the ’740 patent were necessarily rooted in technology and “the combination of elements results in an improved computer system, and thus the claims are patent eligible.” However, just as Alice did not declare eligible any patent that “purport[s] to improve the functioning of the computer itself,” DDR Holdings “did not create a § 101 safe harbor for patents rooted in Internet­centric problems,” the court observed.

The court determined that the claims of the ’740 patent were “recited too broadly and generically to be considered sufficiently specific and meaningful applications of their underlying abstract ideas.” Claim 1 recited generic computer components, specifically a “main memory” and a “cache,” connectable via a “bus” to a “processor.” The specification acknowledged that these components were known in the art. The “programmable operational characteristics” limitation was simply a generic concept that “determines a type of data stored by [a] cache.” The remainder of the claims also described conventional computer components, used in a conventional fashion. Merely applying the abstract idea of categorical data storage on a computer cannot supply an inventive concept, the court said.

Concluding that the claims of the ’740 patent were directed to an abstract idea and lacked an inventive concept, the court held that the ’740 patent was invalid. NVIDIA’s motion to dismiss was granted.

The case is No. 1:15-cv-00789-RGA.

Attorneys: Stamatios Stamoulis and Richard Charles Weinblatt (Stamoulis & Weinblatt LLC) for Visual Memory LLC. Jack B. Blumenfeld and Paul Saindon, (Morris, Nichols, Arsht & Tunnell LLP) and Gabriel K. Bell and Richard G. Frenkel (Latham & Watkins LLP) for NVIDIA Corporation.

Companies: Visual Memory LLC; NVIDIA Corporation

Cases: Patent TechnologyInternet DelawareNews