The Court of Appeals for the Federal Circuit reversed the grant of a motion to dismiss on subject-matter ineligibility grounds in Visual Memory v. Nvidia Corp. , No. 2016-2254, 2017 U.S. App. LEXIS 15187 (Fed. Cir. Aug 15, 2017). The patent claims related to computer system memory that included a programmable cache, enabling the cache to be operationally reconfigured in response to detecting the type of processor to which the memory was attached.
The District Court had concluded that the claims were directed to categorical data storage, which it held was an abstract idea because it had been practiced for many years. The District Court then found no inventive concept in the claimed subject matter because the computer components were generic and conventional, and the programmable operational characteristics represented generic concepts as to the type of data to be stored in cache memory.
The Federal Circuit reversed , finding that the claims were directed to a technological improvement in computer memory systems. It resolved the controversy under step one of the two-part Alice inquiry, which analyzes whether the character of the claim as a whole could be considered an abstract idea. The Court emphasized that the use of programmable operational characteristics that are configurable based on the type of processor was a specific improvement in computer capabilities. The Court expressly called out the advantages from the specification in support of its conclusion: that it enabled interoperability with different processors with fewer tradeoffs in performance and improved performance of the memory itself. The Court emphasized that such a result was particularly proper in the context of a motion to dismiss, where all factual inferences must be resolved in favor of the patentee, the non-moving party.
In light of this decision, it should be more difficult for an accused infringer to successfully move to dismiss a claim for patent infringement on the basis that the patent claims present subject matter ineligible for patent protection. Although the ultimate determination on subject-matter eligibility is a question of law, several questions of fact may underpin that determination. For example, whether a claimed solution is rooted in computer technology and whether such a solution improves the functioning of a computer are questions of fact. On a motion to dismiss, these questions must be resolved in favor of the non-moving party. Patent applicants and practitioners may consider explaining why a patent’s subject matter is rooted in computer technology and identifying why and how claimed solutions improve the functioning of a computer to ensure that such factual questions can be raised on a motion to dismiss. Patent challengers, on the other hand, may want to delay their subject-matter eligibility challenges to a later stage to increase their likelihood of success.
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