Last week, the Federal CircuitSee CAFC handed down a decision in Visual Memory v. NVIDIA, deciding that the Visual Memory[1. Unsurprisingly, Visual Memory is an NPENon-Practicing Entity. A broad term associated with trolls but now disfavored because it includes universities and legitimate technology developers that seek to license technology in advance rather than after a producing company has independently developed it. More that did not itself come up with this patent. Transpacific IP, a Singaporean patent monetization entity, bought a set of 14 patents from NCR, the original owner. Intellectual VenturesThe largest patent aggregator, currently holding around 40,000 patents. Closely associated with co-founder Nathan Myhrvold. IV is often viewed as a patent assertion entity, although much of its activities are conducted through spinoffs, and the company is at least nominally in the business of producing inventions in-house. See our posts on Intellectual Ventures. bought one of these patents from Transpacific, combined it with a set of other patents from various acquisitions, and immediately spun them out into a holding entity, which further subdivided the set of patents into smaller shell companies. Visual Memory, the shell company holding these patents, shares an address with three other shell companies formed in this single transaction (ULogin, Pure Data, and Dashboard Computing.)] cache patents are patent-eligible under § 101.
Unfortunately, in doing so the Federal CircuitSee CAFC makes the same mistake they’ve made a few times now—they’ve looked at the specificationThe section of a patent that provides a description of the invention and the manner and process of making and using it. It must enable the "person having ordinary skill in the art" to reproduce and use the invention without undue experimentation. A patent's claims are interpreted in light of the specification., not the claims, in order to justify finding eligibility. The problem with that?
The Federal CircuitSee CAFC: “The § 101 inquiry must focus on the language of the Asserted Claims themselves.”
The Federal CircuitSee CAFC: “We do not read limitations from the specificationThe section of a patent that provides a description of the invention and the manner and process of making and using it. It must enable the "person having ordinary skill in the art" to reproduce and use the invention without undue experimentation. A patent's claims are interpreted in light of the specification. into claims.”
The Federal CircuitSee CAFC: “although the specificationThe section of a patent that provides a description of the invention and the manner and process of making and using it. It must enable the "person having ordinary skill in the art" to reproduce and use the invention without undue experimentation. A patent's claims are interpreted in light of the specification. often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”
I could go on—there are literally hundreds of examples just from the Federal Circuit—but you probably get the point—claim language defines inventions, not the specificationThe section of a patent that provides a description of the invention and the manner and process of making and using it. It must enable the "person having ordinary skill in the art" to reproduce and use the invention without undue experimentation. A patent's claims are interpreted in light of the specification., and the Federal CircuitSee CAFC has repeatedly warned against reading the specificationThe section of a patent that provides a description of the invention and the manner and process of making and using it. It must enable the "person having ordinary skill in the art" to reproduce and use the invention without undue experimentation. A patent's claims are interpreted in light of the specification. into the claims. You are supposed to understand the claim language in light of the specificationThe section of a patent that provides a description of the invention and the manner and process of making and using it. It must enable the "person having ordinary skill in the art" to reproduce and use the invention without undue experimentation. A patent's claims are interpreted in light of the specification., but that’s it—the specificationThe section of a patent that provides a description of the invention and the manner and process of making and using it. It must enable the "person having ordinary skill in the art" to reproduce and use the invention without undue experimentation. A patent's claims are interpreted in light of the specification. doesn’t limit the claim language.
This means that, if you’re thinking about whether a claim is directed to a specific technological idea or a broad abstract ideaAbstract ideas are not patent-eligible subject matter. This judicially developed exclusion was most recently explained by the Supreme Court in Bilski v. Kappos, 2010. More, you need to look at the claims, not the specificationThe section of a patent that provides a description of the invention and the manner and process of making and using it. It must enable the "person having ordinary skill in the art" to reproduce and use the invention without undue experimentation. A patent's claims are interpreted in light of the specification..
Unfortunately, in this case the majority failed to “focus on the language of the Asserted Claims” when it decided whether the claims were patent-eligible.
One Way Or Another
The majority decision found the claims patent-eligible because “the use of programmable operational characteristics that are configurable based on the type of processor” is a technological improvement, rather than an abstract ideaAbstract ideas are not patent-eligible subject matter. This judicially developed exclusion was most recently explained by the Supreme Court in Bilski v. Kappos, 2010. More.
Here’s claim 1 of the patent:
1. 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.
Everything in that claim is absolutely generic and well known until that last limitation.[2. The last limitation might also have been known already; this case was an appeal of a determination on an early motion, meaning that NVIDIA hadn’t yet made any arguments based on invalidity over the prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed. at the time the case was decided.] That’s the limitation the majority took a look at and decided wasn’t an abstract ideaAbstract ideas are not patent-eligible subject matter. This judicially developed exclusion was most recently explained by the Supreme Court in Bilski v. Kappos, 2010. More. Unfortunately, it is; it’s just the abstract ideaAbstract ideas are not patent-eligible subject matter. This judicially developed exclusion was most recently explained by the Supreme Court in Bilski v. Kappos, 2010. More of using a part of the system in one way in some circumstances, and another way in others. There’s no structure or improvement, just a statement of a goal. Patent maximalists will claim this is a patent on cache memory, but the reality is that this is a patent on the abstract ideaAbstract ideas are not patent-eligible subject matter. This judicially developed exclusion was most recently explained by the Supreme Court in Bilski v. Kappos, 2010. More of using a computer component in one way or another depending on the type of processor it’s hooked up to.
So what was the majority looking at when they decided that “wherein a programmable operational characteristic of said system determines a type of data stored by said cache” isn’t an abstract ideaAbstract ideas are not patent-eligible subject matter. This judicially developed exclusion was most recently explained by the Supreme Court in Bilski v. Kappos, 2010. More?
For one thing, the majority looked at the patent’s “microfiche appendix having a combined total of 263 frames[3. A microfiche frame is essentially one page of a patent.] of computer code.” This code, according to them, could (not does, just could) teach how to “configure a programmable operational characteristic of a cache memory.”
You know what isn’t in the claims? 263 pages of computer code.
The majority also noted that “the implementation details of how to configure a programmable operational characteristic of a memory system may well fall within the routine knowledge of one of ordinary skill in the art.” There’s a problem with that argument as well. If doing this was within routine knowledge (and that’s the only even allegedly novel part of the invention) then the invention is invalid because it was obvious. So it’s either invalid as abstract or invalid as obvious, but it can’t be valid.
Taking all this into account, the majority decided that the claims were patent-eligible because they were directed to an improvement in computer functionality. Of course, the claims in Gottschalk v. Benson were also directed to improving computer functionality—they provided an improvement by converting between binary and decimal representations. The Supreme Court explicitly determined that those claims were directed to an ineligible abstract ideaAbstract ideas are not patent-eligible subject matter. This judicially developed exclusion was most recently explained by the Supreme Court in Bilski v. Kappos, 2010. More.
It’s unclear why the Federal CircuitSee CAFC thinks it can depart from Supreme Court precedent by creating a test that would hold valid claims the Supreme Court invalidated, much less why it thinks it can do so by reading limitations from the specificationThe section of a patent that provides a description of the invention and the manner and process of making and using it. It must enable the "person having ordinary skill in the art" to reproduce and use the invention without undue experimentation. A patent's claims are interpreted in light of the specification. into the claims.
For Distribution
This isn’t the first case that has read into the specificationThe section of a patent that provides a description of the invention and the manner and process of making and using it. It must enable the "person having ordinary skill in the art" to reproduce and use the invention without undue experimentation. A patent's claims are interpreted in light of the specification. in order to find claims patent-eligible. Last year, in the Amdocs v. Openet case[4. Amdocs was represented in this case by my former firm while I worked there. I was not involved in the case in any way, and this post is based entirely on public information.], a similar decision was made—claims were found to be patent-eligible based on aspects of the patent only described in the specificationThe section of a patent that provides a description of the invention and the manner and process of making and using it. It must enable the "person having ordinary skill in the art" to reproduce and use the invention without undue experimentation. A patent's claims are interpreted in light of the specification., aspects that were completely absent from the claim language. The majority admitted that the claims were directed to an abstract ideaAbstract ideas are not patent-eligible subject matter. This judicially developed exclusion was most recently explained by the Supreme Court in Bilski v. Kappos, 2010. More, but said they contained an “inventive concept” sufficient to make the claim patent-eligible.
In Amdocs, the key to eligibility (according to the court, at any rate) was the “distributed” nature of the patent. The problem with that, as identified in Judge Reyna’s dissent, is that the majority “relies on the specificationThe section of a patent that provides a description of the invention and the manner and process of making and using it. It must enable the "person having ordinary skill in the art" to reproduce and use the invention without undue experimentation. A patent's claims are interpreted in light of the specification. to import innovative limitations into the claims at issue” because the claims at issue are entirely lacking in that limitation.
Again, we see the same pattern: claims entirely lacking any inventive concept, saved by the importation of ideas from the specificationThe section of a patent that provides a description of the invention and the manner and process of making and using it. It must enable the "person having ordinary skill in the art" to reproduce and use the invention without undue experimentation. A patent's claims are interpreted in light of the specification..
On Petition
In the Amdocs case, Openet has filed a petition for certiorari with the Supreme Court, asking them a simple question.
Whether the Federal CircuitSee CAFC erred by looking beyond the claims to the patent specificationThe section of a patent that provides a description of the invention and the manner and process of making and using it. It must enable the "person having ordinary skill in the art" to reproduce and use the invention without undue experimentation. A patent's claims are interpreted in light of the specification. to assess patent eligibility?
Openet’s simple question yields an equally simple answer: Yes, they did. There’s a long-standing prohibition against importing limitations from the specificationThe section of a patent that provides a description of the invention and the manner and process of making and using it. It must enable the "person having ordinary skill in the art" to reproduce and use the invention without undue experimentation. A patent's claims are interpreted in light of the specification. into the claims. The Supreme Court uses the claims, not the specificationThe section of a patent that provides a description of the invention and the manner and process of making and using it. It must enable the "person having ordinary skill in the art" to reproduce and use the invention without undue experimentation. A patent's claims are interpreted in light of the specification., as the focus of the patent-eligibility review. (In fact, the Myriad patent-eligibility decision never even uses the word ‘specification’.)
We’ll find out whether the Supreme Court will even consider this question in the fall.