PublishedAugust 21, 2017

It’s The Claim Language—Except When It Isn’t

Last week, the Federal Circuit handed down a decision in Visual Memory v. NVIDIA, deciding that the Visual Memory[1. Unsurprisingly, Visual Memory is an NPE 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 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 Circuit makes the same mistake they’ve made a few times now—they’ve looked at the specification, not the claims, in order to justify finding eligibility.  The problem with that?

The Federal Circuit: “The § 101 inquiry must focus on the language of the Asserted Claims themselves.”

The Federal Circuit: “We do not read limitations from the specification into claims.”

The Federal Circuit: “although 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 specification, and the Federal Circuit has repeatedly warned against reading the specification into the claims.  You are supposed to understand the claim language in light of the specification, but that’s it—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 idea, you need to look at the claims, not 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 idea.  

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 art at the time the case was decided.]  That’s the limitation the majority took a look at and decided wasn’t an abstract idea.  Unfortunately, it is; it’s just the abstract idea 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 idea 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 idea?

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 idea.  

It’s unclear why the Federal Circuit 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 specification into the claims.

For Distribution

This isn’t the first case that has read into 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 specification, aspects that were completely absent from the claim language.  The majority admitted that the claims were directed to an abstract idea, 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 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 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 Circuit erred by looking beyond the claims to the patent 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 specification into the claims.  The Supreme Court uses the claims, not 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.

Josh Landau

Patent Counsel, CCIA

Joshua Landau is the Patent Counsel at the Computer & Communications Industry Association (CCIA), where he represents and advises the association regarding patent issues.  Mr. Landau joined CCIA from WilmerHale in 2017, where he represented clients in patent litigation, counseling, and prosecution, including trials in both district courts and before the PTAB.

Prior to his time at WilmerHale, Mr. Landau was a Legal Fellow on Senator Al Franken’s Judiciary staff, focusing on privacy and technology issues.  Mr. Landau received his J.D. from Georgetown University Law Center and his B.S.E.E. from the University of Michigan.  Before law school, he spent several years as an automotive engineer, during which time he co-invented technology leading to U.S. Patent No. 6,934,140.

Follow @PatentJosh on Twitter.

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