Quarterly International Ip Law Update

• Jurisdiction: United States,Federal,European Union
• Citation: Vol. 42 No. 4
• Publication year: 2017
• Author: David Tseng
• topic: Trademark,Patent law,Intellectual Property

Quarterly International IP Law Update

David Tseng

Dorsey & Whitney LLP

Rebecca Chen

Kenja IP Law, PC

UNITED STATES

Fed. Cir. Continues to Refine Patentability of Computer Patents Post-Alice-Impact on Foreign Markets

Recent Federal Circuit decisions continue to refine the scope of patentability for computer-implemented inventions as domestic and foreign stakeholders confront new hurdles to their patent prosecution strategies. For example, in Visual Memory LLC v. Nvidia Corp., a split majority panel held that the patent claims directed to a computer memory system did not cover an abstract idea, obviating a need for the Federal Circuit to analyze the second step of the Alice test.¹

The patent at issue in Visual Memory was directed at improving computer memory systems. At the time of filing, computer memory systems were divided into three tiers of speed to enhance performance: low, medium, and high. A problem was that larger high-speed memory was expensive relative to the other memory speeds. Another problem was that such memory systems were tailored for specific processors. The Visual Memory patent addressed this by allowing the memory system to be programmable.

The majority rejected the argument that the invention was directed to "the abstract idea of categorical storage" based on its review of the patent specification, which repeatedly referenced the invention as an improved memory system. Moreover, although the specification included lines of computer code, the majority further rejected the idea that the innovation behind the invention was directed to the computer code.

On the other hand, patents claiming software functions, such as those directed to an Internet message-publishing system, continue to be vulnerable to subject matter eligibility invalidation.² In EasyWeb, the Federal Circuit found that the claim was directed to an abstract idea—the use of conventional computer technology to collect, analyze, and publish data. Moving to the second part of the Alice test, the Federal Circuit could not find an "inventive concept," rejecting the argument that the ordered combination of steps was sufficiently transformative to merit patent protection.

These cases are instructive for potential patent holders (e.g., foreign entities filing in the U.S. or U.S. entities filing PCT application) in that the description of the invention in the specification can make a profound difference in overcoming subject matter eligibility issues in regards to computer-based patents. Patents drafted to cover improvements to computer performance are far more likely to be found...