The Court of Appeals for the Federal Circuit revisited the often unclear question of subject matter eligibility under 35 U.S.C. § 101 in Visual Memory LLC. v. Nvidia Corp. In the 2-1 decision, the Federal Circuit reversed the district court’s determination that the claims at issue were directed to an abstract idea.
The fate of subject matter eligibility is far from certain today; however, there are a few application drafting takeaways from the Visual Memory case that can help in getting computer implemented inventions to allowance:
- Include details relating to specific technological improvements of the computer system.
- Detail all of the advantages that the technological improvements provide over the prior art. The combination of identifying the technological improvement and the associated advantages can help support an argument to overcome, or avoid altogether, a rejection under 35 U.S.C. § 101.
- Tie the claims to the recited technological improvements and advantages identified in the specification.
Identifying two recent Federal Circuit decisions—Enfish and Thales—as guide posts, the Federal Circuit determined that the claims at issue in the Visual Memory patent, U.S. Patent No. 5,953,740, involved a technological improvement to a computer memory system that provided distinct advantages over the prior art. Specifically, the Visual Memory patent is directed to a memory system that has programmable operational characteristics that can be tailored for use with multiple different processors without any associated reduction in performance—as was common in the prior art.
The combination of the technological improvement and associated identified advantages led the Federal Circuit to determine that the claims recite eligible subject matter under 35 U.S.C. § 101 that is more than merely the “use of an abstract mathematical formula on any general purpose computer.” The court was careful to note, however, that while the claims at issue were patent-eligible under 35 U.S.C. § 101, they could still be subject to invalidity arguments under other sections of patent law.
The decision in the Visual Memory case can be good news to those seeking patent protection in the area of computer implemented technologies. Using the guide posts of Enfish, Thales, and Visual Memory, the path to subject matter eligible computer claims is a little clearer.
Joshua I. Rudawitz is an associate in Nutter’s Intellectual Property Department. He focuses his practice on all aspects of patent law, drawing on his mechanical engineering background and love of technology. Josh is a regular ...
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