Judge Andrews Invalidates Defendant’s Patent-in-Suit as Directed to an Abstract Idea
June 8, 2016
Publication| Intellectual Property
In Visual Memory LLC v. NVIDIA Corporation, C.A. No. 15-789-RGA (D. Del. May 27, 2016), Judge Andrews granted the defendant’s motion to dismiss and invalidated the plaintiff’s patent under 35 U.S.C. § 101 as containing unpatentable subject matter. The patent-in-suit purported to claim the storage of certain data types by use of “[a] computer memory system connectable to a processor and having one or more programmable operational characteristics.” Of note, Judge Andrews rejected the plaintiff’s argument that the motion to dismiss must be denied because claim construction was needed. Judge Andrews noted that the plaintiff had neither offered a proposed construction nor explained how claim construction would impact the Section 101 analysis. Further, Judge Andrews rejected the plaintiff’s argument that the defendant must prove invalidity under Section 101 by a clear and convincing standard, noting that patent ineligibility is a matter of law and “[w]ith questions of law, the clear and convincing standard ‘has no application.’”
In determining the patent’s validity, Judge Andrews invoked the two-step Alice test. Under step 1 of the Alice test, Judge Andrews found that the patent claims were directed towards the abstract idea of “categorical data storage.” Judge Andrews rejected the plaintiff’s argument that the recent Federal Circuit opinion in Enfish, LLC v. Microsoft Corp., 2016 WL 2756255 (Fed. Cir. May 12, 2016), stood for the proposition that any patent claim that “improve[s] the functioning of a computer itself” is typically patent eligible. Instead, Judge Andrews found that the patent claims did not improve on a computer’s function, but rather, simply described the concept of categorical data storage without describing a “specific or concrete improvement” in the way the computer stores data. Under step 2 of the Alice test, Judge Andrews found that the patent claims did not add to the abstract idea in order to create an inventive concept; rather, the patent claims “recited too broadly and generically to be considered sufficiently specific and meaningful applications of their underlying abstract ideas.” Judge Andrews found that the patent simply applied the abstract idea of categorical data storage to a conventional computer and, without more, was not patentable subject matter.
Analysis: This opinion suggests that the Court has started to closely analyze and apply the Federal Circuit’s decision in Enfish, which may or may not drastically change the Court’s view on patent eligibility for computer technology.