United States Court of Appeals 

for the Federal Circuit ______________________ 

VISUAL MEMORY LLC,

Plaintiff-Appellant

v.

NVIDIA CORPORATION,

Defendant-Appellee

______________________ 

2016-2254

______________________ 

Appeal from the United States District Court for the 

District of Delaware in No. 1:15-cv-00789-RGA, Judge 

Richard G. Andrews.

______________________ 

Decided: August 15, 2017

______________________ 

RICHARD CHARLES WEINBLATT, Stamoulis & Weinblatt 

LLC, Wilmington, DE, argued for plaintiff-appellant. 

Also represented by STAMATIOS STAMOULIS. 

MAXIMILIAN A. GRANT, Latham & Watkins LLP, 

Washington, DC, argued for defendant-appellee. Also 

represented by GABRIEL BELL; RICHARD GREGORY 

FRENKEL, Menlo Park, CA.

______________________ 

Before O’MALLEY, HUGHES, and STOLL, Circuit Judges.
2 VISUAL MEMORY LLC v. NVIDIA CORPORATION

Opinion for the court filed by Circuit Judge STOLL.

Dissenting opinion filed by Circuit Judge HUGHES.

STOLL, Circuit Judge. 

Visual Memory, LLC appeals the district court’s dismissal of its patent infringement complaint against 

NVIDIA Corporation. The district court held that Visual 

Memory’s U.S. Patent No. 5,953,740 is drawn to patentineligible subject matter, and therefore its complaint 

failed to state a claim under Federal Rule of Civil Procedure 12(b)(6). We conclude instead that the ’740 patent 

claims an improvement to computer memory systems and 

is not directed to an abstract idea. Accordingly, we reverse the district court and remand for further proceedings.

I.

The ’740 patent teaches that computer systems frequently use a three-tiered memory hierarchy to enhance 

performance. The three tiers include: 1) a low-cost, lowspeed memory, such as a magnetic disk, for bulk storage 

of data; 2) a medium-speed memory that serves as the 

main memory; and 3) an expensive, high-speed memory 

that acts as a processor cache memory. ’740 patent col. 1 

ll. 54–64. Because the cache memory is the most expensive, it is typically smaller than the main memory and 

cannot always store all the data required by the processor. The memory hierarchy alleviates the limitations 

imposed by the cache’s size because it allows code and 

non-code data1 to be transferred from the main memory to 

the cache during operation to ensure that the currently 

 

1 The ’740 patent defines code data to include instructions, whereas non-code data does not. ’740 patent 

col. 3 ll. 37–41.
VISUAL MEMORY LLC v. NVIDIA CORPORATION 3

executing program has quick access to the required data. 

Replacement algorithms determine which data should be 

transferred from the main memory to the cache and which 

data in the cache should be replaced. As a result, the code 

and non-code data to be executed by the processor are

continually grouped into the cache, thereby facilitating 

rapid access for the currently executing program. 

These prior art memory systems lacked versatility because they were designed and optimized based on the 

specific type of processor selected for use in that system. 

Designing a different memory system for every processor 

type is expensive, and substituting any other type of 

processor into the system would decrease its efficiency. 

Memory systems could be designed to operate with multiple types of processors, but the design tradeoffs often 

diminished the performance of one or all of the computers. 

The ’740 patent purports to overcome these deficiencies by creating a memory system with programmable 

operational characteristics that can be tailored for use 

with multiple different processors without the accompanying reduction in performance. It discloses a main memory 

12 and three separate caches: internal cache 16, pre-fetch 

cache 18, and write buffer cache 20. Id. at col. 3 ll. 34–53. 

A schematic of the ’740 patent’s memory system is shown 

below in Figure 1:
4 VISUAL MEMORY LLC v. NVIDIA CORPORATION

The three caches possess programmable operational 

characteristics that are programmable based on the type 

of processor connected to the memory system. When the 

system is turned on, information about the type of processor is used to self-configure the programmable operational 

characteristics. For example, depending on the type of 

processor, internal cache 16 can store both code and noncode data, or it can store only code data. Id. at col. 4 

ll. 30–35. Similarly, write buffer cache 20 can be programmed to buffer data “solely from a bus master other 

than the system processor,” or to buffer “data writes by 

any bus master including the system processor.” Id. at 

col. 4 ll. 35–43. By separating the functionality for the 

caches and defining those functions based on the type of 

processor, the patented system can “achieve or exceed the 

performance of a system utilizing a cache many times 

larger than the cumulative size of the subject caches.” Id.

at col. 4 ll. 24–26. 

Using a programmable operational characteristic 

based on the processor type can also improve the main

memory. Fast page mode is a well-known technique for 

speeding up access to main memory. In fast page mode, a 

row in a memory page is accessed without having to 

continually re-specify the row address, thereby reducing 

access time. A register associated with the main memory 

holds the page address of the most recently accessed page. 

The ’740 patent’s main memory constitutes an advance

over the prior art fast page mode memory because it is 

divided into pages containing either code or non-code 

data, and “the system provides a bias towards code pages 

or non-code pages depending upon the type of processor 

connected to the system.” Id. at col. 4 ll. 55–58. For one 

processor type, the register will hold the address of the 

most recently accessed code page; for another processor 

type, the register will hold the address of the most recently accessed non-code page. The specification discloses 

that combining the selective open page bias with the fast 
VISUAL MEMORY LLC v. NVIDIA CORPORATION 5

page mode offers faster access to main memory and 

increases system performance. Id. at col. 5 ll. 6–8. 

Taken together, the “multiple mode operation” of the 

’740 patent confers a substantial advantage by “allow[ing] 

different types of processors to be installed with the 

[same] subject memory system without significantly 

compromising their individual performance.” Id. at col. 5 

ll. 25–29. The ’740 patent’s claims reflect these technological improvements. For example, claim 1 recites: 

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.

Id. at col. 6 ll. 28–38. The dependent claims further 

define the programmable operational characteristic, i.e., 

determining whether the cache stores both code and noncode data (claim 2) and whether the cache buffers data 

from both the bus master and the processor (claim 3). 

Independent claim 6 recites the fast page mode embodiment. 

Visual Memory sued NVIDIA for infringement of the 

’740 patent. Believing the claims to be directed to patentineligible subject matter, NVIDIA filed a motion to dismiss for failure to state a claim pursuant to Federal Rule 

of Civil Procedure 12(b)(6). 
6 VISUAL MEMORY LLC v. NVIDIA CORPORATION

The district court granted NVIDIA’s motion. Under 

step one of the Alice test, the court concluded that the 

claims were directed to the “abstract idea of categorical 

data storage,” which humans have practiced for many 

years. Visual Memory LLC v. NVIDIA Corp., No. 15-789, 

2016 WL 3041847, at *4 (D. Del. May 27, 2016). The 

court’s step-two analysis found no inventive concept 

because the claimed computer components—a main 

memory, cache, bus, and processor—were generic and 

conventional. The ’740 patent’s programmable operational characteristics did not provide the inventive concept, 

according to the court, because they represent generic 

concepts that determine the type of data to be stored by 

the cache, and the patent fails to explain the mechanism 

for accomplishing the result. Id. at *7. 

Visual Memory appeals the district court’s decision. 

We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). 

II.

We apply regional circuit law when reviewing motions 

to dismiss for failure to state a claim, FairWarning IP, 

LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1092 (Fed. Cir. 

2016), and the Third Circuit “review[s] de novo a district 

court’s grant of a motion to dismiss for failure to state a 

claim under Federal Rule of Civil Procedure 12(b)(6).” 

Ballentine v. United States, 486 F.3d 806, 808 (3d Cir. 

2007). We review de novo any determination that a claim 

is directed to patent-ineligible subject matter. Enfish, 

LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 

2016). 

Section 101 defines the scope of patent-eligible subject 

matter as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful 

improvement thereof.” 35 U.S.C. § 101. To this broad 

universe of eligible subject matter, the Supreme Court 

has long-recognized an exception: laws of nature, natural 

phenomena, and abstract ideas are not patent-eligible 
VISUAL MEMORY LLC v. NVIDIA CORPORATION 7

because they represent “the basic tools of scientific and 

technological work.” Ass’n for Molecular Pathology v. 

Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 

566 U.S. 66, 71 (2012)). Permitting patent protection for 

these ideas could thwart the purpose of the patent laws

because it “might tend to impede innovation more than it 

would tend to promote it.” Alice Corp. Pty. v. CLS Bank 

Int’l, 134 S. Ct. 2347, 2354 (2014) (quoting Mayo, 566 U.S. 

at 71). 

The “framework for distinguishing patents that claim 

laws of nature, natural phenomena, and abstract ideas 

from those that claim patent-eligible applications of those 

concepts” comprises two steps. Id. at 2355. The first step 

requires courts to “determine whether the claims at issue 

are directed to one of those patent-ineligible concepts.” 

Id. If they are, the court must then analyze whether the 

claim elements, either individually or as an ordered 

combination, contain an “inventive concept” that “‘transform[s] the nature of the claim’ into a patent-eligible 

application.” Id. (quoting Mayo, 566 U.S. at 72, 78). 

Our analysis begins with Alice step one. Although the 

two steps in the Alice framework “involve overlapping 

scrutiny of the content of the claims,” the “Supreme 

Court’s formulation makes clear that the first-stage filter 

is a meaningful one, sometimes ending the § 101 inquiry.” 

Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353

(Fed. Cir. 2016). In this regard, we must articulate with 

specificity what the claims are directed to, Thales Visionix 

Inc. v. United States, 850 F.3d 1343, 1347 (Fed. Cir. 

2017), and “ask whether the claims are directed to an 

improvement to computer functionality versus being 

directed to an abstract idea.” Enfish, 822 F.3d at 1335 

(“[S]ome improvements in computer-related technology 

when appropriately claimed are undoubtedly not abstract, 

such as a chip architecture, an LED display, and the 

like.”). 
8 VISUAL MEMORY LLC v. NVIDIA CORPORATION

Two recent cases inform our evaluation of whether the 

claims are “directed to” an abstract idea. In Enfish, we 

held claims reciting a self-referential table for a computer 

database were patent-eligible under Alice step one because the claims were directed to an improvement in the 

computer’s functionality. Id. at 1336. We explained that 

“the plain focus of the claims is on an improvement to 

computer functionality itself, not on economic or other 

tasks for which a computer is used in its ordinary capacity.” Id. The specification described the benefits of using a 

self-referential table—faster searching and more effective 

data storage—and highlighted the differences between 

the claimed self-referential table and a conventional 

database structure. Id. at 1333, 1337. Based on this, we 

rejected the district court’s characterization of the claims 

as being “directed to the abstract idea of ‘storing, organizing, and retrieving memory in a logical table.’” Id. at 

1337. We emphasized that the key question is “whether 

the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the selfreferential table for a computer database) or, instead, on a 

process that qualifies as an ‘abstract idea’ for which 

computers are invoked merely as a tool.” Id. at 1335–36. 

Moreover, it was appropriate to consider the technological 

improvement embodied in the claims at step one, we 

explained, because Alice does not “broadly hold that all

improvements in computer-related technology are inherently abstract and, therefore, must be considered at step 

two.” Id. at 1335. 

Similarly, in Thales, we determined that claims reciting a unique configuration of inertial sensors and the use 

of a mathematical equation for calculating the location 

and orientation of an object relative to a moving platform

were patent-eligible under Alice step one. Inertial sensors 

in prior art systems measured motion relative to the earth 

and were prone to computational errors. Thales, 850 F.3d 

at 1345. The patented system achieved greater accuracy 
VISUAL MEMORY LLC v. NVIDIA CORPORATION 9

than these prior art systems by measuring inertial changes of the tracked object relative to the moving platform’s 

reference frame. Id. We disagreed with the Court of 

Federal Claims’ conclusion that the claims were directed 

to the abstract idea of using mathematical equations to

determine the position of a moving object relative to a 

moving reference frame. Rather, we concluded that the 

claims were directed to “systems and methods that use 

inertial sensors in a non-conventional manner to reduce 

errors in measuring the relative position and orientation 

of a moving object on a moving reference frame.” Id. at 

1348–49. 

With these guideposts in mind, and cognizant of the 

difficulty inherent in delineating the contours of an abstract idea, we turn to the claims at issue here. Our 

review of the ’740 patent claims demonstrates that they 

are directed to an improved computer memory system, not 

to the abstract idea of categorical data storage. Claim 1 

requires a memory system “having one or more programmable operational characteristics, said characteristics 

being defined through configuration by said computer 

based on the type of said processor,” and “determin[ing] a 

type of data stored by said cache.” ’740 patent col. 6 

ll. 29–38. Dependent claims 2 and 3 narrow the cache’s 

programmable operational characteristic to storing certain types of data (“only code data or . . . both code data 

and non-code data”) and buffering data from certain 

sources (“buffering of data solely from said bus master or 

. . . both from said bus master and said processor”), respectively. Id. at col. 6 ll. 39–51. Claim 6 recites the fast 

page mode embodiment with a programmable operational 

characteristic, and dependent claim 7 defines the programmable operational characteristic as the type of data 

to be stored. Id. at col. 7 ll. 3–26. None of the claims

recite all types and all forms of categorical data storage. 

The specification explains that multiple benefits flow 

from the ’740 patent’s improved memory system. As an 
10 VISUAL MEMORY LLC v. NVIDIA CORPORATION

initial matter, the specification discloses that a memory 

system with programmable operational characteristics 

defined by the processor connected to the memory system 

permits “different types of processors to be installed with 

the subject memory system without significantly compromising their individual performance.” Id. at col. 5 ll. 25–

29. Although prior art memory systems possessed the

flexibility to operate with multiple different processors, 

this one-size-fits-all approach frequently caused a tradeoff 

in processor performance. Id. at col. 2 ll. 47–52. The ’740 

patent’s teachings obviate the need to design a separate 

memory system for each type of processor, which proved 

to be costly and inefficient, and, at the same time, avoid 

the performance problems of prior art memory systems. 

See J.A. 771. Finally, in addition to enabling interoperability with multiple different processors, the ’740 patent

specification explains that the selective definition of the 

functions of the cache memory based on processor type 

results in a memory system that can outperform a prior 

art memory system that is armed with “a cache many 

times larger than the cumulative size of the subject 

caches.” ’740 patent col. 4 ll. 21–26. 

As with Enfish’s self-referential table and the motion 

tracking system in Thales, the claims here are directed to 

a technological improvement: an enhanced computer 

memory system. The ’740 patent’s claims focus on a 

“specific asserted improvement in computer capabilities”—the use of programmable operational characteristics that are configurable based on the type of processor—

instead of “on a process that qualifies as an ‘abstract idea’ 

for which computers are invoked merely as a tool.” Enfish, 822 F.3d at 1336. And like the patents at issue in 

Enfish and Thales, the specification discusses the advantages offered by the technological improvement. 

Accordingly, this is not a case where the claims merely 

recite the “use of an abstract mathematical formula on 

any general purpose computer,” “a purely conventional 
VISUAL MEMORY LLC v. NVIDIA CORPORATION 11

computer implementation of a mathematical formula,” or 

“generalized steps to be performed on a computer using 

conventional computer activity.” Id. at 1338 (collecting 

cases where claims were directed to patent-ineligible 

subject matter).

It is for this reason that the district court’s reliance on 

the patent-ineligible claims in Content Extraction & 

Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343 

(Fed. Cir. 2014) and In re TLI Communications LLC 

Patent Litigation, 823 F.3d 607 (Fed. Cir. 2016) was 

misplaced. In Content Extraction, we reviewed a series of 

patents claiming a method of using a computer and a 

scanner to extract data from hard copy documents, recognizing specific information in the extracted data, and 

storing that information in memory. Alice clarified that 

adding a computer cannot spare a claim that otherwise 

would be directed to an abstract idea, so we concluded

that these claims were directed to “the basic concept of 

data recognition and storage.” Content Extraction, 

776 F.3d at 1347. In TLI Communications, the invention 

involved assigning “classification data,” such as 

timestamps or dates, to digital images, sending the images to a server, extracting the classification data, and 

having the server take the classification data into consideration when storing the digital images. We held that the 

claims were “directed to the abstract idea of classifying 

and storing digital images in an organized manner.” TLI 

Commc’ns, 823 F.3d at 613. Although the claims recited 

the use of a phone and a server to carry out the claimed 

method, the claims did not “describe a new telephone, a 

new server, or a new physical combination of the two” and 

were “not directed to a specific improvement to computer 

functionality.” Id. at 612. 

The claims in Contract Extraction and TLI Communications were not directed to an improvement in computer 

functionality, which separates the claims in those cases 

from the claims in the current case. As discussed above, 
12 VISUAL MEMORY LLC v. NVIDIA CORPORATION

the claims in the ’740 patent recite an allegedly new,

improved, and more efficient memory system. No analogous improvement is claimed in Content Extraction or TLI 

Communications. 

NVIDIA responds by arguing that the claims are directed to no more than “a desired result or outcome in the 

context of generic computer components and functionality.” Appellee Br. 23–24. According to NVIDIA, the “programmable operational characteristic” is a purely 

functional feature that simply describes “allowing data to 

be stored based on its characteristics.” Id. at 22. The 

claims, however, do not simply require a “programmable 

operational characteristic.” Even the broadest claim, 

claim 1, requires a memory system with a main memory 

and a cache memory, where the memory system is configured by a computer to store a type of data in the cache 

memory based on the type of processor connected to the 

memory system.

Similarly, the dissent contends that the claimed programmable operational characteristic is “nothing more 

than a black box,” that “the patent lacks any details about 

how [the invention’s purpose] is achieved,” and that 

“because the ’740 patent does not describe how to implement the ‘programmable operational characteristic’ and 

requires someone else to supply the innovative programming effort, it is not properly described as directed to an 

improvement in computer systems.” Dissenting Op. 3. 

There are three flaws with this conclusion. 

First, the patent includes a microfiche appendix having a combined total of 263 frames of computer code. See

J.A. 25–283. The dissent assumes that this code would 

not teach one of ordinary skill in the art the “innovative 

programming effort” required for a computer to configure 

a programmable operational characteristic of a cache 

memory (e.g., whether to store only code data or code and 

non-code data) based on the type of processor connected to 
VISUAL MEMORY LLC v. NVIDIA CORPORATION 13

the memory system. Such an assumption is improper 

when reviewing a dismissal under Rule 12(b)(6), where all 

factual inferences must be drawn in favor of the nonmoving party. See, e.g., Erickson v. Pardus, 551 U.S. 89, 

93–94 (2007). 

Second, whether a patent specification teaches an ordinarily skilled artisan how to implement the claimed 

invention presents an enablement issue under 35 U.S.C. 

§ 112, not an eligibility issue under § 101. As we have 

explained, “[e]nablement is a legal determination of 

whether a patent enables one skilled in the art to make 

and use the claimed invention.” Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 

1986). Moreover, 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, and “a 

patent need not teach, and preferably omits, what is well 

known in the art.” Id. 

Third, the dissent assumes that the “innovative” effort

in the ’740 patent lies in the programming required for a 

computer to configure a programmable operational characteristic of a cache memory. This assumption is inconsistent with the patent specification itself. The 

specification makes clear that the inventors viewed their 

innovation as the creation of “a memory system which is 

efficiently operable with different types of host processors,” ’740 patent col. 2 ll. 65–67, and the patent discloses 

how to implement such a memory system. Specifically, as 

demonstrated above, both the specification and the claims 

expressly state that this improved memory system is

achieved by configuring a programmable operational 

characteristic of a cache memory based on the type of 

processor connected to the memory system. For example, 
14 VISUAL MEMORY LLC v. NVIDIA CORPORATION

the claims indicate that the programmable operational 

characteristic is “defined through configuration by said 

computer based on the type of said processor.”2 See, e.g., 

id. at col. 6 ll. 30–32. The specification further explains 

that, in one example, “[f]or a system employing a 386 or 

386sx system processor, internal cache 16 holds only code 

data, whereas for a system employing a 486 processor, 

internal cache 16 holds both code and non-code data.” Id.

at col. 4 ll. 32–35. Configuring the memory system based 

on the type of processor connected to the memory system 

is the improvement in computer technology to which the 

claims are directed. Alice requires no more from the 

claims or the specification to support our conclusion that 

the claims are not directed to an abstract idea. This 

conclusion is particularly proper on a motion to dismiss 

under Rule 12(b)(6), where all factual inferences drawn 

from the specification must be weighed in favor of Visual 

Memory, the non-moving party. 

To be sure, the concept of categorical data storage underlies the ’740 patent’s claims in that claim 1 requires a 

programmable operational characteristic that “determines 

a type of data stored by said cache.” But this is not 

enough to doom a claim under § 101 because the claims

are not so limited, and “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, 

natural phenomena, or abstract ideas.” Mayo, 566 U.S. at 

71; see also Alice, 134 S. Ct. at 2354 (“[A]n invention is not 

rendered ineligible for patent simply because it involves

an abstract concept.” (emphasis added)). Nor is the ’740 

patent’s use of conventional computer components, by 

 

2 The detail required by the claim language reassures us that, contrary to the dissent’s assertion, we are 

not expressing the claims’ basic concept in a way that is 

untethered from the claim language. Dissenting Op. 2. 
VISUAL MEMORY LLC v. NVIDIA CORPORATION 15

itself, fatal to patent eligibility where the claims “are 

directed to an improvement in the functioning of a computer.” Enfish, 822 F.3d at 1338. 

Because we conclude that the claims of the ’740 patent are not directed to an abstract idea, we need not

proceed to step two of the Alice test. 

III.

We express no opinion on the ultimate question of validity. Prior art might very well invalidate the ’740 patent’s claims under §§ 102 or 103; alternatively, 

challenges under § 112 could prove successful. These

questions, however, are not before us. Our ruling is 

limited to a conclusion that the claims of the ’740 patent 

are not directed to patent-ineligible subject matter under 

§ 101. 

We have considered the parties’ remaining arguments 

and find them unpersuasive. Because the district court 

erred in dismissing Visual Memory’s complaint on the 

ground that the ’740 patent claimed patent-ineligible 

subject matter, we reverse. The case is remanded for 

further proceedings.

REVERSED AND REMANDED

COSTS

Costs to Appellant. 
United States Court of Appeals 

for the Federal Circuit ______________________ 

VISUAL MEMORY LLC,

Plaintiff-Appellant

v.

NVIDIA CORPORATION,

Defendant-Appellee

______________________ 

2016-2254

______________________ 

Appeal from the United States District Court for the 

District of Delaware in No. 1:15-cv-00789-RGA, Judge 

Richard G. Andrews.

______________________ 

HUGHES, Circuit Judge, dissenting. 

Step one of Alice Corp. v. CLS Bank International, 

134 S. Ct. 2347 (2014) directs us to examine and determine the character of each claim as a whole. In distilling 

the purpose of a claim, we must not express the claim’s 

fundamental concept at an inappropriate level of abstraction but at a level consistent with the level of generality 

or abstraction expressed in the claims themselves. Following those principles, I would find the ’740 claims are 

directed to the abstract idea of categorical data storage. 

At step two of Alice, I would find the claims fail to recite 

any inventive concepts sufficient to transform themselves 

into a patent-eligible application. Thus, I believe the ’740 

claims are ineligible under § 101, and I respectfully 

dissent from the majority’s contrary conclusion.
2 VISUAL MEMORY LLC v. NVIDIA CORPORATION

I 

The majority does not dispute that the ’740 claims encompass “categorical data storage.” Maj. Op. 14. We 

appear to disagree, however, on whether this characterization of the ’740 claims is at an unduly “high level of 

abstraction.” Enfish, LLC v. Microsoft Corp., 822 F.3d 

1327, 1337 (Fed. Cir. 2016). I am mindful that we must 

be careful not to overgeneralize a claim because, “if carried to its extreme, [it would make] all inventions unpatentable.” In re TLI Commc’ns LLC Patent Litig., 823 

F.3d 607, 611 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 

450 U.S. 175, 189 n.12 (1981)); see also Thales Visionix 

Inc. v. United States, 850 F.3d 1343, 1347 (Fed. Cir. 2017)

(“We must therefore ensure at step one that we articulate 

what the claims are directed to with enough specificity to 

ensure the step one inquiry is meaningful.”). At the same 

time, we must not express the basic concept of the claim 

in a way that is “untethered from the language of the 

claims.” Enfish, 822 F.3d at 1337. When we assess what

the claims are directed to, we must do so at the same level 

of generality or abstraction expressed in the claims themselves. Id. 

I do not believe that we can describe the fundamental 

concept behind the ’740 claims at a lower level of abstraction than categorical data storage. For example, in Enfish, we found the claims were “directed to a specific 

improvement to the way computers operate.” Id. at 1336. 

We were only able to describe the claims at that level of 

specificity because the claims were not “directed to any 

form of storing tabular data, but instead [we]re specifically directed to a self-referential table.” Id. at 1337. We 

knew the “claims [were] directed to a specific implementation of a solution to a problem,” id. at 1339, because the 

specification contained a four-step algorithm for implementing the claimed self-referential table, id. at 1336–37. 
VISUAL MEMORY LLC v. NVIDIA CORPORATION 3

Here, the ’740 claims are not directed to a specific 

means or method of implementing a “programmable 

operational characteristic.” Claim 1, for instance, claims 

a system comprising a main memory and a cache connected to a bus, with a “programmable operational characteristic” that “determines a type of data stored by said 

cache.” ’740 patent col. 6 ll. 28–38. The claim does not 

provide any specific limitations on the “programmable 

operational characteristic,” making it a purely functional 

component. The “programmable operational characteristic” is nothing more than a black box for performing the 

abstract idea of storing data based on its characteristic,

and the patent lacks any details about how that is 

achieved. The remaining computer elements in the 

claims (cache, memory, bus) are nothing more than a 

collection of conventional computing components found in 

any computer. See id. at col. 1 ll. 51–col. 2 ll. 56. 

I disagree, therefore, with the majority that combining the black box of a “programmable operational characteristic” with conventional computer equipment 

constitutes a specific improvement in computer memory 

systems. Because the ’740 patent does not describe how 

to implement the “programmable operational characteristic” and requires someone else to supply the innovative 

programming effort, it is not properly described as directed to an improvement in computer systems. See 

Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 

(Fed. Cir. 2016) (Reyna, J., dissenting) (“[L]ong-standing 

Supreme Court precedent clearly establishes that a 

desired goal without means for achieving that goal is an 

abstract idea.”); see also Dealertrack, Inc. v. Huber, 674 

F.3d 1315, 1333 (Fed. Cir. 2012) (finding claims abstract 

because the patent did “not specify how the computer 

hardware and database are specially programmed to 

perform the steps claimed in the patent”). 

The question of what the claims cover is critical to the 

§ 101 analysis. The results from this analysis may also 
4 VISUAL MEMORY LLC v. NVIDIA CORPORATION

reveal a § 112 enablement problem, but that does not 

preclude its relevance to the § 101 analysis. Here, the 

lack of specificity supports the notion that the claims are 

directed to an abstract idea. It is true that the ’740 patent includes a microfiche appendix containing computer 

code. But Visual Memory does not contend that the 

microfiche limits the claims. J.A. 503 (conceding that 

“[i]n these claims, the microfiche is not claimed in the 

claims”). Therefore, considering the microfiche code 

would result in an inquiry that is “untethered from the 

language of the claim[s].” Enfish, 822 F.3d at 1337. 

Thus, I would find that the ’740 claims are directed to the 

abstract idea of categorical data storage.

At step two of Alice, if the claims are directed to patent-ineligible subject matter, we must “consider the 

elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional 

elements ‘transform the nature of the claim’ into a patenteligible application.” Alice, 134 S. Ct. at 2355 (quoting 

Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 

U.S. 66, 78 (2012)). The ’740 claims do not contain an 

inventive concept. The claims refer to generic computer 

components and use them to perform generic computer 

functions. See ’740 patent col. 1 ll. 51–col. 2 ll. 56. These 

are all routine components and functions used to “apply” 

the abstract idea of categorical data storage in a computer 

environment and are not sufficient to constitute an inventive concept and transform the abstract idea into a 

patent-eligible invention. 

II

In sum, I believe the majority has analyzed step one 

of Alice in a way that is untethered from the ’740 claims 

and the specification. Under the majority’s reasoning, 

many patent ineligible computer-implemented inventions 

could be described as non-abstract because they purport 

to “improve” a computer despite requiring someone else to 
VISUAL MEMORY LLC v. NVIDIA CORPORATION 5

provide all the innovation. I would find the ’740 claims 

are directed to the abstract idea of categorical data storage, and that the claims fail to recite any inventive concepts sufficient to transform the abstract idea into a 

patent eligible invention under § 101. Accordingly, I 

respectfully dissent.