  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 dis-
missal 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 patent-
ineligible subject matter, and therefore its complaint
failed to state a claim under Federal Rule of Civil Proce-
dure 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 re-
verse the district court and remand for further proceed-
ings.
                              I.
     The ’740 patent teaches that computer systems fre-
quently use a three-tiered memory hierarchy to enhance
performance. The three tiers include: 1) a low-cost, low-
speed 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 expen-
sive, it is typically smaller than the main memory and
cannot always store all the data required by the proces-
sor. The memory hierarchy alleviates the limitations
imposed by the cache’s size because it allows code and
non-code data 1 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 in-
structions, 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 be-
cause 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 multi-
ple 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 deficien-
cies by creating a memory system with programmable
operational characteristics that can be tailored for use
with multiple different processors without the accompany-
ing 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 proces-
sor 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 non-
code data, or it can store only code data. Id. at col. 4
ll. 30–35. Similarly, write buffer cache 20 can be pro-
grammed 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 recent-
ly 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 technolog-
ical improvements. For example, claim 1 recites:
        1. A computer memory system connectable to
    a processor and having one or more programma-
    ble operational characteristics, said characteris-
    tics being defined through configuration by said
    computer based on the type of said processor,
    wherein said system is connectable to said proces-
    sor by a bus, said system comprising:
        a main memory connected to said bus; and
        a cache connected to said bus;
        wherein a programmable operational charac-
    teristic 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 non-
code 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 embodi-
ment.
    Visual Memory sued NVIDIA for infringement of the
’740 patent. Believing the claims to be directed to patent-
ineligible subject matter, NVIDIA filed a motion to dis-
miss 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 operation-
al 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, manu-
facture, 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) (quot-
ing 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 “‘trans-
form[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 be-
cause 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 capaci-
ty.” 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, organiz-
ing, 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 im-
provement in computer capabilities (i.e., the self-
referential 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 inher-
ently abstract and, therefore, must be considered at step
two.” Id. at 1335.
    Similarly, in Thales, we determined that claims recit-
ing 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 chang-
es 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 ab-
stract 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 program-
mable 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 cer-
tain 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”), re-
spectively. 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 pro-
grammable 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 compro-
mising 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 interopera-
bility 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 capabili-
ties”—the use of programmable operational characteris-
tics 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.” En-
fish, 822 F.3d at 1336. And like the patents at issue in
Enfish and Thales, the specification discusses the ad-
vantages 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, recog-
nizing 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 imag-
es to a server, extracting the classification data, and
having the server take the classification data into consid-
eration 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 Communi-
cations 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 analo-
gous improvement is claimed in Content Extraction or TLI
Communications.
    NVIDIA responds by arguing that the claims are di-
rected to no more than “a desired result or outcome in the
context of generic computer components and functionali-
ty.” Appellee Br. 23–24. According to NVIDIA, the “pro-
grammable 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 config-
ured 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 pro-
grammable 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 imple-
ment the ‘programmable operational characteristic’ and
requires someone else to supply the innovative program-
ming 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 hav-
ing 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 non-
moving party. See, e.g., Erickson v. Pardus, 551 U.S. 89,
93–94 (2007).
    Second, whether a patent specification teaches an or-
dinarily 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. Mono-
clonal 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 char-
acteristic of a cache memory. This assumption is incon-
sistent 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 proces-
sors,” ’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 un-
derlies 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 em-
body, 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 reas-
sures 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 com-
puter.” Enfish, 822 F.3d at 1338.
    Because we conclude that the claims of the ’740 pa-
tent 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 va-
lidity. Prior art might very well invalidate the ’740 pa-
tent’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 deter-
mine 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 abstrac-
tion but at a level consistent with the level of generality
or abstraction expressed in the claims themselves. Fol-
lowing 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 en-
compass “categorical data storage.” Maj. Op. 14. We
appear to disagree, however, on whether this characteri-
zation 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 car-
ried to its extreme, [it would make] all inventions un-
patentable.” 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 them-
selves. Id.
    I do not believe that we can describe the fundamental
concept behind the ’740 claims at a lower level of abstrac-
tion than categorical data storage. For example, in En-
fish, 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 specifical-
ly directed to a self-referential table.” Id. at 1337. We
knew the “claims [were] directed to a specific implementa-
tion of a solution to a problem,” id. at 1339, because the
specification contained a four-step algorithm for imple-
menting 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 connect-
ed to a bus, with a “programmable operational character-
istic” 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 characteris-
tic” 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 combin-
ing the black box of a “programmable operational charac-
teristic”   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 characteris-
tic” and requires someone else to supply the innovative
programming effort, it is not properly described as di-
rected 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 pa-
tent 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 pa-
tent-ineligible subject matter, we must “consider the
elements of each claim both individually and ‘as an or-
dered combination’ to determine whether the additional
elements ‘transform the nature of the claim’ into a patent-
eligible 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 in-
ventive 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 stor-
age, and that the claims fail to recite any inventive con-
cepts sufficient to transform the abstract idea into a
patent eligible invention under § 101. Accordingly, I
respectfully dissent.
