By Cheryl Beise, J.D.
The federal district court in San Francisco did not err in holding that the claims of three related Synposys EDA chip design patents asserted against Mentor Graphics were invalid under 35 U.S.C. § 101 because they were directed to a patent-ineligible abstract mental process of translating a functional description of a logic circuit into a hardware component description of the logic circuit and contained no inventive concept, U.S. Court of Appeals for the Federal Circuit has determined (Synopsys, Inc. v. Mentor Graphics Corp., October 17, 2016, Chen, R.).
In 2013, Synopsys, Inc., sued Mentor Graphics Corporation for infringement of four patents: U.S. Patent Nos. 5,530,841; 5,680,318; and 5,748,488 (collectively, the Gregory Patents), and U.S. Patent No. 6,836,420. Synopysy alleged that Mentor Graphics’ "Precision" family of logic synthesis products and its "Veloce" family of emulators infringed: claim 1 of the ’841 patent; claims 32, 35, and 36 of the ’318 patent; claims 1, 2, 8, and 9 of the ’488 patent (collectively, the "Asserted Claims"); and claims 1–3, 10–13, and 20 of the ’420 patent. The Gregory Patents were continuations of a since-abandoned patent application and all shared a common specification.
On January 20, 2015, the district court granted Mentor Graphics’ motion for summary judgment, concluding that the Asserted Claims of the Gregory Patents were directed to a mental process and therefore, were invalid for failure to claim patent-eligible subject matter. The court stayed further proceedings on the ’420 patent in view of pending inter partes review. The Patent Trial and Appeal Board later held that the challenged claims of the ’420 patent were unpatentable as obvious; that decision that was summarily affirmed by the Federal Circuit last week.
Abstract idea (Alice step one). Synopsys appealed the district court’s invalidity ruling. Synopsis first objected to the district court’s characterization of the claims as mental processes. Although the Asserted Claims of the Gregory Patents were all method claims, devoid of any reference to a computer or any other physical component, Synopsis contended that the "complexity" of the claimed methods would make it implausible—if not impossible—for a skilled logic circuit designer to perform the methods mentally or with pencil and paper.
The Federal Circuit disagreed. Claim 1 of the ’841—undisputedly representative of all asserted claims—recites a method of changing one description of a level sensitive latch (i.e., a functional description) into another description of the level sensitive latch (i.e., a hardware component description) by way of a third description of that very same level sensitive latch (i.e., assignment conditions). The court explained that the recited method could be performed mentally or with pencil and paper; the skilled artisan simply had to analyze a four-line snippet of Hardware description language (HDL) code. The inventors of the Gregory Patents confirmed this point when they admitted to performing the steps mentally themselves, the court noted.
Synopsys nevertheless contended that, even if the Asserted Claims could be performed mentally, they would, in practice, be performed on a computer running specialized software. Counsel for Synopsys during oral argument pointed to the "200 pages of code" attached to the specifications of the Gregory Patents that he contended reveal the "true novelty" of the Asserted Claims.
While the inventions of the Gregory Patents were intended to be used in conjunction with computer-based design tools, the Asserted Claims were not confined to that conception, and in fact, made no mention of employing a computer or any other physical device, the court observed. Thus, the claim were broad enough to read on an individual performing the claimed steps mentally or with pencil and paper. "Just as we have held that complex details from the specification cannot save a claim directed to an abstract idea that recites generic computer parts, the Gregory Patents’ incorporation of software code cannot save claims that lack any computer implementation at all," the court said. Thus, Synopsys was precluded from relying on the Federal Circuit’s decisions in Enfish, LLC v. Microsoft Corp.,, 822 F.3d 1327 (Fed. Cir. 2016), and McRO, Inc. v. Bandai Namco Games America Inc.,, 2016 WL 4896481 (Fed. Cir. Sept. 13, 2016) to support the patentability of the Asserted Claims.
That a human circuit designer may not use the specific method claimed when translating a functional description of a logic circuit into a hardware component description of the logic circuit as Synopsys contended did not change this result, the court noted. Similarly, Synopsys’ argument that the asserted claims did not preempt all conversions from functional descriptions of logic circuits to hardware component descriptions of logic circuits, was unavailing. The court concluded that the Asserted Claims were directed to the abstract idea of translating a functional description of a logic circuit into a hardware component description of the logic circuit.
Inventive concept (Alice step two). An "inventive concept" is described as an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself. Synopsys conflated the inventive concept inquiry with novelty, the court noted. While the contours of what constitutes an inventive concept are far from precise, and the § 101 patent-eligibility inquiry and the § 102 novelty inquiry might "sometimes overlap, a claim for a new abstract idea is still an abstract idea," the court said.
In this case, the Asserted Claims—in contrast to those at issue in DDR Holdings, LLC v. Hotels.com, L.P.,., 773 F.3d 1245 (Fed. Cir. 2014)and BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 134 (Fed. Cir. 2016)—contained no technical solution or improvement. To the extent the Asserted Claims added anything to the abstract idea, it was the use of assignment conditions as an intermediate step in the translation process. "But, given that the claims are for a mental process, assignment conditions, which merely aid in mental translation as opposed to computer efficacy, are not an inventive concept that takes the Asserted Claims beyond their abstract idea," the court explained.
Because the Asserted Claims were directed to an abstract mental process and contained no inventive concept, they were therefore invalid under 35 U.S.C. § 101.
The case is No. 2015-1599.
Attorneys: Carter G. Phillips (Sidley Austin LLP) for Synopsys, Inc. John D. Vandenberg (Klarquist Sparkman, LLP) for Mentor Graphics Corp.
Companies: Synopsys, Inc.; Mentor Graphics Corp.
MainStory: TopStory Patent TechnologyInternet FedCirNews
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