Monday, October 17, 2016

CAFC affirms ND Cal; Synopsys loses 35 USC 101 case

From the opinion:

Synopsys, Inc. appeals the District Court for the
Northern District of California’s grant of summary judgment
invalidating certain claims of U.S. Patent Nos.
5,530,841; 5,680,318; and 5,748,488 (collectively, the
Gregory Patents) under 35 U.S.C. § 101. See Synopsys,
Inc. v. Mentor Graphics Corp., 78 F. Supp. 3d 958 (N.D.
Cal. 2015) (Summary Judgment Order). Synopsys argues
that, contrary to the district court’s holding, the Gregory
Patents are not directed to ineligible subject matter
because they relate to complex algorithms used in computer-
based synthesis of logic circuits. We disagree. A
review of the actual claims at issue shows that they are
directed to the abstract idea of translating a functional
description of a logic circuit into a hardware component
description of the logic circuit.1 This idea of reviewing a
description of certain functions and turning it into a
representation of the logic component that performs those
functions can be—and, indeed, was—performed mentally
or by pencil and paper by one of ordinary skill in the
art. Moreover, the claims do not call for the involvement
of a computer. They therefore cannot be characterized as
an improvement in a computer as a tool. The claims add
nothing to the abstract idea that rises to the level of an
“inventive concept” as required by precedent. We therefore
affirm the district court’s grant of summary judgment
of invalidity.

From the procedural history:

The parties subsequently cross-moved for summary
judgment on Mentor Graphics’ defense that the Gregory
Patents were invalid under 35 U.S.C. § 101. The court
granted Mentor Graphics’ motion and invalidated all
asserted claims of the Gregory Patents. See Summary
Judgment Order, 78 F. Supp. 3d at 966. In reaching its
decision, the court applied the now common two-step test
described by the Supreme Court in Alice Corp. v. CLS
Bank International, 134 S. Ct. 2347 (2014). See Summary
Judgment Order, 78 F. Supp. 3d at 962–63.
The court observed that “[e]ach of the steps in the claimed
methods can be performed by a skilled designer either
mentally or with pencil and paper.” Id. at 961. Due to
the breadth of the claims, the court found, under the first
step of the Alice test, that “the claims are directed to a
mental process . . . ‘a subcategory of unpatentable abstract
ideas.’” Id. at 963 (quoting CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir.


Turning to the second step of the Alice test, the court
rejected Synopsys’ argument that the claims necessarily
contained an inventive concept because Mentor Graphics
failed to present prior art that disclosed the claimed
methods. Id. at 964. The court then found that, while the
claims were directed to a “specific” mental process, they
nonetheless “preempt[ed] a building block of human
ingenuity.” Id. at 965. Finally, it found that the claims
concerned “well-understood, routine, conventional activity,
previously engaged in by those in the field.” Id. (“As
acknowledged in the specification, skilled designers had
been inferring the necessary parts and connections for ICs
long before the Gregory patents issued.”).

The CAFC observed:

While the Supreme Court
has altered the § 101 analysis since CyberSource in cases
like Mayo and Alice, we continue to “treat[] analyzing
information by steps people go through in their minds, or
by mathematical algorithms, without more, as essentially
mental processes within the abstract-idea category.” Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354
(Fed. Cir. 2016) (citations omitted).


Synopsys’ reliance on TQP Development, LLC v. Intuit
Inc., No. 2:12-cv-180-WCB, 2014 WL 651935 (E.D. Tex.
Feb. 19, 2014), is therefore misplaced. See Appellant’s
Opening Br. 39 n.8. In that case, the district court denied
the defendant’s motion for summary judgment that claims
for a specific data encryption method for computer communication
were invalid under § 101. TQP, 2014 WL
651935, at *1. It distinguished the claims at issue from
the mental processes found unpatentable in cases like
Gottschalk. It explained that unlike those “simple,”
“basic” processes, the plaintiff’s “invention involves a
several-step manipulation of data that, except in its most
simplistic form, could not conceivably be performed in the
human mind or with pencil and paper.” Id. at *4 (emphasis
added). This case is different. Representative claim 1
is directed to generating a representation of a single
specific hardware component and can be—and was—
performed mentally or with pencil and paper.

An interesting nuance:

While Synopsys may be correct that the inventions of
the Gregory Patents were intended to be used in conjunction
with computer-based design tools, the Asserted
Claims are not confined to that conception. The § 101
inquiry must focus on the language of the Asserted
Claims themselves. See Accenture Global Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir.
2013) (admonishing that “the important inquiry for a
§ 101 analysis is to look to the claim”); see also Content
Extraction & Transmission LLC v. Wells Fargo Bank,
Nat’l Ass’n, 776 F.3d 1343, 1346 (Fed. Cir. 2014) (“We
focus here on whether the claims of the asserted patents
fall within the excluded category of abstract ideas.”), cert.
denied, 136 S. Ct. 119 (2015).

On their face, the claims do not call for any form of
computer implementation of the claimed methods. Synopsys
stops short of arguing that the Asserted Claims
must be construed as requiring a computer to perform the
recited steps.


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. See Accenture, 728 F.3d at 1345
(“[T]he complexity of the implementing software or the
level of detail in the specification does not transform a
claim reciting only an abstract concept into a patenteligible
system or method.”).
For this reason, we need not decide whether a computer-
implemented version of the invention would not be
“directed to” an abstract idea. And, for the same reasons,
Synopsys cannot rely on our decisions in Enfish13 and
McRO14 to support the patentability of the Asserted
Claims. In Enfish, we held that claims “directed to a
specific improvement to the way computers operate” to
store and retrieve data were not unpatentably abstract.
822 F.3d at 1336. The claims were not simply drawn to a
disembodied data table.

**As to Gottschalk:

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 contends does
not change this result. Indeed, the Supreme Court rejected
this argument in Gottschalk. There, the Court reviewed
a claimed “method for converting binary-coded
decimal (BCD) numerals into pure binary numerals.”
Gottschalk, 409 U.S. at 64. It recognized that the claimed
method had been designed for use on a computer and
“varie[d] the ordinary arithmetic steps a human would
use by changing the order of the steps, changing the
symbolism for writing the multiplier used in some steps,
and by taking subtotals after each successive operation.”
Id. at 67. It found that the claimed method, which
“c[ould] be performed without a computer,” was nonetheless
not patent-eligible. Id.

As to Alice step 2:

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.15 Unlike the claims at issue in
DDR Holdings and BASCOM, the Asserted Claims do not
introduce a technical advance or improvement. They
contain nothing that “amounts to significantly more than
a patent upon the [abstract idea] itself.’” Alice, 134 S. Ct.
at 2355 (citation omitted).


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