The US Court of Appeals for the Federal Circuit has once again cited the Supreme Court decision in Alice Corp v CLS Bank International (134 S Ct 2347 (2014)) to affirm the invalidity of certain asserted claims under Section 101 in three patents held by Synopsis, Inc. The patents include claims which are directed to translating a functional description of a logic circuit into a hardware component description that can be used for actual fabrication of the logic circuit.
Synopsis sued Mentor Graphics Corporation in the Northern District of California for patent infringement, and Mentor obtained a summary judgment of invalidity under Section 101 of the Patent Act. In its appeal to the Federal Circuit, Synopsis argued that its claims were not directed to ineligible subject matter because the claims related to complex algorithms used in computer-based synthesis of logic circuits. It further argued that such claims were primarily directed to a computer, and that humans would not be able to follow the process as claimed. Mentor countered by arguing that the claims were simply abstract ideas and that they lacked the computer-improving functions that might preserve validity under Section 101. Mentor further argued that the Federal Circuit's prior decision in Enfish v Microsoft was applicable, in that the claims were not directed to any specific improvement to the way computers operate.
The court noted in its Alice Step 1 analysis that the asserted claims did not call for any form of computer implementation of the claimed methods, nor did Synopsis ever seek such a construction of the claim. Therefore, the claims were disembodied from a computer and could not be saved from a conclusion that they were abstract ideas.
Next, in its Alice Step 2 analysis, the court inquired whether the claims included any inventive concept, meaning "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", citing Alice. While stating that the "contours of what constitutes an inventive concept are far from precise", the court found that the claims contained no additional technical solution beyond the abstract idea of translating a functional description of a logic circuit into a hardware component description. Specifically, the court stated that so-called 'assignment conditions' cited in the logic circuit claims were simply aids to a mental process as opposed to an improvement in computer efficacy.
This Federal Circuit decision demonstrates the continuing impact of Alice on the validity of patent claims to inventions which are either embodied primarily in software or not explicitly tied to the function of a computer. Unless the claims contain specific elements which are tied to structure or function to transform the invention beyond the mere performance of conventional computer equipment or data, the likelihood of such claims being rejected during prosecution or invalidated in post-grant review or in the district courts remains high.
Warner Joseph Delaune
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