The patentee filed suit in the district court, alleging infringement of a group of patents relating to a scheme for “translating a functional description of a logic circuit into a hardware component description of the logic circuit” by using “control flow graphs” and “assignment conditions.” The district court granted summary judgment in favor of the alleged infringer, invalidating the asserted claims of the patents-in-suit as directed to patent-ineligible subject matter under 35 U.S.C. § 101. The patentee appealed, and the Federal Circuit affirmed.
The Federal Circuit applied the two-part test set forth by the Supreme Court in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014). First, the court must “determine whether the claims-at-issue are directed to a patent-ineligible concept.” Second, if so, then the court 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 patent-ineligible application.”
Under part one, the court reaffirmed that “mental processes are a ‘subcategory of unpatentable abstract ideas,’” citing CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011). Here, the asserted claims recited a method of changing a functional description into a hardware component description via assignment conditions. Therefore, the court concluded “the limited, straightforward nature of the steps involved in the claimed methods make evident that a skilled artisan could perform the steps mentally.” Moreover, the asserted claims did not “call for any form of computer implementation of the claimed methods.” In particular, the Federal Circuit noted how the district court did not construe any of the asserted claims to require the use of a computer or any other type of hardware to perform the recited steps. Thus, the asserted claims were “drawn to the abstract idea of: translating a functional description of a logic circuit into a hardware component description of the logic circuit.”
Under part two, the court clarified that a search for an inventive concept under § 101 is “distinct” from demonstrating § 102 novelty. Here, the only additional elements beyond the abstract idea was the use of assignment conditions as an “intermediate step in the translation process.” However, the court found that the assignment conditions “merely aid[ed] in mental translation as opposed to computer efficacy,” and thus did not introduce a “technical advance or improvement” to constitute an inventive concept.