Synopsys, Inc. v. Mentor Graphics Corporation
839 F.3d 1138
| Fed. Cir. | 2016Background
- Synopsys sued Mentor Graphics alleging infringement of claims from three "Gregory" patents that disclose translating HDL (hardware description language) functional descriptions into hardware-component descriptions using "assignment conditions."
- Representative claim (’841 patent claim 1) recites converting HDL flow-control and directive statements into asynchronous load/data functions (assignment conditions) and generating a level-sensitive latch when those functions are non-constant.
- District Court construed claim terms but did not require a computer; claims contain no express computer or hardware limitations.
- Mentor moved for summary judgment under 35 U.S.C. § 101; the district court granted summary judgment, finding the claims directed to an abstract mental process and lacking an inventive concept.
- Synopsys appealed, arguing the claims cover complex, computer-implemented logic-synthesis algorithms and are not performable mentally; the Federal Circuit affirmed.
Issues
| Issue | Synopsys' Argument | Mentor's Argument | Held |
|---|---|---|---|
| Are the asserted claims directed to patent-ineligible subject matter under § 101 (Alice step 1)? | Claims are complex computer-implemented algorithms for logic synthesis; impractical to perform mentally. | Claims are directed to the abstract idea of translating a functional description into a hardware description (a mental process). | Held: Claims are directed to an abstract mental process; on their face they require no computer and can be performed mentally or with pencil and paper. |
| Does the specification or complexity (e.g., long software appendix) save the claims by implying computer implementation? | The specification and attached code show the invention was intended for computerized tools and is not merely mental. | The claims' language controls; they do not require a computer, so specification detail cannot convert the abstract idea into patent-eligible subject matter. | Held: Specification detail and intended computer use do not alter claim scope; complexity in the specification does not make claiming an abstract idea patent-eligible. |
| Do the claims preempt all ways of converting functional descriptions to hardware descriptions? | The claims do not preempt all conversions; they claim specific assignment-condition techniques. | Even partial preemption is problematic; the core claim is an abstract building block. | Held: Preemption analysis is not dispositive; claims still invalid under Alice despite not covering every possible conversion. |
| Do the claims contain an "inventive concept" (Alice step 2)? | Use of assignment conditions as an intermediate step is inventive and novel over prior art. | The assignment-conditions intermediate is a mental aid and not a technical improvement; claims add nothing significantly more than the abstract idea. | Held: No inventive concept; claims add only mental steps and conventional concepts, not a technical improvement that transforms the abstract idea. |
Key Cases Cited
- Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (Sup. Ct.) (two-step framework for § 101; search for "inventive concept")
- Mayo Collaborative Servs. v. Prometheus Labs., 132 S. Ct. 1289 (Sup. Ct.) (§ 101 framework and limits on patenting abstract ideas and natural laws)
- Gottschalk v. Benson, 409 U.S. 63 (U.S.) (methods performable mentally or without a computer are not patentable)
- CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir.) (mental processes are a subcategory of abstract ideas)
- Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.) (claims directed to a specific improvement in computer technology can be patent-eligible)
- McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.) (claims improving computer animation ruled patent-eligible)
- DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.) (claims solving a specific Internet-centric technical problem held patent-eligible)
- BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.) (inventive concept can arise from a non-conventional arrangement of conventional components)
- Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.) (analyzing information by mental steps is an abstract idea)
- Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371 (Fed. Cir.) (absence of complete preemption does not establish eligibility)