Synopsys, Inc. v. Mentor Graphics Corp.
78 F. Supp. 3d 958
N.D. Cal.2015Background
- Dispute over patent eligibility under 35 U.S.C. § 101 of eight claims from three Synopsys patents (the "Gregory patents") directed to logic synthesis for integrated-circuit design.
- The patents claim a method of converting hardware-independent HDL descriptions (flow-control and directive statements) into "assignment conditions" used to infer hardware components (e.g., latches) and generate a netlist.
- Representative claim (’841 patent claim 1) describes converting IF/GOTO and directive statements into assignment conditions and generating a level-sensitive latch when certain conditions are non-constant.
- The claimed steps can be performed mentally or with pencil-and-paper; specification includes source code and contemplates computer implementation, but claims do not explicitly require a computer.
- Cross-motions for summary judgment: Mentor argued claims are directed to patent-ineligible abstract ideas and lack an inventive concept; Synopsys argued claims are concrete, computer-implemented inventions and cite specification detail and lack of prior art.
Issues
| Issue | Synopsys' Argument | Mentor's Argument | Held |
|---|---|---|---|
| Whether the asserted claims are directed to an abstract idea under Alice step one | Claims recite concrete, computerized steps to create a netlist and thus are not abstract | Claims describe mental processes/algorithms for inferring hardware and are an abstract idea | Claims are directed to an abstract idea (mental process) |
| Whether the claims contain an "inventive concept" under Alice step two | The claims add significantly more: detailed specification, source code, and computer implementation; lack of prior art shows invention | The claims only implement conventional mental steps on a generic computer and thus lack an inventive concept | Claims lack an inventive concept; addition of generic computer/specification detail insufficient |
| Whether machine-or-transformation or technological-environment arguments save the claims | The claims transform or are tied to a machine because they will run on a computer and produce a hardware design/netlist | Machine-or-transformation test not met; generic computer implementation and inference of hardware do not transform the abstract idea | Machine-or-transformation and environment limitations do not render claims patent-eligible |
| Whether the claims risk preemption of fundamental tools of innovation | The claims are narrow (use of assignment conditions) and do not preempt all synthesis methods | Claims preempt a building block (a mental process for inferring hardware) and thus raise preemption concerns | Court finds preemption risk exists and is relevant to ineligibility |
Key Cases Cited
- Alice Corp. v. CLS Bank Int'l, 134 S. Ct. 2347 (Sup. Ct.) (two-step test for patent eligibility and requirement of an "inventive concept")
- Bilski v. Kappos, 561 U.S. 593 (Sup. Ct.) (explains machine-or-transformation test is a useful clue but not sole test)
- Gottschalk v. Benson, 409 U.S. 63 (Sup. Ct.) (mental processes and abstract ideas not patentable)
- Le Roy v. Tatham, 55 U.S. 156 (Sup. Ct.) (principles/abstract ideas cannot be patented)
- Mayo Collaborative Servs. v. Prometheus Labs., 132 S. Ct. 1289 (Sup. Ct.) (inventive concept requirement and limits on patenting laws of nature/formulas)
- Parker v. Flook, 437 U.S. 584 (Sup. Ct.) (novel algorithm in conventional process can be patent-ineligible)
- CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir.) (mental process is a category of abstract idea)
- Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336 (Fed. Cir.) (complex specification or software detail alone does not make an abstract claim patent-eligible)