On October 17, in a precedential opinion, the Federal Circuit affirmed summary judgment granted by Judge Maxine M. Chesney, USDC, Northern District of California, invalidating under Section 101 claims of three Synopsys, Inc. patents.
The claims are directed to “the abstract idea of: translating a functional description of a logic circuit into a hardware component description of the logic circuit.” Judge Chen (with Judges Lourie and Moore on the panel) agreed with the trial court that the claimed translation methods “can be performed mentally or with pencil and paper,” as the named inventors confirmed when they “admitted to performing the steps mentally themselves.”
While the claimed translation technique was designed for use by computers, the asserted claims require no computer or other hardware. Again, this was conceded as “none of Synopsys’ proposed constructions required the use of a computer or any type of hardware,” and Synopsys’ counsel stated at the summary judgment argument that “computers aren’t called out” in the representative patent claim.
The panel dismissed the alleged novelty of the claimed translation technique because “a claim for a new abstract idea is still an abstract idea.” Similarly, it is irrelevant that the claimed translation technique differed from how a human logic-circuit designer would translate such a description, as the Supreme Court in Gottschalk v. Benson faced the same situation and rejected the claims nonetheless.
Finally, the panel noted what was not before it: patent claims directed to a computerized design tool.
A week earlier, on October 11, another Federal Circuit panel affirmed a PTAB decision finding obvious claims of another Synopsys synthesis patent. Synopsys had asserted that patent against Mentor Graphics in the same N.D. Cal. lawsuit before Judge Chesney.
Mentor Graphics was represented in these actions by Kristin L. Cleveland, Salumeh R. Loesch, Jeffrey S. Love, Andrew M. Mason and John D. Vandenberg of Klarquist Sparkman, LLP; Mark E. Miller and George A. Riley of O’Melveny & Myers LLP; and Tom Evans of Mentor Graphics Corporation. Synopsys, Inc. was represented by Philip W. Woo, Patricia Thayer, and Carter Glasgow Phillips of Sidley Austin LLP.
The case was also the subject of a Law360 article on October 17, 2016 (Law360 subscribers can access the article here).