Why novelty doesn’t make abstract ideas any less abstract

June 22, 2017
Patterson Thuente IP

When the inventors of a new design process admitted that they had mentally performed the patented steps themselves, the Federal Circuit Court of Appeals took them at their word. The patent holders in Synopsys, Inc. v. Mentor Graphics Corp. ultimately failed the two-step abstract ideas test.

Logical process

Synopsys, Inc. holds patents related to a process that helps translate functional descriptions of logic circuits into hardware component descriptions. Logic circuits are electrical circuits where all signals take the form of a logic high (known as “true” and often represented by the binary digit “1”) or a logic low (known as “false” and often represented by “0”).

The company sued Mentor Graphics Corporation for infringement, and the defendant countered that the invention was a patent-ineligible abstract idea. The trial court agreed and dismissed the case. Synopsys appealed.

computer circuit board image Patterson Thuente.

Mental meltdown

The appeals court applied the “Alice test,” a two-step framework for identifying patents that cover nothing more than abstract ideas. Considering the first step — whether the invention is an abstract idea — the court noted that mental processes are a subcategory of abstract ideas.

It further found that the patents contain no references to a computer or other physical component and that the patented method can be performed mentally or with pencil and paper by someone who works in the relevant field. In fact, the process’s inventors confirmed this when they admitted to performing the steps mentally. And, according to the court, the patents’ incorporation of software code doesn’t make up for the lack of any computer implementation. As such, the patents cover an abstract idea.

As to the second step (whether the patented invention includes an “inventive concept” that makes an abstract idea patent-eligible), the court determined that the only thing the patents add to the abstract idea is the use of “assignment conditions” as an intermediate step in the translation process. These conditions don’t introduce a technical advance or improvement and include nothing that amounts to significantly more than patents on the abstract idea itself. They’re invalid because they cover an abstract mental process and contain no inventive concept.

By any other name…

In addition to finding Synopsys’ patents invalid, the court clarified that the inquiry into whether an invention is patent-eligible is distinct from the inquiry into whether it’s novel — even though the two may sometimes overlap. As the court explained, a patent claim for a novel abstract idea is still for an abstract idea. Its newness alone doesn’t make it patent-eligible.

Synopsys, Inc. v. Mentor Graphics Corp., No. 2016-1599, Oct. 17, 2016 (Fed. Cir.)