Posts Tagged: "Synopsys v. Mentor Graphics"

Claims broad enough to encompass mental processes are unpatentable abstract ideas

The Court reasoned that the claims were limited to straightforward steps that a skilled artisan could perform mentally and that the inventors admitted to doing so. The claims, on their face, do not call for computer implementation, and Synopsys did not advance a claim construction requiring a computer. Additionally, complex details in the specification are insufficient to transform broad claims from an abstract idea into patentable subject matter. Given the breadth of the claims, the Court declined to decide if a computer-implemented version of the invention would be patentable under § 101.

CAFC reaffirms PTAB discretion not to address all claims in IPR final written decision

On February 10, 2016, a divided Federal Circuit panel reaffirmed the Patent Trial and Appeal Board’s (PTAB) authority to institute trial and provide a final written decision on only a subset of the challenged claims in an AIA post-grant proceeding. At issue on appeal was the PTAB’s final decision not to address all claims that were challenged in the underlying inter partes review (IPR) Petition.