Claims broad enough to encompass mental processes are unpatentable abstract ideas

cafc-federal-circuit-windowsSynopsys, Inc. v. Mentor Graphics Corp., 2015-1599, 2016 U.S. App. LEXIS 18561 (Fed. Cir. Oct. 17, 2016) (Before Lourie, Moore, and Chen, J.) (Opinion for the court, Chen, J.).

Synopsys sued Mentor Graphics for infringement, alleging that Mentor’s logic synthesis products infringe Synopsys patents for certain logic circuit design processes. The district court construed the asserted patent claims to not require the use of a computer or other type of hardware. The parties cross-moved for summary judgment on invalidity under 35 U.S.C. § 101, and the district court granted Mentor’s motion, ruling that the claims were directed to an unpatentable abstract idea, namely a mental process, and lacked an inventive concept.

On appeal, the Court affirmed the district court’s grant of summary judgment and its finding of invalidity. At Alice step one, the Court agreed with the district court that the claims were directed to a mental process and therefore covered an unpatentable abstract idea. The Court rejected Synopsys’ arguments because they deviated from the plain language of the claims. Synopsys argued that the complexity of the claimed methods makes a mental performance implausible, and even if possible, a person of ordinary skill would perform the method on a computer.

The Court emphasized that the § 101 inquiry must focus on the claim language. 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.

Applying Alice step two, the Court rejected Synopsys’ argument that the “inventive concept” analysis under § 101 is the same as novelty because a claim to a new abstract idea is still an abstract idea. Additionally, the claims at issue contained no technical solution, such that they could be directed to an inventive concept. The asserted claims were directed to a mental process, as opposed to a method, for example, of improving computer efficiency. The claims did not introduce a technical advance or improvement sufficient to be considered an inventive concept.

Claims broad enough to encompass mental processes are unpatentable abstract ideas even if, in practice, a skilled artisan would perform the claims on a computer.

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