Synopsys, Inc. v. Mentor Graphics Corp.

3 Analyses of this case by attorneys

  1. CardioNet, LLC v. InfoBionic, Inc. (Fed. Cir. 2021)

    McDonnell Boehnen Hulbert & Berghoff LLPNovember 17, 2021

    ms here from the claims held patent eligible in CardioNet, LLC v. InfoBionic, Inc., 955 F.3d 1358 (Fed. Cir. 2020). The distinction, sounding in novelty rather than ineligibility, is that "[i]n that case . . . there was no intrinsic evidence that the claimed technique had ever been used" whereas here "InfoBionic points to evidence that the use of a filter to perform mathematical functions was not a new activity."Turning to Alice Step 2, the Court dismissed CardioNet's argument that the T wave filter was "innovative" (i.e., a frank novelty argument) based on disclosure in the '715 specification seemingly to the contrary (but nonetheless engrafting the eligibility argument into another species of novelty arguments without the need for a proper novelty analysis). The speciousness of the Court's rationale is illustrated by the conclusion that "'[a] claim for a new abstract idea,' here, a mathematical calculation, 'is still an abstract idea'" citing Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (not a case involving similar subject matter). Once again patentee's arguments were thwarted by statements in their own specification, wherein "the specification explains that the other claimed components are conventional" (such statements being fatal under the Court's analysis that eschews considering claims as a whole, in contravention to Diamond v Diehr). And while the Supreme Court validated the machine or transformation test (while insisting it was not the exclusive test), by now the Federal Circuit appears content to ignore that precedent as well, in favor of their determinations that "not all 'transformations or machine implementations infuse an otherwise ineligible claim with an "inventive concept,"'" citing Solutran, Inc. v. Elavon, Inc., 931 F.3d 1161, 1169 (Fed. Cir. 2019) (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) and relying on the Supreme Court's holding that the test is not dispositive. The opinion further states that:Here, altho

  2. Federal Circuit Finds Claims Directed to Encoding and Decoding Image Data Patent-Ineligible

    Knobbe Martens Olson & Bear LLPBryan McWhorterMay 25, 2017

    See Alice, 134 S. Ct. at 2357 (‘[W]e must examine the elements of the claim to determine whether it contains an “inventive concept.”’ (emphasis added)); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016) (‘The § 101 inquiry must focus on the language of the Asserted Claims themselves.’).” In conclusion, this case provides a further illustration of the scope of patent-eligible subject matter under Section101 in the post-Alice era, and the degree to which a solution must be technical or tied to computing technology to survive analysis under the Alice test.

  3. Federal Circuit Invalidates Synopsys’ Chip Design Patents as Unpatentable Abstract Ideas

    Knobbe Martens Olson & Bear LLPLincoln EssigNovember 18, 2016

    The Federal Circuit’s recent decision in Synopsys, Inc. v. Mentor Graphics Corp., Case No. 2015-1599 (Fed. Cir. Oct. 17, 2016), upholding the lower court’s grant of summary judgment of invalidity under §101, may provide another tool to patent challengers wishing to invalidate claims arguably reciting mental processes. In deciding the case, the Federal Circuit relied on the two-step analytical framework of Mayo/Alice, and found that the claimed methods were directed to unpatentable abstract ideas without reciting “significantly more.”Step 1: Are the Asserted Claims Directed to an Abstract Idea? Under step one of the Mayo/Alice test for subject matter eligibility, a court is to determine whether the claims at issue are directed to a patent-ineligible concept, such as an abstract idea.