Synopsys, Inc. v. Mentor Graphics Corporation ( 2016 )

United States Court of Appeals
for the Federal Circuit
______________________
SYNOPSYS, INC., A DELAWARE CORPORATION,
Plaintiff-Appellant
v.
MENTOR GRAPHICS CORPORATION, AN
OREGON CORPORATION,
Defendant-Appellee
______________________
2015-1599
______________________
Appeal from the United States District Court for the
Northern District of California in No. 3:12-cv-06467-
MMC, Judge Maxine M. Chesney.
______________________
Decided: October 17, 2016
______________________
CARTER GLASGOW PHILLIPS, Sidley Austin LLP, Wash-
ington, DC, argued for plaintiff-appellant. Also represent-
ed by RYAN C. MORRIS; M. PATRICIA THAYER, PHILIP W.
WOO, San Francisco, CA.
JOHN D. VANDENBERG, Klarquist Sparkman, LLP,
Portland, OR, argued for defendant-appellee. Also repre-
sented by ANDREW M. MASON.
______________________
Before LOURIE, MOORE, and CHEN, Circuit Judges.
2 SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION
CHEN, Circuit Judge.
Synopsys, Inc. appeals the District Court for the
Northern District of California’s grant of summary judg-
ment invalidating certain claims of U.S. Patent Nos.
5,530,841; 5,680,318; and 5,748,488 (collectively, the
Gregory Patents) under 35 U.S.C. § 101. See Synopsys,
Inc. v. Mentor Graphics Corp., 78 F. Supp. 3d 958 (N.D.
Cal. 2015) (Summary Judgment Order). Synopsys argues
that, contrary to the district court’s holding, the Gregory
Patents are not directed to ineligible subject matter
because they relate to complex algorithms used in com-
puter-based synthesis of logic circuits. We disagree. A
review of the actual claims at issue shows that they are
directed to the abstract idea of translating a functional
description of a logic circuit into a hardware component
description of the logic circuit. 1 This idea of reviewing a
description of certain functions and turning it into a
representation of the logic component that performs those
functions can be—and, indeed, was—performed mentally
or by pencil and paper by one of ordinary skill in the
art. Moreover, the claims do not call for the involvement
of a computer. They therefore cannot be characterized as
an improvement in a computer as a tool. The claims add
nothing to the abstract idea that rises to the level of an
“inventive concept” as required by precedent. We there-
fore affirm the district court’s grant of summary judgment
of invalidity.
1 For example, the claim the parties identify as rep-
resentative calls for generating a schematic or netlist
representation of a level sensitive latch when given a
description of the logic operation of a level sensitive latch.
’841 patent, 62:61–63:12.
SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION 3
BACKGROUND
I. The Gregory Patents
The Gregory Patents are continuations of since-
abandoned U.S. Patent Application No. 07/632,439 and all
share a common specification. 2 The patents relate gener-
ally to the logic circuit design process. The logic circuit
design process has evolved significantly over time. Syn-
opsys describes the inventions of the Gregory Patents as
critical steps in this evolution.
In the early days of logic circuits, 3 a designer was re-
quired to specify his design in great detail. He would do
so in the form of a schematic diagram that identified
individual hardware components and the interconnections
between them or via a set of Boolean logic equations that
specified the precise functionality of the design. ’841
patent, 1:41–44. A fabrication facility would then build
the corresponding physical circuit based on the architec-
ture presented in the detailed design.
Over time, logic circuits became more and more com-
plex. As complexity increased, many designers began to
focus on the higher-level functionality of their designs and
became less concerned with the detailed schematics or
Boolean logic equations necessary to implement that
functionality. Id. at 1:47–49. These developments creat-
ed a need for a form of computer code that a designer
2 Unless otherwise noted, all references to the
common specification will be to the specification of the
’841 patent. Equivalent disclosures can be found in the
’318 and ’488 patents.
3 A “logic circuit” is an electrical circuit where all
signals take the form of a logic high (also known as “true”
and often represented by the binary digit “1”) or a logic
low (also known as “false” and often represented by the
binary digit “0”).
4 SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION
could use to describe a logic circuit at a functional level.
This led to the advent of various functional computer
languages known as hardware description languages
(HDLs). Id. at 1:50–55. HDLs allowed designers to
“describe only the desired operation of the logic circuit,
i.e., the signals generated by the logic circuit,” rather than
having to specify the actual individual components and
interconnections of the logic circuit. Id. at 1:62–64; see
also id. at 1:50–55 (describing HDLs as operating “at least
one level of abstraction removed from a schematic dia-
gram or a set of [B]oolean logic equations”).
The introduction of HDLs necessitated the develop-
ment of computerized design tools that could translate the
functional description of the logic circuit into a detailed
design for fabrication. Id. at 1:64–67. Early computer-
ized design tools, however, could only recognize and
translate simple circuit elements. Id. at 2:1–3. “For
many circuit elements, such as high impedance drivers,
level sensitive latches and edge sensitive flip-flops, the
designer was required first to specify [(i.e., instantiate)]
the specific circuit element and then the desired connec-
tion of that element using the HDL.” Id. at 2:3–7.
The Gregory Patents describe constructs known as
“control flow graphs,” id. at 2:65–3:8, and “assignment
conditions,” id. at 3:22–30, that provide a scheme to
translate HDL-based functional descriptions of logic
circuits into hardware component descriptions of those
same circuits without requiring the designer to instanti-
ate any individual hardware components—not even high
impedance drivers, level sensitive latches, or edge sensi-
tive flip-flops. Id. at 2:27–36. The patent specification
goes through several examples for different components to
illustrate how control flow graphs and assignment condi-
tions are used to translate a functional description of a
logic circuit to a hardware component description of that
logic circuit.
SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION 5
We will explore in detail one such example, which is
claimed in claim 1 of the ’841 patent. 4 But, first, one
must understand the general concept of binary logic as
well as the constructs introduced in the Gregory Pa-
tents—namely flow control statements, directive state-
ments, asynchronous load functions, and asynchronous
data functions—what they are and how they work. We
can gain this understanding through a review of the
following simple example of HDL code:
If(COND)
Q: = 1;
else
Q: = 0;
endif
Here, “Q” is the output of the segment of code and
“COND” is a condition. The value of output Q is dictated
by the line of code “If(COND),” which the specification
labels as a “flow control statement.” See ’841 patent,
11:20–23. This line of code asks the question “Is condition
COND true?”—i.e., does it equal 1? 5 As the moniker “flow
control statement” suggests, the answer to this question
controls the flow of how the rest of the code runs. Id. at
11:18–20. In the above example, when condition COND is
true (i.e., has the value “1”), the code flows to the immedi-
ately-following line of code, i.e., “Q: = 1.” The specification
labels this line of code as a “directive statement” for it
directs that output Q be assigned the value 1. Id. at 11:1–
8. In contrast, when condition COND is false (i.e., has the
value “0”), the code skips the directive statement “Q: = 1”
4 The parties agree that claim 1 of the ’841 patent is
representative of all claims on appeal.
5 In the field of binary logic to which the Gregory
Patents belong, data is represented by “bits.” A bit can
either equal 1 (also known as logic “true”) or 0 (also
known as logic “false”).
6 SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION
and flows directly to the line of code “else.” Here, we find
another directive statement: “Q: = 0.” Pursuant to this
directive statement, Q is assigned the value 0. The rela-
tionship between condition COND and output Q can be
summarized in the following table:
COND Q
1 1
0 0
The Gregory Patents describe how the invention con-
verts the statements from the HDL code into two con-
structs the specification calls “assignment conditions”:
(1) an “asynchronous load function;” and (2) an “asyn-
chronous data function.” These two assignment condi-
tions provide another type of description of the
functionality of the HDL code. The district court con-
strued “asynchronous load function,” represented “AL( ),”
as “a hardware description function for load specifying the
condition or conditions under which the variable is [asyn-
chronously 6] assigned a value.” Claim Construction
Order, 2013 WL 5957866, at *4. In the above example,
the “asynchronous load function” for output Q is “1” (i.e.,
AL(Q) = 1), because output Q is assigned a new value (i.e.,
6 The district court construed “asynchronous” to
mean “not triggered by a clock signal.” Synopsys, Inc. v.
Mentor Graphics Corp., No. C 12-6467 MMC, 2013 WL
5957866, at *4 (N.D. Cal. Nov. 7, 2013) (Claim Construc-
tion Order). “Asynchronous” is the opposite of “synchro-
nous,” which the district court construed to mean
“triggered by a clock signal.” Id. The example HDL code
is asynchronous, because it does not take a clock signal as
an input.
SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION 7
it is “loaded”) both when condition COND is true (Q: = 1)
and when it is false (Q: = 0). See ’841 patent, 4:21–23.
The district court construed “asynchronous data func-
tion,” represented “AD( ),” as “a hardware description
function for data specifying the condition or conditions
under which the variable is [asynchronously] assigned a
value.” Claim Construction Order, 2013 WL 5957866, at
*3. Here, the “asynchronous data function” for output Q
is “COND” because output Q is assigned the value “1” if,
and only if, condition COND is true. ’841 patent, 4:23–25.
Therefore, AD(Q) = COND.
The asynchronous load function for this example HDL
code (i.e., AL(Q) = 1) is constant, because it always equals
1. In that way it differs from the asynchronous data
function. The value of the asynchronous data function
(i.e., AD(Q) = COND) is non-constant or variable, because
it can be 1 or 0 depending on the value of condition
COND. The concept of constant—as opposed to non-
constant or variable—assignment conditions will be
important as we next explore claim 1.
Representative claim 1 and the associated portion of
the specification detail the method of using assignment
conditions to translate from a functional description of a
level sensitive latch into a hardware component descrip-
tion of that same latch. Claim 1 reads:
A method for converting a hardware independent
user description of a logic circuit, that includes
flow control statements including an IF statement
and a GOTO statement, and directive statements
that define levels of logic signals, into logic circuit
hardware components comprising:
converting the flow control statements and
directive statements in the user descrip-
tion for a logic signal Q into an assign-
ment condition AL(Q) for an asynchronous
8 SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION
load function AL( ) and an assignment
condition AD(Q) for an asynchronous data
function AD( ); and
generating a level sensitive latch when
both said assignment condition AL(Q) and
said assignment condition AD(Q) are non-
constant;
wherein said assignment condition AD(Q)
is a signal on a data input line of said flow
through latch;
said assignment condition AL(Q) is a sig-
nal on a latch gate line of said flow
through latch; and
an output signal of said flow through latch
is said logic signal Q.
Id. at 62:61–63:12.
A level sensitive latch is a basic form of memory. It is
a hardware component that stores a binary input (i.e., the
value “1” or “0”), but only when a specified condition is
true. A level sensitive latch can be described functionally
using HDL code as follows:
Id. at 21:49–56. Here, “D” represents the input to the
latch and “Q” the output.
The relationship between input D and output Q is dic-
tated by the “flow control statement” defined by the line of
SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION 9
code “If(COND).” In this example, when condition
“COND” is true (i.e., has the value “1”), the code flows to
the immediately following line of code—i.e., “Q: = D”—and
output Q is assigned the value of input D. In contrast,
when condition COND is false (i.e., has the value “0”), the
code skips the directive statement “Q: = D” and flows
directly to the line of code “else.” In this example, no
instructions follow “else.” The value of output Q therefore
remains unchanged. In sum, when condition COND is
true, output Q is assigned the value of input D; when
condition COND is false, output Q retains its prior value
regardless of whether the value of input D remains the
same or changes. The relationship between condition
COND, input D, and output Q can be summarized in the
following table:
COND D Q
1 1 1
1 0 0
0 1 Q
0 0 Q
The claimed method takes the functional description
of the latch as an input. Id. at 62:61–62. It then converts
the functional description into an equivalent description
in the form of (1) an asynchronous load function; and
(2) an asynchronous data function. Id. 62:66–63:3. Here,
the asynchronous load function for output Q is COND
because output Q is assigned a new value (i.e., it is “load-
ed”) whenever condition COND is true. The asynchronous
10 SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION
data function for Q is “COND*D” 7 because output Q is
assigned the value “1” if, and only if, both condition
COND and input D are true.
The assignment conditions associated with the func-
tional description of the latch are summarized in the table
below:
Id. at 21:58–65.
Claim 1 specifies that where, as here, the asynchro-
nous load function and the asynchronous data function
are non-constant, 8 the claimed method generates a level
sensitive latch. Id. at 63:4–6; see also id. at 24:56–63.
Claim 1 further specifies that the latch’s data input is the
asynchronous data function (i.e., COND*D); the latch’s
gate is the asynchronous load function (i.e., COND); and
7 “*” symbolizes a logic AND. The logic AND of two
variables is true if, and only if, both variables are true. If
either variable is false, the logic AND of the variables is
also false.
8 The asynchronous load function and the asyn-
chronous data function are “non-constant” (i.e., variable)
because each can change—COND in the case of the asyn-
chronous load function and COND*D in the case of the
asynchronous data function. Claim 1 does not specify
what component is generated if either the asynchronous
load function or the asynchronous data function (or both)
were constant—for example, if one of the functions was
always true (e.g., AL(Q) = 1).
SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION 11
the latch’s output is Q. Id. at 63:7–12; see also id. at
22:12–23, 24:56–63.
A hardware component description of the level sensi-
tive latch is shown below:
Id. at Fig. 8A. In this hardware component description,
the rectangle marked with 342 represents the level sensi-
tive latch, itself. Consistent with the above description,
the latch’s input (341-D) is the logic AND (340) of input D
and condition COND; and, its gate (342-G) is condition
COND. Id. at 22:12–23.
Importantly, the Gregory Patents make clear that
HDL code existed in the prior art. See id. at 1:49–50
(“Hardware description language (HDL) was developed to
assist such designers.”). The HDL code for the level
sensitive latch shown in Table 8 was already well known
by the time the claimed inventions of the Gregory Patents
were conceived. The same is true of the circuit diagram
for a level sensitive latch shown in Figure 8A; circuit
diagrams like this existed long before the Gregory Pa-
tents. See id. at 1:41–44 (“Historically, a user was re-
quired typically to supply either a logic schematic
diagram for use in the automated design process . . . .”).
What Gregory instead claims to have invented is a pro-
cess for interpreting the HDL code in Table 8 that uses
the assignment conditions of Table 9 to identify the circuit
diagram of Figure 8A as the hardware that performs the
function recited in the HDL code. At bottom, the infor-
12 SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION
mation provided in Table 8 (code), Table 9 (assignment
conditions), and Figure 8A (circuit diagram) are all equiv-
alent representations of the same thing: a level sensitive
latch.
The Gregory Patents describe and claim additional
examples relating to other circuit components, specifically
high impedance drivers and edge sensitive flip-flops, that
involve the use of different assignment conditions—
namely synchronous load functions, synchronous data
functions, don’t care functions, and high-impedance
functions.
II. Procedural History
Synopsys filed suit against Mentor Graphics Corp. on
December 12, 2012, in the Northern District of California
alleging infringement of the Gregory Patents and
U.S. Patent No. 6,836,420 (collectively, the patents-in-
suit). In particular, Synopsys alleged that Mentor
Graphics’ “Precision” family of logic synthesis products
and its “Veloce” family of emulators infringed the follow-
ing claims of the patents-in-suit: claim 1 of the ’841
patent; claims 32, 35, and 36 of the ’318 patent; claims 1,
2, 8, and 9 of the ’488 patent; and claims 1–3, 10–13, and
20 of the ’420 patent.
Based on disputed issues raised by the parties, the
court construed certain claim terms of the patents-in-suit
on November 7, 2013. Notably, the court did not construe
any claim of the Gregory Patents to require the use of a
computer—general purpose or otherwise—or any other
type of hardware. 9 See Claim Construction Order, 2013
9 Perhaps more notably, none of Synopsys’ proposed
constructions required the use of a computer or any type
of hardware. J.A. 2395–422. In particular, representa-
tive claim 1’s “generating a . . . latch” means, not creating
SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION 13
WL 5957866, at *2–5. Neither party challenges any of the
district court’s claim constructions on appeal.
The parties subsequently cross-moved for summary
judgment on Mentor Graphics’ defense that the Gregory
Patents were invalid under 35 U.S.C. § 101. The court
granted Mentor Graphics’ motion and invalidated all
asserted claims of the Gregory Patents. See Summary
Judgment Order, 78 F. Supp. 3d at 966. In reaching its
decision, the court applied the now common two-step test
described by the Supreme Court in Alice Corp. v. CLS
Bank International, 134 S. Ct. 2347 (2014). See Summary
Judgment Order, 78 F. Supp. 3d at 962–63.
The court observed that “[e]ach of the steps in the claimed
methods can be performed by a skilled designer either
mentally or with pencil and paper.” Id. at 961. Due to
the breadth of the claims, the court found, under the first
step of the Alice test, that “the claims are directed to a
mental process . . . ‘a subcategory of unpatentable ab-
stract ideas.’” Id. at 963 (quoting CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir.
2011)); see also id. at 961 (noting that while the claimed
method “is primarily intended for use with a computer,”
“the claims themselves do not expressly call for a comput-
er or other piece of equipment”); id. at 963 (“The claimed
methods here at issue do not entail anything physical.
Rather, as discussed above, the asserted claims are di-
rected to the process of inference, which is fundamental to
IC design and can be performed mentally.”); id. at 964
(“[T]he claimed methods do not require complex calcula-
tions; as noted, the claimed steps were performed mental-
ly by the inventors and can be performed by a skilled
designer either mentally or with the aid of a pencil and
paper.”).
the physical component, but generating a representation
(e.g., description, schematic, etc.) of such a component.
14 SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION
Turning to the second step of the Alice test, the court
rejected Synopsys’ argument that the claims necessarily
contained an inventive concept because Mentor Graphics
failed to present prior art that disclosed the claimed
methods. Id. at 964. The court then found that, while the
claims were directed to a “specific” mental process, they
nonetheless “preempt[ed] a building block of human
ingenuity.” Id. at 965. Finally, it found that the claims
concerned “well-understood, routine, conventional activi-
ty, previously engaged in by those in the field.” Id. (“As
acknowledged in the specification, skilled designers had
been inferring the necessary parts and connections for ICs
long before the Gregory patents issued.”).
The court entered final judgment with respect to the
Gregory Patents on April 20, 2015. 10 Synopsys appeals
from this final judgment. We have jurisdiction pursuant
to 28 U.S.C. § 1295(a)(1).
DISCUSSION
“We review a district court’s grant of summary judg-
ment according to the law of the regional circuit, here the
Ninth Circuit, where summary judgment is reviewed de
novo.” Kaneka Corp. v. Xiamen Kingdomway Grp. Co.,
790 F.3d 1298, 1303 (Fed. Cir. 2015) (citations omitted).
“In the Ninth Circuit, summary judgment is appropriate
when, drawing reasonable inferences in favor of the non-
10 In that same order, the court stayed further pro-
ceedings on the ’420 patent in view of a then-pending
inter partes review. The Patent Trial and Appeal Board
(Board) subsequently found the challenged claims of the
’420 patent unpatentable as obvious. Mentor Graphics
Corp. v. Synopsys, Inc., IPR2014-00287, 2015 WL 3637569(PTAB June 11, 2015). We recently affirmed the Board’s
decision. Synopsys, Inc. v. Mentor Graphics Corp.,
No. 2015-2056 (Fed. Cir. Oct. 11, 2016).
SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION 15
moving party, there is no genuine issue of material fact.”
Id. (citing Comite de Jornaleros de Redondo Beach v. City
of Redondo Beach, 657 F.3d 936, 942 (9th Cir. 2011)).
A patent may be obtained for “any new and useful
process, machine, manufacture, or composition of matter,
or any new and useful improvement thereof.” 35 U.S.C.
§ 101. The Supreme Court has “‘long held that this
provision contains an important implicit exception: Laws
of nature, natural phenomena, and abstract ideas are not
patentable.’” Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2116 (2013) (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct.
1289, 1293 (2012)) (alteration omitted). First in Mayo and
later in Alice, the Supreme Court set forth a two-step
analytical framework to identify patents that, in essence,
claim nothing more than abstract ideas. The court must
first “determine whether the claims at issue are directed
to a patent-ineligible concept.” Alice Corp., 134 S. Ct. at
2355. If so, the court must then “consider the elements of
each claim both individually and ‘as an ordered combina-
tion’ to determine whether the additional elements ‘trans-
form the nature of the claim’ into a patent-eligible
application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297).
The Supreme Court has described this second step of the
analysis as “a search for an ‘inventive concept.’” Id.I. Alice Step 1: Are the Asserted Claims
directed to an abstract idea?
The district court based its Alice Step 1 analysis on a
basic premise: “the claims are directed to a mental pro-
cess.” Summary Judgment Order, 78 F. Supp. 3d at 963.
We held in CyberSource that mental processes are “a
subcategory of unpatentable abstract ideas.” 654 F.3d at
1371. As we explained:
Methods which can be performed entirely in the
human mind are unpatentable not because there
is anything wrong with claiming mental method
16 SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION
steps as part of a process containing non-mental
steps, but rather because computational methods
which can be performed entirely in the human
mind are the types of methods that embody the
“basic tools of scientific and technological work”
that are free to all men and reserved exclusively
to none.
Id. at 1373 (quoting Gottschalk v. Benson, 409 U.S. 63, 67
(1972)) (emphasis in original). While the Supreme Court
has altered the § 101 analysis since CyberSource in cases
like Mayo and Alice, we continue to “treat[] analyzing
information by steps people go through in their minds, or
by mathematical algorithms, without more, as essentially
mental processes within the abstract-idea category.” Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354
(Fed. Cir. 2016) (citations omitted).
Although the Asserted Claims (i.e., claim 1 of the ’841
patent; claims 32, 35, and 36 of the ’318 patent; and
claims 1, 2, 8, and 9 of the ’488 patent), which are all
method claims, are devoid of any reference to a computer
or any other physical component, Synopsys disputes the
district court’s characterization of the claims as mental
processes. It suggests that the “complexity” of the
claimed methods would make it implausible—if not
impossible—for a skilled logic circuit designer to perform
the methods mentally or with pencil and paper. Appel-
lant’s Opening Br. 21. It distinguishes these supposedly
“complex” claims from the “simple” concepts found un-
patentable in cases like Alice and Bilski 11. Appellant’s
Opening Br. 39.
But, Synopsys’ argument is belied by the actual
claims at issue. The parties agree that claim 1 of the ’841
patent, discussed above, is representative of all Asserted
11 Bilski v. Kappos, 561 U.S. 593 (2010).
SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION 17
Claims. For convenience, we present the claim again
here:
A method for converting a hardware independent
user description of a logic circuit, that includes
flow control statements including an IF statement
and a GOTO statement, and directive statements
that define levels of logic signals, into logic circuit
hardware components comprising:
converting the flow control statements and
directive statements in the user descrip-
tion for a logic signal Q into an assign-
ment condition AL(Q) for an asynchronous
load function AL( ) and an assignment
condition AD(Q) for an asynchronous data
function AD( ); and
generating a level sensitive latch when
both said assignment condition AL(Q) and
said assignment condition AD(Q) are non-
constant;
wherein said assignment condition AD(Q)
is a signal on a data input line of said flow
through latch;
said assignment condition AL(Q) is a sig-
nal on a latch gate line of said flow
through latch; and
an output signal of said flow through latch
is said logic signal Q.
’841 patent, 62:61–63:12. The claim recites a method of
changing one description of a level sensitive latch (i.e., a
functional description) into another description of the
level sensitive latch (i.e., a hardware component descrip-
tion) by way of a third description of that very same level
sensitive latch (i.e., assignment conditions). As demon-
strated above, supra at 8–11, and in the patent specifica-
18 SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION
tion itself, ’841 patent, 21:45–22:23, the method can be
performed mentally or with pencil and paper. The skilled
artisan must simply analyze a four-line snippet of HDL
code:
id. at 21:49–56; translate this short piece of code into
assignment conditions:
id. at 21:58–65; and further translate those two assign-
ment conditions into a schematic representation of a level
sensitive latch:
id. at Fig. 8A. Although an understanding of logic circuit
design is certainly required to perform the steps, the
SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION 19
limited, straightforward nature of the steps involved in
the claimed method make evident that a skilled artisan
could perform the steps mentally. The inventors of the
Gregory Patents confirmed this point when they admitted
to performing the steps mentally themselves. Summary
Judgment Order, 78 F. Supp. 3d at 961, 964.
Synopsys’ reliance on TQP Development, LLC v. Intuit
Inc., No. 2:12-cv-180-WCB, 2014 WL 651935 (E.D. Tex.
Feb. 19, 2014), is therefore misplaced. See Appellant’s
Opening Br. 39 n.8. In that case, the district court denied
the defendant’s motion for summary judgment that claims
for a specific data encryption method for computer com-
munication were invalid under § 101. TQP, 2014 WL
651935, at *1. It distinguished the claims at issue from
the mental processes found unpatentable in cases like
Gottschalk. It explained that unlike those “simple,”
“basic” processes, the plaintiff’s “invention involves a
several-step manipulation of data that, except in its most
simplistic form, could not conceivably be performed in the
human mind or with pencil and paper.” Id. at *4 (empha-
sis added). This case is different. Representative claim 1
is directed to generating a representation of a single
specific hardware component and can be—and was—
performed mentally or with pencil and paper.
Synopsys next argues that even if the Asserted
Claims could be performed mentally they would, in prac-
tice, be performed on a computer. See, e.g., Appellant’s
Opening Br. 39 n.8 (“The methods here are designed for
use by computers, and a skilled artisan would understand
that the process is designed solely for computers.”), Appel-
lant’s Reply Br. 9 n.6 (“Mentor’s argument completely
ignores that the purpose of the claimed inventions was to
avoid the need to design certain circuit elements by hand
and enable the increasingly necessary automation of
circuit design through the use of synthesis software.”). It
attempts to tie the claims to those computerized design
tools now common in industry. In support of this argu-
20 SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION
ment, counsel for Synopsys during oral argument pointed
to the “200 pages of code” attached to the specifications of
the Gregory Patents that he contended reveal the “true
novelty” of the Asserted Claims. Oral Argument Tr. 4:25–
4:37.
While Synopsys may be correct that the inventions of
the Gregory Patents were intended to be used in conjunc-
tion with computer-based design tools, the Asserted
Claims are not confined to that conception. The § 101
inquiry must focus on the language of the Asserted
Claims themselves. See Accenture Global Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir.
2013) (admonishing that “the important inquiry for a
§ 101 analysis is to look to the claim”); see also Content
Extraction & Transmission LLC v. Wells Fargo Bank,
Nat’l Ass’n, 776 F.3d 1343, 1346 (Fed. Cir. 2014) (“We
focus here on whether the claims of the asserted patents
fall within the excluded category of abstract ideas.”), cert.
denied, 136 S. Ct. 119 (2015).
On their face, the claims do not call for any form of
computer implementation of the claimed methods. Syn-
opsys stops short of arguing that the Asserted Claims
must be construed as requiring a computer to perform the
recited steps. Synopsys never sought such a construction
before the district court and it does not press for such a
construction here. 12 Its argument therefore fails. Be-
12 While Synopsys repeatedly describes the claimed
methods as implemented on a computer, see, e.g., Appel-
lant’s Opening Br. 12 (“The patents claim methods for a
computer running specialized software to take ‘flow
control statements’ and ‘directive statements’ in a user’s
description written in HDL, and convert them into ‘as-
signment conditions’ for ‘hardware description functions,’
which, in turn, are used by the computer to determine the
appropriate hardware and connections.” (citations omit-
SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION 21
cause the Asserted Claims make no mention of employing
a computer or any other physical device, they are so broad
as to read on an individual performing the claimed steps
mentally or with pencil and paper. Just as we have held
that complex details from the specification cannot save a
claim directed to an abstract idea that recites generic
computer parts, the Gregory Patents’ incorporation of
software code cannot save claims that lack any computer
implementation at all. See Accenture, 728 F.3d at 1345
(“[T]he complexity of the implementing software or the
level of detail in the specification does not transform a
claim reciting only an abstract concept into a patent-
eligible system or method.”).
For this reason, we need not decide whether a com-
puter-implemented version of the invention would not be
“directed to” an abstract idea. And, for the same reasons,
Synopsys cannot rely on our decisions in Enfish 13 and
McRO 14 to support the patentability of the Asserted
Claims. In Enfish, we held that claims “directed to a
specific improvement to the way computers operate” to
store and retrieve data were not unpatentably abstract.
822 F.3d at 1336. The claims were not simply drawn to a
disembodied data table. See id. at 1337 (“Here, the claims
are not simply directed to any form of storing tabular
data, but instead are specifically directed to a self-
referential table for a computer database.” (emphasis in
ted)), its counsel recognized at oral argument that the
words of the Asserted Claims do not require a computer
and he referred instead to the patent specification and
extrinsic evidence that a human would not use the meth-
ods as claimed. Oral Argument Tr. 12:26–13:01.
13 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327(Fed. Cir. 2016).
14 McRO, Inc. v. Bandai Namco Games Am. Inc., ---
F.3d ---, 2016 WL 4896481 (Fed. Cir. Sept. 13, 2016).
22 SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION
original)). In McRO, we similarly held that claims that
recited “a specific asserted improvement in computer
animation” were not directed to an unpatentable abstract
idea. 2016 WL 4896481, at *8. By their terms and the
district court’s unchallenged constructions, the Asserted
Claims do not involve the use of a computer in any way.
See J.A. 2080 (Synopsys’ counsel stating that “computers
aren’t called out” in representative claim 1); Oral Argu-
ment Tr. 12:26–12:48 (Synopsys’ counsel conceding that
the claims do not “speak[]” in terms of using a computer
the way the specification does). The Asserted Claims thus
cannot be characterized as an improvement in computer
technology.
That a human circuit designer may not use the specif-
ic method claimed when translating a functional descrip-
tion of a logic circuit into a hardware component
description of the logic circuit as Synopsys contends does
not change this result. Indeed, the Supreme Court reject-
ed this argument in Gottschalk. There, the Court re-
viewed a claimed “method for converting binary-coded
decimal (BCD) numerals into pure binary numerals.”
Gottschalk, 409 U.S. at 64. It recognized that the claimed
method had been designed for use on a computer and
“varie[d] the ordinary arithmetic steps a human would
use by changing the order of the steps, changing the
symbolism for writing the multiplier used in some steps,
and by taking subtotals after each successive operation.”
Id. at 67. It found that the claimed method, which
“c[ould] be performed without a computer,” was nonethe-
less not patent-eligible. Id.Synopsys’ argument that “[t]he [A]sserted [C]laims
. . . do not preempt all conversions” from functional de-
scriptions of logic circuits to hardware component descrip-
tions of logic circuits, Appellant’s Opening Br. 18
(emphasis in original), likewise misses the mark. “While
preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate
SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION 23
patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). “Where a
patent’s claims are deemed only to disclose patent ineligi-
ble subject matter under the Mayo framework, as they are
in this case, preemption concerns are fully addressed and
made moot.” Id.The district court did not define the abstract idea of
the Asserted Claims. Synopsys likewise makes no pro-
posal. Mentor Graphics argues that the Asserted Claims
are directed to the abstract idea of “translating a func-
tional description of an existing, intangible logic element
into its corresponding assignment-condition description,
and then into yet another abstract description of the same
logic element.” Appellee’s Br. 28–29.
We recognize that defining the precise abstract idea of
patent claims in many cases is far from a “straightfor-
ward” exercise. DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1257 (Fed. Cir. 2014). But, here, the
Asserted Claims are drawn to the abstract idea of: trans-
lating a functional description of a logic circuit into a
hardware component description of the logic circuit. As
detailed above, this translation is a mental process. In
contrast to Mentor Graphics’ articulation of the abstract
idea, which largely restates representative claim 1 in
different words, we believe our definition more accurately
captures the “basic thrust” of the Asserted Claims.
BASCOM Global Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016). And, it is
wholly consistent with the Gregory Patents’ own descrip-
tions of the invention, as laid out in the Abstract, specifi-
cation, and claims:
• “A method and system are provided for generating
a logic network using a hardware independent de-
scription means.” ’841 Patent, Abstract.
24 SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION
• “This invention relates generally to methods and
systems used to convert a hardware language de-
scription to a logic circuit . . . .” Id. at 1:30–32.
• “A method for converting a hardware independent
user description of a logic circuit . . . into logic cir-
cuit hardware components . . . .” Id. at 62:61–65.
Having now defined the abstract idea of the Asserted
Claims we turn to the second step of the Alice analysis.
II. Alice Step 2: Do the Asserted Claims
include an inventive concept?
In Alice, the Supreme Court described an “inventive
concept” as “an element or combination of elements that is
‘sufficient to ensure that the patent in practice amounts
to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 134 S. Ct. at 2355 (quoting Mayo,
132 S. Ct. at 1294) (alteration in original). Synopsys
equates the inventive concept inquiry with novelty and
contends that the Asserted Claims contain an inventive
concept because they were not shown to have been antici-
pated by (35 U.S.C. § 102) or obvious over (35 U.S.C.
§ 103) the prior art. See Appellant’s Opening Br. 43
(“[T]he district court ignored the fact that the methods in
the asserted claims of the Gregory patents were entirely
novel solutions and could not be found anywhere in the
prior art.”). That position misstates the law. It is true
that “the § 101 patent-eligibility inquiry and, say, the
§ 102 novelty inquiry might sometimes overlap.” Mayo,
132 S. Ct. at 1304. But, a claim for a new abstract idea is
still an abstract idea. The search for a § 101 inventive
concept is thus distinct from demonstrating § 102 novelty.
That being said, the contours of what constitutes an
inventive concept are far from precise.
In DDR Holdings, we held that claims “directed to
systems and methods of generating a composite web page
that combines certain visual elements of a ‘host’ website
SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION 25
with content of a third-party merchant” contained the
requisite inventive concept. 773 F.3d at 1248. We ex-
plained that the claims at issue involved a technological
solution that overcame a specific challenge unique to the
Internet. Id. at 1259. This distinguished the claims at
issue from those claims found unpatentable in earlier
cases. Id. And, it ensured that the claims satisfied the
Alice Step 2 inquiry under any conceivable articulation of
the claims’ underlying abstract idea. Id. at 1257.
In BASCOM, we likewise held that claims “directed to
filtering content on the Internet” contained an inventive
concept. 827 F.3d at 1348. We recognized that “the
limitations of the claims, taken individually, recite gener-
ic computer, network and Internet components, none of
which is inventive by itself.” Id. at 1349. We explained,
however, that “an inventive concept can be found in the
non-conventional and non-generic arrangement of known,
conventional pieces.” Id. at 1350. We found that the
claims at issue contained just such an inventive arrange-
ment through “the installation of a filtering tool at a
specific location, remote from the end-users, with custom-
izable filtering features specific to each end user.” Id.
The claimed custom filter could be located remotely from
the user because the invention exploited the ability of
Internet service providers to associate a search request
with a particular individual account. Id. This technical
solution overcame defects in prior art embodiments and
elevated an otherwise abstract idea to a patentable inven-
tion. Id.
The Asserted Claims, in contrast to those at issue in
DDR Holdings and BASCOM, contain no such technical
solution. To the extent the Asserted Claims add anything
to the abstract idea (i.e., translating a functional descrip-
tion of a logic circuit into a hardware component descrip-
tion of the logic circuit), it is the use of assignment
conditions as an intermediate step in the translation
process. See Appellant’s Reply Br. 21 (“The use of as-
26 SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION
signment conditions in converting user descriptions into
specific logic circuits is, without question, an inventive
concept.”). But, given that the claims are for a mental
process, assignment conditions, which merely aid in
mental translation as opposed to computer efficacy, are
not an inventive concept that takes the Asserted Claims
beyond their abstract idea. 15 Unlike the claims at issue in
DDR Holdings and BASCOM, the Asserted Claims do not
introduce a technical advance or improvement. They
contain nothing that “amounts to significantly more than
a patent upon the [abstract idea] itself.’” Alice, 134 S. Ct.
at 2355 (citation omitted).
CONCLUSION
Whether different claims otherwise supported by the
written description of the Gregory Patents directed to a
computerized design tool that uses assignment conditions
to more efficiently identify and generate logic circuits
from a functional description could pass muster under
§ 101 is not before us. Our analysis focuses, as it must, on
the Asserted Claims. Those claims are directed to an
abstract mental process and contain no inventive concept.
The claims are therefore invalid under 35 U.S.C. § 101.
We affirm the district court’s grant of summary judgment.
AFFIRMED
COSTS
Each party shall bear its own costs.
15The inventive concept inquiry as it relates to the
Asserted Claims thus differs from the one we often face in
cases under § 101, i.e., whether the claimed invention is
merely an abstract idea running on a general purpose
computer as opposed to a concrete improvement in how
the computer itself functions.