Synopsys, Inc. v. Siemens Industry Software Inc.

Background

The court issued this order in response to Synopsys’s administrative motion seeking clarification of its November 12, 2020 order. That earlier order granted Avatar’s motion to dismiss Claims I and II and denied the motion as to Claim VI. It held that U.S. Patent Nos. 8,407,640 and 7,103,863 were invalid under the framework established in Alice Corp. v. CLS Bank International because they were directed to abstract ideas and did not contain a saving inventive concept.

Synopsys argued that the earlier order invalidated only claim 1 of the ’863 Patent because the court had focused on that claim and described it as representative. It also sought, alternatively, permission to file a motion for reconsideration, arguing that the earlier order did not adequately explain why the remaining claims were invalid and that the court might lack jurisdiction over claims no longer being asserted.

Avatar argued that the earlier order clearly invalidated the entire ’863 Patent and did not require clarification.

Jurisdiction

The court rejected Synopsys’s jurisdictional argument. It held that the complaint asserted infringement of the ’863 Patent as a whole, repeatedly alleging infringement of “one or more claims” and identifying the claim 1 chart as “just one non-limiting example.” Synopsys had not indicated during the briefing or hearing that it was asserting only claim 1.

Although Synopsys later stopped asserting infringement based on the ’863 Patent, the court held that this did not retroactively eliminate jurisdiction. The court therefore concluded that it had jurisdiction to assess the validity of all claims of the ’863 Patent.

Supplemental Alice Analysis

Under step one of Alice, the court asks whether the patent claims are directed to an abstract idea. It concluded that claims 1 and 35, which cover a method and an article of manufacture related to creating a block abstraction, were directed to the abstract concept of discarding irrelevant information and retaining a subset of information.

The court treated claims 2–23 and 36–57 as dependent claims that added details about manipulating or processing information. It concluded that these additional steps—such as replacing descriptions, determining information contents, processing information, building lists, removing information, labeling information, skipping information, and checking information—were also abstract mental processes or information-processing activities.

The court separately considered claims 24–34 and 58–68, which added details about the information used in or discarded from the block abstraction, including circuit-layout and fabrication information. It held that specifying the type of information did not change the claims’ abstract nature because information is intangible and remains abstract even when limited to particular content.

Under step two of Alice, the court asks whether the claims add an inventive concept—something significantly more than the abstract idea itself. The court concluded that none of the ’863 Patent claims tied the invention to a specific structure, a non-generic arrangement of computer components, or a specific method that improved computer functionality. The use of a computer-readable medium and the additional dependent-claim details did not supply an inventive concept.

The court also rejected Synopsys’s argument that factual disputes prevented resolution at the motion-to-dismiss stage. The court had assumed certain asserted facts in Synopsys’s favor when resolving Avatar’s motion, but concluded that those facts did not change the legal analysis. It further held that whether the dependent claims contained an inventive concept was a legal issue suitable for resolution on a motion to dismiss.

Disposition

The court clarified that its November 12, 2020 order invalidated all claims of the ’863 Patent, not merely claim 1. The court denied Synopsys’s alternative request for leave to file a motion for reconsideration. The order did not alter the earlier dispositions concerning the other patent claims.