Patent Cases, OASIS TOOLING, INC., Petitioner, v. SIEMENS INDUSTRY SOFTWARE INC., GLOBALFOUNDRIES U.S. INC., Respondents., U.S. Supreme Court, (Oct. 13, 2026)

QUESTION PRESENTED

The Patent Act provides that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter” may obtain a patent. 35 U.S.C. §101 (emphasis added). In Alice Corp. Pty. Ltd. v. CLS Bank International, 573 U.S. 208 (2014), this Court held that claims directed to “abstract ideas” are not patentable but did not define the boundaries of that exception to §101.

The United States Court of Appeals for the Federal Circuit has struggled to apply this exception in the context of computer-based inventions, which are a critical segment of innovation and research today. One line of cases holds that inventions that improve formerly mental processes, such as recognizing security threats or animating cartoons, are patentable when they are based on a new and improved technological process that is distinct from conventional approaches. A second line of cases, however, holds that, no matter how new or useful a computer-based invention is, it is necessarily ineligible for patenting as abstract if it is directed to a task that people used to perform manually.

The question presented is:

Whether a specific, multi-step computer-implemented process is patent eligible under 35 U.S.C. §101 when it performs a task in a way fundamentally different from how people previously did it—or whether such a claim is necessarily directed to an unpatentable abstract idea merely because a person could perform a similar task through a different and inferior mental process.

PARTIES TO THE PROCEEDING

Petitioner is Oasis Tooling, Inc., the Appellant in the court of appeals. Oasis Tooling, Inc. is not a publicly traded company.

Respondents are Siemens Industry Software Inc. and GlobalFoundries U.S. Inc., the Appellees in the court of appeals. Siemens Industry Software Inc. states that it is a wholly-owned subsidiary of Siemens Industry, Inc., which is a wholly-owned subsidiary of Siemens Corporation, which is a wholly-owned subsidiary of Siemens USA Holdings, Inc., which is a wholly-owned subsidiary of Siemens Beteiligungen USA GmbH, which is a wholly-owned subsidiary of Siemens Beteiligungen Inland GmbH, which is a wholly-owned subsidiary of Siemens AG. Siemens AG is publicly traded in Germany. Siemens AG trades under the ticker symbol SIE.DE on the Xetra stock exchange in Germany and SIEGY as an American Depositary Receipt (ADR) in the United States.

GlobalFoundries U.S. Inc. is a publicly traded company under the ticker symbol: GFS.

CORPORATE DISCLOSURE STATEMENT

Petitioner has no parent corporation, and no publicly held company holds 10% or more of Petitioner's stock.

RELATED PROCEEDINGS

United States District Court (D. Del.):

Oasis Tooling, Inc. v. Siemens Industry Software Inc., 1:22-cv-00151-CJB (July 10, 2024); Oasis Tooling, Inc. v. GlobalFoundries U.S. Inc., 1:22-cv-00312-CJB (July 10, 2024)

United States Court of Appeals (Fed. Cir.):

Oasis Tooling, Inc. v. Siemens Industry Software Inc., GlobalFoundries U.S. Inc., 24-2085, 24-2086 (Feb. 26, 2026)

OPINIONS BELOW

The opinion of the Federal Circuit (Pet. App. 1a-6a) is nonprecedential and is not reported in the Federal Reporter, but is available at 2026 WL 537372.

The opinion of the United States District Court for the District of Delaware granting summary judgment (Pet. App. 7a-46a) is not officially reported and is available at 2024 WL 3273539.

JURISDICTION

The Federal Circuit entered judgment on February 26, 2026. Petitioner timely filed a combined petition for panel rehearing and rehearing en banc on April 14, 2026, which the Federal Circuit denied on May 15, 2026. On July 14, 2026, the Chief Justice extended the time within which to file a petition for a writ of certiorari to and including October 12, 2026.

This Court has jurisdiction under 28 U.S.C. §1254(1).

STATUTORY PROVISION INVOLVED

Section 101 of the Patent Act, 35 U.S.C. §101, provides:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

STATEMENT

This case presents a recurring and important question about the scope of patent eligibility under 35 U.S.C. §101, which promises protection for “any new and useful process.” 35 U.S.C. §101. Petitioner holds patents on an important process for analyzing massively complex semiconductor chip designs, solving a problem that bedeviled the industry for years. Petitioners' invention is fundamentally different from, and a valuable improvement over, the methods used by engineers to examine and verify chip designs. The Federal Circuit nevertheless held Petitioner's patents ineligible as directed to an abstract idea “that can be performed in the human mind,” even while conceding that “human minds are unable to” perform Petitioner's new process. Pet. App. 5a.

The Federal Circuit's decision deepens an acknowledged intra-circuit split that has produced a “panel-dependent body of law” on how to determine if inventions are patentable. Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 977 F.3d 1379, 1382 (Fed. Cir. 2020) (Moore, J., concurring). Some panels hold that claims are patent eligible when they use a computer to perform a distinct and new process that automates and improves a task previously performed by people. Under that line of cases, Petitioner's patents are manifestly patent eligible. Other panels, including the panel below, hold that claims are categorically unpatentable if they are directed to a general category of activity that people can perform, even where the claimed invention is very different from how a human mind would approach the task and could not be performed by a human. Under the reasoning of the second line of cases, a new and better tool for analyzing semiconductor chips is invalid because people used to do that manually, albeit with a far less effective process. This conclusion should make the invention of the butane lighter unpatentable because people used to achieve the same result—starting fires—by rubbing sticks together.

These two lines of cases are fundamentally inconsistent, and the resulting split is outcome-determinative: the patentability of a computer-implemented invention turns on the fortuity of panel assignment rather than on the merits of the invention. This is no esoteric question confined to arcane corners of patent law. It affects tens of thousands of patent filings every year and shapes the investment decisions of companies ranging from small startups to the largest technology firms. The inconsistency leaves district courts rudderless in deciding patent-eligibility cases, and—as explained below—the Federal Circuit's own judges have warned that the attendant unpredictability is undermining investment in American innovation. Whether an invention is eligible for patenting should turn on its merits, not on the luck of the panel draw.

This case presents a perfect vehicle to resolve this issue and clear the cloud of uncertainty that hangs over the patentability of computer-based inventions. Because this case was decided at the summary judgment stage, all factual disputes are resolved in Petitioner's favor, and there was ample record evidence on all relevant factual issues—including that the claimed invention was unconventional, very different from how engineers would manually analyze chips, and an important improvement in chip design processes. Thus, this case presents a pure legal question for this Court to resolve.

The Federal Circuit panel's decision cleanly embodied the line of cases finding computer-based patents to be categorically unpatentable when they have an analog in human practice. It concluded without further analysis that Petitioner's patents are “directed to an abstract idea” because they cover “a device for analyzing data to identify similarities and differences between design data for semiconductor chips,” which “is a process ‘that can be performed in the human mind.’” Pet. App. 5a. The panel deemed it “immaterial to the patent eligibility analysis that human minds are unable to parse, standardize, and digest the data like a computer in doing so,” and it likewise disregarded that Petitioner's invention represented a significant improvement over then-conventional technology. Id.; Pet. App. 2a (“At the time of the invention, conventional tools for designing semiconductor chips had a recurring problem: they were unable to recognize when cells were functionally the same but just differently expressed.”).

The Federal Circuit had jurisdiction over the appeal under 28 U.S.C. §1295(a).

A. Petitioner's Patents Cover Important Improvements in Semiconductor Technology

Petitioner's patents solved critical problems that plagued the semiconductor industry. Today's global economy depends on semiconductor chips, which come in countless designs to perform myriad functions. Chip design and manufacturing processes are inherently complicated. Individual transistors are measured in nanometers. Fabricating these chips requires highly specialized and expensive manufacturing tools and large teams that often cooperate in different locations and use different design tools and techniques.

The complexity of modern chip designs creates new challenges. As the district court found, “[w]hen chip production starts, it is essential that the [components] of the design are the correct version [as] using the incorrect version ‘can cost millions of dollars and months of delay[,]’ and the potential for using an obsolete version … is ‘everywhere.’” Pet. App. 10a (citations omitted). “At the time of the inventions, existing design data management tools lacked an auditing capability that would allow project managers to verify that the cells in a chip design are of the latest approved version ….” Id.

In addition to those challenges, chip designs are written in many different chip-design languages, which express functional properties in different ways. Even within a single design language, the same component can be described in any number of alternative ways. 24-2085, Dkt. 23-1 (′545 Patent) at Appx139 (2:25-34), Appx140 (4:11-15, 4:32-44), Appx141 (6:65-7:16). Because of this endless variety of different ways to express the same functional design, the technology available at that time “could not effectively determine when parts of different chip designs included the same cells. For example, when a yield problem was discovered in a product that utilized a particular design template, it was difficult to determine what other projects used that same template.” Pet. App. 11a (citations omitted). Chip designers thus “resort[ed] to manual analysis of millions of lines of data” to attempt to visually find “cell changes within a file.” Pet. App. 30a, Pet. App. 62a n.10.

Texas Instruments, a leading semiconductor company, struggled to deal with these problems, which were costing it tens of millions of dollars every year. It turned to Petitioner, who had led the development of the industry-leading OASIS® chip-design language, to develop a solution.

Petitioner invented the process of the asserted patents in which individual cells are identified; partitioned into functional and non-functional portions; and parsed into a specific data structure called a “syntax tree.” The output of that process is then normalized into “canonical forms” that reduce sensitivity to non-functional variations. The canonical forms are then hashed to generate a digest of the partitioned, canonical form of the functional portions of the semiconductor design cells. See, e.g., 24-2085, Dkt. 23-1 (′545 Patent) at Appx141 (6:6-26), Appx173 (69:23-26), Appx181 (Claim 14). The resulting “Canonical-Form Digests” identify when two cells are functionally the same, even if those cells are expressed differently—a result that was impossible using conventional tools that would identify those functionally equivalent cells as different. Id. at Appx141 (6:27-60).

B. The District Court and Federal Circuit Found Petitioner's Inventions to Be Unpatentable Because They Provided a New Way of Performing a Formerly Manual Task

Oasis sued Siemens Industry Software and GlobalFoundries in the United States District Court for the District of Delaware, asserting infringement of the ′545 and ′571 Patents. Defendants moved to dismiss, arguing that the patents were directed to the abstract idea of “comparing parsed and standardized data to evaluate their similarities and/or differences” and otherwise lacked an inventive concept. Pet. App. 48a, Pet. App. 57a. The district court initially disagreed. Applying the Court's two-step Alice framework, the district court concluded that, although step one was a “tough call,” the creation and digesting of canonical forms could, at step two, amount to an inventive concept. Pet. App. 65a.

After discovery, defendants moved for summary judgment. This time the district court concluded, at Alice step one, that the asserted claims were directed to the abstract idea of “analyzing (parsing, standardizing, digesting, and comparing) data to identify similarities and/or differences.” Pet. App. 19a. That conclusion rested largely on a trivial edge-case scenario raised during claim construction: the elimination of “white space” as a non-functional variation between multiple semiconductor design files. Pet. App. 21a-22a. According to the district court, because “eliminating extra white space in one piece of data … is something that surely can be performed by the human mind,” the asserted claims were directed to an unpatentable “mental process.” Pet. App. 22a.

In finding Petitioner's invention to be unpatentable, the district court did not address the undisputed fact that, when applied to complex chip designs, the claimed processes detected important functional differences and recognized functional equivalencies that were impossible for the human mind to detect. The district court also found to be “of little moment” Petitioner's evidence that “the asserted claims ‘allow for more accurate, faster comparisons of chip design data on a more granular scale than was previously possible.” Pet. App. 31a (district court's emphasis). The district court also rejected as irrelevant Petitioner's evidence that its inventions solved the long-felt need of Texas Instruments and the industry to be able to effectively analyze chip designs. Pet. App. 34a-35a.

The Federal Circuit affirmed. The panel conceded that “human minds are unable to” perform the steps of Petitioner's patents, but at the same time concluded that the asserted claims are directed to “a process ‘that can be performed in the human mind’ and is therefore directed to an abstract idea.” Pet. App. 5a (citation omitted).

REASONS FOR GRANTING THE PETITION

I. The Federal Circuit's Irreconcilable Intra-Circuit Split on the Mental-Process Exception Warrants This Court's Review

Since this Court's decision in Alice Corp. Pty. Ltd. v. CLS Bank International, 573 U.S. 208 (2014), the Federal Circuit has fractured into irreconcilable camps on a foundational question of patent eligibility: whether claims that use a computer to perform a process entirely distinct from any prior method are nevertheless directed to an unpatentable “mental process” because the broad function the claims achieve is analogous to a task previously performed by the human mind. The decision below starkly illustrates—and deepens—that split.

This is a critical question. Nearly any computer function can, at a high level of generality, be characterized as something the human mind could perform. Under the logic of the decision below, every software-based invention would be patent ineligible.

A. The Federal Circuit Is Intractably Divided On Whether Software Claims Reciting a “Distinct” Process Are Invalid as Directed to a “Mental Process”

This Court's review is needed to resolve an important intra-circuit split. One line of Federal Circuit authority holds that claims employing a computer “to perform a distinct process to automate a task previously performed by humans” are patent eligible, even if the broad function the claims perform was previously accomplished by humans. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). Under this approach, the critical inquiry is whether the claimed process differs from the conventional prior human process. If the prior human “activity, even if automated by rules, would not be within the scope of the claims,” then the claims are not directed to an abstract mental process. Id. at 1314-15. Under this line of cases, the Federal Circuit has found patentable claims directed to recognizing suspicious software, organizing data in a database, and generating computer animation. Even though humans previously performed those tasks mentally, each invention used a new and different technological process to accomplish the old task, making the claims patentable and non-abstract.

In McRO, for example, the Federal Circuit considered claims describing specific rules used to automate lip-synchronization in computer animations. The court explained that it was no bar to patent eligibility that humans were already able to synchronize computer characters' lips with audio files and acknowledged that the claims sought to “automate a task previously performed by humans.” 837 F.3d at 1314. The claims were patent eligible because the claimed computer process was “distinct” from the prior human process. Id. The court distinguished cases like “Flook, Bilski, and Alice, where the claimed computer-automated process and the prior method were carried out in the same way.” Id. (emphasis added).

The Federal Circuit reinforced this patentable-if-distinct approach in CardioNet, LLC v. InfoBionic, Inc., 955 F.3d 1358 (Fed. Cir. 2020). There, the appellee argued that claims describing a cardiac-monitoring system were “drawn to automating basic diagnostic processes that doctors have long used.” Id. at 1370. The Federal Circuit rejected that argument: “[n]othing in the record … suggest[ed] that the claims merely computerize preexisting techniques for diagnosing atrial fibrillation.” Id. It was “difficult to fathom” how doctors could “mentally or manually” perform the claimed functions. Id. at 1371; see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336-37 (Fed. Cir. 2016) (finding patent eligible claims that provided an improved way of organizing data in a computer database); EcoServices, LLC v. Certified Aviation Servs., LLC, 830 F. App'x 634, 642 (Fed. Cir. 2020) (claims describing automated jet-engine washing system were not abstract because “[t]he systems of the claims at issue achieve a level of automation that provides an improvement over the prior art human-operated washing systems”). Thus, according to one group of panels, an invention is patentable if it provides a new way to perform a task people used to carry out as a mental process.

A conflicting line of Federal Circuit authority, however, holds that claims are directed to an unpatentable process whenever the broad function they perform was previously accomplished by the human mind—regardless of whether the specific claimed process is entirely distinct from any prior human method. Under this approach, it is “immaterial” that “human minds are unable to” actually perform the claimed steps, so long as the general category of activity, such as “analyzing data to identify similarities and differences,” is something a human could conceptually do. Pet. App. 5a.

Multiple panels, including the panel below, have followed this divergent approach. In PersonalWeb Technologies LLC v. Google LLC, 8 F.4th 1310, 1316 (Fed. Cir. 2021), for example, the Federal Circuit found ineligible claims directed to improvements in data-processing systems through the use of content-based identifiers because the claims at a very high level were analogous to how librarians would locate books based on a call system. Id. at 1316. Similarly, in Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014), the court held that claims directed to automated teller machines interpreting scanned checks were directed to an abstract idea. Id. The court reasoned that “[t]he concept of data collection, recognition, and storage is undisputedly well-known. Indeed, humans have always performed these functions.” Id. These decisions focus on whether the abstract function could be performed mentally, rather than on whether the specific claimed process is distinct from any prior human method.

These two lines of authority are irreconcilable. Under McRO and CardioNet, an invention is patentable if it covers a process distinct from prior human processes, hewing to §101's “new and useful” requirement. Under PersonalWeb and Content Extraction, however, an invention cannot be patentable if it is generally directed to a function that, at a high level of abstraction, can be performed mentally. These are fundamentally different inquiries that produce opposite results on the same facts. As Chief Judge Moore has acknowledged, the Federal Circuit has “struggled to consistently apply the judicially created exceptions to [§101], slowly creating a panel-dependent body of law and destroying the ability of American businesses to invest with predictability.” Am. Axle, 977 F.3d at 1382 (Moore, J., concurring).

B. The Decision Below Deepens The Split

The decision below is a paradigmatic example of the intra-circuit conflict. The panel applied the PersonalWeb/ Content Extraction approach, asking only whether the broad function of “identify[ing] similarities and differences” could be performed by the human mind. Pet. App. 5a. Under that framework, the panel concluded that the asserted claims are directed to an abstract mental process—even while conceding, in the very next sentence, that “human minds are unable to parse, standardize, and digest the data like a computer in doing so,” which was the basis for the unconventional and distinct claimed approach. Pet. App. 5a.

Had the panel applied the McRO/CardioNet framework, the result would have been the opposite. The asserted claims recite a detailed, multi-step process for evaluating functional differences in semiconductor designs that is entirely distinct from the conventional human-performed process used prior to the invention. The human mind compares chip designs visually, using sensory data from the eyes. In contrast, the claimed invention requires identifying individual cells within a design file; partitioning data into constituent header and cell portions; atomizing the design into its smallest components; parsing individual cells into a syntax tree; standardizing the parsed subparts of the cell to reduce sensitivity to non-functional variations; and then hashing the canonical form data after it has been transformed to generate a short numerical string that represents the functional design in a universal and compact form that can readily and automatically be compared. 24-2085, Dkt. 23-1 (′545 Patent) at Appx181 (Claim 14). Thus, the human approach “would not be within the scope of the claims” even if “automated by rules,” meaning that the claims are not an unpatentable mental process under McRO. 837 F.3d at 1314-15. The ultimate “function” of the claimed process might be the same as that performed by humans when described at the panel's high level of generality—namely, “identify[ing] similarities and differences.” Pet. App. 5a. But the claimed process for performing that function is different—and thus patentable. McRO, 837 F.3d at 1314.

By asking only whether the human mind can perform the broad and abstract “function” of “identify[ing] similarities and differences,” Pet. App. 5a, the panel improperly “ask[ed] whether the claims involve a patent-ineligible concept” rather than whether the claims are “directed to” one. Enfish, LLC, 822 F.3d at 1335 (emphasis added). The panel failed to ask the pertinent question under McRO: whether the recited rules “improved an existing technological process” by doing something different from the conventional human approach. McRO, 837 F.3d at 1314 (alteration adopted) (quoting Alice, 573 U.S. at 223). If the panel had asked the right question, it would have arrived at the right answer: that the asserted claims recite processes that are wholly distinct from, and improve upon, the simplistic design-comparison process previously performed by humans.

The intra-circuit split is particularly pernicious because the Federal Circuit has exclusive jurisdiction over patent appeals. Unlike an inter-circuit split, which at least allows different regions to develop competing approaches this Court can later evaluate, an intra-circuit split within the Federal Circuit means that the outcome of any given patent-eligibility case turns on the happenstance of panel composition—a result antithetical to the rule of law. As Chief Judge Moore put it, “[i]f a circuit split warrants certiorari, such an irreconcilable split in the nation's only patent court does likewise.” Am. Axle, 977 F.3d at 1382 (Moore, J., concurring).

And the Federal Circuit has proven unable to resolve the conflict itself. Its own members have repeatedly asked this Court to intervene—Chief Judge Moore has observed that “commentators, amici, and every judge on this court” have requested Supreme Court clarification of §101, id.—yet the court has declined to sit en banc to address the exception even as its judges catalogue the doctrine's incoherence. See Athena Diagnostics, Inc. v. Mayo Collaborative Servs., LLC, 927 F.3d 1333 (Fed. Cir. 2019) (denial of rehearing en banc accompanied by numerous separate opinions illustrating how fraught §101 eligibility has become). Only this Court can now supply the clarity the patent system demands.

CONCLUSION

The question of whether claims reciting a distinct computer process are directed to a “mental process” under Alice step one is one of exceptional importance to the patent system. It arises in case after case, and the Federal Circuit's inconsistent treatment has left patent holders, accused infringers, and lower courts without meaningful guidance, chilling the very investment in computer-implemented innovation that the patent laws exist to encourage. This case is an ideal vehicle to resolve the question. The issue is cleanly presented and outcome-determinative: the panel held the asserted claims directed to a mental process while expressly conceding, in the same breath, that “human minds are unable to” perform the claimed steps. Pet. App. 5a. The Court can therefore reach the split squarely, unencumbered by any antecedent claim-construction dispute, procedural obstacle, or unresolved factual question. The Court should, therefore, grant certiorari to resolve this question and restore certainty by adopting the McRO standard, holding that a computer-based invention is patent eligible when it is directed to a different and improved way of implementing a process on a computer.

APPENDIX

APPENDIX A — OPINION OF THE UNITED STATES Appendix ^ACOURT OF APPEALS FOR THE FEDERAL CIRCUIT, FILED FEBRUARY 26, 2026

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

2024-2085, 2024-2086

OASIS TOOLING, INC., Plaintiff-Appellant, v. SIEMENS INDUSTRY SOFTWARE INC., GLOBALFOUNDRIES U.S. INC., Defendants-Appellees.

Appeals from the United States District Court for the District of Delaware in Nos. 1:22-cv-00151-CJB, 1:22-cv-00312-CJB, Magistrate Judge Christopher J. Burke.

Decided: February 26, 2026

Before Lourie, Prost, and Taranto, Circuit Judges.

Lourie, Circuit Judge.

Oasis Tooling, Inc. (“Oasis”) appeals from the district court's grant of summary judgment of patent ineligibility under 35 U.S.C. §101. Oasis Tooling, Inc. v. Siemens Indus. Software, Inc., No. CV 22-151-CJB, 2024 U.S. Dist. LEXIS 116379, 2024 WL 3273539. (D. Del. July 2, 2024). We affirm.

I

Oasis sued Siemens Industry Software Inc. and GlobalFoundries U.S. Inc. (collectively, “GF”) for infringement of its U.S. Patents 7,685,545 (“the ′545 patent”) and 8,266,571 (“the ′571 patent”). [1] The patents are directed to the “identification of similarities and differences among parts of” semiconductor chips. ′545 patent col. 3, ll. 5-6. Semiconductor chip designs are comprised of smaller parts called cells, which can be created using different computer programming languages. Often, different cells are created by different entities. At the time of the invention, conventional tools for designing semiconductor chips had a recurring problem: they were unable to recognize when cells were functionally the same but just differently expressed. The patents sought to address that problem by standardizing the programming languages of the different cells before making a comparison.

Claim 14 of the ′545 patent was stated by the district court to be representative of the asserted claims and reads as follows:

14. A device that evaluates similarities and/or differences between design data for circuits, the design data residing in at least two files stored in computer memory, the device including:

at least one processor and memory;

a parser running on the processor, that parses a file containing design data representing aspects of a design for a physical circuit and creates one or more syntax trees in the memory;

normalizer logic running on the processor and cooperating with the parser that organizes the syntax trees to produce canonical forms, wherein the normalizer logic includes:

a partitioning module that partitions the file into at least one header and, depending on rules of a design language used to encode the file, into multiple cells of design data and organizes the syntax trees to represent the header and cell partitions; and

a canonical forming module that interprets the syntax trees to produce canonical forms of the design data, wherein the canonical forms reduce sensitivity of data analysis to non-functional variations in the design data;

a digester module running on the processor that receives the canonical forms for at least selected partitions and calculates and stores in the memory at least one digest per selected partition;

a comparer module running on the processor that receives and compares the digests of at least a first file and a second file, which contain design data; and

a reporter module running on the processor and coupled to the digester that summarizes at least some of the matches and/or differences detected by the comparisons of digests.

‘545 patent col. 85, l. 40-col. 86, l. 14.

At the district court, GF moved for summary judgment, asserting that all asserted claims of the ′545 and ′571 patents are directed to ineligible subject matter under 35 U.S.C. §101 and therefore invalid. The district court granted the motion. Oasis timely appeals. We have jurisdiction under 28 U.S.C. §1295(a)(1).

II

To determine whether a claim is patent ineligible under §101, the Supreme Court has established a two-step framework. First, we must “determine whether the claims at issue are directed to a patent-ineligible concept.” Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217, 134 S. Ct. 2347, 189 L. Ed. 2d 296 (2014). Second, if the claims are directed to patent-ineligible subject matter, we must “consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo Collab. Servs. v. Prometheus Laby's., Inc., 566 U.S. 66, 78-79, 132 S. Ct. 1289, 182 L. Ed. 2d 321 (2012)). Step two of the analysis has been described as a search for an “inventive concept.” Id. (quoting Mayo, 566 U.S. at 72-73).

We conclude that claim 14 is directed to an abstract idea at step 1. Claim 14 is directed to a device for analyzing data to identify similarities and differences between design data for semiconductor chips. See ′545 patent col. 85, l. 40—col. 86, l. 14. That function is a process “that can be performed in the human mind” and is therefore directed to an abstract idea. PersonalWeb Techs. LLC v. Google LLC, 8 F.4th 1310, 1316 (Fed. Cir. 2021) (computer program that only automates human mental activities directed to abstract idea) (citations omitted). It is immaterial to the patent eligibility analysis that human minds are unable to parse, standardize, and digest the data like a computer in doing so. See Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'l Ass'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014).

We now turn to the second step. When determining whether the claims recite an inventive concept, we must determine whether the claims add something “apart from” the abstract idea. Chamberlain Grp., Inc. v. Techtronic Indus. Co., 935 F.3d 1341, 1349 (Fed. Cir. 2019). Claim 14 additionally cites components of a computer apart from the abstract idea—e.g., a “parser,” “normalizer,” etc. But the specification provides no specifics regarding the computer components. See ′545 patent col. 81, ll. 47-52 (the devices use “program code that, when combined with a processor and memory, creates any of the devices described”). In addition, using generic computer components to standardize and compare data is insufficient to provide an inventive concept at step 2. E.g., Intell. Ventures I LLC v. Cap. One Fin. Corp., 850 F.3d 1332, 1341-42 (Fed. Cir. 2017). Claim 14 thus fails step 2.

Accordingly, the district court correctly granted GF's motion for summary judgment that claim 14 and all of the asserted claims of both patents are directed to patent-ineligible subject matter. Those claims are thus invalid.

AFFIRMED

APPENDIX B — MEMORANDUM OPINION OF THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE, FILED JULY 2, 2024

IN THE UNITED STATES DISTRICT COURT DISTRICT OF DELAWARE

Civil Action No. 22-151-CJB

OASIS TOOLING, INC., Plaintiff, v. SIEMENS INDUSTRY SOFTWARE, INC., Defendant.

Civil Action No. 22-312-CJB

OASIS TOOLING, INC., Plaintiff, v. GLOBALFOUNDRIES U.S., INC., Defendant.

MEMORANDUM OPINION

July 2, 2024

Wilmington, Delaware

/s/ Christopher J. Burke

BURKE, United States Magistrate Judge

Pending before the Court in these patent infringement cases are motions for summary judgment filed by Defendant Siemens Industry Software, Inc. (“Siemens”) and Defendant GlobalFoundries U.S. Inc. (“GF” and collectively with Siemens, “Defendants”), pursuant to Federal Rule of Civil Procedure 56 (the “Motions”). (Civil Action No. 22-151-CJB, D.I. 237; Civil Action No. 22-312-CJB, D.I. 352) [2] With their Motions, Defendants move for summary judgment for lack of patent eligibility under 35 U.S.C. §101 (“Section 101”) with respect to the patents asserted against them: United States Patent Nos. 7,685,545 (the “′545 patent”) and 8,266,571 (the “′571 patent”). Plaintiff Oasis Tooling, Inc. (“Oasis” or “Plaintiff”) opposes the Motions. For the reasons that follow, the Court [3] GRANTS the Motions.

I. BACKGROUND

A. Factual Background

The two patents-in-suit, both titled “Methods and Devices for Independent Evaluation of Cell Integrity, Changes and Origin in Chip Design for Production Workflow,” share a common specification. [4] The ′545 patent issued on March 23, 2010 from U.S. Appl. No. 12/536,413, which was filed on August 5, 2009. (′545 patent at 1) [5] The ′571 patent issued on September 11, 2012 from U.S. Appl. No. 12/482,296, which was filed on June 10, 2009. (′571 patent at 1) The asserted patents claim priority to a provisional application filed in June 2008. (′545 patent at 1; ′571 patent at 1) The patents relate to systems and methods for the granular analysis of design data utilized to prepare chip designs for manufacturing and to identify similarities and differences among design data residing in files. (′545 patent, Abstract; see also D.I. 421, ex. 1 at ¶¶91-92) The named inventors of the asserted patents include Thomas Grebinski, who founded Oasis in 2004. (′545 patent at 1; ′571 patent at 1; D.I. 421, ex. 1 at ¶70) Oasis develops software for the semiconductor and fabrication industry. (D.I. 421, ex. 1 at ¶70)

Designing a chip is an iterative process, and chip designs are broken into hundreds of thousands of pieces known as “cells” which are grouped into “blocks[.]” (′545 patent, cols. 1:39-40, 4:38-39) Chip designs are created using different design tools and can be written in different design languages. (Id., col. 4:12-15) Designing and manufacturing chips is a complex and expensive process. (See, e.g., id., cols. 2:13-14, 3:64-4:4)

The “Background of the Invention” section of the asserted patents explains that cells and blocks proceed through the chip design process at different rates. (Id., col. 1:44-47) This process begins with internal development of cells and release by a design template vendor; the process continues thereafter as the cell and block designs cycle through multiple revisions. (Id.) Keeping track of the most recent version of cells and blocks in a chip design is difficult. (Id., col. 1:47-49) A design ready for release to production could involve as many as 40,000 unique cells. (Id., col. 2:12-13)

When chip production starts, it is essential that the cells and blocks of the design are the correct version. (Id., cols. 3:66-4:4) Indeed, using the incorrect version “can cost millions of dollars and months of delay[,]” and the potential for using an obsolete version of a cell is “everywhere[.]” (Id., cols. 1:54-55, 4:1-4; see also id., col. 2:12-15)

At the time of the inventions, existing design data management tools lacked an auditing capability that would allow project managers to verify that the cells in a chip design are of the latest approved version, or to determine whether a proposed design update would be usable in a design approaching the final “tapeout” process. (Id., cols. 2:15-20, 4:22-31) In order to track and find changes in cell data in a file during the design of a circuit, one approach was to start by utilizing a differencing tool. [6] (Id., col. 2:22-26) The specification notes, however, that the use of differencing tools had some drawbacks. These tools were not able to take into account differences in design language, nor were they able to analyze whether certain changes were significant or had a functional impact on the chip being produced. (Id., col. 2:25-32) Thus, in order to track and find meaningful changes in cell data in a file during the design of a circuit, a designer might have to manually analyze millions of lines of data, typically after using the differencing tool. (Id., col. 2:22-26) This process was not particularly “robust or efficient.” (Id., col. 2:43-44)

Another problem with then-existing chip-level design template management systems was that they could not effectively determine when parts of different chip designs included the same cells. (Id., col. 4:8-10, 18-21) For example, when a yield problem was discovered in a product that utilized a particular design template, it was difficult to determine what other projects used that same template. (Id., col. 1:49-52)

In light of all of these problems, the patent specification highlights a need to develop new tools to analyze design data—and more specifically to enable “granular evaluation of design data at various junctures in the design work flow.” (Id., col. 2:63-65) The specification explains that such tools may result in work flows and product designs that are improved, more error free, more transparent and more resilient. (Id., col. 2:63-67)

The inventors of the asserted patents set out to provide tools and methods to allow for such granular analysis of design data and to enable the identification of meaningful similarities and differences in design data files. (Id., col. 3:3-6) The “Summary/Overview” section of the patents' specification explains that the disclosed technology “relates to parsing data and organizing it into canonical forms, digesting the canonical forms, and comparing digests of design data from different sources, such as chip-level designs and design template libraries.” (Id., col. 3:6-10) The patent notes that organizing the data into canonical forms reduces the sensitivity of the analysis to differences in the data that do not have a functional impact on the design. (Id., col. 3:10-13)

Further relevant facts related to resolution of the Motions will be set out as needed in Section III.

B. Procedural Background

Oasis filed its Complaint against Siemens on February 1, 2022 in Civil Action No. 22-151-CJB. (Civil Action No. 22-151-CJB, D.I. 1) Oasis accuses Siemens' DBdiff, Pattern Matching, and Auto-Waivers functionalities of infringing claims 1-5, 7, 10-13, 15 and 16 of the ′571 patent, and claims 1-4, 6, 10-12, 14 and 17-20 of the ′545 patent. (Civil Action No. 22-151-CJB, D.I. 231 at ¶1; Civil Action No. 22-151-CJB, D.I. 261 at ¶1)

Oasis filed its Complaint against GF on March 9, 2022 in Civil Action No. 22-312-CJB. (D.I. 1) Oasis accuses GF's DRC+, Design for Manufacturability (“DFM”) tool, and Process Design Kits (“PDKs”) incorporating or accessing DFM or DRC+, and certain GF Technology Platforms [7] of infringing claims 1-3, 5, 7, 12, 15 and 16 of the ′571 patent, and claims 1-3, 6, 14 and 20 of the ′545 patent. (D.I. 362, ex. 5 at ¶18; D.I. 414 at ¶3)

In lieu of filing answers to the Complaints, both Defendants filed motions to dismiss, in which they argued that the asserted patents are directed to patent-ineligible subject matter pursuant to Section 101. (Civil Action No. 22-151-CJB, D.I. 13; D.I. 14) The Court considered Defendants' motions to dismiss together and denied them in a March 31, 2023 Memorandum Opinion (the “Section 101 motion to dismiss MO”); this decision will be discussed further below. (D.I. 103) On November 17, 2023, the Court issued a Memorandum Opinion and Order on claim construction (the “claim construction MO”) in both cases. (D.I. 317) [8]

GF filed its instant Motion on February 2, 2024, (D.I. 352), and briefing was completed on March 15, 2024, (D.I. 445). Siemens filed its instant Motion on February 16, 2024, in which it joined GF's Motion and the briefing in support thereof (in order to avoid burdening the Court with additional briefing). (Civil Action No. 22-151-CJB, D.I. 237) [9] The Court heard oral argument on the Motions (as well as other summary judgment motions) on May 17, 2024. (D.I. 491 (hereinafter, “Tr.”))

II. STANDARD OF REVIEW

The Motions contend that the asserted claims of the ′545 patent and ′571 patent are directed to patent-ineligible subject matter. The Court has set out the relevant legal standards for review of a summary judgment motion brought on Section 101 grounds in S.I.SV.EL. Societa Italiana per lo Sviluppo Dell'Elettronica S.p.A v. Rhapsody Int'l Inc., Civil Action No. 18-69-MN-CJB, Civil Action No. 18-70-MN-CJB, 2019 U.S. Dist. LEXIS 37508, 2019 WL 1102683, at *2-4 (D. Del. Mar. 8, 2019). The Court hereby incorporates its discussion of these legal standards in S.I.SV.EL. and will follow those standards herein. To the extent consideration of the Motions necessitates discussion of other, related legal principles, the Court will set out those principles in Section III below.

III. DISCUSSION

In the Section 101 motion to dismiss MO, the Court assessed the eligibility of claim 14 of the ′545 patent, treating it as representative of the other claims at issue. (D.I. 103 at 8) Now with the instant Motions, Defendants again treat claim 14 of the ′545 patent as representative (though they argue that each of the asserted claims of the asserted patents is ineligible). (D.I. 353 at 3) For purposes of step one of the Alice test, Plaintiff treats claim 14 as representative too; that said, Plaintiff does briefly address a few additional claims in its step two discussion. (D.I. 409 at 5, 14-15)

Below the Court will follow the parties' lead and will address the Section 101 issues writ large at both steps by focusing on claim 14. At the step two stage, the Court will also address the additional claims that Plaintiff references in its briefing. Claim 14 recites:

14. A device that evaluates similarities and/or differences between design data for circuits, the design data residing in at least two files stored in computer memory, the device including:

at least one processor and memory;

a parser running on the processor, that parses a file containing design data representing aspects of a design for a physical circuit and creates one or more syntax trees in the memory; normalizer logic running on the processor and cooperating with the parser that organizes the syntax trees to produce canonical forms, wherein the normalizer logic includes:

a partitioning module that partitions the file into at least one header and, depending on rules of a design language used to encode the file, into multiple cells of design data and organizes the syntax trees to represent the header and cell partitions; and

a canonical forming module that interprets the syntax trees to produce canonical forms of the design data, wherein the canonical forms reduce sensitivity of data analysis to non-functional variations in the design data;

a digester module running on the processor that receives the canonical forms for at least selected partitions and calculates and stores in the memory at least one digest per selected partition;

a comparer module running on the processor that receives and compares the digests of at least a first file and a second file, which contain design data; and

a reporter module running on the processor and coupled to the digester that summarizes at least some of the matches and/or differences detected by the comparisons of digests.

(′545 patent, cols. 85:40-86:14)

A. Alice's Step One

The Court first assesses step one of the two-part test for patent eligibility set out in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 134 S. Ct. 2347, 189 L. Ed. 2d 296 (2014). [10] The step one inquiry asks whether the claim at issue is “directed to” an abstract idea. In this type of a patent case, the relevant step one question is whether the claims are directed to an improvement in computing devices or other technology (in which case the claim would be patent-eligible), or whether they are instead directed to a “process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool” (in which case the Court would then proceed to Alice's step two). See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). It is well-settled that if claims are directed to the concepts of “collecting information, including when limited to particular content (which does not change its character as information) …. analyzing information by steps people go through in their minds, or by mathematical algorithms, without more” and “merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation)[,]” they do not pass muster under step one and are directed to an abstract idea. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016); see also Brit. Telecomms. PLC v. Palo Alto Networks, Inc., Civil Action No. 22-1538-CJB, 2023 U.S. Dist. LEXIS 203482, 2023 WL 7634934, at *2 (D. Del. Nov. 14, 2023).

At the motion to dismiss stage, Defendants had articulated the abstract idea to which the asserted patents were directed as “parsing, standardizing and comparing data for similarities and differences.” (D.I. 103 at 9-10) In the Section 101 motion to dismiss MO, the Court concluded that this was, indeed, an abstract idea. (Id.); see also Berkheimer v. HP Inc., 881 F.3d 1360, 1366 (Fed. Cir. 2018) (claims directed to “parsing and comparing [standardized] data” were directed to an abstract idea). [11]

The Court then went on to analyze whether claim 14 was in fact directed to that abstract idea. In doing so, the Court explained that this inquiry presented a “tough call” that was “not free from doubt”—in part due to the strength of some of Defendants' arguments. (D.I. 103 at 11-13, 15) Ultimately however, the step one answer was not then clear to the Court. This was because “Plaintiff [could] point to evidence indicating that claim 14 is directed to something narrower or more specific than the abstract idea at issue[.]” (Id. at 13) In that regard, the Court explained that claim 14 made use of two concepts that did not seem to be neatly captured by Defendants' articulation of the abstract idea. These were the claim requirements that: (1) the “canonical forms” produced by the claimed device must “reduce sensitivity of data analysis to nonfunctional variations in the design data[;]” and (2) that the device then used “digests” to represent the canonical forms in the comparison process. (Id. at 13-15) Because it was unsure about whether the proposed abstract idea fully captured these two concepts, and in light of the other arguments before it, the Court concluded that it was best to resolve Defendants' motions to dismiss by proceeding to step two. (Id. at 15)

Now, in bringing the instant Motions, Defendants have submitted a new, slightly-different articulation of the abstract idea that claim 14 is purportedly directed to: “analyzing (parsing, standardizing, digesting, and comparing) data to identify similarities and/or differences.” (D.I. 353 at 3) As can be seen above, the primary distinction between this new articulation and the prior one is that the concept of “digesting” data is now squarely included in Defendants' proposed abstract idea. [12] From there, Defendants submit that it is “now clear” that the presence of the two claimed concepts that the Court highlighted in its prior step one analysis should not be a bar to a finding that claim 14 is directed to this abstract idea. (Id. at 8)

The Court agrees with Defendants. It will explain why in three steps. First, the Court will address the two claimed concepts that it highlighted in its Section 101 motion to dismiss MO—and show why it is now evident that claim 14's inclusion of those concepts is no barrier to Defendants' step one argument. Next, the Court will re-assess claim 14 as a whole, explaining why it is otherwise clear that the claim is directed to the proffered abstract idea. Lastly, the Court will address the primary arguments Plaintiff makes at step one, noting why each is not successful.

1. The Claim's Utilization of Canonical Forms and Digesting

As an initial matter, the Court will revisit the two claimed concepts it discussed at length in the Section 101 motion to dismiss MO's step one section.

The first was that the “canonical forms” created by the claimed device have to “reduce sensitivity of data analysis to non-functional variations in the design data[.]” (′545 patent, col. 86:1-3) Does this requirement suggest that the claim is directed to something other than an abstract idea? Now that claim construction is complete, the answer to this question is clearly “no.”

After the Section 101 motion to dismiss MO was issued, the Court construed “canonical forms” to mean “a standardized form of a body of design data.” (D.I. 317 at 15, 52) This helped to underscore that when claim 14 requires that a canonical forming module “produce canonical forms” (the parties sometimes refer to this as the “normalizing” step), that is simply another way of saying that the module must “standardize data.” (See D.I. 353 at 3, 8; D.I. 445 at 1; Tr. at 98, 101; see also D.I. 103 at 5 n.5)

But what type of “standardization” of data is required via the claim's production of canonical forms? (Tr. at 101-02) And did the answer to that question—i.e., about the manner and degree to which the claimed canonical forms must “reduce sensitivity of data analysis to non-functional variations in the design data”—impact whether claim 14's use of this concept amounts to anything other than the utilization of an abstract idea? (Id.) Again here, the claim construction process was instructive.

Importantly, in its claim construction MO, the Court concluded (as advocated by Plaintiff) that the patents do not require “a minimum amount of reduction that must be achieved in order to practice the claims[.]” (D.I. 317 at 11; see also Tr. at 102) And although Plaintiff seemed to take the opposite position at the pleading stage, (D.I. 53 at 92), [13] during the Markman hearing, Plaintiff's counsel acknowledged that even merely “[e]liminating white space” [14] is sufficient to practice this claim limitation, (D.I. 354, ex. 1 at 14-16; see also, e.g., ′545 patent, col. 5:43-47 (noting that the “canonical digest tools” described by the patents “can distinguish between trivial changes such as whitespace”); id., cols. 1:35, 3:18-19). Thus, it is now settled that the required output of claim 14's canonical forming module can simply be the production of canonical forms wherein sensitivity to non-functional variations is reduced via the elimination of white space—and nothing more than that. This is significant, in that eliminating extra white space in one piece of data (as part of the process of comparing it to another piece of data) is something that surely can be performed by the human mind—i.e., by “mentally recognizing two sentences are functionally the same despite extra spaces.” (D.I. 353 at 8; see also D.I. 445 at 1; Tr. at 102, 152; Defendants' MSJ of Patent Ineligibility Slides at Slide 14) When a concept amounts to the performance of a “mental process”—something that can be done in the human mind—that is “a telltale sign of abstraction.” PersonalWeb Techs. LLC v. Google LLC, 8 F.4th 1310, 1316 (Fed. Cir. 2021). And so it is now clear that claim 14's production of canonical forms that reduce sensitivity of data analysis to non-functional variations in design data does not render claim 14's focus any less abstract. [15]

The Court next turns to the second concept that it highlighted at the step one stage in the Section 101 motion to dismiss MO: that the device utilizes “digests” to represent the canonical forms as part of the comparison process. As was noted above, Defendants have now modified their articulation of the abstract idea so that it expressly captures this concept of digesting. (See D.I. 353 at 8; Tr. at 94, 101) This leaves the Court to determine whether “digesting” data is itself an abstract idea, or something more than that.

Here again, the claim construction process was useful. The Court construed “digest[s]” to mean “output of a hash function, including, e.g., CRC or MD5.” (D.I. 317 at 52) [16] In their briefing, Defendants contend that digesting design data with a hash function amounts to an abstract idea. And Plaintiff does not really seem to disagree with that notion. (See D.I. 409 at 6, 13)

The Court concludes that Defendants are correct. Indeed, the United States Court of Appeals for the Federal Circuit's decision in PersonalWeb Techs. LLC v. Google LLC, 8 F.4th 1310 (Fed. Cir. 2021) leaves no doubt as to this issue. (D.I. 353 at 5; Tr. at 94, 103) In PersonalWeb, the patents at issue were directed to data processing systems that assigned each data item a content-based identifier; the identifier was generated by a mathematical algorithm, such as a cryptographic hash, and the identifier changed when the data item's content changed. PersonalWeb, 8 F.4th at 1312-13, 1315-16. The content-based identifier was then compared against another content-based identifier, and the results were used to control access to data items, to retrieve and deliver copies of data items, and to mark copies of data items for deletion. Id. The PersonalWeb Court explained that the components of the claims' three-step process—i.e., (1) the use of a content-based identifier (like a hash); (2) comparing the content-based identifier against other values; and (3) controlling access to data, retrieving data items, and marking data for deletion—were all abstract concepts, as each of them amounted to “mental processes[.]” Id. at 1316-17. Looking to the claim's character as a whole, the PersonalWeb Court concluded that “[s]tringing together” these abstract concepts in the claims “by [a]dding one abstract idea [] to another” did not save the claims from being directed to “abstract-idea processes[;]” there, the claims were “directed to a medley of mental processes that, taken together, amount only to a multistep mental process.” Id. at 1317-18 (internal quotation marks and citations omitted).

In sum, these two claimed concepts—(1) producing “canonical forms” that “reduce sensitivity of data analysis to non-functional variations in the design data” and (2) “digest[ing]” those canonical forms—are abstract ideas that can be accomplished in the human mind. [17]

2. Assessing Claim 14 as a Whole at Step One

To recap, the Court has now explained: (1) how in the Section 101 motion to dismiss MO at step one, it identified two claimed concepts that gave it pause about concluding that the claim was directed to the then-proffered abstract idea; but (2) why now, after having reviewed the current record, it believes that neither of those two concepts should stand in the way of a finding in Defendants' favor at step one. Having done that, the Court next re-assesses claim 14 as a whole. In doing so, it asks: “Is this claim directed to the abstract idea of “analyzing (parsing, standardizing, digesting, and comparing) data to identify similarities and/or differences”? The Court concludes that it is.

As the Court explained in the Section 101 motion to dismiss MO, the steps of claim 14 tell us that the device at issue includes:

(1) a data processor and memory; (2) a parser that parses a file containing design data and that creates one or more syntax trees in the memory; (3) normalizer logic that organizes the syntax trees to produce canonical forms (i.e., “standardizing” the data) and that reduces sensitivity of data analysis to non-functional variations in the data; (4) a digester module that receives the canonical forms and calculates and stores at least one digest per selected partition; (5) a comparer module that receives and compares the digests of files containing design data; and (6) a reporter module that summarizes similarities and differences.

(D.I. 103 at 11-12; see also ′545 patent, cols. 85:40-86:14) Therefore, just by looking at the claim, one can see that a significant portion of it relates to parsing, standardizing, digesting, and comparing chip design data in order to identify similarities and/or differences. The “Background of the Invention” section of the specification likewise describes the claimed technology as being focused on this idea, i.e., on:

parsing data and organizing it into canonical forms, digesting the canonical forms, and comparing digests of design data from different sources …. Organizing the design data into canonical forms generally reduces the sensitivity of data analysis to variations in the data that have no functional impact on the design.

(′545 patent, col. 1:22-28) And the patents' Abstract and “Summary/Overview” section do the same. (See id. at Abstract; id., col. 3:3-22); see also Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347-48 (Fed. Cir. 2015) (examining the patent's specification at step one, in order to determine what the claims at issue were “directed to”). The specification additionally tells us that only generic computer components (i.e., “a processor and memory” and “a computer readable storage medium that stores program code for carrying out” the methods) are required to carry out these steps. (′545 patent, cols. 78:49-50, 81:42-49)

This all supports the Court's conclusion that claim 14 is directed to the abstract idea put forward by Defendants. That conclusion is only further bolstered when assessing Plaintiff's step one counterarguments, which are not winning ones. The Court takes those up next.

3. Plaintiff's Step One Counterarguments

Plaintiff makes five different arguments as to why claim 14 should be deemed patent eligible at Alice's first step. (D.I. 409 at 5-13) For the reasons that follow, none of those are persuasive.

First, Plaintiff argues that claim 14 is not directed to the abstract idea put forward by Defendants, but instead to “solutions to … problems rooted in computer technology” that “improve computer functionality[.]” (Id. at 5, 8; see also id. at 5-11) Plaintiff further asserts that claim 14 is not directed to an abstract idea because it does not automate a manual process, and because it is not capable of being performed by the human mind. (Id. at 11-13) Here, Plaintiff is invoking Federal Circuit law; as was noted above, that law explains that in order to constitute a “patent-eligible improvement to computer functionality[,]” the claims must be “directed to an improvement in the functionality of the computer or network platform itself[;]” that is, “it is not enough … to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020); see also KOM Software Inc. v. NetApp, Inc., Civil Action No. 18-160-WCB, 697 F. Supp. 3d 203, 2023 U.S. Dist. LEXIS 178837, 2023 WL 6460025, at *4 (D. Del. Oct. 4, 2023) (“Where the claims at issue provide for an improvement in the operation of a computer, such as a new memory system, a new type of virus scan, or a new type of interface that makes a computer function more accessible, the Federal Circuit has found the claims patent-eligible.”).

The record, however, shows that Plaintiff is incorrect; claim 14 is not directed to an improvement in computer functionality. This is so because the asserted patents' solution to the problem of recognizing functional differences in design data was to use a computer to parse design data, standardize that data (while eliminating non-functional differences), calculate and store digests representing that data, and then use the digests to identify and summarize any functional differences. (See D.I. 353 at 6) These claimed steps, as Defendants point out, “are akin to mental processes humans perform when comparing documents in different formats or languages—by parsing (which humans do when reading), normalizing (e.g., ignoring insignificant differences such as whitespace), digesting (e.g., distilling), and comparing (e.g., determining passages make the same points)” which is a “hallmark of abstraction.” (D.I. 445 at 2; see also D.I. 353 at 6 n.4); see, e.g., PersonalWeb, 8 F.4th at 1316 (finding that claims directed to the use of an algorithm-generated content-based identifier to perform data-management functions had an abstract focus, where these functions were done “in a computer environment” but were still mental processes that could be performed in the human mind). [18]

The specification underscores the correctness of this conclusion—i.e., that the claims use computers as a tool to fix what was essentially a human problem (not a problem with computer functionality) that humans had previously been attempting to solve in a more unwieldly fashion. As was noted above, the specification explains that differencing tools were used to track cell data during the design process. An issue was that such tools “typically subtract[ed] the differences between files, without analysis of whether the changes have a functional impact on the chip being produced or whether they are significant.” (′545 patent, col. 2:29-32) As a result, after the use of a differencing tool, designers would have to “resort to a manual analysis of millions of lines of data” in order to decipher whether any identified differences in compared data were significant or not. (Id., col. 2:23-25) Put differently, the patent tells us that humans used to use a differencing tool and their minds in order to: (1) identify cell design data for review, (2) put that data into a standardized format and then (3) identify any nonfunctional differences in that data. (D.I. 445 at 2) And using hash values to digest standardized data and then comparing such digested data is something that humans could have done in the past. (′545 patent, col. 59:21-23 (specification describing an exemplary report, noting that the “comparisons do not show the exact nature of the differences between the headers and the cells; they simply tell the user where to look”); see also id., col. 69:35-37; id., col. 71:26-32)

Second, Plaintiff argues that the asserted claims “allow for more accurate, faster comparisons of chip design data on a more granular scale than was previously possible[.]” (D.I. 409 at 8 (emphasis added)) But even if this is so, it is of little moment. The Federal Circuit has made clear that if the addition of computerized steps to a claim simply allows an otherwise manual process to be performed more quickly or more accurately than a human could accomplish, this cannot save a claim at step one. Cf. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (concluding at step two that just because a computerized method might be able perform a task “more quickly or more accurately” than a human, this does not mean that the method is patent eligible). That is because in such circumstances, the computer is being used simply as a tool—i.e., it is being employed only for “its most basic function—making calculations or computations” in a manner that is interchangeable with the mental process at issue. Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). In sum, this argument fails to “explain how the computer's functionality is improved beyond the inherent improvement of the experience of” a chip designer. Simio, LLC v. FlexSim Software Prods., Inc., 983 F.3d 1353, 1360-61 (Fed. Cir. 2020) (emphasis in original); cf. Trading Techs. Int'l, Inc. v. IBG LLC, 921 F.3d 1084, 1094 (Fed. Cir. 2019) (concluding at step two that the claims did not recite an inventive concept, where the invention did not improve computer functionality, but instead “helps the trader process information more quickly”).

Third, Plaintiff's briefing highlights various Section 101 cases that purportedly support its step one position. (D.I. 409 at 7-8, 11; Tr. at 155) But those cases are inapposite. Unlike what claim 14 represents, each of Plaintiff's cited cases involved claims directed to improvements in network technology or to the functionality of the computer itself. For example, in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), the Federal Circuit found that the claims were “focused on a specific asserted improvement in computer animation, i.e., the automatic use of [unconventional] rules of a particular type” that were not previously used by animators. 837 F.3d at 1303, 1314. In Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299 (Fed. Cir. 2018), the Federal Circuit held that claims were to a “behavior-based virus scan” resulting in a new type of computer file; the claims provided greater computer security than what had been available in the art, and were thus directed to a patent-eligible improvement in computer functionality. 879 F.3d at 1304-06; (Tr. at 150). In Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018), the Federal Circuit ruled that claims reciting a better user interface for electronic devices that improved the efficiency of using those devices, “particularly those with small screens[,]” were patent eligible. 880 F.3d at 1362-63. In Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), the Court concluded that claims were patent eligible where they recited a self-referential table for a computer database that improved computer storage technology. 822 F.3d at 1336-37. In Koninklijke KPN N.V. v. Gemalto M2M GmbH, 942 F.3d 1143 (Fed. Cir. 2019), the Federal Circuit found that the claims at issue were directed to an improved check data generating device, which enabled data transmission systems to detect a specific type of error that prior art systems could not. 942 F.3d at 1145-46. And finally, in Packet Intelligence LLC v. NetScout Sys., Inc., 965 F.3d 1299 (Fed. Cir. 2020), which involved claims to methods for monitoring packets exchanged over a computer network, the Federal Circuit determined that the representative claim was not directed to an abstract idea because it concerned a “challenge unique to computer networks” and “solve[d] a technological problem[.]” 965 F.3d at 1303-04, 1309.

Fourth, Plaintiff attempts to emphasize the “specificity” of the claims. To that end, it notes that claim 14 requires parsing design data into a syntax tree, which is a “specific data structure.” (D.I. 409 at 6; see also Tr. at 134) And that is true, so far as it goes. But the presence of a “specific data structure” in a claim does not necessarily mean that the claim cannot be directed to an abstract idea. In Intell. Ventures I LLC v. Cap. One Fin. Corp., 850 F.3d 1332 (Fed. Cir. 2017), the claims at issue recited “specific data structures and objects” that were used to interrelate various XML documents in a “particular way to ensure compatibility of otherwise incompatible documents[.]” 850 F.3d at 1340. This did not save the claims, however. Instead, the Federal Circuit explained that while “these data structures add a degree of particularity to the claims, the underlying concept embodied by the limitations merely encompasses the abstract idea itself of organizing, displaying, and manipulating data of particular documents.” 850 F.3d at 1340-41. So too here. [19] That the claimed device produces canonical forms from data that has been parsed into syntax trees does not alter the reality that the claims are simply about the abstract idea of analyzing such data in order to detect similarities or differences.

Fifth and finally, Plaintiff sets out evidence of “long-felt need” and praise of the inventions as indicating that the asserted claims improve computer functionality. (D.I. 409 at 8-11) Both of these factors—long-felt need and industry praise for the patented invention—are objective indicia of non-obviousness (sometimes referred to as “secondary considerations” of non-obviousness). See Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1052 (Fed. Cir. 2016). The Federal Circuit has stated that “[q]uestions of nonobviousness such as secondary considerations … are irrelevant when considering eligibility.” Ficep Corp. v. Peddinghaus Corp., 2022-1590, 2023 U.S. App. LEXIS 21842, 2023 WL 5346043, at *7 (Fed. Cir. Aug. 21, 2023) (citing cases); see also WhitServe LLC v. Dropbox, Inc., 854 F. App'x 367, 373 (Fed. Cir. 2021).

4. Conclusion

For all of the above reasons, the Court agrees with Defendants that claim 14 is directed to the abstract idea of “analyzing (parsing, standardizing, digesting, and comparing) data to identify similarities and/or differences.” It thus proceeds to step two.

B. Alice's Step Two

At step two, the Court examines the claims to determine if they contain “significantly more” than the abstract idea to which the claims are directed—i.e., an “inventive concept.” Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217-18, 134 S. Ct. 2347, 189 L. Ed. 2d 296 (2014) (internal quotation marks and citation omitted). Although the inventive concept at issue must actually be evident in the claims, see Two-Way Media Ltd. v. Comcast Cable Commc'ns, 874 F.3d 1329, 1338 (Fed. Cir. 2017) (finding a claim ineligible where “the claim—as opposed to something purportedly described in the specification—is missing an inventive concept”) (emphasis in original), the unconventional nature of a particular claimed feature or its benefits over the prior art need not be described in the claims themselves, see Affinity Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016) (looking to both the “claims [and] the specification” in the step two inquiry); cf. Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1317 (Fed. Cir. 2019).

When the Court assessed this step two question at the motion to dismiss stage, it noted that aside from the then-asserted abstract idea of “parsing, standardizing and comparing data for similarities and differences,” Plaintiff had focused on the presence of the same two claimed concepts that were discussed above: (1) the creation of canonical forms that reduce sensitivity of data analysis to non-functional variations in the data; and (2) digesting of the canonical forms so that the digests are used in the comparison process. (D.I. 103 at 17) Plaintiff had argued that the combination of these limitations provided “specific improvements to computer functionality as compared to conventional approaches to comparing chip design data.” (Id.) Ultimately, in the Section 101 motion to dismiss MO, the Court determined that claim 14's utilization of these concepts might, when considered along with the rest of the claim, plausibly amount to an inventive concept. (Id. at 17-19) And so the Court ruled that, at the pleading stage, there was at least a factual question on the step two issue. (Id.) It further noted that expert testimony regarding the scope of preemption might “be critical to a final assessment of eligibility.” (Id. at 19)

Now, however—and with the benefit of claim construction, discovery and Defendants' arguments at the summary judgment stage—it is clear to the Court that these two claimed features could not (whether considered individually or together) amount to an inventive concept. Instead, as discussed above in Section III.A, the Court has now concluded that these features are rightly viewed as being a part of the abstract idea itself. (D.I. 353 at 10; D.I. 445 at 1) [20]

At step two, Plaintiff pushes back by arguing that the “combination of the elements” of claim 14 does constitute an inventive concept. (D.I. 409 at 13) More specifically, it lists the following “elements” of claim 14, along with a characterization of their import:

• “design data are parsed and partitioned into constituent elements, such as the header and individual cells, which allows for a granular comparison of design files[;]” and

• “the partitioned data are organized into a syntax tree and then transformed into a canonical form, which reduces sensitivity to non-functional variation at the cell level, allowing for more accurate comparisons as compared to conventional differencing tools[;]” and

• “[t]he canonical forms are then digested and stored in memory, allowing for more efficient comparisons, which is particularly important when comparing large chip design files[.]”

(D.I. 409 at 13-14 (citing D.I. 421, ex. 1 at ¶¶91-92, 94)) But this articulation of the inventive concept largely just restates the relevant abstract idea itself: analyzing (parsing, standardizing, digesting, and comparing) data to identify similarities and/or differences. (D.I. 445 at 4-5) It is well settled that “a claimed invention's use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.” BSG Tech. LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018); see also, e.g., Simio, 983 F.3d at 1363-64; Teradata Corp. v. SAP SE, 570 F. Supp. 3d 810, 859 (N.D. Cal. 2021) (“[I]f the only alleged unconventional feature is the abstract idea itself, summary judgment is appropriate.”).

At step two, the Court must consider what else remains in the claims aside from the abstract idea. BSG Tech. LLC, 899 F.3d at 1290. And all that remains here are generic, conventional computer components or data structures that are utilized in a routine way. For example, Plaintiff again highlights the fact that claim 14 requires the parsing of data into “a hierarchical syntax tree structure[.]” (D.I. 409 at 14; see also Tr. at 141) But Plaintiff does not claim to have invented syntax trees. (′545 patent, col. 75:56-57 (“The canonical forms may be maintained in one or more syntax trees[.]”); id., col. 80:2-3 (“For partitioning options, the parser … creates one or more syntax trees … that partition the design data as desired.”); Tr. at 96) And the Federal Circuit has squarely held that the use of a conventional, generic data structure (such as a syntax tree) “do[es] not sufficiently transform the abstract concept into a patentable invention under step two.” Cap. One Fin. Corp., 850 F.3d at 1341-42; see also BSG Tech. LLC, 899 F.3d at 1291 (“Although BSG Tech narrowed its claims to specific database structures, those structures are well-understood and conventional. Such narrowing does not supply an inventive concept”). [21]

Plaintiff makes a few other step two arguments, which the Court will address below. None are successful.

Plaintiff seems to argue that claim 14 can be saved at step two because it utilizes the ineligible abstract concept to analyze “chip data” (as opposed to some other kind of data). (See D.I. 409 at 13 (emphasis added)) But that cannot be so. Claims that cover no more than the “application of a generally understood technology to a specific type of data” (here, chip design data) do not contain an inventive concept sufficient to avoid ineligibility at step two. RDPA, LLC v. Geopath, Inc., 543 F. Supp. 3d 4, 23 (S.D.N.Y. 2021); see also, e.g., Elec. Power Grp., 830 F.3d at 1354 (“Most obviously, limiting the claims to the particular technological environment of power-grid monitoring is, without more, insufficient to transform them into patent-eligible applications of the abstract idea at their core.”); Perry St. Software, Inc. v. Jedi Techs., Inc., 548 F. Supp. 3d 418, 436 (S.D.N.Y. 2021) (“Just applying a series of steps that have clearly existed in other contexts to a new context (i.e., to internet chatrooms) does not transform the claims into ones that are patent eligible” at step two.).

Plaintiff next contends that claim 14 is patentable at step two because it does “not broadly preempt the field[,]” such that “data tools that do not normalize the design data into canonical forms and then hash the canonical forms are outside of the scope of the [a]sserted [c]laims.” (D.I. 409 at 14) But recall that the abstract idea at issue is “analyzing (parsing, standardizing, digesting, and comparing) data to identify similarities and/or differences.” So the question with regard to preemption is what amount of inventions utilizing that idea would fall outside of the claims' penumbra (i.e., would not be preempted)? [22] See Alice, 573 U.S. at 217 (noting that the focus of the preemption inquiry is on whether the claims “disproportionately t[ie] up the use of the underlying ideas”) (emphasis added, internal quotation marks and citation omitted); Gammino v. AT&T Co., 127 F. Supp. 3d 264, 274 (D. Del. 2015) (same); Tr. at 115). And the record evidence indicates that the answer to this question here is: “Not very many.” The claimed invention would appear to preempt large categories of devices or methods that standardize design data and remove non-functional variations (even the mere elimination of white space), and then assign a hash value to the canonical forms. (D.I. 353 at 11; see also D.I. 354, ex. 6 at ¶912 (Defendants' expert Dr. Massoud Pedram opining that the asserted claims would “preempt large swaths of technology” such as any tools that “use … pattern matching”); D.I. 354, ex. 8 at ¶534) And even if the claims do not completely preempt the relevant field, “the absence of complete preemption does not demonstrate patent eligibility.” Intell. Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016) (internal quotation marks and citation omitted); see also Gammino, 127 F. Supp. 3d at 274.

Lastly, Plaintiff argues that other material factual disputes preclude summary judgment. And it cites in support to other portions of opinions provided by its expert, Dr. Min. (Tr. at 118-20; D.I. 409 at 15)

Some of Plaintiff's and Dr. Min's assertions here have to do with evidence of long-felt need, industry praise, the improvements of the asserted claims over conventional technology and preemption. (D.I. 409 at 15; Tr. at 142-43) The Court has already explained why Plaintiff's evidence of objective indicia of non-obviousness and preemption do not warrant denial of the Motions. See Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325-26 (Fed. Cir. 2016) (“The mere existence in the record of dueling expert testimony does not necessarily raise a genuine issue of material fact” regarding the Section 101 inquiry). And to the extent that Plaintiff's expert evidence addresses other matters, it is also not helpful to Plaintiff's cause at step two. This is so for a few different reasons.

For one thing, some of Dr. Min's opinions are not tied to claim 14's requirements. For example, he opines that the asserted claims made it possible for the first time to “computationally verify and validate the integrity, origin, and meaningful equivalency of chip designs and identify and analyze changes, and to do so efficiently and reliably even if they were expressed in different languages, created using different tools, or written in the same language but described using different functional, electrical, or geometric expressions.” (D.I. 421, ex. 1 at ¶94; see also id. at ¶896 (“[T]he application of the concepts of the Asserted Claims to the specific problems of comparing design files that could be expressed in different formats and in different ways itself was inventive.”); see also Tr. at 125 (Plaintiff's counsel explaining that the problem that the invention is solving is design data “being in different languages. That's how these claims set out the specific ordering of these steps on what you have to do in order to account for these differences.”); id. at 137 (same)) But claim 14 does not require that the design data be expressed in “different languages” or be described using “different expressions.” Again, all that is required is that the claimed canonical forms reduce any type of nonfunctional variation, such as by eliminating extra white space. (Tr. at 145-47); see Q Techs., Inc. v. Walmart, Inc., 6:21-CV-00779-ADA, 2024 U.S. Dist. LEXIS 43882, 2024 WL 1146150, at *6 (W.D. Tex. Mar. 6, 2024) (rejecting the plaintiff's argument that there was a factual issue with respect to step two, because the plaintiff's expert opined that the claimed invention resulted in an improved flow of information in a closed content sharing system, and yet the claims were not limited to such a system); cf. ZapFraud, Inc. v. FireEye, Inc., Civil Action No. 19-1688-CFC, 2020 U.S. Dist. LEXIS 217702, 2020 WL 6822972, at *6 n.7 (D. Del. Nov. 20, 2020) (explaining why, in assessing eligibility questions, a court must evaluate the claim by focusing on its broadest or least specific permutations) (citing cases).

Other of Dr. Min's opinions fail to create an issue of fact because they “misunderstand[] the law.” (D.I. 353 at 11) A premise of Dr. Min's opinion that the claims include inventive concepts is that the claimed techniques “are novel and non-obvious, and therefore, not conventional or routine[.]” (D.I. 421, ex. 1 at ¶896; see also Tr. at 124) But it is well-settled that “‘it is not enough for eligibility’ that the techniques claimed are ‘groundbreaking, innovative, or even brilliant’ or ‘novel and nonobvious in light of prior art.’” Eagle View Techs., Inc. v. Roofr, Inc., 651 F. Supp. 3d 729, 740 (D. Del. 2023) (quoting SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018)); see also (Tr. at 152-53).

Beyond that, Dr. Min's opinions rely on the abstract ideas themselves and on generic data structures in order to assert that such features amount to an inventive concept. (D.I. 421, ex. 1 at ¶897) This does not create a material fact issue at step two. See Ceiva Opco, LLC v. Amazon.com, Inc., Case No. 2:22-cv-02709-AB-MAA, 2024 U.S. Dist. LEXIS 50638, 2024 WL 1728660, at *10 (C.D. Cal. Mar. 4, 2024) (explaining that the expert's eligibility opinions did not create a fact issue because they just confirmed that the abstract idea was unconventional, and the ineligible concept cannot supply the inventive concept). Dr. Min further opines that the asserted claims are eligible at step two because they “provide tangible benefits in reliability, efficiency, automation, and cost savings[.]” (D.I. 421, ex. 1 at ¶898; see also id. at ¶94 (Dr. Min noting that the claims “enabled for the first time the automatic verification” of chip design data in various ways) (emphasis added)) But again, even if that is all true, it cannot help Plaintiff. Claims that simply allow for more efficient implementation of an abstract idea, or that only allow for the speeded-up automation of work that humans otherwise could do much more slowly, do not provide a sufficient inventive concept. Chewy, Inc. v. Int'l Bus. Mach. Corp., 94 F.4th 1354, 1367 (Fed. Cir. 2024); see also (Tr. at 123, 149).

In sum, because the record indicates no inventive concept in the asserted claims, the claims fail Alice's step two and are thus patent ineligible. See Berkheimer, 881 F.3d at 1368 (“When there is no genuine issue of material fact regarding whether the claim element or claimed combination is well-understood, routine, [and] conventional to a skilled artisan in the relevant field, this [Section 101] issue can be decided on summary judgment as a matter of law.”).

IV. CONCLUSION

For the foregoing reasons, the Court GRANTS the Motions.

An appropriate Order will issue.

APPENDIX C — MEMORANDUM OPINION OF THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE, FILED MARCH 31, 2023

IN THE UNITED STATES DISTRICT COURT DISTRICT OF DELAWARE

Civil Action No. 22-151-CJB

OASIS TOOLING, INC., Plaintiff, v. SIEMENS INDUSTRY SOFTWARE, INC., Defendant.

Civil Action No. 22-312-CJB

OASIS TOOLING, INC., Plaintiff, v. GLOBALFOUNDRIES U.S., INC., Defendant.

MEMORANDUM OPINION

March 31, 2023

Wilmington, Delaware

/s/ Christopher J. Burke

BURKE, United States Magistrate Judge

Pending before the Court in these patent infringement cases are motions filed by Defendant Siemens Industry Software, Inc. (“Siemens”) and Defendant GlobalFoundries U.S. Inc. (“GF” and collectively with Siemens, “Defendants”), pursuant to Federal Rule of Civil Procedure 12(b)(6) (the “Motions”). (Civil Action No. 22-151-CJB, D.I. 13; Civil Action No. 22-312-CJB, D.I. 14) With their Motions, Defendants argue that the patents asserted against them—United States Patent Nos. 7,685,545 (the “′545 patent”) and 8,266,571 (the “′571 patent”)—are directed to patent-ineligible subject matter pursuant to 35 U.S.C. §101 (“Section 101”). Plaintiff Oasis Tooling, Inc. (“Oasis” or “Plaintiff”) opposes the Motions. For the reasons that follow, the Court DENIES the Motions.

I. BACKGROUND

A. Factual Background

The two patents-in-suit, both titled “Methods and Devices for Independent Evaluation of Cell Integrity, Changes and Origin in Chip Design for Production Workflow,” share a common specification. [23] The ′545 patent issued on March 23, 2010 from U.S. Appl. No. 12/536,413, which was filed on August 5, 2009. (′545 patent at 1) [24] The ′571 patent issued on September 11, 2012 from U.S. Appl. No. 12/482,296, which was filed on June 10, 2009. (′571 patent at 1) The patents relate to systems and methods for the granular analysis of design data utilized to prepare chip designs for manufacturing and to identify similarities and differences among design data residing in files. (′545 patent, Abstract; see also D.I. 1 at ¶15) [25] The named inventors of the asserted patents include Thomas Grebinski, who founded Oasis in 2004. (′545 patent at 1; ′571 patent at 1; D.I. 1 at ¶¶3, 13-14) Oasis develops software for the semiconductor and fabrication industry. (D.I. 1 at ¶10)

Designing a chip is an iterative process, and chip designs are broken into hundreds of thousands of pieces known as “cells” which are grouped into “blocks[.]” (′545 patent, cols. 1:39-40, 4:38-39) Chip designs are created using different design tools and can be written in different design languages. (Id., col. 4:12-15) Designing and manufacturing chips is a complex and expensive process. (See, e.g., id., cols. 2:13-14, 3:64-4:4)

The “Background of the Invention” section of the asserted patents explains that cells and blocks proceed through the chip design process at different rates; this process begins with internal development of cells and release by a design template vendor; the process continues thereafter as the cell and block designs cycle through multiple revisions. (′545 patent, col. 1:44-47) Keeping track of the most recent version of cells and blocks in a chip design is difficult. (Id., col. 1:47-49) A design ready for release to production could involve as many as 40,000 unique cells. (Id., col. 2:12-13)

When chip production starts, it is essential that the cells and blocks of the design are the correct version. (Id., cols. 3:66-4:1) Indeed, using the incorrect version “can cost millions of dollars and months of delay[,]” and the potential for using an obsolete version of a cell is “everywhere[.]” (Id., col. 4:1-4; see also id., cols. 1:54-55, 2:12-15)

At the time of the inventions, existing design data management tools lacked an auditing capability that would allow project managers to verify that the cells in a chip design are of the latest approved version, or to determine whether a proposed design update would be usable in a design approaching the final “tapeout” process. (Id., cols. 2:15-20, 4:22-31) In order to track and find changes in cell data in a file during the design of a circuit, a designer might have to manually analyze millions of lines of data, typically using a differencing tool. [26] (Id., col. 2:22-26) However, the use of differencing tools had some drawbacks. These tools were not able to take into account differences in design language (e.g., whether different inputs are used in different languages that nevertheless mean the same thing), nor were they able to analyze whether certain changes were significant or had a functional impact on the chip being produced. (Id., col. 2:25-32; see also Civil Action No. 22-312-CJB, D.I. 15 at 3) Accordingly, sometimes a design team would not discover an out-of-date file until the problematic design returned from manufacturing. (′545 patent, col. 1:57-59)

Another problem with then-existing chip-level design template management systems was that they could not effectively determine when parts of different chip designs included the same cells. (Id., col. 4:8-10, 18-21) For example, when a yield problem was discovered in a product that utilized a particular design template, it was difficult to determine what other projects used that same template. (Id., col. 1:49-52)

In light of these problems, the patent specification highlights a need to develop new tools to analyze design data—and more specifically to enable “granular evaluation of design data at various junctures in the design work flow.” (Id., col. 2:63-65) Such tools may result in work flows and product designs that are improved, more error free, more transparent and more resilient. (Id., col. 2:63-67)

The inventors of the asserted patents set out to provide tools and methods to allow for such granular analysis of design data and to enable the identification of meaningful similarities and differences in design data files. (Id., col. 3:3-6) As is discussed more fully below, the “Summary/Overview” section of the patents' specification explains that the disclosed technology “relates to parsing data and organizing it into canonical forms, [27] digesting the canonical forms, and comparing digests of design data from different sources, such as chip-level designs and design template libraries.” (Id., col. 3:6-10) Organizing the data into canonical forms in the manner described in the patent reduces the sensitivity of the analysis to differences in the data that do not have a functional impact on the design. (Id., col. 3:10-13)

Further relevant facts related to resolution of the Motions will be set out as needed in Section III.

B. Procedural Background

Plaintiff filed its Complaint against Siemens on February 1, 2022 in Civil Action No. 22-151-CJB. (D.I. 1) Plaintiff accuses Siemens' Calibre Design Solutions suite of infringing at least claims 1 and 16 of the ′571 patent, and at least claim 1 of the ′545 patent. (Id. at ¶¶33, 49, 63, 71, 84)

Plaintiff filed its Complaint against GF on March 9, 2022 in Civil Action No. 22-312-CJB. (Civil Action No. 22-312-CJB, D.I. 1) Plaintiff accuses GF's DRC+ tool and its open process technology platforms of infringing at least claim 16 of the ′571 patent, and at least claim 14 of the ′545 patent. (Id. at ¶¶58, 82, 99, 107, 125)

Siemens filed its motion to dismiss on April 1, 2022, (D.I. 13), and briefing on the motion was completed on April 26, 2022, (D.I. 20). GF filed its motion on May 6, 2022, (Civil Action No. 22-312-CJB, D.I. 14), and briefing on the motion was completed on May 27, 2022, (Civil Action No. 22-312-CJB, D.I. 24). Thereafter, Plaintiff and Defendants submitted numerous notices of supplemental authority. (D.I. 37; D.I. 57; D.I. 60; D.I. 62; Civil Action No. 22-312-CJB, D.I. 31; D.I. 52; D.I. 56) The Court heard oral argument on the Motions on September 27, 2022. (D.I. 61; Civil Action No. 22-312-CJB, D.I. 53 (hereinafter, “Tr.”)) [28]

II. LEGAL STANDARD

The instant Rule 12(b)(6) Motion is premised on Defendants' assertion that the Complaints in these cases should be dismissed due to the applicability of an affirmative defense: that the patent claims-in-suit are directed to patent-ineligible subject matter pursuant to Section 101. The Court has often set out the relevant legal standards for review of such a Rule 12(b)(6)/Section 101 motion, including in Genedics, LLC v. Meta Co., Civil Action No. 17-1062-CJB, 2018 U.S. Dist. LEXIS 141495, 2018 WL 3991474, at *2-5 (D. Del. Aug. 21, 2018). It hereby incorporates by reference its discussion in Genedics of these relevant legal standards and will follow this legal guidance in assessing the Motions. To the extent that other related legal principles are relevant to the Motions, the Court will discuss those below in Section III.

III. DISCUSSION

Motions advancing a Section 101 challenge at the pleading stage are often difficult and challenging to resolve. The instant Motions certainly fit that bill. Both sides here made strong and cogent arguments in favor of their positions.

The Court begins its analysis with a discussion of representative claims. In its briefing, Siemens asserted that claim 1 of the ′571 patent is representative of all claims of both patents. (D.I. 14 at 2-3) [29] GF, meanwhile, asserted that claim 1 of the ′545 patent is representative of all claims. (Civil Action No. 22-312-CJB, D.I. 15 at 4-5) For its part, Plaintiff vaguely disputed that claim 1 of either asserted patent is representative. But in its briefing, Plaintiff said little of substance about why this was so. (D.I. 18 at 18; Civil Action No. 22-312-CJB, D.I. 23 at 20; Tr. at 70-71 (Plaintiff's counsel noting that in its briefing, Plaintiff did not “discuss[] the representative[ness] issue, per se”)) Then, during oral argument, Plaintiff focused most of its attention on claim 14 of the ′545 patent. (Tr. at 65, 69-71) Hearing this, Defendants' counsel agreed that they would be “happy to refer to any of the claims” as there are “no meaningful distinction[s]” among them for purposes of the Motions. (Id. at 7, 107; see also Civil Action No. 22-312-CJB, D.I. 15 at 14)

In light of the above, the Court will assess the eligibility of claim 14 of the ′545 patent (hereafter, “claim 14”) below, treating it as representative of the other claims at issue. That is because doing so best aligns with all of the parties' views as to how best to address representativeness. Claim 14 recites:

14. A device that evaluates similarities and/or differences between design data for circuits, the design data residing in at least two files stored in computer memory, the device including:

at least one processor and memory;

a parser running on the processor, that parses a file containing design data representing aspects of a design for a physical circuit and creates one or more syntax trees in the memory;

normalizer logic running on the processor and cooperating with the parser that organizes the syntax trees to produce canonical forms, wherein the normalizer logic includes:

a partitioning module that partitions the file into at least one header and, depending on rules of a design language used to encode the file, into multiple cells of design data and organizes the syntax trees to represent the header and cell partitions; and

a canonical forming module that interprets the syntax trees to produce canonical forms of the design data, wherein the canonical forms reduce sensitivity of data analysis to non-functional variations in the design data;

a digester module running on the processor that receives the canonical forms for at least selected partitions and calculates and stores in the memory at least one digest per selected partition;

a comparer module running on the processor that receives and compares the digests of at least a first file and a second file, which contain design data; and

a reporter module running on the processor and coupled to the digester that summarizes at least some of the matches and/or differences detected by the comparisons of digests.

(′545 patent, cols. 85:40-86:14)

A. Alice's Step One

The Court first assesses Alice's step one, which asks whether the claim at issue is “directed to” an abstract idea.

What is an abstract idea? It can be (but is not necessarily limited to) a “preexisting, fundamental truth” that “exis[ts] in principle apart from any human action[,]” or it can be a “method of organizing human activity” (such as a “longstanding commercial practice”). Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 220, 134 S. Ct. 2347, 189 L. Ed. 2d 296 (2014) (internal quotation marks and citations omitted); see also DDR Holdings, LLC v. Hotels. com, L.P., 773 F.3d 1245, 1256-57 (Fed. Cir. 2014). A claim to an abstract idea has been described as one directed to a “‘disembodied’ concept … a basic building block of human ingenuity, untethered from any real-world application.” CLS Bank Int'l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1286 (Fed. Cir. 2013) (Lourie, J., concurring) (citation omitted). Beyond that, the “abstract ideas” category has not been crisply defined, see Alice, 573 U.S. at 221 (declining to “labor to delimit the precise contours of the ‘abstract ideas’ category”), and the Supreme Court of the United States and the United States Court of Appeals for the Federal Circuit have found it sufficient to compare claims at issue to those claims already found to be directed to an abstract idea in previous cases, see Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016).

In their briefing, Defendants argued that the claims of the asserted patents are directed to the abstract idea of “comparing parsed and standardized data to evaluate their similarities and/or differences.” (D.I. 14 at 7; Civil Action No. 22-312-CJB, D.I. 15 at 7; Tr. at 8) During oral argument, the Court observed that this articulation made it seem as if the claims are solely directed to the comparison of data. (Tr. at 44) That seemed not to align with the text of claim 14, which is not just about comparing data, but is also about, inter alia, the steps of actually parsing and normalizing that data into a standardized format. (See, e.g., ′545 patent, col. 85:45-56) Defendants acknowledged this, and accordingly asserted that another way of articulating the abstract idea could be: “parsing, standardizing and comparing data for similarities and differences[.]” (Tr. at 45) They explained that framing the abstract idea in this way would make no difference to their Section 101 analysis. (Id. at 45-46) Therefore, in its step one analysis, the Court will consider “parsing, standardizing and comparing data for similarities and differences” to be the abstract idea at issue.

This brings us to the next question: Is “parsing, standardizing and comparing data for similarities and differences” in fact an abstract idea? The Court concludes that it is. Indeed, the Federal Circuit has said something similar in a number of cases. See, e.g., Berkheimer v. HP Inc., 881 F.3d 1360, 1366 (Fed. Cir. 2018) (claims directed to “parsing and comparing data” were directed to an abstract idea); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (claims focused on “selecting certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis” were directed to abstract ideas). Indeed, Plaintiff does not dispute this. (Tr. at 98; see also id. at 82 (Plaintiff's counsel acknowledging that “if all that the claims covered was just comparing two things and saying are they the same, then we would have a big [eligibility] problem”))

With that decided, then a further question is: Is claim 14 actually directed to the abstract idea at issue? In asserting that it is, Defendants contend that the claim uses a computer to automate what would otherwise be a manual process of analyzing certain information, and that the end result is simply the generation of “more information[.]” (Civil Action No. 22-312-CJB, D.I. 15 at 10; Tr. at 17-21) [30] Defendants also assert that the steps of the claims utilize “only generic computer components” and recite “generic computer functions” for carrying out the claimed steps, and thus fail to recite any particular improvement in computer technology. (Civil Action No. 22-312-CJB, D.I. 15 at 12-13)

Plaintiff, meanwhile, argues that claim 14 is not directed only to the abstract idea at issue. In its briefing, Plaintiff asserted that the abstract idea amounted to an oversimplification of the claim, which glossed over three key claim elements: “[(1)] partitioning and parsing designs using specific data structures, [(2)] converting the designs into canonical forms that wash out nonfunctional differences between cells, and [(3)] generating a digest for each cell that is compact and easily analyzed but corresponds to the canonical form for a cell.” (D.I. 18 at 10) During oral argument, Plaintiff focused especially on elements 2 and 3 referenced above. In doing so, it asserted that claim 14 creates something “new and better” that improves computer functionality: a “canonical form digest” that “allows for more efficient comparison with fewer false negatives in the comparisons.” (Tr. at 66; see also id. at 72, 78, 86)

This step one question is not free from doubt. Both sides have something to work with.

On the one hand, there is evidence to support Defendants' position that claim 14 should be characterized as simply being directed to “parsing, standardizing and comparing data for similarities and differences.” In part, this is shown by simply looking to the steps of the claim. Those steps tell us that the device at issue includes: (1) a data processor and memory; (2) a parser that parses a file containing design data and that creates one or more syntax trees in the memory; (3) normalizer logic that organizes the syntax trees to produce canonical forms (i.e., “standardizing” the data) and that reduces sensitivity of data analysis to non-functional variations in the data; (4) a digester module that receives the canonical forms and calculates and stores at least one digest per selected partition; (5) a comparer module that receives and compares the digests of files containing design data; and (6) a reporter module that summarizes similarities and differences. In sum, a good portion of claim 14's text—and of what one could say the claim is about—relates, at a fairly high level, to parsing design data, standardizing certain of that data, and comparing the data to ascertain similarities and differences.

Certain portions of the specification [31] can also be read to support Defendants' position.9 (See id. at 20) The title of the patents is very broad and general (“Methods and Devices for Independent Evaluation of Cell Integrity, Changes and Origin in Chip Design for Production Workflow”). (′545 patent, Title) This tells us nothing much more than the patent is about evaluating cell integrity, cell changes and cell origin. Moving to the patent's Abstract, it advises that the disclosed invention “relates to granular analysis of design data … and to identification of similarities and differences among parts of design data files.” (Id., Abstract) More specifically, the Abstract continues, the invention “relates to parsing data and organizing [it] into canonical forms [i.e., standardizing the data], digesting the canonical forms, and comparing digests of design data from different sources[.]” (Id. (emphasis added)) It also notes that “[o]rganizing the design data into canonical forms generally reduces the sensitivity of data analysis to variations in data that have no functional impact on the design.” (Id.) The “Background of the Invention” section begins by reiterating this summary of the invention, (id., col. 1:19-28), and the “Summary/Overview” section of the specification also describes the invention in a similar way, (id., col. 3:3-13). And lastly, the specification goes on to describe the “[c]ommon [t]heme” of the disclosed applications as “evaluat[ing] similarities and/or differences between design data for circuits” in multiple files. (Id., col. 69:16-20)

In other words, in various places, the specification characterizes the invention as being in significant part about getting design data ready for comparison (by parsing it and standardizing it), and then later comparing that data. In that sense, then, Defendants do not seem wildly off base in suggesting that claim 14 is simply directed to “parsing, standardizing and comparing data for similarities and differences.” [32]

On the other hand, Plaintiff can point to evidence indicating that claim 14 is directed to something narrower or more specific than the abstract idea at issue. Here, the Court is referring to the portions of claim 14 requiring that: (1) the canonical forms created by the claimed device “reduce sensitivity of data analysis to non-functional variations in the design data”; and that (2) the device will utilize “digests” to represent these canonical forms in the comparison process. (Id., col. 86:1-10) As noted above, the patentee also highlighted these aspects of the claimed invention in the Abstract and otherwise in the specification. (Id., Abstract) And so these concepts appear to be important parts of the invention too. (Tr. at 73-75, 84-85; see also id. at 22-23)

In this regard, the specification explains that canonical cell digests “are outputs of a new tool that will be useful in the” chip design process, and that canonical digest tools can “distinguish between trivial changes … and major changes” in cells. (′545 patent, col. 5:41-43, 46-49) The patent further explains that “[c]omparison of canonical digests is a powerful tool that allows a user to understand small differences between design elements in large files.” (Id., col. 6:17-19) This is because design files “can be enormous” with “[t]housands or hundreds of thousands of cells (or more, with large memories, for instance) [] contained in the [] file[s]” such that “[w]ith this much data, false alarms are a real problem.” (Id., col. 6:19-23) The patent thus advises that one use of canonical cell digests is to “identify and allow filtering of detected changes based on their functional significance and, sometimes, their source in the design process.” (Id., col. 6:23-26)

Defendants acknowledge that their articulation of the abstract idea does not expressly capture at least the notion of digesting the standardized data. [33] Defendants attempted to explain this away by asserting that digesting is “fairly attendant” to standardizing the data—i.e., that condensing the standardized data into digests for comparison purposes is “part of the organization for comparison that the standardization process all leads to[.]” (Tr. at 46-48) But it seems clear to the Court that digesting design data is not inherently part of the abstract idea. After chip design data is standardized, one would not necessarily need to condense that data into digests in order to facilitate a comparison between the data. Instead, a chip designer could theoretically compare all of the relevant standardized data (though this might be unwieldy to do) or use methods other than digesting (i.e., using a differencing tool) in order to facilitate a comparison. [34] Additionally—and importantly—Defendants' articulation of the abstract idea does not include the concept of “reduc[ing] sensitivity of data analysis to non-functional variations in the design data[.]”

In the end, then, the step one question presents a tough call. Therefore, the Court will analyze whether claim 14 amounts to an improvement to computer technology (or otherwise contains an inventive concept) at step two. Cf. Enfish, 822 F.3d at 1339 (noting that there may sometimes be “close calls” about how to characterize what a claim is directed to at Alice step one, and in such scenarios, an analysis of whether the claims contain “arguably concrete improvements in the recited computer technology could take place” at step two).

B. Alice's Step Two

Step two of the Alice framework requires a court to assess “[w]hat else is there in the claims”; a court does so by considering “the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application.” Alice, 573 U.S. at 217 (internal quotation marks and citation omitted). The Supreme Court describes step two as a search for an “inventive concept”—”i.e., 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.” Id. at 217-18 (internal quotation marks and citation omitted); see also Berkheimer, 881 F.3d at 1367. The purpose of the “inventive concept” requirement is to “ensure that the claim is more than a drafting effort designed to monopolize the abstract idea.” Alice, 573 U.S. at 221 (internal quotation marks, citation, and brackets omitted). With regard to computer-related claims, the Supreme Court has noted that if a patentee argues that an aspect of the claim amounts to an inventive concept—but that aspect simply amounts to the use of “computer implementation” that is “purely conventional[,]” or to invoking “the most basic functions of a computer”—then this add will not serve to render the claim patent eligible. Id. at 222, 225. [35]

In exploring the step two question, the Court is mindful that although a determination of patent eligibility is ultimately an issue of law, the determination may involve “disputes over underlying facts[.]” Berkheimer, 881 F.3d at 1368. One such factual issue is “[w]hether [a claim element or claimed combination] is well-understood, routine, and conventional to a skilled artisan at the time of the patent[.]” Id. at 1369. [36]

Having set out the law with respect to step two, the Court now asks: What else is there in claim 14, apart from the abstract idea of parsing, standardizing and comparing data for similarities and differences? As noted above, Plaintiff has focused particularly on two such additional claim components: (1) the creation of a canonical form that reduces sensitivity of data analysis to non-functional variations in the data; and (2) digesting of the canonical forms so that the digests are used in the comparison process. (D.I. 18 at 15; Civil Action No. 22-312-CJB, D.I. 23 at 13; Tr. at 72, 76-78) [37] Plaintiff argues that the combination of these limitations provides specific improvements to computer functionality as compared to conventional approaches to comparing chip design data. (D.I. 18 at 15-17; Tr. at 83-84, 87) According to Plaintiff, the claimed canonical form would identify functional aspects of the data, so that compared data with non-functional differences would be recognized as being the same. (D.I. 18 at 7) And then the digests would be used to quickly identify similarities in that data (even if, for example, the cells were originally expressed in different languages). (Id. at 7-8)

The specification suggests that these aspects of the claims might, taken together, amount to an inventive concept. The patent tells us that conventional approaches to evaluating cell data (namely, the use of a differencing tool) would subtract differences between files “without analysis of whether the changes have a functional impact on the chip being produced or whether they are significant.” (′545 patent, col. 2:22-34; see also id., col. 69:44-46 (“[D]ifferencing tools are designed to flag changes, rather than evaluate the significance of changes.”); id., col. 4:5-21) However, the claimed device “can distinguish between trivial changes … and major changes[,]” such that it contains “a powerful tool that allows a user to understand small differences between design elements in large files.” (Id., cols. 5:46-48, 6:17-19) Indeed, while “false alarms” were a “real problem” when designers used conventional techniques to compare huge amounts of design data, the use of the claimed invention curbed that problem. (Id., col. 6:19-26; see also Tr. at 86 (Plaintiff's counsel explaining that a key to claim 14 from an eligibility perspective is that it “allows for a meaningful comparison between data that comes from different sources for circuit design … without getting a lot of false negatives”)) [38] Additionally, the patent notes that while differencing tools required a pair of files to be present at the time of analysis, the invention's use of canonical digests in the comparison process allows data to “be compared without having either file present.” (′545 patent, col. 12:12-16; see also id., col. 2:37-44) These above-referenced aspects of the invention are said to help save money and time in the design process for project managers, (id., cols. 3:66-4:4; 6:16-26), allowing the production of “[b]etter, more error free, more resilient and transparent work flows and resulting product designs[,]” (id., col. 2:65-67).

In sum, the specification describes these key claim limitations as inventive features, which allow for comparison of design data in a purportedly unconventional manner. Therefore, it appears that these purportedly unconventional aspects of claim 14 could make a difference in the Section 101 analysis. See Berkheimer, 881 F.3d at 1370; see also Coop. Ent. Inc. v. Kollective Tech., Inc., 50 F.4th 127, 131 (Fed. Cir. 2022) (“Claim 1 contains several alleged inventive concepts which the specification touts as specific improvements in the distribution of data compared to the prior art. The amended complaint plausibly alleges these inventive concepts, and this should have defeated Kollective's Rule 12(b)(6) motion in this case.”).

The Court's conclusion here is bolstered by the fact that the eligibility analysis is driven by “the concern … of pre-emption.” Alice, 573 U.S. at 216. The preemption analysis, in turn, compels a court to assess whether the claims at issue “attempt to preempt every application [or at least a great many applications]” of the abstract idea at issue. DDR Holdings, LLC, 773 F.3d at 1259. Here, the presence of the above-referenced limitations in claim 14 (as well as other specificity recited in the claim, such as the creation of a syntax tree and the partitioning of the files in a particular way) could help demonstrate that claim 14 walls off only a narrow subset of all inventions that parse, standardize and compare design data for similarities and differences. (D.I. 18 at 16-17) Thus, expert testimony about the scope of any such preemption seems like it could be critical to a final assessment of eligibility.

This all counsels in favor of denial of the Motions at Alice's step two. The Court recognizes, however, that Defendants made a number of arguments to the contrary. It will discuss these arguments below, explaining why they did not win the day.

First, Defendants assert that claim 14 is most analogous to claims found patent ineligible in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). (D.I. 14 at 15-18; D.I. 20 at 1-4; Tr. at 24-25) The Court agrees that Berkheimer is a key and important case as to resolution of the instant Motions. But a close look at the claims at issue in Berkheimer actually supports Plaintiff's position, not Defendants' position. (See D.I. 18 at 20; Tr. at 76, 92-94; Plaintiff's Hearing Presentation, Slide 27)

In Berkheimer, the district court granted summary judgment that claims 1-7 and claim 9 of the asserted patent were patent ineligible under Section 101. Berkheimer, 881 F.3d at 1362. Independent claim 1 recited a method of archiving an item in a computer processing system, which included: (1) presenting the item to a parser; (2) parsing the item into multi-part object structures with searchable information tags; (3) evaluating the object structures in accordance with object structures previously stored in an archive; and (4) presenting an evaluated object structure for manual reconciliation where there is a variance between the object and at least one of a predetermined standard and a user defined rule. Id. at 1366. [39]

At Alice's step one, the Federal Circuit held that claims 1-3 and 9 were directed to the abstract idea of “parsing and comparing data[;]” dependent claim 4 was directed to the abstract idea of “parsing, comparing, and storing data[;]” and dependent claims 5-7 were directed to the abstract idea of “parsing, comparing, storing, and editing data.” Id. In doing so, the Court rejected the plaintiff's argument that the “parsing” limitation, by transforming data from source code to object code, rendered the claims patent eligible. Id. at 1367. The Court explained that there was no evidence that such a transformation improved the functionality of the computer in some way. Id.

At step two, the plaintiff argued that the claimed combination improved computer functionality by eliminating redundancy in archived items and by implementing a “one-to-many editing feature”—such that the claims included inventive concepts. Id. at 1369. The Berkheimer Court then considered the specification, which explained that conventional digital asset management systems included many documents “containing multiple instances of redundant document elements[,]” which resulted in “inefficiencies and increased costs.” Id. (internal quotation marks and citation omitted). The specification further noted:

By eliminating redundancy in the archive 14, system operating efficiency will be improved, storage costs will be reduced and a one-to-many editing process can be implemented wherein a singular linked object, common to many documents or files, can be edited once and have the consequence of the editing process propagate through all of the linked documents and files. The one-to-many editing capability substantially reduces effort needed to up-date files which represent packages or packaging manuals or the like as would be understood by those of skill in the art.

Id. (internal quotation marks and citation omitted). In these passages, then, the specification highlighted inventive features that stored parsed data in an unconventional manner—by eliminating redundancy, improving efficiency, reducing storage requirements and enabling a single edit to propagate to all linked documents. Id. The Federal Circuit explained that if these recited improvements were actually captured in the claims, then a factual dispute would exist as to whether the invention describes well-understood, routine and conventional activities. Id.

Claim 1 did not meet this test. Its limitations did not incorporate the elimination of redundancy of stored object structures, nor the concept of effecting a one-to-many editing change of linked documents. Id. Indeed, the claim did not even require the storage of data after it had been presented for reconciliation. Id. Instead, claim 1 simply recited a method of “parsing data, analyzing and comparing the data to previously stored data, and presenting the data for reconciliation when there is a variance.” Id. It was undisputed that parsers had existed prior to the asserted patent, and the parsing limitation—combined with the limitations requiring the analysis and comparison of data, and reconciliating differences between the data—amounted to no more than performing the abstract idea with conventional computer components. Thus, claim 1 (as well as certain other similar dependent claims) were deemed ineligible. Id. at 1370.

Claims 4-7 were different, as they contained limitations directed to the purportedly unconventional concepts highlighted in the specification. In that regard, Claim 4 recited, in addition to the limitations of claim 1, “storing a reconciled object in the archive without substantial redundancy.” Id. And claims 5-7 further recited the one-to-many editing feature. Id. Because claims 4-7 recited a “specific method” of archiving that, “according to the specification, provides benefits that improve computer functionality[,]” the Berkheimer Court found there to be a genuine issue of material fact as to whether the claims archive documents in an inventive manner. Id. Thus, granting summary judgment as to these claims was improper. Id.

In the Court's view, claim 14 of the ′545 patent is more similar to claims 4-7 in Berkheimer than it is to Berkheimer's ineligible claims. In Berkheimer, the only differences between ineligible claim 1 and claims 4-7 were the requirements that a reconciled object structure be stored in the archive without substantial redundancy or that selective editing be performed that would effect a one-to-many change in linked documents—requirements that the specification touted as an improvement upon the prior art. Id. at 1369 (noting that claim 1 “does not recite any of the purportedly unconventional activities disclosed in the specification”); see also (Tr. at 92-94). Similarly, here claim 14 requires the creation of a canonical form that reduces sensitivity of data analysis to non-functional differences in the design data, and that then uses digests in the process of comparing data for similarities and differences. And just like in Berkheimer, here the ′545 patent's specification states that these features were unconventional and promoted benefits over prior art solutions—such as increased efficiency, reduction of costs and “much fewer false negatives[.]” (Tr. at 66, 85, 93-94)

Defendants push back on this conclusion about Berkheimer's applicability. In part, they do so by criticizing claim 14 for failing to elaborate further upon how the canonical forming module reduces sensitivity of data analysis to non-functional variations. (Civil Action No. 22-312-CJB, D.I. 24 at 3; Tr. at 15) And Defendants are correct; the claim does not appear to further explain how the device's canonical form production process makes this happen. That said, while Berkheimer's claim 4 required that an object structure must be stored in an archive “without substantial redundancy[,]” 881 F.3d at 1370, that claim also did not further explain how this storage process was to be accomplished. Berkheimer's claims 5-7 were little different. While they required that object structures must be selectively edited so that they were linked to other structures, the claims did not further set out how that editing or linkage happened. Id. Yet none of this impacted the result in Berkheimer. (See Tr. at 76-77, 92-93) In other words, the (somewhat limited) amount of specificity in Berkheimer's claims 4-7 regarding the manner of storage of the data or the manner of editing the data was still enough to potentially transform the claims into something other than a claim to an abstract idea. No additional level of “how” was needed.

Defendants additionally argue that claims 4-7 in Berkheimer are different than claim 14 because the former “added physical-realm utility” (by which they mean that Berkheimer claims 4-7 were about “‘improving the computer technology’” or “improving the processing of … a physical object, the computer”), while claim 14 does not. (D.I. 14 at 17 n.9; D.I. 20 at 5-6; Tr. at 31-35; see also Civil Action No. 22-312-CJB, D.I. 24 at 6-7) But it is simply not clear to the Court how the surviving claims in Berkheimer were about “improving the computer technology” in a way that is all that dissimilar to what claim 14 accomplishes. Put differently, Defendants have not sufficiently explained why, for example, Berkheimer claim 4's use of a computer to store a data object in a particular way is significantly different, for eligibility purposes, than claim 14's use of a computer to assess whether differences in data amount to functional or non-functional variations.

Second, Defendants argue that the claim's use of digests to compare the data cannot save it, because digesting itself is an abstract idea that does “not improve how a computer operates[,]” and because existing standards are utilized in order to create the digests. (D.I. 14 at 14; Tr. at 46; Defendants' Hearing Presentation, Slide 38) To that end, the specification notes that “[a] variety of hash functions can be used to create the digests, such as CRC, MD5 and others.” (′545 patent, col. 6:8-9) And it is true that in cases like PersonalWeb Techs. LLC v. Google LLC, 8 F.4th 1310 (Fed. Cir. 2021), the Federal Circuit has held that using a content-based identifier generated from a hash or message digest function amounts to the use of an abstract idea. PersonalWeb, 8 F.4th at 1316. However, claim 14 is not just about digesting data per se. Instead, the claim utilizes the digest to provide an identifier to match all of the different ways of expressing a functionally-similar cell design—something that the prior art differencing tools could not accomplish. (Tr. at 78, 110; Plaintiff's Hearing Presentation, Slide 19) In other words, it seems that the claim applies the concept of a digest to an improved way of comparing design data—in a manner that amounts to something more than just the abstract idea of parsing, standardizing and comparing (digested) data for similarities and differences. So at least at this stage of the case, the specification seems to belie the notion that the digests, in combination with other claimed steps, could not sufficiently improve how the computer operates.

Third, Defendants argue that the claims lack an inventive concept, since they “merely use generic computer components and functions.” (Civil Action No. 22-312-CJB, D.I. 24 at 8; see also Civil Action No. 22-312-CJB, D.I. 15 at 17-18; Defendants' Hearing Presentation, Slide 24; Tr. at 55-56) However, the use of “any computer functionality does not, by itself, preclude the existence of an inventive concept.” ART+COM Innovationpool GmbH v. Google Inc., 183 F. Supp. 3d 552, 560 (D. Del. 2016). If a claim describes a “specific procedure that is done by a computer” that “overcom[es] a problem which plagued prior art systems”—instead of describing merely “what a computer does”—then that is a good sign that the claim recites an inventive concept. Id. (emphasis added). Claim 14 does not recite merely parsing data, standardizing it and comparing it (using conventional computer components). Instead, it recites a particular procedure for doing so. (D.I. 18 at 17-18) This suggests that, at this stage, there is at least a factual question as to whether the claim contains an inventive concept.

For the reasons set out above, the Motions must be denied at step two.

IV. CONCLUSION

For the foregoing reasons, the Court DENIES Defendants' Motions.

An appropriate Order will issue.

APPENDIX D — DENIAL OF REHEARING AND REHEARING EN BANC OF THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT, FILED MAY 15, 2026

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

2024-2085, 2024-2086

OASIS TOOLING, INC., Plaintiff-Appellant, v. SIEMENS INDUSTRY SOFTWARE INC., GLOBALFOUNDRIES U.S. INC., Defendants-Appellees.

Appeals from the United States District Court for the District of Delaware in Nos. 1:22-cv-00151-CJB, 1:22-cv-00312-CJB, Magistrate Judge Christopher J. Burke.

ON PETITION FOR PANEL REHEARING AND REHEARING EN BANC

Before Lourie, Dyk, Prost, Reyna, Taranto, CHEN, HUGHES, and Stoll, Circuit Judges. [40]

Per Curiam.

ORDER

Oasis Tooling, Inc. filed a combined petition for panel rehearing and rehearing en banc. The petition was referred to the panel that heard the appeal, and thereafter the petition was referred to the circuit judges who are in regular active service.

Upon consideration thereof,

It Is Ordered That:

The petition for panel rehearing is denied.

The petition for rehearing en banc is denied.

May 15, 2026

Date

For the Court

/s/ Jarrett B. Perlow

Jarrett B. Perlow

Clerk of Court