IP Law Daily, PATENT—Fed. Cir.: Summary judgment affirmed in computer chip design dispute, (Mar 2, 2026)

By Kevin M. Finson, J.D.

Asserted claims were directed to the abstract idea of comparing information, which was a function that could be performed in the human mind.

Sellers of computer chips were properly granted summary judgment of invalidity of two patents asserted against them, the U.S. Court of Appeals for the Federal Circuit has held in a nonprecedential decision. The patents were directed to “identification of similarities and differences among parts of” semiconductor chips, which, in the court’s view, amounted to the abstract idea of comparing two sets of information. The claims also lacked an inventive concept rendering them patent-eligible because they added nothing “apart from” the abstract idea (Oasis Tooling, Inc. v. Siemens Industry Software Inc., No. 24-2085 (Fed. Cir. Feb. 26, 2026)).

Oasis Tooling, Inc., owned U.S. Patents Nos. 7,685,545 (the '545 patent) and 8,266,571 (the '571 patent), titled “Methods and Devices for Independent Evaluation of Cell Integrity, Changes and Origin in Chip Design for Production Workflow.” Both patents claimed systems and methods for analysis of computer chip design data used in manufacturing, and to identify similarities and differences in design files, especially directed to solving the problem of prior art tools being unable to recognize when semiconductor chip cells were functionally the same but differently expressed. Oasis sued Siemens Industry Software, Inc. and GlobalFoundries U.S., Inc. (collectively, Siemens). The trial court granted summary judgment in favor of Siemens, finding that the asserted claims were directed to ineligible subject matter under Section 101 of the Patent Act. Oasis appealed, and the Federal Circuit affirmed.

Abstract idea. On the first step of the Alice test, the appellate court determined that the representative's claim was directed to a device for analyzing data to identify similarities and differences between designs for semiconductor chips. This was a function that can be performed in the human mind and was therefore directed to an abstract idea. “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,” the court explained.

Inventive concept. On the second step of the Alice test, the court concluded that the claims added nothing apart from the implementation of the abstract idea using generic computer components. While the claim language referred to items such as “parser” and a “normalizer,” it provided no specifics regarding these components. The use of generic computer components to implement an abstract idea was not sufficient to save patentability.

The case is No. 24-2085.

Judge: Lourie, A.

Attorneys: Paul J. Andre (Herbert Smith Freehills Kramer [US] LLP) for Oasis Tooling, Inc. Jason M. Wilcox (Kirkland & Ellis LLP) for Siemens Industry Software Inc.

Companies: Oasis Tooling, Inc.; Siemens Industry Software Inc.

Cases: Patent TechnologyInternet FedCirNews