IP Law Daily, PATENT NEWS—Patent holder seeks Supreme Court review in infringement case involving design tools for semiconductor chips, (Oct 16, 2026)

By Nadine E. Roddy, J.D.

The petition urges the Court to resolve an intra-circuit split of authority on an issue that can be outcome-determinative in patent eligibility cases.

A patent holder is seeking Supreme Court review of an adverse Federal Circuit decision in its patent infringement case involving tools for designing semiconductor chips for computers. The petition for certiorari identifies an intra-circuit split of authority on the issue of patent eligibility under § 101 of the Patent Act that the Court should resolve (Oasis Tooling, Inc. v. Siemens Industry Software Inc., No. 26-504 (U.S. Oct. 13, 2026)).

The patents. Oasis Tooling, Inc. (Oasis) brought suit against Siemens Industry Software Inc. and GlobalFoundries U.S. Inc. (collectively, Siemens) for infringement of its U.S. Patents Nos. 7,685,545 and 8,266,571. The patents were directed to the identification of similarities and differences among parts of semiconductor chips. At the time of their 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.

Lower court decisions. In the district court, Siemens moved for summary judgment, arguing that all asserted claims of the patents were directed to ineligible subject matter under 35 U.S.C. § 101 and were therefore invalid. The district court granted the motion on that basis, and the Federal Circuit affirmed in an unreported decision. 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 could be performed in the human mind and was therefore directed to an abstract idea. On the second step of the test, the claims added nothing apart from the implementation of the abstract idea using generic computer components.

Petition for certiorary. On October 15, 2026, Oasis filed a petition for certiorari in the Supreme Court, presenting the question for decision as: “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.”

Oasis noted the Patent Act’s provision that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter” may obtain a patent [emphasis added by Oasis]. In Alice Corp. Pty. Ltd. v. CLS Bank International, the Supreme Court held that claims directed to “abstract ideas” are not patentable, but the Court did not define the boundaries of that exception to § 101.

Intra-circuit split. According to the petition, 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. One line of intra-circuit 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, however, holds that, no matter how new or useful a computer-based invention might be, it is necessarily ineligible for patenting as abstract if it is directed to a task that people used to perform manually. These two lines of cases are fundamentally inconsistent, and the resulting split is outcome-determinative, as the patentability of a computer-implemented invention turns on the fortuity of appellate panel assignment rather than on the merits of the invention.

‘A perfect vehicle.’ The petition further maintained that the appellate court’s decision in this case, which fell within the second line of cases, was “a perfect vehicle” to resolve the conflict and “clear the cloud of uncertainty” hanging over the patentability of computer-based inventions. Because the case was decided at the summary judgment stage, all factual disputes were resolved, and only a pure question of law remained for decision.

The Case is No. 26-504.

Judge: NA.

Attorneys: Paul J. Andre (Brown Rudnick LLP) for Oasis Tooling, Inc.

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

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