By Michael Borella –

If we have learned anything from the last twelve years of patent eligibility jurisprudence, it is that the Federal Circuit continues to find new ways to disappoint.  The Federal Circuit’s recent nonprecedential decision in Oasis Tooling, Inc. v. Siemens Industry Software Inc. is a master class in how not to conduct a § 101 analysis.  Instead, it is a rushed, conclusory exercise that manages to be both self-contradictory and analytically vacant.

U.S. Patent Nos. 7,685,545 and 8,266,571 are directed to systems for identifying similarities and differences among semiconductor chip design data.  The technology addresses a problem that existed at the time of the invention, that different cells within semiconductor chip designs could be created using different computer programming languages by different entities.  Conventional tools could not recognize when cells were functionally identical but merely expressed differently.  The claimed invention solves this by standardizing the programming languages of different cells before making comparisons.

Representative claim 14 of the ‘545 patent recites:

14. A device that evaluates similarities and/or differences between design data for circuits, the de-sign 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 co-operating 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.

The Court’s step one analysis is breathtaking in its internal inconsistency.  Judge Lourie, writing for the panel, concluded that claim 14 is directed to an abstract idea because the claimed function “is a process that can be performed in the human mind.”  The Court then immediately acknowledged that “human minds are unable to parse, standardize, and digest the data like a computer in doing so.”

Let that sink in.  The Court declared in consecutive sentences that (1) the claim is abstract because it could be performed mentally, and (2) humans cannot actually perform it mentally.  This is the jurisprudential equivalent of declaring that a fish is a mammal while simultaneously noting that fish cannot breathe air, nurse their young, or do any of the things that make mammals mammals.

The mental steps doctrine, at its core, is supposed to identify claims that merely recite thinking.  But when the claimed invention is something that no human mind could actually accomplish, we are no longer talking about mental steps.  We are talking about steps that need to be carried out in the physical world.

The Court’s reductionist approach is clear in how it characterized the claim.  The actual claim language includes 255 words of technical features, including a parser, syntax trees, a partitioning module, a canonical forming module, a digester, and a comparer.  But this is distilled into a 16-word summary: “a device for analyzing data to identify similarities and differences between design data for semiconductor chips.”  This is the § 101 equivalent of describing a jet engine as a device for making things move.

If the step one analysis was logically incoherent, the step two analysis barely exists at all.  The Court’s entire inventive concept inquiry consists of observing that the specification “provides no specifics regarding the computer components” and that “using generic computer components to standardize and compare data is insufficient to provide an inventive concept.”

This analysis fails on multiple levels.  First, the Court never considers the claim as a whole, a principle that appears in many § 101 opinions but is rarely honored.  The ordered combination of these elements, which the Supreme Court in Alice Corp. v. CLS Bank instructed us to consider, is dismissed with judicial hand waving.

Second, the Court makes no inquiry into whether this particular combination of elements was well-understood, routine, and conventional at the time of the invention.  There is no discussion of what semiconductor design tools existed before this invention.  There is no consideration of the specification’s discussion of the drawbacks of conventional tools.  The technical improvement recited in the very patent the Court is invalidating is simply ignored.

One aspect of this case that the Court did not explicitly discuss, but which likely influenced the decision, is the claim’s use of functional, outcome-oriented language.  Claim 14 is littered with elements defined by what they accomplish rather than how they accomplish it.  The Federal Circuit has historically taken a dim view of this style of claiming where the claim recites what the inventor hopes to achieve without reciting how the inventor purports to have achieved it.  In cases like Electric Power Group v. Alstom and Two-Way Media v. Comcast, the Federal Circuit has repeatedly found claims ineligible when they describe goals to be accomplished rather than specific technical means for accomplishing them.

This is the silent killer of patents under § 101.  The present claims, steeped in functional language and of modest implementation detail, were likely doomed from the start.

Thus, this messy shortcut of a § 101 analysis sets a non-rigorous, unserious precedent for lower courts and the USPTO alike.  If the mental steps doctrine can be invoked for processes that humans literally cannot perform, then virtually any computer-implemented invention is vulnerable.  If the inventive concept inquiry can be satisfied without actually analyzing whether the claimed combination was known in the art, then step two becomes a rubber stamp for invalidity.

The opinion’s brevity raises the question of whether the Federal Circuit actually conducted its own § 101 analysis, or simply rubber-stamped the District Court’s reasoning.  If the panel relied on the District Court’s work, it should say so by incorporating it by reference, citing to it . . . something.  As written, the opinion stands alone, and what it demonstrates is that patent-ineligibility can be established with little more than a one-sentence claim summary and a citation to Alice.  Practitioners and district courts reading this decision will draw the conclusion that the test requires no reasoning at all.  If that is not what the Federal Circuit intended to communicate, it has done a poor job of showing otherwise.

This decision could be used to harm patentees across the software and semiconductor industries.  Inventors who developed genuine technical solutions to real engineering problems will find their patents vulnerable to challenges that require nothing more than characterizing their claims at a high level of abstraction and then dismissing the details as generic.

Put another way, the Federal Circuit did not find claim 14 ineligible.  It found a different claim ineligible, a claim that the patentee never wrote and the USPTO never examined.  That is not claim analysis, it is an exercise in fan fiction.

Oasis Tooling, Inc. v. Siemens Industry Software Inc. (Fed. Cir. 2026)
Nonprecedential disposition
Panel: Circuit Judges Lourie, Prost, and Taranto
Opinion by Circuit Judge Lourie