Federal Circuit strikes down file-comparison claims under 35 U.S.C. § 101

The Fed. Cir. today struck down file-comparison claims for failing to recite patent eligible subject matter under 35 U.S.C. § 101 in Oasis Tooling v. Siemens Industry Software (nonprecedential). Apparently, 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 claims recited evaluating “the similarities and/or differences between design data for circuits, the design data residing in at least two files….” So, basically, the files contained data representing the physical characteristics of circuits which were then compared.

At step one, the court found that the claims were directed to an abstract idea because the comparison could be performed in the human mind. The court also stated, “[i]t 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.” Even when the calculations would be virtually impossible for a human to do, I don’t think I’ve ever seen the Fed. Cir. back away from this human-mind, abstract-idea determination.

At step two, the court acknowledged the technical recitations in the claim, like a parser and a normalizer, but then held that “using generic computer components to standardize and compare data is insufficient to provide an inventive concept at step 2.”

Every once in a while, I need to mention how far we have come. Does anyone remember Arrhythmia Research Technology v. Corazonix (Fed. Cir. 1992)? There, the manipulation of data (signals) representative of something physical (heart function) was found to be patent eligible. I’ve seen a couple of cases recently, this being one, where the Federal Circuit is just not having it anymore.