Oasis Tooling, Inc. v. Siemens Industry Software Inc., Globalfoundries U.s. Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
OASIS TOOLING, INC.,
Plaintiff-Appellant
v.
SIEMENS INDUSTRY SOFTWARE INC.,
GLOBALFOUNDRIES U.S. INC.,
Defendants-Appellees
______________________
2024-2085, 2024-2086
______________________
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
______________________
AARON M. F RANKEL , Herbert Smith Freehills Kramer
(US) LLP, New York, NY, argued for plaintiff-appellant.
Also represented by P AUL J. ANDRE, J AMES R. HANNAH ,
L ISA K OBIALKA, Redwood Shores, CA.
G ABRIEL K. BELL , Latham & Watkins LLP, Washing-
ton, DC, argued for defendants-appellees. GlobalFound-
ries U.S. Inc. also represented by BRETT MATTHEW
SANDFORD, San Francisco, CA; D ANIEL STEPHENSON T ODD,
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OASIS TOOLING, INC. v. SIEMENS INDUSTRY SOFTWARE INC. 2
Austin, TX; J OSEPH C. AKALSKI, CLEMENT J. N APLES ,
Cleary, Gottlieb, Steen & Hamilton LLP, New York, NY;
SRINIVAS G IRIRAJ P ATHMANABAN, Palo Alto, CA; T HOMAS
YEH , San Francisco, CA.
J ASON M. WILCOX , Kirkland & Ellis LLP, Washington,
DC, for defendant-appellee Siemens Industry Software Inc.
Also represented by STEPHEN D ESALVO, G REGG F.
L OCASCIO, MICHAEL A. P EARSON, J R.; J OHN D.
VANDENBERG, Klarquist Sparkman, LLP, Portland, OR.
______________________
Before L OURIE, P ROST , and T ARANTO, Circuit Judges.
L OURIE, 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 In-
dus. Software, Inc., No. CV 22-151-CJB, 2024 WL 3273539.
(D. Del. July 2, 2024). We affirm.
I
Oasis sued Siemens Industry Software Inc. and Glob-
alFoundries 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
1 Oasis asserted claims 1–4, 6, 10–12, 14 and 17–20
of the ’545 patent and claims 1–5, 7, 10–13, 15 and 16 of
the ’571 patent against Siemens. Oasis asserted claims 1–
3, 6, 14 and 20 of the ’545 patent and claims 1–3, 5, 7, 12,
15 and 16 of the ’571 patent against GF.
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OASIS TOOLING, INC. v. SIEMENS INDUSTRY SOFTWARE INC. 3
by different entities. At the time of the invention, conven-
tional tools for designing semiconductor chips had a recur-
ring problem: they were unable to recognize when cells
were functionally the same but just differently expressed.
The patents sought to address that problem by standardiz-
ing 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 dif-
ferences 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 syn-
tax 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 de-
sign 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 de-
sign data, wherein the canonical forms reduce sen-
sitivity of data analysis to non-functional
variations in the design data;
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OASIS TOOLING, INC. v. SIEMENS INDUSTRY SOFTWARE INC. 4
a digester module running on the processor that re-
ceives the canonical forms for at least selected par-
titions 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 pa-
tents 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 juris-
diction under 28 U.S.C. § 1295(a)(1).
II
To determine whether a claim is patent ineligible un-
der § 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 (2014).
Second, if the claims are directed to patent-ineligible sub-
ject matter, we must “consider the elements of each claim
both individually and ‘as an ordered combination’ to deter-
mine whether the additional elements ‘transform the na-
ture of the claim’ into a patent-eligible application.” Id.
(quoting Mayo Collab. Servs. v. Prometheus Laby’s., Inc.,
566 U.S. 66, 78–79 (2012)). Step two of the analysis has
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OASIS TOOLING, INC. v. SIEMENS INDUSTRY SOFTWARE INC. 5
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 per-
formed 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 ab-
stract idea) (citations omitted). It is immaterial to the pa-
tent 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 In-
dus. 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 ad-
dition, 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
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OASIS TOOLING, INC. v. SIEMENS INDUSTRY SOFTWARE INC. 6
asserted claims of both patents are directed to patent-inel-
igible subject matter. Those claims are thus invalid.
AFFIRMED
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