Patent Drafting Strategy Dooms Mentor Graphics’ Claims Requiring a “Machine-Readable Medium”

Asserting its U.S. Patent No. 7,069,526, Mentor Graphics accused EVE-USA of infringing software claims involving debugging a fabricated integrated circuit. The claims were written to cover the media on which software is stored, requiring a “machine-readable medium” that was programmed with instructions executable by a data processor. On March 16, 2017, the U.S. Court of Appeals for the Federal Circuit affirmed the grant of a motion for summary judgment on grounds that the claims of the ’526 Patent were directed to subject matter ineligible for patenting under 35 U.S.C. § 101.[1]

Unlike many software claims that have recently been invalidated by the courts, the rationale for invalidating these claims was not that they were directed to an abstract idea. Rather, the Court concluded that the claims encompassed embodiments that were nothing more than intangible, transitory signals. In doing so, the Court followed its precedent from In re Nuitjen, 500 F.3d 1346 (Fed. Cir. 2007), in which it held that claims requiring that a signal be encoded were not directed to patent-eligible subject matter because they were not limited to any specified physical medium. Mentor Graphics’s claims were unlike those at issue in Nuitjen because they specified the media on which the software instructions were stored. In fact, the Court conceded that at least some media that would fall within the scope of the asserted claims was physical and tangible.

The Court relied heavily on the definition for “machine-readable medium” the patentee had provided in the patent’s specification. Specifically, the term at issue was described as “any data storage device that can store data which can … thereafter be read by a computer system.” As examples, the specification explained that the following fell within the definition of a machine-readable medium: read-only memory, random-access memory, CD-ROMs, magnetic tape, optical data storage devices, and carrier waves. The identified carrier waves, like the signal claimed in Nuitjen, were intangible and transitory, rendering them ineligible for patenting. The Court dismissed the argument that the claims should remain patent-eligible because at least some of the subject matter within their scope was tangible and nontransitory. In so doing, it adopted the U.S. Patent Office’s interpretation that a claim covering both statutory and nonstatutory embodiments is ineligible for patenting.[2]

Interestingly, the patent disclosure and claims at issue in this case were drafted before the ruling in Nuitjen was issued. For that reason, this decision serves as a reminder to carefully select the language employed in a patent’s specification and claims. Even those customs considered to be best practices at one time may ultimately prove inadequate when held up to the requirements of the statute.

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[1] Mentor Graphics v. EVE-USA, No. 2015-1470, 2017 U.S. App. LEXIS 4595 (Fed. Cir. Mar. 16, 2017)

[2] Manual of Patent Examining Procedure § 2106