Case 1:19-cv-11586-IT Document 130-1 Filed 01/15/21 Page 1 of 11
`Case 1:19-cv-11586—IT Document 130-1 Filed 01/15/21 Page 1 of 11
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`EXHIBIT A
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`EXHIBIT A
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`Case 1:19-cv-11586-IT Document 130-1 Filed 01/15/21 Page 2 of 11
`Simio, LLC v. FlexSim Software Products, Inc., --- F.3d ---- (2020)
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`2020 WL 7703014
`Only the Westlaw citation is currently available.
`United States Court of Appeals, Federal Circuit.
`
`SIMIO, LLC, Plaintiff-Appellant
`v.
`FLEXSIM SOFTWARE PRODUCTS, INC., Defendant-Appellee
`
`2020-1171
`|
`Decided: December 29, 2020
`
`Appeal from the United States District Court for the District of Utah in No. 2:18-cv-00853-DB, Senior Judge Dee V. Benson.
`
`Attorneys and Law Firms
`
`David G. Oberdick, Meyer, Unkovic & Scott, Pittsburgh, PA, argued for plaintiff-appellant. Also represented by Joseph Aaron
`Carroll; James C. Watson, H. Dickson Burton, TraskBritt, P.C., Salt Lake City, UT.
`
`Mark A. Miller, Dorsey & Whitney LLP, Salt Lake City, UT, argued for defendant-appellee. Also represented by Brett L. Foster,
`Elliot Hales.
`
`Before Prost, Chief Judge, Clevenger and Stoll, Circuit Judges.
`
`Opinion
`
`Prost, Chief Judge.
`
`*1 Simio, LLC (“Simio”) sued FlexSim Software Products, Inc. (“FlexSim”) in the United States District Court for the District
`of Utah for infringing U.S. Patent No. 8,156,468 (“the ’468 patent”). The district court held the asserted claims of the ’468
`patent ineligible for patenting under 35 U.S.C. § 101 and, as a result, dismissed the action because Simio's complaint failed to
`state a claim upon which relief could be granted. Simio then moved for leave to file an amended complaint, which the district
`court denied.
`
`Simio appeals the dismissal and the denial of its motion for leave to amend. We affirm.
`
`Background
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`I T
`
`he ’468 patent is titled “System and Method for Creating Intelligent Simulation Objects Using Graphical Process
`Descriptions.” Its background section describes different types of simulations, including those that are event-oriented, process-
`oriented, and object-oriented, the last of which is relevant here. ’468 patent col. 2 l. 10–col. 3 l. 26.
`
`Object-oriented simulations are, as the name suggests, based on “objects.” Objects can be things in the simulation, such as
`people, vehicles, or machines. Although the patent acknowledges that object-oriented simulations have existed since the 1960s,
`id. at col. 2 ll. 10–19, it states that earlier object-oriented simulation products were “programming-based tools” that were “largely
`shunned by practitioners as too complex,” id. at col. 3 ll. 13–14. The patent also describes a trend that emerged in the 1980s
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`Simio, LLC v. FlexSim Software Products, Inc., --- F.3d ---- (2020)
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`and 1990s: using graphics to simplify building simulations. See id. at col. 2 ll. 46–54 (“The introduction of Microsoft Windows
`made it possible to build improved graphical user interfaces and a number of new graphically based tools emerged ....”).
`
`The ’468 patent’s purported invention concerns making object-oriented simulation easier and more accessible by letting users
`build simulations with graphics instead of programming:
`
`Objects are built using the concepts of object-orientation. Unlike other object-oriented simulation systems, however, the
`process of building an object in the present invention is simple and completely graphical. There is no need to write
`programming code to create new objects.
`Id. at col. 8 ll. 22–26; see also id. at col. 4 ll. 39–42 (“Unlike existing object-oriented tools that require programming to
`implement new objects, Simio™ objects can be created with simple graphical process flows that require no programming.”), col.
`6 ll. 50–53 (“The present invention is designed to make it easy for beginning modelers to build their own intelligent objects ....
`Unlike existing object-based tools, no programming is required to add new objects.”).
`
`Claim 1 is the only independent claim.1 It recites:
`
`A computer-based system for developing simulation models on a physical computing device, the system comprising:
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`one or more graphical processes;
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`one or more base objects created from the one or more graphical processes,
`
`wherein a new object is created from a base object of the one or more base objects by a user by assigning the one or more
`graphical processes to the base object of the one or more base objects;
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`*2 wherein the new object is implemented in a 3-tier structure comprising:
`
`an object definition, wherein the object definition includes a behavior,
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`one or more object instances related to the object definition, and
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`one or more object realizations related to the one or more object instances;
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`wherein the behavior of the object definition is shared by the one or more object instances and the one or more object
`realizations; and
`
`an executable process to add a new behavior directly to an object instance of the one or more object instances without changing
`the object definition and the added new behavior is executed only for that one instance of the object.
`This last limitation—the “executable-process limitation” (also referred to as the “add-on limitation”)—concerns changing a
`particular object's behavior without changing the object's overall definition in the simulation. By way of an example given during
`prosecution, in a simulation containing an object definition for “Poodle” and poodles Sam and Fred, a user might independently
`change Sam's behavior (e.g., make him tend to chase cars) without similarly changing the behavior of Fred or any other poodle.
`
`The district court discussed only claim 1. Because Simio also discusses only claim 1 and does not separately argue any other claim's
`eligibility, we treat claim 1 as representative for purposes of our eligibility analysis. See Elec. Power Grp., LLC v. Alstom S.A., 830
`F.3d 1350, 1352 (Fed. Cir. 2016).
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`1
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`II
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`Simio, LLC v. FlexSim Software Products, Inc., --- F.3d ---- (2020)
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`Simio's complaint accused FlexSim of infringing claims 1–3, 6, 8, and 9 of the ’468 patent (the “asserted claims”). On December
`21, 2018, FlexSim moved to dismiss the complaint under Federal Rule of Civil Procedure 12(b)(6), arguing that it failed to state
`a claim upon which relief could be granted because the asserted claims are ineligible for patenting under 35 U.S.C. § 101.
`
`On January 18, 2019, before Simio filed its opposition to the motion to dismiss, the parties jointly submitted a report to the
`district court agreeing to a March 15, 2019 deadline to move to amend pleadings. The court adopted the parties’ proposed
`deadline and set March 15, 2019, as the “Last Day to File Motion to Amend Pleadings (absent good cause)” in its January 23,
`2019 scheduling order. J.A. 145.
`
`Simio filed its opposition to the motion to dismiss on February 8, 2019. The opposition included a footnote stating: “Simio also
`reserves the right to amend its [c]omplaint in order to more fully develop these issues.” J.A. 175 n.8 (citing Aatrix Software,
`Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018)). FlexSim replied, and the district court held a hearing on
`the motion on May 29, 2019.
`
`The district court applied the two-step framework set forth in Alice Corp. Pty. Ltd. v. CLS Bank International, 573 U.S. 208,
`134 S.Ct. 2347, 189 L.Ed.2d 296 (2014), and held the asserted claims ineligible. Simio, LLC v. FlexSim Software Prods., Inc.,
`No. 2:18-cv-00853, 2019 WL 2552243, at *3–4 (D. Utah June 20, 2019) (“Dismissal Op.”). In a thoughtful opinion, the court
`concluded that (1) the claims are directed to “the decades-old computer programming practice of substituting text[-]based coding
`with graphical processing,” which the court determined was an ineligible abstract idea and (2) considering the claim elements
`both individually and as an ordered combination, FlexSim “met its burden of showing no inventive concept or alteration of
`computer functionality sufficient to transform the system into a patent-eligible application.” Id. The district court accordingly
`granted the motion to dismiss.2
`
`2
`
`The district court also held the asserted claims ineligible for not falling into any of § 101’s four categories of eligible subject matter:
`“process,” “machine,” “manufacture,” or “composition of matter.” In particular, the court determined that the claims did not fall into
`the “machine” category (which was the only category Simio relied on). Dismissal Op., 2019 WL 2552243, at *2–3 (citing Digitech
`Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014)). We need not reach this issue, however, because
`even assuming the claims fall into the “machine” category, we conclude that they nonetheless claim nothing more than an ineligible
`abstract idea under Alice’s two-step framework. See Alice, 573 U.S. at 224, 134 S.Ct. 2347 (explaining that claims to, “in § 101 terms,
`a ‘machine,’ ” may nonetheless be ineligible for claiming one of these exceptions).
`*3 After the court's dismissal and entry of judgment, Simio moved for reconsideration under Rule 59(e) and leave to
`file a proposed amended complaint (“PAC”). The district court denied both. It concluded that Simio had failed to justify
`reconsideration, having presented no intervening change in law, previously unavailable evidence, or need to correct clear error
`or manifest injustice. Simio, LLC v. FlexSim Software Prods., Inc., No. 2:18-cv-00853, 2019 WL 5423609, at *3 (D. Utah Oct.
`23, 2019). The court also concluded that “amendment would be futile because the new factual allegations [in the PAC] are
`inadequate to remedy the ’468 patent on the merits.” Id. It did not reach FlexSim's argument that because Simio moved for
`leave to amend after the scheduling order's deadline and did not show good cause for missing that deadline, leave to amend
`should be denied.
`
`Simio timely appealed. We have jurisdiction under 28 U.S.C. § 1295(a)(1).
`
`Discussion
`
`We review a district court's dismissal for failure to state a claim under the regional circuit's law. BASCOM Glob. Internet
`Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1347 (Fed. Cir. 2016). The Tenth Circuit reviews such dismissals de novo,
`“accept[ing] all well-pled factual allegations as true and view[ing] these allegations in the light most favorable to the nonmoving
`party.” Evans v. Diamond, 957 F.3d 1098, 1100 (10th Cir. 2020) (quoting Peterson v. Grisham, 594 F.3d 723, 727 (10th Cir.
`2010)).
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`Simio, LLC v. FlexSim Software Products, Inc., --- F.3d ---- (2020)
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`We also review a district court's denial of motions for reconsideration and leave to amend a complaint under the regional circuit's
`law. Del. Valley Floral Grp., Inc. v. Shaw Rose Nets, LLC, 597 F.3d 1374, 1379 (Fed. Cir. 2010) (reconsideration); Chi. Bd.
`Options Exch., Inc. v. Int'l Sec. Exch., LLC, 677 F.3d 1361, 1374 (Fed. Cir. 2012) (leave to amend a complaint). The Tenth
`Circuit reviews such denials for abuse of discretion, but when leave to amend is denied for futility, review of the legal basis for
`an amendment's futility is de novo. Johnson v. Spencer, 950 F.3d 680, 707 n.10, 720–21 (10th Cir. 2020).
`
`Patent eligibility under § 101 is a question of law that may involve underlying questions of fact. Interval Licensing LLC v. AOL,
`Inc., 896 F.3d 1335, 1342 (Fed. Cir. 2018). We review the district court's ultimate conclusion on patent eligibility de novo. Id. A
`patent may be determined ineligible at the Rule 12(b)(6) stage “when there are no factual allegations that, taken as true, prevent
`resolving the eligibility question as a matter of law.” Aatrix, 882 F.3d at 1125.
`
`We first address the dismissal for patent ineligibility, then the denial of leave to amend the complaint.3
`
`3
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`Although Simio purports to separately appeal the district court's denial of reconsideration, see Appellant's Br. 3–4, 64, its opening
`brief makes no supporting argument distinct from its arguments concerning the original dismissal or denial of leave to amend the
`complaint. In the Tenth Circuit, grounds warranting Rule 59(e) reconsideration include (1) an intervening change in controlling law,
`(2) new evidence previously unavailable, and (3) the need to correct clear error or prevent manifest injustice. Servants of the Paraclete
`v. Does, 204 F.3d 1005, 1012 (10th Cir. 2000). Simio has shown none of these—much less explained how the district court abused
`its discretion by not finding them. Therefore, to the extent Simio separately appeals the district court's denial of reconsideration,
`we affirm.
`
`I S
`
`ection 101 of the Patent Act defines patent-eligible subject matter as “any new and useful process, machine, manufacture,
`or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. “This provision, however, contains
`longstanding judicial exceptions, which provide that laws of nature, natural phenomena, and abstract ideas are not eligible for
`patenting.” ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 765 (Fed. Cir. 2019) (citing Alice, 573 U.S. at 216, 134
`S.Ct. 2347).
`
`*4 At step one of Alice’s two-step framework, we “determine whether the claim[ ] at issue [is] directed to” an abstract idea.
`Alice, 573 U.S. at 218, 134 S.Ct. 2347. If so, we move to step two, where we “examine the elements of the claim to determine
`whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.”
`Id. at 221, 134 S.Ct. 2347 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72, 80, 132 S.Ct. 1289,
`182 L.Ed.2d 321 (2012)).
`
`A U
`
`nder step one's directed-to inquiry, we ask “what the patent asserts to be the focus of the claimed advance over the prior art,”
`Solutran, Inc. v. Elavon, Inc., 931 F.3d 1161, 1168 (Fed. Cir. 2019) (cleaned up), to determine whether the claim's “character
`as a whole” is directed to ineligible subject matter, Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257–58 (Fed.
`Cir. 2016).
`
`The ’468 patent showcases its key advance: using graphics instead of programming to create object-oriented simulations. ’468
`patent col. 8 ll. 22–26 (“Objects are built using the concepts of object-orientation. Unlike other object-oriented simulation
`systems, however, the process of building an object in the present invention is simple and completely graphical. There is no need
`to write programming code to create new objects.”); see id. at col. 4 ll. 39–42 (“Unlike existing object-oriented tools that require
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`Simio, LLC v. FlexSim Software Products, Inc., --- F.3d ---- (2020)
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`programming to implement new objects, Simio™ objects can be created with simple graphical process flows that require no
`programming.”), col. 4 ll. 47–50 (“By making object building a much simpler task that can be done by non-programmers, this
`invention can bring an improved object-oriented modeling approach to a much broader cross-section of users.”), col. 6 ll. 50–
`53 (“The present invention is designed to make it easy for beginning modelers to build their own intelligent objects .... Unlike
`existing object-based tools, no programming is required to add new objects.”), col. 8 ll. 60–62 (“In the present invention, a
`graphical modeling framework is used to support the construction of simulation models designed around basic object-oriented
`principles.”), col. 9 l. 67–col. 10 l. 3 (“In the present invention, this logic is defined graphically .... In other tools, this logic is
`written in programming languages such as C++ or Java.”).
`
`This purported advance is claim 1's focus as well—particularly when read in light of the above. See TecSec, Inc. v. Adobe Inc.,
`978 F.3d 1278, 1292 (Fed. Cir. 2020) (observing that the directed-to inquiry focuses on the claim language itself, read in light of
`the specification). Claim 1's preamble relates to “developing simulation models,” and the claim then describes creating objects
`with graphics—reciting “one or more graphical processes,” “one or more base objects created from the one or more graphical
`processes,” and “wherein a new object is created from a base object ... by assigning the one or more graphical processes to the
`base object.” Although a few limitations follow, aside from the executable-process limitation (which we discuss below), Simio
`does not rely on any of them for its eligibility arguments.
`
`As the ’468 patent acknowledges, using graphical processes to simplify simulation building has been done since the 1980s and
`1990s. ’468 patent col. 2 ll. 46–54; see id. at col. 1 ll. 25–32 (describing “the shift from programming to graphical modeling” as
`an important advance—albeit one “made 25 years ago”).4 Simply applying the already-widespread practice of using graphics
`instead of programming to the environment of object-oriented simulations is no more than an abstract idea. See FairWarning IP,
`LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094 (Fed. Cir. 2016) (citing Alice, 573 U.S. at 219–20, 134 S.Ct. 2347) (holding claims
`directed to an abstract idea because, among other things, they “merely implement[ed] an old practice in a new environment”).
`Indeed, here, the claim is “directed to the use of conventional or generic technology [i.e., graphical processing generally] in a ...
`well-known environment [i.e., object-oriented simulations], without any claim that the invention reflects an inventive solution
`to any problem presented by combining the two.” See In re TLI Commc'ns LLC Pat. Litig., 823 F.3d 607, 612 (Fed. Cir. 2016)
`(holding claims directed to an ineligible abstract idea, as opposed to an eligible improvement in computer functionality).
`
`4
`
`The application leading to the ’468 patent was filed in May 2009, and it claims priority from an application filed in September 2008.
`See ’468 patent, at [22], [63]; id. at col. 1 ll. 9–11.
`*5 And where, as here, “the abstract idea tracks the claim language and accurately captures what the patent asserts to be the
`focus of the claimed advance ..., characterizing the claim as being directed to an abstract idea is appropriate.” Solutran, 931
`F.3d at 1168 (cleaned up). Accordingly, we agree with the district court and FlexSim that (trivial differences in articulations
`aside) the claim is directed to the abstract idea of using graphics instead of programming to create object-oriented simulations.
`
`Simio maintains that claim 1 is not directed to an abstract idea because it “present[s] improvements to computer-implemented
`simulation, resulting in improvements in the computers’ capabilities.” Appellant's Br. 33. To be sure, “software can make
`patent-eligible improvements to computer technology, and related claims are eligible as long as they are directed to non-abstract
`improvements to the functionality of a computer ... itself.” Uniloc USA, Inc. v. LG Elecs. USA, Inc., 957 F.3d 1303, 1309 (Fed.
`Cir. 2020). But Simio has not shown how claim 1 is directed to improving a computer's functionality.
`
`For example, Simio argues that the claim “improves on the functionality of prior simulation systems through the use of graphical
`or process modeling flowcharts with no programming code required.” Appellant's Br. 33. But this argument does not explain
`how the computer's functionality is improved beyond the inherent improvement of the experience of a user who cannot (or
`maybe, would rather not) use programming. In this case, “improving a user's experience while using a computer application is
`not, without more, sufficient to render the claims directed to an improvement in computer functionality.” Customedia Techs.,
`LLC v. Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020) (citing Trading Techs. Int'l, Inc. v. IBG LLC, 921 F.3d 1084,
`1092–93 (Fed. Cir. 2019)).
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`Simio, LLC v. FlexSim Software Products, Inc., --- F.3d ---- (2020)
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`Simio also asserts that claim 1 improves a computer's functionality “by employing a new way of customized simulation modeling
`with improved processing speed.” Appellant's Br. 41. FlexSim responds, however, that this allegedly improved “processing
`speed” is not that of the computer; rather, it concerns only a user's ability to build (or “process”) simulation models faster by
`using graphics instead of programming. See Appellee's Br. 39. Simio does not contest this characterization in its reply brief. See
`Reply Br. 16–17. We reject Simio's argument, because “ ‘claiming the improved speed or efficiency inherent with applying the
`abstract idea on a computer’ [is] insufficient to render the claims patent eligible as an improvement to computer functionality.”
`Customedia, 951 F.3d at 1364 (quoting Intell. Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 1370 (Fed. Cir.
`2015)); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1288 (Fed. Cir. 2018) (“These benefits, however, are not
`improvements to database functionality. Instead, they are benefits that flow from performing an abstract idea in conjunction
`with a well-known database structure.”).
`
`Continuing with its “improves computer functionality” argument, Simio marshals an array of cases in which we have found
`eligibility at step one—including Enfish, McRO, and KPN—and argues that they are analogous. Each is readily distinguished.
`In Enfish, the claims were eligible at step one because they were directed to a self-referential table that improved a computer's
`functionality by improving the way it stored and retrieved data in memory. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
`1336–39 (Fed. Cir. 2016); see BASCOM, 827 F.3d at 1349 (“The Enfish claims, understood in light of their specific limitations,
`were unambiguously directed to an improvement in computer capabilities.”). In McRO, the claims were eligible at step one
`because they used a “combined order of specific rules” to achieve “an improved technological result.” McRO, Inc. v. Bandai
`Namco Games Am. Inc., 837 F.3d 1299, 1315–16 (Fed. Cir. 2016). And in KPN, the claims were step-one eligible given their
`“specific implementation of varying the way check data is generated,” which was a technological improvement—indeed, an
`undisputed one—over the prior art's ability to detect systematic errors. Koninklijke KPN N.V. v. Gemalto M2M GmbH, 942 F.3d
`1143, 1150–51 (Fed. Cir. 2019). In each of these cases, the nature of the claims read in light of their specifications confirmed
`that they were directed to—were focused on—an actual technological improvement. The same cannot be said here.
`
`*6 Simio finally emphasizes the executable-process limitation and argues that it reflects an improvement to computer
`functionality sufficient to survive step-one scrutiny:
`
`an executable process to add a new behavior directly to an object instance of the one or more object instances without changing
`the object definition and the added new behavior is executed only for that one instance of the object.
`’468 patent claim 1.
`
`We conclude that this limitation does not, by itself, change the claim's “character as a whole” from one directed to an abstract idea
`to one that's not. See Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1316 (Fed. Cir. 2019) (“While some of the limitations noted
`by [patentee] ... may evidence an inventive concept ..., none of them change the fact that the claims as a whole ... are directed to
`an abstract idea.”); BSG Tech, 899 F.3d at 1289 (“[M]erely reciting components more specific than a generic computer does not
`preclude a claim from being directed to an abstract idea.”); cf. BASCOM, 827 F.3d at 1348 (noting that, in some cases involving
`computer-related claims, “there may be close calls about how to characterize what the claims are directed to,” and that in such
`cases “an analysis of whether there are arguably concrete improvements in the recited computer technology could take place
`under step two” (quoting Enfish, 822 F.3d at 1339)).
`
`The specification supports our conclusion. In stark contrast to its heavy focus on the abstract idea of using graphics instead
`of programming to create object-oriented simulations, the specification dedicates relatively little attention to the functionality
`reflected in the executable-process limitation. Compare, e.g., ’468 patent col. 4 ll. 29–42 (noting that “the present invention
`makes model building dramatically easier,” as “Simio™ objects” can be created with graphics, requiring no programming),
`and id. at col. 4 ll. 47–50 (describing “this invention” as one that makes object-building simpler, in that it “can be done by
`non-programmers”), and id. at col. 6 ll. 50–53 (describing “[t]he present invention” as one requiring no programming to build
`objects), and id. at col. 8 ll. 23–26 (“Unlike other object-oriented simulation systems, however, the process of building an object
`in the present invention is simple and completely graphical. There is no need to write programming code to create new objects.”),
`and id. at col. 8 ll. 60–62 (“In the present invention, a graphical modeling framework is used to support the construction of
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`simulation models designed around basic object-oriented principles.”), with col. 15 l. 45–col. 16 l. 6 (describing the executable-
`process limitation). This disparity—in both quality and quantity—between how the specification treats the abstract idea and
`how it treats the executable-process limitation suggests that the former remains the claim's focus. See ChargePoint, 920 F.3d
`at 768 (finding that the patent's identified problem and the way it describes the invention “strongly suggests that the abstract
`idea” identified in the claim “may indeed be the focus of that claim”); TLI Commc'ns, 823 F.3d at 611 (observing that “the
`specification's emphasis that the present invention [relates to an abstract concept] underscores that [the claim] is directed to
`an abstract concept”).
`
`*7 Further supporting our conclusion is Simio's own characterization of the executable-process limitation. According to
`Simio, this limitation reflects that “a new behavior can be added to one instance of a simulated object without the need for
`programming.” Appellant's Br. 6 (emphasis added) (footnote omitted); see also Reply Br. 5 (describing this limitation as
`reflecting an “executable process that applies the graphical process to the object (i.e., by applying only to the object instance
`not to the object definition)” (emphasis added)). While somewhat more specific than the abstract idea of using graphics instead
`of programming to create object-oriented simulations, these characterizations’ close alignment with that idea supports our
`conclusion that the focus of the claimed advance remains the abstract idea. Accordingly, this limitation is better considered
`as a potentially inventive application of the abstract idea at step two, rather than as sufficient to shift the claim's focus away
`from the abstract idea at step one. See Cellspin, 927 F.3d at 1316 (deferring to step two consideration of limitations that did not
`“change the fact that the claims as a whole ... are directed to an abstract idea” (emphasis added)); BASCOM, 827 F.3d at 1348–
`49 (deferring to step two consideration of specific limitations where “the claims and their specific limitations [did] not readily
`lend themselves to a step-one finding that they are directed to a nonabstract idea”).
`
`B A
`
`t step two, we “consider the elements of [the] claim both individually and as an ordered combination to determine whether the
`additional elements transform the nature of the claim into a patent-eligible application.” Alice, 573 U.S. at 217, 134 S.Ct. 2347
`(cleaned up). This “transformation into a patent-eligible application requires more than simply stating the abstract idea while
`adding the words ‘apply it.’ ” Id. at 221, 134 S.Ct. 2347 (cleaned up). We are looking for an “inventive concept”—“an element
`or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more” than a patent
`on the abstract idea itself. Id. at 217–18, 134 S.Ct. 2347 (cleaned up). Whether the claim “supplies an inventive concept that
`renders [it] ‘significantly more’ than an abstract idea to which it is directed is a question of law.” BSG Tech, 899 F.3d at 1290.
`And, critically, “a claimed invention's use of the ineligible concept to which it is directed cannot supply the inventive concept
`that renders the invention ‘significantly more’ than that ineligible concept.” Id.
`
`Simio says the executable-process limitation provides the necessary inventive concept. Appellant's Br. 52 n.11. But its statements
`at oral argument undermine this assertion. When pressed as to whether the functionality reflected in the executable-process
`limitation was conventional or known in object-oriented programming, Simio confirmed that it was. Oral Arg. at 6:14–7:31.5
`Simio, however, distinguished the claimed invention by saying that it “us[es] a visual flowchart ... whereby [a] behavior can be
`modified, and whereby you do not, as a user, need to know and understand and implement software programming.” Id. at 7:32–
`56; see id. at 7:59–8:17 (“[T]he idea of using programming to alter a behavior was known; the idea of using a visual process ...
`to modify the behavior as part of that simulation system was not known.”).6 In other words, while Simio acknowledges that
`implementing the executable process's functionality through programming was conventional or known, it contends that doing
`so with graphics in a simulation provides the inventive concept necessary to confer eligibility. But what Simio relies on is just
`the abstract idea itself, which “cannot supply the inventive concept that renders the invention ‘significantly more’ than that
`[abstract idea]” at step two. BSG Tech, 899 F.3d at 1290; see ChargePoint, 920 F.3d at 774.
`
`5
`
`No. 20-1171, http://www.cafc.uscourts.gov/oral-argument-recordings (“Oral Arg.”).
`
` © 2020 Thomson Reuters. No claim to original U.S. Government Works.
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`7
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`

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`Case 1:19-cv-11586-IT Document 130-1 Filed 01/15/21 Page 9 of 11
`Simio, LLC v. FlexSim Software Products, Inc., --- F.3d ---- (2020)
`
`6
`
`These statements accord with Simio's characterizations of this limitation in its briefing. Appellant's Br. 6 (“[A] new behavior can be
`added to one instance of a simulated object without the need for programming.” (emphasis added) (footnote omitted)); Reply Br. 5
`(describing this limitation as reflecting an “executable process that applies the graphical process to the object (i.e., by applying only
`to the object instance not to the object definition)” (emphasis added)).
`*8 Simio stresses that the executable-process limitation is novel. But “[e]ven assuming that is true, it does not avoid the
`problem of abstractness.” Affinity Labs, 838 F.3d at 1263; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014)
`(“That some of [these] steps were not previously employed in this art is not enough—standing alone—to confer patent eligibility
`upon the claims ....”). Indeed, “a claim for a new abstract idea is still an abstract idea.” Synopsys, Inc. v. Mentor Graphics
`Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (explaining that the search for an inventive concept under § 101 is distinct from
`demonstrating novelty under § 102).
`
`And that's really what we have: a claim directed to the idea of using graphics instead of programming to create object-oriented
`simulations—maybe a new idea, but still an abstract one—and lacking any inventive concept, any meaningful application of
`this idea, sufficient to save the claim's eligibility. See BSG Tech, 899 F.3d at 1290–91 (“If a claim's only ‘inventive concept’ is
`the application of an abstract idea using conventional and well-understood techniques, the claim has not been transformed into
`a patent-eligible application of an abstract idea.”). We therefore affirm the district court's dismissal.
`
`II
`
`We now address whether the district court properly denied Simio leave to amend its complaint. We affirm the court's futility-
`