“[W]here, as here, a patentee relies on language found in the preamble to successfully argue that its claims are directed to eligible subject matter, it cannot later assert that the preamble term has no patentable weight for purposes of showing infringement.” – CAFC
On August 26, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the decision of the United States District Court for the District of Delaware, holding Google LLC did not infringe patents held by Data Engine Technologies LLC (DET).
DET sued Google for infringing certain claims of U.S. Patent Nos. 5,590,259; 5,784,545; and 6,282,551 (the Tab Patents). The Tab Patents are directed to systems and methods for displaying and navigating three-dimensional electronic spreadsheets by use of user customizable “notebook tabs” on a spreadsheet interface. The prior art discussed in this trio of patents explained that “three-dimensionality, as presently implemented, is an advanced feature beyond the grasp of many spreadsheet users.” ‘259 patent col. 3 ll. 9-11. Accordingly, the Tab Patents explain, prior art spreadsheets require the user to manipulate each individual spreadsheet within a three-dimensional spreadsheet as an individual window in a graphical window environment. By contrast, the Tab Patents recite notebook tabs that allow the user to simply “flip through” several pages of the notebook to rapidly locate information.
In 2016, Google filed a motion for judgment on the pleadings under Federal Rule of Civil Procedure (FRCP) 12(c), arguing that the asserted claims in the Tab Patents are patent ineligible under 35 U.S.C. §101. The district court, applying the two-step test articulated in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), concluded that claim 12 of the ‘259 patent, which is representative of the Tab Patents claims at issue, is directed to the abstract idea of using notebook-type tabs to label and organize spreadsheets and does not recite an inventive concept. Accordingly, the district court held the asserted claims ineligible under 35 U.S.C. §101.
DET appealed, arguing that the “key innovation” of the Tab Patents was to “improve the user interface by reimaging the three-dimensional electronic spreadsheet using a notebook metaphor.” Specifically, DET asserted that claim 12 is directed to a patent-eligible concept that is unique to three-dimensional electronic spreadsheets. The CAFC agreed with DET.
Conducting the two step Alice test, the CAFC first considered whether the claims at issue were directed to a patent-eligible concept. Citing their prior decision, the CAFC determined that “claim 12 is directed to more than a generic or abstract idea as it claims a particular manner of navigating three-dimensional spreadsheets, implementing an improvement in electronic spreadsheet functionality.” Data Engine Techs. LLC v. Google LLC (Data Engine II), 906 F.3d 999, 1002 (Fed. Cir. 2018). Accordingly, the CAFC reversed the district court’s judgment that the Tab Patents were patent ineligible and remanded the case for further proceedings.
Proper Claim Construction
On remand, Google requested the district court reopen claim construction and construe the term “three-dimensional spreadsheet” in the preamble in light of the CAFC decision in Data Engine II. At issue was (1) whether the preamble is a limitation of the asserted claims needing construction and (2) if so, what would be the proper construction of the term.
The district court found Google’s argument that the preamble is limiting persuasive and determined that the term “three-dimensional spreadsheet” means a “spreadsheet that defines a mathematical relation among cells on different spreadsheet pages, such as cells arranged on a three-dimensional grid.” Thereafter, Google moved for summary judgment of noninfringement, asserting that Google Sheets, is not a “three-dimensional spreadsheet” as required by all of the asserted Tab Patent claims. The district court ruled in favor of Google, noting that Google Sheets does not allow a user to define the relative position of cells in all three dimensions, therefore, Google is incapable of infringement.
‘Three-Dimensional Spreadsheet’ is Limiting
It was undisputed on appeal that Google does not infringe the Tab Patents under the district court’s claim construction. Rather, at issue here is whether the preamble should be limiting, and if so, whether the construction is correct.
The CAFC began by addressing DET’s argument that the preamble term “three-dimensional spreadsheet” is not limiting and thus does not have patentable weight. On first appeal, DET argued that the Tab Patents were eligible under 35 U.S.C. §101 by placing importance on the claimed improvement of three-dimensional spreadsheets. On second appeal, DET’s assertion that the preamble is not limiting effectively seeks to obtain a different claim construction for purposes of infringement than applied in the patentability analysis, said the court. The CAFC rejected this new construction, stating “where, as here, a patentee relies on language found in the preamble to successfully argue that its claims are directed to eligible subject matter, it cannot later assert that the preamble term has no patentable weight for purposes of showing infringement.” Thus, in view of DET’s emphasis on the preamble term “three-dimensional spreadsheet” in support of patentability, the CAFC concluded that the term is in fact limiting.
Prosecution History Matters
Next, the CAFC addressed whether the district court’s construction of the preamble term “three-dimensional spreadsheet” was proper. Both parties agreed that a three-dimensional spreadsheet required cells “arranged in a 3-D grid.” However, the dispute was centered on whether it also required “a mathematical relation among cells on different spreadsheet pages.” After noting that the claims and the specification were insufficient to resolve this dispute, the CAFC turned to the prosecution history. During prosecution of the application that led to the ‘259 patent, the applicants provided an explicit definition of a “true” three-dimensional spreadsheet to distinguish their invention over the prior art. According to the applicants, a “3D spreadsheet defines a mathematical relation among cells on different pages so that operations such as grouping pages and establishing 3D ranges have meaning.” Citing Biogen, the CAFC noted that “[p]rosecution history disclaimer plays an important role in the patent system. It promotes the public notice function of the intrinsic evidence and protects the public’s reliance on definitive statements made during prosecution.” Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed. Cir. 2013). Therefore, the CAFC concluded DET could not escape the import of statements made to the U.S. Patent and Trademark Office and affirmed the district court’s summary judgment ruling of noninfringement.
Logan is a 2L at UNH Franklin Pierce School of Law, where he serves as an Associate Editor of IDEA: The Law Review of the Franklin Pierce Center for IP. He is also the Director of Events for the Patent Law Forum on Campus. Before law school, Logan attended Susquehanna University where he studied Neuroscience. He plans to utilize his scientific and legal training to pursue a career in patent law.