In the first of two cases analyzing patent subject matter-eligibility under 35 U.S.C. §101 decided by the Court of Appeals for the Federal Circuit, Data Engine Techs. LLC v. Google LLC,[1] issued on October 9, 2018, a circuit panel held certain patent claims directed to electronic worksheet tabs as patent-eligible. Several other claims were found patent-ineligible. Data Engine’s holding is in stark contrast with second §101 case decided on the same day, Roche Molecular Sys., Inc. v. Cepheid, where medical diagnostic method and primer claims were entirely found patent-ineligible. The facts are as follows.
Data Engine Technologies (DET) owns U.S. Patent Nos. 5,590,259 (‘259), 5,784,545 (‘545), 6,282,551 (‘551), and 5,303,146 (‘146). All are entitled “System and Methods for Improved Spreadsheet Interface with User-Familiar Objects,” and directed to methods and systems for creating complex three-dimensional electronic worksheets in user-friendly interface objects (aka, tabs) to enable better processing and entering of complex data sets. The original assignee on these patents was Borland Software Corporation, which is now a part of Micro Focus, and this family of patents became the basis for the spreadsheet software Quattro Pro (which is now rolled into the Corel WordPerfect suite). The patents were later acquired by DET, an alleged non-practicing entity (NPE), which has asserted other patents in this family of patents against IBM and Apple, among others. Google did not escape DET’s infringement assertions, and filed suit against the company in 2016, asserting four of the above-mentioned patents.
Generally, the patents teach electronic spreadsheet which offer improvements over the art in creation, editing and use of these spreadsheets, in a more organized and user-friendly format. Claim 12 of the ‘259 patent was deemed representative:
12. In an electronic spreadsheet system for storing and manipulating information, a computer-implemented method of representing a three-dimensional spreadsheet on a screen display, the method comprising:
displaying on said screen display a first spreadsheet page from a plurality of spreadsheet pages, each of said spreadsheet pages comprising an array of information cells arranged in row and column format, at least some of said information cells storing user-supplied information and formulas operative on said user-supplied information, each of said information cells being uniquely identified by a spreadsheet page identifier, a column identifier, and a row identifier;
while displaying said first spreadsheet page, displaying a row of spreadsheet page identifiers along one side of said first spreadsheet page, each said spreadsheet page identifier being displayed as an image of a notebook tab on said screen display and indicating a single respective spreadsheet page, wherein at least one spreadsheet page identifier of said displayed row of spreadsheet page identifiers comprises at least one user-settable identifying character;
receiving user input for requesting display of a second spreadsheet page in response to selection with an input device of a spreadsheet page identifier for said second spreadsheet page;
in response to said receiving user input step, displaying said second spreadsheet page on said screen display in a manner so as to obscure said first spreadsheet page from display while continuing to display at least a portion of said row of spreadsheet page identifiers; and
receiving user input for entering a formula in a cell on said second spreadsheet page, said formula including a cell reference to a particular cell on another of said spreadsheet pages having a particular spreadsheet page identifier comprising at least one user-supplied identifying character, said cell reference comprising said at least one user-supplied identifying character for said particular spreadsheet page identifier together with said column identifier and said row identifier for said particular cell.
(Emphasis added.)
Claim 1 of the ‘551 patent recites:
1. In an electronic spreadsheet for processing alphanumeric information, said electronic spreadsheet comprising a three-dimensional spreadsheet operative in a digital computer and including a plurality of cells for entering data and formulas, a method for organizing the three-dimensional spreadsheet comprising:
partitioning said plurality of cells into a plurality of two-dimensional cell matrices so that each of the two-dimensional cell matrices can be presented to a user as a spreadsheet page;
associating each of the cell matrices with a user-settable page identifier which serves as a unique identifier for said each cell matrix;
creating in a first cell of a first page at least one formula referencing a second cell of a second page said formula including the user-settable page identifier for the second page; and
storing said first and second pages of the plurality of cell matrices such that they appear to the user as being stored within a single file.
(Emphasis added.)
Claim 1 of the ‘146 patent recites:
1. In an electronic spreadsheet system for modeling user-specified information in a data model comprising a plurality of information cells, a method for automatically tracking different versions of the data model, the method comprising:
(a) specifying a base set of information cells for the system to track changes;
(b) creating a new version of the data model by modifying at least one information cell from the specified base set; and
(c) automatically determining cells of the data model which have changed by comparing cells in the new version against corresponding ones in the base set.
(Emphasis added.)
The district court found all asserted claims lacked patent-eligibility under §101, holding that Claim 12 of the ‘259 patent, representative of the so-called “Tab” patents which includes Claim 1 of the ‘551 patent, was directed to the abstract idea of tabs to label and organize spreadsheet data. Claim 1 of the ‘146 patent was directed to the abstract idea of collecting and storing spreadsheet data. DET appealed.
The Fed Circuit panel was composed of Judges Reyna, Bryson, and Stoll, with Judge Stoll writing for a unanimous court. She noted that Claim 12 of the ‘259 patent was directed to a specific method for navigation in three-dimensional electronic spreadsheets.
The Tab Patents solved [a] known technological problem in computers in a particular way – by providing a highly intuitive, user-friendly interface with familiar notebook tabs for navigating the three-dimensional worksheet environment. The improvement allowed computers for the first time, to provide rapid access to and processing of information in different spreadsheets, as well as easy navigation in three-dimensional spreadsheets.
She determined that because step 1 of the Alice test requires analyzing whether the claims are directed to patent-ineligible concepts, like laws of nature, natural phenomena, or abstract ideas,[2] the Tab Patents were not directed to patent-ineligible subject matter, the Tab Patents were, indeed, patent-eligible under §101. While Google contended a line of Fed Circuit cases as precedent, Judge Stoll differentiated these claims, noting that the ‘259 claims recite specific structure (i.e., notebook tabs) within a spreadsheet environment performing very specific functions (i.e., navigation within a three-dimensional spreadsheet).
Her analysis then turns directly to what many find the quagmire within the §101 analysis:
The eligibility question is not whether anyone has ever used tabs to organize information. That question is reserved for §§102 and 103. The question of abstraction is whether the claim is “directed to” the abstract idea itself. We must consider the claim as a whole to determine whether the claim is directed to an abstract idea or something more. The notebook appearance of the tabs were specifically chosen by the inventors because it is easily identified by users. the tabs are not merely labeled buttons or other generic icons. Rather, the notebook tabs are specific structures within the three-dimensional spreadsheet environment that allow a user to avoid the burdensome task of navigating through spreadsheets in separate windows using arbitrary commands.
Judge Stoll has essentially divorced her §101 analysis from other aspects of patentability, including §102 novelty and §103 nonobviousness analyses.
Moving on to the ‘551 patent, Judge Stoll saw eligibility differently than the ‘259 patent. The Alice step two requires analyzing the elements of the claim individually and in combination to determine whether the additional elements amount to something more than just the abstract idea itself.[3] She determined that Claim 1 of the ‘551 patent is directed to an abstract idea of identifying and storing electronic spreadsheet pages. The terms “partitioning,” “associating,” and “storing” were more generalized terminology than the specific structure of the tabs recited in the ‘259 patent.
Claim 1 merely recites partitioning cells to be presented as a spreadsheet, referencing in one cell of a page a formula referencing a second page, and saving the pages such that they appear as being stored as one file. These limitations merely recite in the method of implementing the abstract idea itself and thus fail under Alice step two.
She also found the ‘146 patent to be similar.
[T]he asserted claims of the ‘146 patent do not recite an inventive concept under Alice step two. The claims recite the generic steps of creating a base version of a spreadsheet, creating a new version of the spreadsheet, and determining changes made to the original version. These claims do not recite anything “more than simply stat[ing] the [abstract idea] while adding the words ‘apply it.’”
In sum, the panel affirmed-in-part the ‘551 and ‘146 patent-ineligibility, but reversed-in-part the ‘259 patent-ineligibility. Further, the panel remanded for further proceeding.
This case, as mentioned above, is one of two cases dealing with §101 that were decided on the same day with opposite holdings. Data Engine deals specifically with software patents, and the immediate takeaway is that claims which are specifically drawn to the elements of the invention will be deemed patent-eligible. However, in a the larger picture, it is difficult to square away with the Roche case, to be discussed in the next post, which did not find patent-eligibility in diagnostic claims.
[1] ___F.3d___ (Fed. Cir. 2018) (slip op.), aff’g-in-part, rev’g-in-part, and remanding, Data Engine Techs. LLC v. Google Inc., 211 F. Supp. 3d 669 (D. Del. 2016).
[2] See Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014).
[3] Id. at 2355.