By Michael Borella --
Data Engine Technologies (DET) filed an infringement suit against Google in the District of Delaware contending infringement of U.S. Patent Nos. 5,590,259, 5,784,545, 6,282,551, and 5,303,146. Google responded with a Rule 12(c) motion arguing that the patents are directed to patent-ineligible subject matter under 35 U.S.C. § 101. The District Court agreed and invalidated the patents. DET appealed.
In Alice Corp. v. CLS Bank Int'l, the Supreme Court set forth a two-part test to determine whether claims are directed to patent-eligible subject matter under § 101. One must first decide whether the claim at hand is directed to a judicially-excluded law of nature, a natural phenomenon, or an abstract idea. If so, then one must further decide whether any element or combination of elements in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exclusion. But generic computer implementation of an otherwise abstract process does not qualify as "significantly more," nor will elements that are well-understood, routine, and conventional lift the claim over the § 101 hurdle.
For purposes of the Alice analysis, the Federal Circuit divided the patents into two groups: the '259, '545, and '551 patents in one and the '146 patent in the other.
The Tab Patents
The patents of the first group are directed to tabbed interfaces in spreadsheets. With priority dates going back to 1992, these patents allege improvements over spreadsheets (at the time) that did not use tabbed interfaces. In the words of the Court:
In contrast to conventional electronic spreadsheets, the method claimed in the Tab Patents includes user-familiar objects, i.e., paradigms of real-world objects which the user already knows how to use such as notebook tabs. In this manner, complexities of the system are hidden under ordinary, everyday object metaphors, providing a highly intuitive interface—one in which advanced features (e.g., three-dimensionality) are easily learned.
In essence, the invention involves tabs familiar to anyone who has used a modern spreadsheet such as Microsoft Excel.
According to the patents, this interface has several advantages. Notably, "instead of finding information by scrolling different parts of a large spreadsheet, or by invoking multiple windows of a conventional three-dimensional spreadsheet, the present invention allows the user to simply and conveniently 'flip through' several pages of the notebook to rapidly locate information of interest."
In what may have been a determinative move, DET submitted several articles from popular magazines (e.g., PC World and InfoWorld) at the time of the invention lauding the advantages of new spreadsheet software packages that used tabs. The articles noted that managing the complexity of large spreadsheets had long been a problem for users, and existing, non-tabbed spreadsheets would have data and results distributed in an unorganized fashion. The introduction of tabbing elegantly solved this problem.
Claim 12 of the '259 patent, which was one of the representative claims, recites:
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.
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.
Starting with claim 12, the Court quickly concluded that the invention therein was "directed to a specific method for navigating through three-dimensional electronic spreadsheets" rather than an abstract idea. Relying on the teachings of the specification that prior art spreadsheet technology was not user-friendly, the Court found that the claimed method "provides a specific solution to then-existing technological problems" that were unique to computers. Particularly, the tabbed interface offers "a highly intuitive, user-friendly interface with familiar notebook tabs for navigating the three-dimensional worksheet environment." The Court also seemed persuaded by the contemporaneous article lauding the benefits of the tabbed interface.
The Court made analogies to claims found patent-eligible in Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc. Notably, "claim 12 recites a 'specific' and 'particular' manner of navigating a three-dimensional spreadsheet that improves the efficient functioning of computers." Another analogy was made to the patent-eligible claims of Trading Technologies International, Inc. v. CQG, Inc. where "a specific, structured graphical user interface paired with a prescribed functionality directly related to the graphical user interface's structure that is addressed to and resolves a specifically identified problem in the prior state of the art."
Google argued that claim 12 was directed to no more than organizing and presenting information. But the cases that Google relied upon (Affinity Labs of Texas, LLC v. DirecTV, LLC, Intellectual Ventures I LLC v. Capital One Financial Corp., and Intellectual Ventures I LLC v. Erie Indemnity Co.) all involved claims that were functional in nature, described an outcome rather than specific steps that can be taken to achieve that outcome, and/or lacked a non-abstract improvement to computer technology. The Court also distinguished claim 12 over those of Electric Power Group, LLC v. Alstom S.A., noting that this claim was directed to a specific improvement to how computers operate rather than just collecting, organizing, and displaying data.
Google also argued that humans have long-used tabs to organize information in notebooks, binders, and so on. The Court responded:
We agree that tabs existed outside the context of electronic spreadsheets prior to the claimed invention. It is not enough, however, to merely trace the invention to some real-world analogy. 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. Google fails to appreciate the functional improvement achieved by the specifically recited notebook tabs in the claimed methods. The notebook appearance of the tabs was specifically chosen by the inventors because it is easily identified by users. The tabs are not merely labeled buttons or other generic icons. DET has disclaimed as much. 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.
Consequently, the Court found claim 12 not directed to an abstract idea, and that the second step of the Alice test was not necessary. Thus, all claims of the '259 and '545 patents were deemed patent-eligible.
In contrast, claim 1 of the '551 patent was struck down under § 101. When compared to claim 12, this claim "generically recites associating each of the cell matrices with a user-settable page identifier and does not recite the specific implementation of a notebook tab interface." Therefore, claim 1 is "not limited to the specific technical solution and improvement in electronic spreadsheet functionality that rendered representative claim 12 of the '259 patent eligible . . . [i]nstead, claim 1 . . . covers any means for identifying electronic spreadsheet pages."
Declaring claim 1 abstract due to this rationale, the Court moved on the second step of Alice -- the search for an inventive concept in the additional elements of the claim that renders the claim significantly more than abstract. Ultimately, the Court found that the elements of "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 . . . merely recite the method of implementing the abstract idea itself."
Accordingly, the Court held that claim 1 did not meet the requirements of § 101, and was therefore patent-ineligible. But the remaining asserted claims of the '551 patent were upheld based on the reasoning applied to claim 12 of the '259 patent.
The '146 Patent
The '146 patent is "directed to methods that allow electronic spreadsheet users to track their changes." In the prior art, spreadsheets "provided little or no tools for creating and managing such a multitude of [what-if] scenarios." This resulted in users having to "resort to manually creating separate copies of the underlying model, with the user responsible for tracking any modifications made in the various copies."
The solution provided by the '146 patent is "an electronic spreadsheet system having a preferred interface and methods for creating and tracking various versions or 'scenarios' of a data model." The invention "includes tools for specifying a 'capture area,' that is, a specific set of information cells to be tracked and an Identify Scenario tool for automatically determining changes between a captured parent or baseline model and a new scenario."
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.
The Court rapidly concluded that the claim was "directed to the abstract idea of collecting spreadsheet data, recognizing changes to spreadsheet data, and storing information about the changes" because "[t]he concept of manually tracking modifications across multiple sheets is an abstract idea." Further, the Court found that the claimed invention does not improve spreadsheet technology in a specific, non-abstract fashion. Moving on to step two of Alice, the Court stated that there was nothing more in the claims aside from "simply stating the abstract idea while adding the words 'apply it.'"
Thus, all asserted claims of the '146 patent were invalid under § 101.
Analysis
If the goal is to obtain further insight into the where the line is drawn between inventions that are eligible and ineligible under § 101, this case is not the best place to start. But let's give it a try.
The valid claims explicitly recited navigation of a tabbed spreadsheet interface, were relatively narrow and specific in doing so, and were supported by statements in their specification regarding the technological problems solved thereby. This latter point was bolstered by extrinsic evidence from contemporaneous publications. On the other hand, the invalid claims were broader and not specific to navigating a tabbed interface. Despite evidence that all claims under review were directed to an improvement in spreadsheet technology, the claims ultimately found invalid were viewed by the Court as conceptual rather than concrete, most likely due to their relative lack of detail.
Also, this case further raises issues of how to differentiate between the analyses of §§ 101, 102, and 103 -- particularly, the role of prior art in the § 101 inquiry. The Court wrote that "[t]he eligibility question is not whether anyone has ever used tabs to organize information . . . [t]hat question is reserved for §§ 102 and 103," and "[t]he question of abstraction is whether the claim is directed to the abstract idea itself." But the Court's conclusion that some of the claims were valid seemed to be heavily based on how these claims recited an improvement over the prior art of the time. The Federal Circuit remains schizophrenic regarding this matter.
Data Engine Technologies LLC v. Google LLC (Fed. Cir 2018)
Panel: Circuit Judges Reyna, Bryson, and Stoll
Opinion by Circuit Judge Stoll
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