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Another Graphical User Interface Patent Survives 101 Patent-Eligibility Challenge in Data Engine Technologies

In its recent decision Data Engine Technologies LLC v. Google LLC, No. 17-1135 (Fed. Cir. Oct. 9, 2018), the Court of Appeals for the Federal Circuit affirmed-in-part and reversed-in-part the district court’s ruling on Google’s Fed. R. Civ. P. 12(c) Motion for Judgment on the Pleadings that all asserted claims of U.S. Patent Nos. 5,590,259 (“the ’259 patent”); 5,784,545 (“the ’545 patent”); and 6,282,551 (“the ’551 patent”) (the ’259, ’545, and ’551 patents collectively referred to as the “Tab patents”); and 5,303,146 (“the ’146 patent”) are directed to patent-ineligible subject matter under 35 U.S.C. § 101.

A. The Tab Patents

The Court characterized the Tab patents as claiming “a method of implementing a notebook-tabbed interface, which allows users to easily navigate through three-dimensional electronic spreadsheets.”  Op. at 3.  The claimed method “includes user-familiar objects, i.e., paradigms of real-world objects which the user already knows how to use,” such as notebook tabs.  Id. at 4 (quoting ’259 patent at 6:52-58).  In addition, the Court highlighted contemporaneous articles submitted by Data Engine Technologies (“DET”) during prosecution, which touted that Quattro Pro, the first commercial embodiment of the claimed invention, “revolutionized three-dimensional electronic spreadsheets.”  See Id. at 5-6.

The district court had considered claim 12 of the ’259 patent as representative of all asserted claims of the Tab patents.

(i) Claim 12 of the ’259 Patent

At step 1 of Alice, the Court determined that claim 12 of the ’259 patent is not directed to an abstract idea, but is rather “directed to a specific method for navigating through three-dimensional electronic spreadsheets.”  Op. at 13.  The Court explained that the Tab patents solved a technological problem of designing user-friendly electronic spreadsheets in a particular way “by providing a highly intuitive, user-friendly interface with familiar notebook tabs for navigating the three-dimensional worksheet environment.”  Op. at 13.  This 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.”  Op. at 13-14.

Turning to the claim language, the Court explained that the claimed “method does not recite the idea of navigating through spreadsheet pages using buttons or a generic method of labeling and organizing spreadsheets,” but “[r]ather, the claims require a specific interface and implementation for navigating complex three-dimensional spreadsheets using techniques unique to computers.”  Op. at 15.  The Court then undertook an analysis comparing and contrasting Claim 12 of the ’259 patent to other Federal Circuit decisions addressing patent eligibility, summarized in the chart below:

The Court concluded its analysis of claim 12 of the ’259 patent by addressing Google’s argument that “humans have long used tabs to organize information.”  Op. at 20.  The Court explained:

“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.  . . . 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.”

Op. at 20.

(ii) Claim 1 of the ’551 Patent

The Court separately addressed claim 1 of the ’551 patent, holding that unlike representative claim 12 of the ’259 patent, claim 1 of the ’551 patent is directed to patent-ineligible subject matter.  In its briefing, DET had separately (albeit, briefly) argued that claims 1, 3, and 10 of the ’551 patent “add features that are individually inventive concepts,” and that claim 1 “provides the advantage of allowing the user to recall the spreadsheet using a single command, though the computer may store the pages separately.”  Brief for Plaintiff-Appellant Data Engine Technologies LLC at 48.  In response, Google argued that “[t]he need to compile multiple documents so that they can be easily accessed at once is not a technological problem, and the claim’s solution to that age-old problem is not inventive,” and “[t]he claim simply gathers all of the spreadsheet pages in one place, just like the physical notebook on which the claims are expressly based.”  Brief of Appellee Google at 32.

Under step 1 of Alice, the Court concluded that the claim is “directed to the abstract idea of identifying and storing electronic spreadsheet pages.”  Op. at 21.  The Court noted that “DET concedes that, unlike claim 12 of the ‘259 patent, claim 1 of the ‘551 patent is ‘directed at something a bit more general,” and does not recite the “specific implementation of a notebook tab interface.”  Op. at 21.  Under step 2 of Alice, after a “searching review,” the Court found that “[c]laim 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.”  Op. at 22.

B. The ‘146 Patent

The Court explained that the ’146 patent is “directed to methods that allow electronic spreadsheet users to track their changes.”  Previously, users had to “resort to manually creating separate copies of the underlying model, with the user responsible for tracking any modifications made in the various copies,” and the ’146 patent solves this problem by providing an electronic spreadsheet system “having a preferred interface and methods for creating and tracking various versions or ‘scenarios’ of a data model.”  Op. at 9 (citing ’146 patent at col. 2, ll. 53-56 and 61-63).  The district court considered independent claims 1 and 26 of the ‘146 patent representative.

Under step 1 of Alice, the Court found that, at “their core, these claims recite tracking changes in a spreadsheet by: (1) creating a base version of a spreadsheet, (2) creating a new version of the spreadsheet, and (3) determining which cells of data have changed by comparing the new and base versions.”  Op. at 23.  “The concept of manually tracking modifications across multiple sheets is an abstract idea,” and the “mere automation of this process does not negate its abstraction.”  Op. at 23.  The Court found that these claims are “akin to those we held ineligible in Content Extraction,” holding that “the asserted claims of the ‘146 patent are directed to the abstract idea of collecting, recognizing, and storing the recognized data in memory.”  Op. at 23-24.

The Court also concluded that the asserted claims of the ‘146 patent do not recite an inventive concept under Alice step 2, noting that the claims “do not recite anything ‘more than simply stat[ing] the [abstract idea] while adding the words ‘apply it.’”  Op. at 24 (quoting Alice, 134 S. Ct. at 2357).

C. Takeaways

First, as highlighted by the Court’s analysis of the Tab patents, the entire prosecution history is fair game for a Fed. R. Civ. P. Rule 12(c) motion for judgment on the pleadings.  Here, the Court explained that “[o]n a motion for judgment on the pleadings, however, the court may consider ‘matters of public record,’” noting that the district court failed to take into account the Quattro Pro articles praising the invention that were cited during prosecution.  Op. at 14, n.2.

Second, the Court’s separate analysis of claim 1 of the ’551 patent underscores the importance of addressing all asserted claims in a patent-eligibility analysis, and to consider any meaningful distinctions between the claims when it comes to the representative claim analysis.  Here, the Court found that claim 1 of the ’551 patent was in fact directed to something “more general” than representative claim 12 of the ’259 patent.

Third, this decision provides yet another useful data point when considering the patent-eligibility of claims directed to graphical user interfaces.  Notably, the Court relied heavily on evidence from the Tab patents’ specifications, as well as the prosecution history, to conclude that claim 12 of the ’259 patent provided a technological improvement that “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.”  Op. at 13-14.  Such evidence was sufficient—at least for a Rule 12(c) motion—to reverse the district court’s holding with respect to claim 12 of the ’259 patent.