Can One Predict Patent-Eligibility at the Federal Circuit?

Some claims directed to a computer spreadsheet are patent-eligible, while others are not, said the Federal Circuit in Data Engine Techs. LLC v. Google LLC (Fed. Cir. 2018) (precedential).  The District of Delaware had granted a Rule 12 judgment on the pleadings of 35 U.S.C. § 101 invalidity of claims of U.S. Patent Nos. 5,590,2595,784,5456,282,551; and 5,303,146; the Federal Circuit thus reversed-in-part, affirmed-in-part, and remanded.

The three surviving patents (with the exception of one independent claim which had a patentable dependent claim), the ’259, ’545, and ’551) were dubbed the “Tab Patents.”  The Tab Patents purportedly solved the problem that “complex commands” were required by “prior art three-dimensional or multipage electronic spreadsheets.”  The patent-eligible solution was “a notebook-tabbed interface” to provide users with easy navigation through three-dimensional spreadsheet.  Why?  Because the notebook tab “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.”

Interestingly, the court supported its conclusion by pointing to what most of us would think of as secondary considerations of non-obviousness (all of which, the court noted, were in the prosecution histories, and therefore included in the pleadings considered at the Rule 12 stage):

The invention was applauded by the industry for improving computers’ functionality as a tool able to instantly access all parts of complex three-dimensional electronic spreadsheets. Numerous contemporaneous articles attributed the improved three-dimensional spreadsheets’ success to its notebook tab feature.

The Tab Patent claims, in short, claimed details akin to the menu claims held patent-eligible in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc. (Fed. Cir. 2018), i.e., not just manipulations of data as in Electric Power Group, LLC v. Alstom S.A. (Fed. Cir. 2016) and Affinity Labs of Tex., LLC v. DIRECTV, LLC (Fed. Cir. 2016), but “a specific structure (i.e., notebook tabs) within a particular spreadsheet display that performs a specific function (i.e., navigating within a three-dimensional spreadsheet).”

Claim 1 of the ’551 patent did not recite the notebook tab.  It was patent-ineligible because it was “directed to the abstract idea of identifying and storing electronic spreadsheet pages.”

Finally, all claims of the ’146 patent, “directed to a method of tracking changes in three-dimensional spreadsheets,” were patent-ineligible.  These claims were like the patent-ineligible claims in Content Extraction & Transmission Llc v. Wells Fargo Bank, N.A. (Fed. Cir. 2014), because here there was “no material difference in the level of abstraction” of the claims at issue there, which “were directed to methods of extracting data from hard-copy documents using an automated scanner, recognizing information from the extracted data, and storing that data in memory.”

Lessons for Practice

I have to agree with PatentlyO, which viewed as “fairly questionable” the reasoning under which the notebook tab  was the linchpin for patent-eligibility.  And if you contrast the surviving Tab Patent claims with the claims that were held ineligible, this case certainly seems to equate claim breadth with patent-ineligibility – perhaps confirming that, as many of us suspect, an “abstract idea” is simply a really broad idea.  In any event, decisions like this highlight the not-infrequent anomaly that claims can survive novelty and obviousness challenges, but fail on patent-eligibility.  And as we saw here, the present court’s analysis, stripped down to what it really was, had a lot to do with obviousness. 

So the takeaways here? As has been clear since Enfish,if not before, the patent drafter should focus on describing and claiming generic systems and methods.  What was at issue here – a computer spreadsheet – is, after all business software, but the patentable use case was not limited to any particular business application.  Instead, the claims could be cast as a software improvement that applied to any particular business application or use.  As a corollary, this case shows that, if you are drafting claims, provide detail where you can, at least in dependent claims.  And if you are litigating, obviousness appears to be fair game – just don’t call it that.

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