Data Engine Technologies LLC v. Google LLC ( 2021 )


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  • Case: 21-1050    Document: 41     Page: 1   Filed: 08/26/2021
    United States Court of Appeals
    for the Federal Circuit
    ______________________
    DATA ENGINE TECHNOLOGIES LLC,
    Plaintiff-Appellant
    v.
    GOOGLE LLC,
    Defendant-Appellee
    ______________________
    2021-1050
    ______________________
    Appeal from the United States District Court for the
    District of Delaware in No. 1:14-cv-01115-LPS, Judge
    Leonard P. Stark.
    ______________________
    Decided: August 26, 2021
    ______________________
    JUSTIN CHEN, Ahmad, Zavitsanos, Anaipakos, Alavi &
    Mensing P.C., Houston, TX, argued for plaintiff-appellant.
    Also represented by AMIR H. ALAVI, MASOOD ANJOM, SCOTT
    W. CLARK, KYUNG KIM.
    GINGER ANDERS, Munger, Tolles & Olson LLP, Wash-
    ington, DC, argued for defendant-appellee.
    ______________________
    Before REYNA, HUGHES, and STOLL, Circuit Judges.
    STOLL, Circuit Judge.
    Case: 21-1050     Document: 41      Page: 2    Filed: 08/26/2021
    2                      DATA ENGINE TECHS. LLC   v. GOOGLE LLC
    This is the second appeal in this case. Data Engine
    Technologies LLC (DET) appeals the United States Dis-
    trict Court for the District of Delaware’s summary judg-
    ment of noninfringement. The district court’s summary
    judgment was premised on its construction of the term
    “three-dimensional spreadsheet” recited in the preamble of
    the asserted claims. For the reasons below, we hold that
    the preamble is limiting and adopt the district court’s con-
    struction of that term. Because DET does not argue that
    the accused product infringes under the district court’s con-
    struction, we affirm.
    BACKGROUND
    I
    DET filed suit against Google LLC for infringing cer-
    tain claims of U.S. Patent Nos. 5,590,259; 5,784,545; and
    6,282,551 (the “Tab Patents”). The Tab Patents are di-
    rected to systems and methods for displaying and navi-
    gating three-dimensional electronic spreadsheets by
    implementing user-customizable “notebook tabs” on the
    spreadsheet interface. In discussing prior art spread-
    sheets, the Tab Patents explain that “three-dimensionality,
    as presently implemented, is an advanced feature beyond
    the grasp of many spreadsheet users.” ’259 patent col. 3
    ll. 9–11. According to the Tab Patents, prior art spread-
    sheets “require[] the user to manipulate each additional
    spread of a three-dimensional spreadsheet as a separate
    window in a graphical windowing environment.” Id.
    at col. 3 ll. 14–17. By contrast, the claimed notebook tabs
    “allow[] the user to simply and conveniently ‘flip through’
    several pages of the notebook to rapidly locate information
    of interest.” Id. at col. 8 ll. 51–57. Figure 4G illustrates an
    embodiment of the invention, with the user-customizable
    notebook tabs located along the bottom edge of the page:
    Case: 21-1050    Document: 41      Page: 3   Filed: 08/26/2021
    DATA ENGINE TECHS. LLC   v. GOOGLE LLC                    3
    Id. Fig. 4G. According to the Tab Patents, the notebook
    tabs provide users with a “highly intuitive interface—one
    in which advanced features (e.g., three-dimensionality) are
    easily learned.” Id. at col. 6 ll. 59–63. “Thus, the spread-
    sheet notebook of the present invention provides a 3-D in-
    terface     which     readily   accommodates      real-world
    information in a format the user understands . . . .” Id.
    at col. 10 ll. 35–38.
    Claim 12 is representative of the claims on appeal and
    recites:
    12. In an electronic spreadsheet system for storing
    and manipulating information, a computer-imple-
    mented method of representing a three-dimen-
    sional spreadsheet on a screen display, the method
    comprising:
    displaying on said screen display a first spread-
    sheet page from a plurality of spreadsheet pages,
    each of said spreadsheet pages comprising an array
    of information cells arranged in row and column
    Case: 21-1050    Document: 41      Page: 4    Filed: 08/26/2021
    4                     DATA ENGINE TECHS. LLC   v. GOOGLE LLC
    format, at least some of said information cells stor-
    ing user-supplied information and formulas opera-
    tive 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, dis-
    playing 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 sec-
    ond 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, dis-
    playing said second spreadsheet page on said
    screen display in a manner so as to obscure said
    first spreadsheet page from display while continu-
    ing 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 in-
    cluding a cell reference to a particular cell on an-
    other of said spreadsheet pages having a particular
    spreadsheet page identifier comprising at least one
    user-supplied identifying character, said cell refer-
    ence comprising said at least one user-supplied
    identifying character for said particular spread-
    sheet page identifier together with said column
    Case: 21-1050     Document: 41      Page: 5   Filed: 08/26/2021
    DATA ENGINE TECHS. LLC   v. GOOGLE LLC                       5
    identifier and said row identifier for said particular
    cell.
    Id. at col. 26 l. 44–col. 27 l. 17 (emphasis added to disputed
    limitation).
    II
    In 2016, Google filed a motion for judgment on the
    pleadings under Federal Rule of Civil Procedure 12(c), ar-
    guing that the asserted claims are ineligible for patenting
    under 
    35 U.S.C. § 101
    . Applying the two-step test set forth
    in Alice Corp. v. CLS Bank International, 
    573 U.S. 208
    (2014), the district court concluded that representative
    claim 12 of the ’259 patent is “directed to the abstract idea
    of using notebook-type tabs to label and organize spread-
    sheets” and does not recite an inventive concept. Data En-
    gine Techs. LLC v. Google LLC (Data Engine I), 
    211 F. Supp. 3d 669
    , 678–79 (D. Del. 2016). The district court
    therefore held the asserted claims ineligible under § 101.
    Id.
    DET appealed, arguing that the “key innovation” of the
    Tab Patents “was to improve the user interface by reimag-
    ining the three-dimensional electronic spreadsheet using a
    notebook metaphor.” Appellant’s Br., Data Engine Techs.
    LLC v. Google Inc., No. 2017-1135, 
    2017 WL 1423236
    , at *8
    (Fed. Cir. Apr. 10, 2017). Specifically, DET argued that
    claim 12 is directed to a patent-eligible concept that solves
    “a problem that is unique to not only computer spreadsheet
    applications . . . , but specifically three-dimensional elec-
    tronic spreadsheets.” 
    Id. at *20
     (emphasis added); 
    id.
     (ar-
    guing that claim 12 “recites a particular structure for an
    improved graphical user interface for a three-dimensional
    electronic spreadsheet”). Thus, according to DET, “the in-
    vention made a distinct improvement to the user interface
    of a pre-existing software product, an electronic three di-
    mensional spreadsheet. . . . [T]he invention applies only to
    a three-dimensional spreadsheet on a computer screen dis-
    play.” 
    Id. at *21
    .
    Case: 21-1050     Document: 41      Page: 6   Filed: 08/26/2021
    6                      DATA ENGINE TECHS. LLC   v. GOOGLE LLC
    We agreed with DET. Data Engine Techs. LLC
    v. Google LLC (Data Engine II), 
    906 F.3d 999
    , 1002
    (Fed. Cir. 2018). 1 At step one of Alice, we considered
    whether the claims at issue are directed to a patent-ineli-
    gible concept and determined that “claim 12 is directed to
    more than a generic or abstract idea as it claims a particu-
    lar manner of navigating three-dimensional spreadsheets,
    implementing an improvement in electronic spreadsheet
    functionality.” Data Engine II, 906 F.3d at 1011. We ex-
    plained that the claimed invention solves a “known techno-
    logical problem in computers in a particular way—by
    providing a highly intuitive, user-friendly interface with fa-
    miliar notebook tabs for navigating the three-dimensional
    worksheet environment.” Id. at 1008. Thus, “consider[ing]
    the claim as a whole,” we concluded that the claimed “note-
    book tabs are specific structures within the three-dimen-
    sional spreadsheet environment that allow a user to avoid
    the burdensome task of navigating through spreadsheets
    in separate windows using arbitrary commands.” Id. at
    1011. We therefore reversed the district court’s judgment
    that the asserted claims are ineligible and remanded for
    further proceedings. Id.
    III
    On remand, Google requested the district court reopen
    claim construction 2 and construe the preamble term
    “three-dimensional spreadsheet” in view of our eligibility
    determination in Data Engine II. The parties disputed
    1    We affirmed the district court’s determination that
    claim 1 of the ’551 patent is ineligible under § 101. Data
    Engine II, 906 F.3d at 1012–13.
    2    In 2015, prior to the district court’s entry of judg-
    ment on the pleadings, the parties had requested the court
    construe the preamble term “three-dimensional spread-
    sheet,” later agreeing that the term did not need construc-
    tion.
    Case: 21-1050     Document: 41     Page: 7    Filed: 08/26/2021
    DATA ENGINE TECHS. LLC   v. GOOGLE LLC                      7
    (1) whether the preamble is a limitation of the asserted
    claims needing construction and (2) if so, what would be
    the proper construction of this term. The district court
    agreed with Google that the preamble is limiting and de-
    termined that the term “three-dimensional spreadsheet”
    means a “spreadsheet that defines a mathematical relation
    among cells on different spreadsheet pages, such that cells
    are arranged in a 3-D grid.” Data Engine Techs. LLC
    v. Google LLC (Data Engine III), C.A. No. 14-1115-LPS,
    
    2019 WL 6701290
    , at *3 (D. Del. Dec. 9, 2019).
    Thereafter, Google moved for summary judgment of
    noninfringement, arguing that the accused product, Google
    Sheets, is not a “three-dimensional spreadsheet” as re-
    quired by all of the asserted claims. The district court
    granted the motion, finding it “undisputed that Google
    Sheets does not allow a user to define the relative position
    of cells in all three dimensions and is, therefore, incapable
    of infringing” the asserted claims of the Tab Patents. Data
    Engine Techs. LLC v. Google LLC (Data Engine IV), C.A.
    No. 14-1115-LPS, 
    2020 WL 5411188
    , at *4 (D. Del. Sept. 9,
    2020).
    DET appeals. We have jurisdiction under 
    28 U.S.C. § 1295
    (a)(1).
    DISCUSSION
    There is no dispute on appeal that Google does not in-
    fringe under the district court’s construction of “three-di-
    mensional spreadsheet.” Therefore, we need only decide
    whether the preamble is limiting and, if so, whether the
    district court’s construction of that term is correct. For the
    reasons below, we agree with the district court that the pre-
    amble is limiting and adopt its construction, and therefore
    affirm its summary judgment of noninfringement.
    Whether a preamble is limiting is an issue of claim con-
    struction. Arctic Cat Inc. v. GEP Power Prods., Inc., 
    919 F.3d 1320
    , 1327 (Fed. Cir. 2019). Claim construction is a
    Case: 21-1050    Document: 41      Page: 8    Filed: 08/26/2021
    8                     DATA ENGINE TECHS. LLC   v. GOOGLE LLC
    question of law we review de novo to the extent that “the
    issue is decided only on the intrinsic evidence.” 
    Id.
    at 1327–28 (first citing Teva Pharms. USA, Inc. v. Sandoz,
    Inc., 
    574 U.S. 318
    , 331 (2015); and then citing Hamilton
    Beach Brands, Inc. v. f’real Foods, LLC, 
    908 F.3d 1328
    ,
    1339 (Fed. Cir. 2018)).
    I
    We begin our claim construction analysis by address-
    ing DET’s argument that the preamble term “three-dimen-
    sional spreadsheet” is not limiting and thus does not have
    patentable weight. We disagree.
    In its first appeal to this court, DET urged us to hold
    that the asserted claims of the Tab Patents are eligible sub-
    ject matter under § 101 by placing particular importance
    on the claimed improvement being unique to three-dimen-
    sional spreadsheets. As part of the eligibility analysis, we
    are required at step one of Alice to “consider the claims ‘in
    their entirety to ascertain whether their character as a
    whole is directed to excluded subject matter.’” CardioNet,
    LLC v. InfoBionic, Inc., 
    955 F.3d 1358
    , 1367–68 (Fed. Cir.
    2020) (quoting McRO, Inc. v. Bandai Namco Games Am.
    Inc., 
    837 F.3d 1299
    , 1312 (Fed. Cir. 2016)). “We also con-
    sider the patent’s written description, as it informs our un-
    derstanding of the claims.” CardioNet, 955 F.3d at 1368.
    Accordingly, in the first appeal, we considered the claims
    as a whole in light of the written description and agreed
    with DET that the asserted claims are directed to improve-
    ments in three-dimensional spreadsheets. That determi-
    nation ascribes patentable weight to the preamble term
    “three-dimensional spreadsheet.”
    DET’s assertion that the preamble term “three-dimen-
    sional spreadsheet” is not limiting effectively seeks to ob-
    tain a different claim construction for purposes of
    infringement than we applied, at DET’s insistence, in hold-
    ing the asserted claims of the Tab Patents eligible under
    § 101. We have repeatedly rejected efforts to twist claims,
    Case: 21-1050     Document: 41      Page: 9    Filed: 08/26/2021
    DATA ENGINE TECHS. LLC   v. GOOGLE LLC                       9
    “like ‘a nose of wax,’” in “one way to avoid [invalidity] and
    another to find infringement.”           Amazon.com, Inc.
    v. Barnesandnoble.com, Inc., 
    239 F.3d 1343
    , 1351
    (Fed. Cir. 2001) (citation omitted); Amgen Inc. v. Hoechst
    Marion Roussel, Inc., 
    314 F.3d 1313
    , 1330 (Fed. Cir. 2003)
    (“It is axiomatic that claims are construed the same way
    for both invalidity and infringement.”). Analogously,
    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. Indeed, we have held that where
    the preamble is relied on to distinguish prior art during
    prosecution, it cannot later be argued that the preamble
    has no weight. In re Cruciferous Sprout Litig., 
    301 F.3d 1343
    , 1347–48 (Fed. Cir. 2002) (holding that preamble was
    limiting in light of arguments made during prosecution
    “show[ing] a clear reliance by the patentee on the preamble
    to persuade the Patent Office that the claimed invention is
    not anticipated by the prior art”). Thus, in view of DET’s
    emphasis on this preamble term in support of patent eligi-
    bility, we conclude that the preamble term “three-dimen-
    sional spreadsheet” is limiting.
    II
    We turn next to the district court’s construction of
    “three-dimensional spreadsheet.” Both parties agree that
    a three-dimensional spreadsheet requires cells “arranged
    in a 3-D grid,” Appellant’s Br. 22; Appellee’s Br. 45, but dis-
    pute whether it also requires “a mathematical relation
    among cells on different spreadsheet pages,” as required by
    the district court’s construction, see Data Engine III,
    
    2019 WL 6701290
    , at *3. We conclude that it does.
    The words of a claim are generally given their ordinary
    meaning, which is “the meaning that the term would have
    to a person of ordinary skill in the art in question at the
    time of the invention.” Phillips v. AWH Corp., 415 F.3d
    Case: 21-1050    Document: 41     Page: 10    Filed: 08/26/2021
    10                    DATA ENGINE TECHS. LLC   v. GOOGLE LLC
    1303, 1312–13 (Fed. Cir. 2005) (en banc). The claims, how-
    ever, “do not stand alone” and “must be read in view of the
    specification” and the prosecution history. 
    Id. at 1315
    (quoting Markman v. Westview Instruments, Inc., 
    52 F.3d 967
    , 978–79 (Fed. Cir. 1995) (en banc)), 1317 (citing Mark-
    man, 
    52 F.3d at 980
    ). “[T]he prosecution history can often
    inform the meaning of the claim language by demonstrat-
    ing how the inventor understood the invention and
    whether the inventor limited the invention in the course of
    prosecution, making the claim scope narrower than it
    would otherwise be.” Phillips, 415 F.3d at 1317. For ex-
    ample, “a patentee may define a claim term . . . in the pros-
    ecution history.” Honeywell Inc. v. Victor Co. of Japan,
    Ltd., 
    298 F.3d 1317
    , 1323 (Fed. Cir. 2002). Additionally,
    “[a] patentee may, through a clear and unmistakable disa-
    vowal in the prosecution history, surrender certain claim
    scope to which he would otherwise have an exclusive right
    by virtue of the claim language.” Vita-Mix Corp. v. Basic
    Holding, Inc., 
    581 F.3d 1317
    , 1324 (Fed. Cir. 2009).
    Here, the claims themselves do not answer the ques-
    tion of whether a three-dimensional spreadsheet requires
    a mathematical relation among cells on different spread-
    sheets. Nor does the specification provide any guidance on
    this front. Based on the prosecution history, however, we
    agree with the district court that the preamble term “three-
    dimensional spreadsheet” requires a mathematical rela-
    tion.
    During prosecution of the application that led to the
    ’259 patent, the applicants provided an explicit definition
    of a “true” three-dimensional spreadsheet and distin-
    guished prior art under this definition. Specifically, the
    Examiner rejected the pending claims over a prior art
    spreadsheet known as Lotus 1-2-3 that allowed a user to
    link “different user-named spreadsheet files” by referring
    to cells in one spreadsheet file in cells of another.
    J.A. 2286–88. The Examiner “point[ed] to the linked
    spreadsheet files as suggesting user-nameable page
    Case: 21-1050    Document: 41      Page: 11    Filed: 08/26/2021
    DATA ENGINE TECHS. LLC   v. GOOGLE LLC                    11
    identifiers in a 3D spreadsheet.” J.A. 2287. The applicants
    distinguished Lotus 1-2-3 from the claimed invention, ar-
    guing that it “falls far short of a true 3D spreadsheet.”
    J.A. 2287. According to the applicants, a “3D spreadsheet
    defines a mathematical relation among cells on the differ-
    ent pages so that operations such as grouping pages and
    establishing 3D ranges have meaning.” J.A. 2287. There-
    fore, giving effect to this express definition in the prosecu-
    tion history, we determine that the claims require a three-
    dimensional spreadsheet that “defines a mathematical re-
    lation among cells on the different pages.”
    DET reads the prosecution history differently. Accord-
    ing to DET, the passage defining a three-dimensional
    spreadsheet does not rise to the level of “clear and unmis-
    takable” disclaimer when read in context. Appellant’s
    Br. 25. Specifically, DET contends that because it admit-
    ted later on in the same applicant remarks that Lotus 1-2-3
    is a three-dimensional spreadsheet, it could not have been
    distinguishing Lotus 1-2-3 on that basis. Appellant’s Br.
    22 (quoting J.A. 2288 (applicant remarks stating “Lotus’[s]
    techniques for displaying and navigating between pages
    within a single 3D spreadsheet”)). Rather, DET argues it
    distinguished Lotus 1-2-3 solely because “Lotus’[s] disclo-
    sure relative to linking different user-named spreadsheet
    files” is not the same as the claimed “user-named pages in
    a 3D spreadsheet.” Appellant’s Br. 19–20 (some emphasis
    omitted) (quoting J.A. 2288). According to DET, therefore,
    the prosecution history statements defining a “true” three-
    dimensional spreadsheet are irrelevant. We disagree.
    “Prosecution history disclaimer plays an important role
    in the patent system. It ‘promotes the public notice func-
    tion of the intrinsic evidence and protects the public’s reli-
    ance on definitive statements made during prosecution.’”
    Biogen Idec, Inc. v. GlaxoSmithKline LLC, 
    713 F.3d 1090
    ,
    1095 (Fed. Cir. 2013) (quoting Omega Eng’g, Inc. v. Raytek
    Corp., 
    334 F.3d 1314
    , 1324 (Fed. Cir. 2003)). For this rea-
    son, we have held patentees to distinguishing statements
    Case: 21-1050    Document: 41     Page: 12    Filed: 08/26/2021
    12                    DATA ENGINE TECHS. LLC   v. GOOGLE LLC
    made during prosecution even if they said more than
    needed to overcome a prior art rejection. See, e.g., Saffran
    v. Johnson & Johnson, 
    712 F.3d 549
    , 559 (Fed. Cir. 2013)
    (“[A]n applicant’s argument that a prior art reference is
    distinguishable on a particular ground can serve as a dis-
    claimer of claim scope even if the applicant distinguishes
    the reference on other grounds as well.” (quoting Andersen
    Corp. v. Fiber Composites, LLC, 
    474 F.3d 1361
    , 1374 (Fed.
    Cir. 2007))). And we do so here. True, the applicants
    acknowledged that Lotus 1-2-3 allows users to navigate
    within a single three-dimensional spreadsheet file and ar-
    gued that Lotus 1-2-3’s user-named spreadsheet files differ
    from the claimed user-named pages in a three-dimensional
    spreadsheet. Even if this alone would have been sufficient
    to overcome the Examiner’s rejection, the applicants went
    further, providing an express definition of a three-dimen-
    sional spreadsheet and arguing that Lotus 1-2-3 is not a
    “true” three-dimensional spreadsheet under that defini-
    tion. DET cannot escape the import of its statements to the
    Patent Office by suggesting they were not needed to over-
    come the Examiner’s rejection. Consistent with the public
    notice function of the prosecution history, the public is en-
    titled to rely on these statements as defining the scope of
    the claims.
    CONCLUSION
    We have considered DET’s remaining arguments and
    find them unpersuasive. For the foregoing reasons, we
    adopt the district court’s claim construction and therefore
    affirm its summary judgment of noninfringement.
    AFFIRMED