Mixed 101 result in Data Engine Technologies v. Google

From the opinion:



Data Engine Technologies LLC (“DET”) appeals the
district court’s entry of judgment on the pleadings holding
that the asserted claims of DET’s U.S. Patent
Nos. 5,590,259; 5,784,545; 6,282,551; and 5,303,146 are
ineligible under 35 U.S.C. § 101. The district court held
that the asserted claims are directed to abstract ideas and
fail to provide an inventive concept. We conclude that,
with the exception of claim 1 of the ’551 patent, the asserted
claims of the ’259, ’545, and ’551 patents (“Tab
Patents”) are directed to patent-eligible subject matter.
These claims are not abstract, but rather are directed to a
specific improved method for navigating through complex
three-dimensional electronic spreadsheets. We agree,
however, that the asserted claims of the ’146 patent,
reciting methods for tracking changes to data in spreadsheets,
are directed to the abstract idea of collecting,
recognizing, and storing changed information. After a
searching review, we find nothing in these claims that
provides an inventive concept sufficient to render the
claims patent eligible. Accordingly, we affirm-in-part,
reverse-in-part, and remand.



QuatroPro is mentioned:


Although these spreadsheet interfaces have become
ubiquitous, Quattro Pro, the first commercial embodiment
of the claimed invention, was highly acclaimed as having
revolutionized three-dimensional electronic spreadsheets.
During prosecution, DET submitted contemporaneous
articles showing the state of the art at the time of the
invention and evidencing the significance of the claimed
methods to spreadsheet technology. For example, PC
World, a leading computer magazine, published a frontpage
article, “Quattro Pro for Windows: The Ultimate 3-D
Spreadsheet.” J.A. 981. The article reflected the industry’s
view that “keeping large, complex worksheet projects
organized, manageable, and reliable ha[d] long been a
major concern for serious spreadsheet users” and that
existing spreadsheets had “data and results hidden all
over the place.” J.A. 982. The article touts the claimed
notebook-tabbed spreadsheet interface as a solution to
that problem, explaining that it “makes developing nifty
applications far easier for the average spreadsheet user,
and [that] intelligent command organization makes
navigation efficient.” Id. PC World published another
cover story naming Quattro Pro “The Best of 1992,” again
lauding it as “the first spreadsheet to make threedimensional
modeling an accessible, useful analytic tool.”
J.A. 1007. The article stated that “[o]ne of the keys to the
product’s success is a notebook metaphor, in which each
worksheet page can be assigned a descriptive name and
users can navigate through the set by clicking on page
tabs.” Id.



Of the '146 patent:


Google filed a motion for judgment on the pleadings
under Federal Rule of Civil Procedure 12(c), arguing that
the asserted claims of the Tab Patents and the ’146 patent
are directed to patent-ineligible subject matter under
§ 101. The district court granted the motion with respect
to the Tab Patents, concluding that representative
claim 12 of the ’259 patent is “directed to the abstract idea
of using notebook-type tabs to label and organize spreadsheets.”
District Court Op., 211 F. Supp. 3d at 678. The
district court also agreed with Google that claim 12 “is
directed to an abstract idea that humans have commonly
performed entirely in their minds, with the aid of columnar
pads and writing instruments.” Id. at 679. The
district court held that the remaining limitations of
claim 12 fail to recite an inventive concept. Id.



Of the '259 patent:


When considered as a whole, and in light of the specification,
representative claim 12 of the ’259 patent is not
directed to an abstract idea. Rather, the claim is directed
to a specific method for navigating through threedimensional
electronic spreadsheets. The method provides
a specific solution to then-existing technological
problems in computers and prior art electronic spreadsheets.
The specification teaches that prior art computer
spreadsheets were not user friendly. They required users
to “master many complex and arbitrary operations.”
’259 patent col. 2 ll. 28–29. Users had to search through
complex menu systems to find appropriate commands to
execute simple computer tasks, which required users to
memorize frequently needed commands. Id. at col. 2
ll. 29–45. This was burdensome and hindered a user’s
ability to find or access the many commands and features
available in prior art computer spreadsheets, undercutting
the effectiveness of the computer as a means to
review and edit a spreadsheet. Id. at col. 2 ll. 45–56. This
was particularly true for three-dimensional spreadsheets,
which allowed users to build spreadsheet workspaces
consisting of multiple two-dimensional spreadsheets,
further increasing the complexity of using and navigating
between multiple spreadsheets. Id. at col. 2 l. 66–col. 3
l. 24



Note footnote 2:



The district court declined to consider the articles
included in the prosecution history, relying only on the
pleadings and the patents attached to DET’s complaint.
District Court Op., 211 F. Supp. 3d at 681 n.4. On a
motion for judgment on the pleadings, however, the court
may consider “matters of public record.” Cf. Bruni v. City
of Pittsburgh, 824 F.3d 353, 360 (3d Cir. 2016) (quoting
Pension Benefit Guar. Corp. v. White Consol. Indus., Inc.,
998 F.2d 1192, 1196 (3d Cir. 1993)). Prosecution histories
constitute public records. See Hockerson-Halberstadt, Inc.
v. Avia Group Int’l, Inc., 222 F.3d 951, 957 (Fed. Cir.
2000) (“The prosecution history constitutes a public
record . . . .”); see 37 C.F.R. § 1.11(a) (“The specification,
drawings, and all papers to the file of: [a] published
application; a patent; or a statutory invention registration
are open to inspection by the public . . . .”). We consider
this evidence relevant in our de novo review because it is
part of the Tab Patents’ prosecution histories and was
relied on in DET’s opposition to Google’s Rule 12(c) motion.




Note



Google avers that humans have long used tabs to organize
information. It cites tabbed notebooks, binder
dividers, file folders, and sticky Post-it notes as wellknown
examples of organizing information using tabs.
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. Id. 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. See Oral
Arg. at 11:03–47. 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