Thursday, August 26, 2021

Data Engine v. Google. Google wins on preamble issue. Nose of wax.

The outcome:

There is no dispute on appeal that Google does not infringe under the district court’s construction of “three-dimensional 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 preamble is limiting and adopt its construction, and therefore affirm its summary judgment of noninfringement. Whether a preamble is limiting is an issue of claim construction. Arctic Cat Inc. v. GEP Power Prods., Inc., 919 F.3d 1320, 1327 (Fed. Cir. 2019). Claim construction is a 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 addressing DET’s argument that the preamble term “three-dimensional spreadsheet” is not limiting and thus does not have patentable weight. We disagree.

The "nose of wax" imagery appears

DET’s assertion that the preamble term “three-dimensional spreadsheet” is not limiting effectively seeks to obtain a different claim construction for purposes of infringement than we applied, at DET’s insistence, in holding the asserted claims of the Tab Patents eligible under § 101. We have repeatedly rejected efforts to twist claims, “like ‘a nose of wax,’” in “one way to avoid [invalidity] and another to find infringement.”, Inc. v., 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 eligibility, we conclude that the preamble term “three-dimensional spreadsheet” is limiting.

The CAFC did not recite White v. Dunbar in this list.

The image appeared in the US Supreme Court Decision White v. Dunbar, 119 U.S. 47 (1886) “Some persons seem to suppose that a claim in a patent is like a nose of wax, which may be turned and twisted in any direction, by merely referring to the specification, so as to make it include something more than, or something different from, what its words express. The context may undoubtedly be resorted to, and often is resorted to, for the purpose of better understanding the meaning of the claim, but not for the purpose of changing it and making it different from what it is. The claim is a statutory requirement, prescribed for the very purpose of making the patentee define precisely what his invention is, and it is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms.”


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