PATENT CASE OF THE WEEK
Data Engine Technologies, LLC v. Google LLC, Appeal No. 2017-1135 (Fed. Cir. Oct. 9, 2018)
In one of two Section 101 cases this week, the Federal Circuit affirmed-in-part, reversed-in-part, and remanded the district court’s judgment on the pleadings that all asserted claims of four patents were directed to patent-ineligible subject matter under 35 U.S.C. § 101.
The Court found that with the exception of one independent claim, a number of patents directed to a specific improved method for navigating through complex three-dimensional electronic spreadsheets (i.e. electronic spreadsheets with multiple “pages”) were eligible for patenting under § 101. The Court agreed, however, that all asserted claims of a separate patent reciting methods for tracking changes to data in spreadsheets—are directed to the abstract idea of collecting, recognizing, and storing changed information, and do not provide an inventive concept sufficient to render the claims patent eligible.
The Tab Patents, titled “System and Methods for Improved Spreadsheet Interface with User-Familiar Objects,” claim priority to April 1992 and generally claim methods of providing “notebook tabs” in electronic spreadsheets to circumvent the process of searching through multiple menus for and/or memorizing navigational commands, as may otherwise have been required in 1992:
The district court had concluded on a Rule12(c) motion that the Tab Patents were “directed to an abstract idea that humans have commonly performed entirely in their minds, with the aid of columnar pads and writing instruments,” and that the claims failed to recite an inventive concept. The Federal Circuit disagreed, finding that the claims were not directed to an abstract idea, but instead to a specific solution to then-existing technological problems in computers and prior art electronic spreadsheets.
The Court observed that although such spreadsheet interfaces have since become ubiquitous, contemporaneous articles submitted during prosecution showed that the first commercial embodiment of the claimed invention, Quattro Pro, was highly acclaimed in the industry as having “revolutionized” three-dimensional electronic spreadsheets.
The Court found that rather than simply reciting “the idea of navigating through spreadsheet pages using buttons or a generic method of labeling and organizing spreadsheets,” the Tab Patents instead “require a specific interface and implementation.” The Court relied particularly on the “specific” and “particular” nature of the claims’ disclosures, comparing them favorably to specific interface claims found to be patent-eligible in Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018) and Trading Technologies International, Inc. v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir. 2017). The Court distinguished cases finding claims patent-ineligible when directed more broadly to providing a graphical user interface or index to collect, display, and manipulate information, which did not further recite specific structure or improvements sufficient to render the claims not abstract.
The Court also rejected Google’s argument that “humans have long used tabs to organize information,” noting that “merely trac[ing] the invention to some real-world analogy” is insufficient to establish patent-ineligibility under Section 101, and that the question of “whether anyone has ever used tabs to organize information . . . is reserved for §§ 102 and 103.”
However, the Court found that independent claim 1 of the ’551 patent (one of the Tab Patents) was directed to patent-ineligible subject matter. This claim did not specifically recite the “notebook tab” graphical interface elements, instead claiming a method for organizing the spreadsheet comprising associating a two-dimensional cell matrix with a page identifier, and using that page identifier in a formula on a first spreadsheet page to reference a second spreadsheet page. The Court found that without the specific recitation of the tab element, the claim is not limited to the specific technical solution that rendered the representative claim patent eligible, but was instead directed to the abstract idea of identifying and storing electronic spreadsheet pages. Proceeding to step two of the Alice inquiry—determining whether additional elements transformed the nature of the claims into a patent-eligible application—the Court noted that the “mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention,” and found that because the claim limitations “merely recite the method of implementing the abstract idea itself,” they failed under Alice step two.
With respect to the final patent, the Court agreed with the district court that asserted claims were directed to the abstract idea of collecting spreadsheet data, recognizing changes to the spreadsheet data, and storing information about the changes. The Court specifically found that the “concept of manually tracking modifications across multiple sheets is an abstract idea,” and that “[t]he mere automation of this process does not negate its abstraction.” The Court compared the claims to those held ineligible in Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 733 F.3d 1343 (Fed. Cir. 2014), directed broadly to methods of recognizing information in scanned images and storing that information in memory, and rejected appellant’s attempt to distinguish Content Abstraction on grounds that it involved a business method patent.
Opinion can be found here.
ALSO THIS WEEK
Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., Appeal No. 2017-1575 (Fed. Cir. Oct. 12, 2018)
In an appeal from a district court decision, the Federal Circuit affirmed a finding that patents relating to the pharmaceutical COPAXONE® 40mg/mL were invalid as obvious. The opinion addressed the extent to which claim terms are non-limiting and have no patentable weight where they are “statements of intended effect” as opposed to terms that do not “change the claimed method or require any additional required structure or condition.” The Court also provided a lengthy discussion on when it is proper to use “obvious to try” in an obviousness analysis, ultimately finding that it was obvious to try the 40mg/mL dosing regimen claimed in the patents.
Opinion can be found here.
Yeda Research and Development Co. v. Mylan Pharmaceuticals Inc., Appeal Nos. 2017-1594, -1595, -1596 (Fed. Cir. Oct. 12, 2018)
In a companion case to the Teva case discussed above, the Federal Circuit affirmed PTAB findings in inter partes review that the COPAXONE® 40mg/mL patents were invalid as obvious. At issue was whether a particular reference raised for the first time in a reply brief violated the patent owner’s due process rights. The Federal Circuit held that it did not, because the Patent Owner had the opportunity to develop discovery based on it and to seek to respond to it and chose not to. The Court also affirmed that a particular study was admissible even though it postdated the priority date for the patents. The paper, which detailed a two-year study, was relevant to motivations to try certain dosing regimens during the relevant time period.
Opinion can be found here.
Roche Molecular Systems, Inc. v. Cepheid, Appeal No. 2017-1690 (Fed. Cir. Oct. 9, 2018)
In an appeal from the district court’s summary judgment of invalidity, the Federal Circuit affirmed. The appellate court reviewed patent claims directed to methods for detecting the pathogenic bacterium Mycobacterium tuberculosis (“MTB”), finding that the claims were directed to patent-ineligible subject matter and therefore invalid under 35 U.S.C. § 101.
The Court found that both the composition-of-matter claims for the primers and the process claims for methods for detecting MTB were directed to natural phenomena, analogizing the claims to those found patent ineligible in In re BRCA1- & BRCA2-Based Hereditary Cancer Test Patent Litig., 774 F.3d 755, 760 (Fed. Cir. 2014).
In concurrence, Judge O’Malley cautioned that the Court’s holding in BRCA1 was unduly broad and should be revisited en banc.
Opinion can be found here.
