Data Engine Technologies LLC v. Google Inc.
211 F. Supp. 3d 669
D. Del.2016Background
- Plaintiff Data Engine Technologies LLC sued Google for infringement of six patents; Google moved for judgment on the pleadings under Fed. R. Civ. P. 12(c) seeking invalidation of asserted claims of four "Spreadsheet Patents" (U.S. Pat. Nos. 5,590,259; 5,784,545; 6,282,551; 5,303,146) as patent-ineligible under 35 U.S.C. § 101.
- The challenged claims generally claim GUI features for electronic spreadsheets: tabbed ("notebook tab") page navigation, grouping/propagation across pages, storage of multiple pages in a single file, and automated tracking/storing of changed cells/versions.
- The court treated certain claims as representative: claim 12 of the '259 patent for the '259, '545, and '551 patents (the "Tab Patents"), and claims 1 and 26 for the '146 patent (version-tracking claims).
- The court applied the two-step Alice/Mayo framework: (1) determine whether the claims are directed to an abstract idea; (2) if so, assess whether the claims include an "inventive concept" that makes them significantly more than the abstract idea.
- After briefing, claim construction, and oral argument, the court granted Google's motion and denied DET leave to replead, concluding the asserted claims are directed to abstract ideas and lack an inventive concept.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Are claim 12 ('259) and selected claims of the '545 and '551 representative? | Representative claim selection is improper or incomplete | Claim 12 is representative of asserted claims across the Tab Patents | Court: Claim 12 is representative of the Tab Patents' asserted claims |
| Are the Tab Patents § 101 eligible (Alice step 1)? | Claims improve spreadsheet UX and are computer-implemented innovations | Claims are directed to the abstract idea of using notebook-style tabs to label/organize spreadsheets; other elements are conventional | Court: Directed to an abstract idea (tabbed organization) |
| Do the Tab Patents contain an inventive concept (Alice step 2) / preemption concern? | The claims add storage-in-single-file and grouping features tied to implementation | Additional limitations are generic computer implementations; claims would preempt the abstract idea | Court: No inventive concept; claims fail step 2 and disproportionately preempt the idea |
| Are the '146 patent claims (version-tracking) § 101 eligible? | Claims recite concrete, automated version-tracking in spreadsheets | Claims are directed to the abstract idea of collecting data, recognizing changes, and storing information; implementation is generic | Court: Directed to an abstract idea and lack an inventive concept; claims fail § 101 |
Key Cases Cited
- Diamond v. Chakrabarty, 447 U.S. 303 (recognition of the statutory categories of patent-eligible subject matter)
- Mayo Collaborative Servs. v. Prometheus Labs., 566 U.S. 66 (two-step framework for laws of nature/abstract ideas)
- Alice Corp. v. CLS Bank Int'l, 134 S. Ct. 2347 (applying Mayo framework to abstract ideas and requiring an inventive concept)
- Bilski v. Kappos, 561 U.S. 593 (machine-or-transformation is a useful clue but not sole test)
- Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (software claims can be non-abstract when directed to improvements in computer functionality)
- Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (distinguishing claims focused on computer improvements from those using computers as tools)
- Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass'n, 776 F.3d 1343 (data collection, recognition, and storage claims are well-known and often abstract)
- Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (inventive concept may exist in an ordered combination of conventional elements)
- McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (avoid oversimplifying claims; non-abstract when directed to specific technological improvements)