Still True: Name of the Game is the Claim

Data Engine Techs v. Google (Fed. Cir. 2021)

This is an old-school claim construction case.  The district court narrowly construed DET’s claim term “three-dimensional spreadsheet” and consequently ruled that Google does not infringe.  On appeal, the Federal Circuit has affirmed.

DET’s invention here is mainly about adding tabs to a spreadsheet to make it “three dimensional.”   In a prior decision, the Federal Circuit found the claims patent-eligible.  “[T]he claim is directed to a specific method for navigating through three-dimensional electronic spreadsheets. . . . The Tab Patents solved [a] known technological problem in computers in a particular way—by providing a highly intuitive, user-friendly interface with familiar notebook tabs for navigating the three-dimensional worksheet environment.”

Judge Stark had construed the claims prior to his eligibility ruling. On remand, however, Google asked for additional claim construction of the preamble term “three-dimensional spreadsheet” since that aspect of the invention had been critical to the Federal Circuit’s eligibility determination.

The district court did construe the term in a narrow fashion — requiring “a mathematical relation among cells on different spreadsheet pages.”  This construction essentially requires each tab to be a layer in a stack of sheets and that the order of the sheets have mathematical importance.   In the example above the “Salads” layer is one-page away from “Entrees”, and two pages from “Desserts.” A mathematical relationship is necessary to allow for 3-D features such as 3-D ranges. The specification explains that

Three-dimensional spreadsheets allow the user to create a worksheet having cells arranged in a 3-D grid. In this manner, the user can manipulate multi-dimensional ranges, i.e., Solid blocks of cells. This feature has distinct advantages. For example, the user can build a worksheet consisting of multiple two dimensional spreads, define 3-D ranges that span these spreads, and copy a range of rows and columns into each of many 2-D spreads at once. This feature eases difficult choirs, such as consolidation of multiple spreads.

‘259 Patent at Col. 2-3.   Further, in the prosecution history, the patentee distinguished a Lotus-123 prior art reference allowing linking between different pages as not representing a “true 3D spreadsheet.”

One issue here is that the 3D spreadsheet requirement is part of the preamble of the claim, not the body of the claim.

12. [A] computer-implemented method of representing a three-dimensional spreadsheet on a screen display, the method comprising . . .

Ordinarily, preambles are not limiting.  Here, the Federal Circuit though fell back on the nose-of-wax analogy — explaining that the patentee had already pushed the wax in one direction and is now estopped from pushing it back.  Namely, during the eligibility determination, the patentee pushed its case as an improvement to three-dimensional spreadsheets, and the court relied upon those arguments to find the invention eligible for patenting.

Non-infringement affirmed.

43 thoughts on “Still True: Name of the Game is the Claim

  1. 6

    Marty: “Juries need to determine the sufficiency of structure, which is factual matter of patentability.”

    So what are your proposed rules for determining the “sufficiency of structure” of a structureless abstraction such as an otherwise ineligible algorithm (“ineligible” meaning “ineligible on its own terms”)?

    Objectively, what is required at a minimum? How does the relationship of the prior art come into play or is that an impermissible area of analysis for some made-up reason?

    Maybe provide a decent example of the analysis working on two reasonably representative algorithms, or working on the same algorithm in the context of different facts.

    1. 6.1

      Yet again, Malcolm needs be reminded that soft is merely a design choice of wares in the computing arts.

      As to:

      How does the relationship of the prior art come into play or is that an impermissible area of analysis for some made-up reason?

      What is YOUR made-up reason FOR including it, given the fact that Congress separated out prior art FROM 35 USC 101 when they wrote the statutory law that is patent law back in 1952?

      1. 6.1.1

        “ Congress separated out prior art FROM 35 USC 101”

        You are a silly non-serious person and you lack the intelligence to discuss any of these topics in a productive way.

        1. 6.1.1.1

          There goes that Accuse Others Of That Which Malcolm Is old script item again.

          Maybe instead of the mindless (and quite clearly off) insult, you actually address the point provided?

        2. 6.1.1.2

          You have STILL given no reason or cogent explanation to support your position.

          ALL that you have done is pound your chest and bloviate as to how “well known” your position “MUST BE” and have hidden behind emotion and tantrums (even as you accuse others of not being grown-up).

          Maybe try something else to establish your position (something rational)…

    2. 6.2

      Hmmm . . . Malcomtent’s Social Security must have recently kicked in.

      With the loss of his anti-patent grifter income, the only way to explain his return from blog exile.

      1. 6.2.1

        Meh, given his lack of control over his emotions, I was leaning more towards there being a criminal incarceration element involved with his hiatus.

        But truth be told, I just don’t care.

  2. 5

    “difficult choirs”

    Yes, I do hate it when my church singers get all unruly. If only I’d known a 3D spreadsheet would help me keep them in … line.

  3. 4

    The use of tabs in a user interface is both expressive and functional and can never be disambiguated. User interfaces have no business anywhere near a reasonable patent system.

    Per the thread below about Alice.

    The whole doctrine is an unapparelled stack of statutory cards.

    What reasonable statutory interpretation of Section 101 can yield a result where the state of the art of the purported invention is a factor whatsoever?

    Section 101 is about which arts can result in patents. It’s a distinct section of law from Section 103- obviously (see what I did there?).

    How does one arrive at an abstract ideas exception from that particular statutory language without linking that exception to any of the words in the statute?

    Is abstraction a utility problem? Is it a problem for any of the four categories in particular? Is it a novelty problem?

    Is novelty the same as non-obviousness? Than why not use the same words? We can easily accept that if it’s not new, its not eligible, right? Or wrong? If the inventor thinks its new, and it fits the statutory categories, isn’t it eligible, even if eventually found unpatentable?

    Nope, the problem is the incoherence generated by trying to solve two problems with one doctrine. Problem one is that abstract inventions are different than abstract claims. Problem two is the failure to distinguish the nature of useful information between utility and expression. Abstract claims are 103/112 problems, and Alice is a misapplied 103/112 test. Abstract inventions are a 101 problem, and an invention is abstract when its utility is realized within a human mind.

    Back to the Future MM. MPEG’s and encryption and SEP’s should be patentable.

    People invest in them, they are non-obvious, they are useful, patenting prevents free riding, and the disclosure is key to their utility. Why that should not be part of the patent system just because the structure is not tangible eludes me, despite your efforts to educate.

    On the other hand, your efforts to entertain succeed highly & somehow my spirit is lifted to know Covid didn’t take you. Yet.

    1. 4.1

      “ What reasonable statutory interpretation of Section 101 can yield a result where the state of the art of the purported invention is a factor whatsoever?”

      In a system where patent applicants are permitted to lard up their claims with multiple paragraphs of prior art and are never required to state specifically what improvement upon the prior art is being made or what parts of the claim represent the improvement (or prior art), there is no other way to have a working eligibility test.

      This has all been well-understood for many, many years, Martin. Please dont perpetuate falsehoods. Thanks.

      1. 4.1.1

        In a system where patent applicants are permitted to lard up their claims with multiple paragraphs of prior art and are never required to state specifically what improvement upon the prior art is being made or what parts of the claim represent the improvement (or prior art), there is no other way to have a working eligibility test.

        That just sounds like you simply do not like the actual law as written by Congress and are whining merely for a different law.

        This has all been well-understood for many, many years, Martin. Please dont perpetuate falsehoods. Thanks.

        What “falsehoods” do you think that Marty is perpetuating?

        Which ones are you?

        1. 4.1.1.1

          “ What “falsehoods” do you think that Marty is perpetuating”

          The falsehood is that it is possible to have a working eligibility test in the context of our “liberal” system for claiming where that test does not take into account the relationship of claim elements to the prior art. It’s a logical impossibility.

          Note that by “working” I mean “working to eliminate more than just the most extreme and trivially ineligible claims.”

          This isn’t some complicated argument, by the way. It’s just straightforward logic applied to existing reality. This is the way things work now in most cases, and for good reasons.

          1. 4.1.1.1.1

            It’s a logical impossibility.

            Your logic suffers from a baseline error in that you are supposing that there MUST be a ‘prior art’ consideration in view of what Congress set up in 35 USC 101.

            As you well know, that is just NOT what Congress did.

            Ergo, what you claim to be a falsehood is not a falsehood.

            And thus, you answer my second question even as you attempt to NOT answer it.

            And yes, this is not complicated – it’s not even an “argument,” as much as it is the reality of patent law.

            . It’s just straightforward logic applied to existing reality.

            You have shown yourself to be c1ue1ess on both logic and reality.

            1. 4.1.1.1.1.1

              “ you are supposing that there MUST be a ‘prior art’ consideration”

              No that’s plainly not what’s happening.

              You are no longer part of the conversation because you are a well-documented liar who is dedicated to preventing any reasonable discussion of this topic. Dennis knows this. Jason knows this. Everybody knows it. It’s old news.

              1. 4.1.1.1.1.1.1

                Funny how YOU descend to pure insult rather than actually address the point put to you.

                No, wait.

                Predictable. Not funny.

    2. 4.2

      “ Why [mpegd, encryption, SEPs] should not be part of the patent system just because the structure is not tangible eludes me, despite your efforts to educate.”

      Let’s set aside that political discussion for the moment. At the very least it needs to be recognized that if THOSE particular types of logic instructions are to be entitled to some type of “patent”, that “patent” should be subject to very particular and specialized rules for acquisition and enforcement, not to mention term length and other considerations. Pretending that they are something other than what they are and shoe-horning into a system designed for something very different was and is a terrible idea for everybody already using the system.

      Something a lot more like plant patents and a lot less like design patents would be appropriate (in terms of their relationship to the utility patent system).

      Forcing patent judges to come up with necessarily poetic means for determining the “sufficiency” of non-existent structure … what an awful idea. That’s why the canonical software eligibility cases are so ridiculous. It has nothing to do with “not understanding the technology.” The problem is logic instruction “technology” has no place in the utility patent system as such.

      1. 4.2.1

        Pretending that they are something other than what they are and shoe-horning into a system designed for something very different was and is a terrible idea for everybody already using the system.

        Let’s check if Malcolm mustered the courage to answer yet: link to patentlyo.com

        As expected – no.

        ¯\_(ツ)_/¯

    3. 4.3

      MS: “ Abstract inventions are a 101 problem, and an invention is abstract when its utility is realized within a human mind.”

      So how do you determine the relevant utility of a “determine and infer” claim like that asserted by Prometheus without understanding the relationship of that claim to the prior art?

      That’s a rhetorical question. The answer is that it can’t be done. That’s why the maximalist version of Diehr was always DOA and Stevens’ dissent as it related to that position is (effectively) controlling law. It’s also why Prometheus v Mayo will never be overturned and everyone who pretends otherwise is just pantsing themselves. It’s the attorney equivalent of refusing vaccination and eating horse paste (which is no doubt what some of those attorneys actually do).

      1. 4.3.1

        and Stevens’ dissent as it related to that position is (effectively) controlling law.

        LOL – thanks for the admission (and I wonder if you recognize the irony of that admission – on several levels)

      2. 4.3.2

        So how do you determine the relevant utility of a “determine and infer” claim like that asserted by Prometheus without understanding the relationship of that claim to the prior art

        I don’t have to: no “determine and infer” claim can be eligible at all. Once I locate the utility in some item or species of information, and that utility is realized by meaning of that information to a human being, it’s over.

        But generally we have the same problem with eligibility as was had with claim construction prior to Markman. It’s currently an idiosyncratic inquiry, unmoored procedurally. The invention should be construed as a matter of law, and that construction should include the both the asserted difference(s) over the prior art and the identification of the 101 statutory category of the invention.

        Forcing patent judges to come up with necessarily poetic means for determining the “sufficiency” of non-existent structure … what an awful idea.

        Juries need to determine the sufficiency of structure, which is factual matter of patentability. Expert witness poetry is what it is.

        A judge has to determine if the utility of the invention is occurring within a human mind, which is the red line for patent eligibility.

        I think the current utility system would work, but yes -what is obvious in a digital world may vary greatly from obviousness in an analogous chemical or mechanical world.

        1. 4.3.2.1

          Marty, Marty, Marty,…

          and that utility is realized by meaning of that information to a human being, it’s over.

          And two words makes Marty’s fantasy go boom:

          Traffic lights.

          1. 4.3.2.1.1

            You keep saying traffic lights and it’s never less stoo pid.

            A traffic light is a machine, or manufacture, and a newly structured traffic light is not a process.

            Stipulating that nobody ever heard of traffic lights: a process claiming the act of stopping at a red light should be ineligible, despite being new and useful and non-obvious.

            A traffic light is not the act of stopping at a traffic light. Can that be stated any more clearly?

            1. 4.3.2.1.1.1

              utility is NOT a subset of statutory category.

              You keep on wanting to pretend that the terrain of patent law is something other than what it is.

              Talk about “stoo pid.

        2. 4.3.2.2

          Marty was asked *how* he locates the utility in a “determine and infer” claim for purposes of his eligibility test. He replied “I don’t have to.” Then he wrote this.

          MS : “ Once I locate the utility in some item or species of information, and that utility is realized by meaning of that information to a human being, it’s over.”

          This doesn’t work, Marty, given our systems rules for claiming, for the same reason that the maximalist version of Diehr doesn’t work (and has been soundly rejected). If there are multiple utilities in a claim, are you really suggesting that the mere recitation somewhere in the claim of an old but ineligible utility (“ineligible” according to your criteria) is enough to tank the claim?

          “ A judge has to determine if the utility of the invention is occurring within a human mind”

          Okay, so what are the rules for doing that? Take a determine and infer claim as an example where the only novel contribution is the inferring step but remember that you aren’t allowed to consider that fact in your analysis. The old step is an otherwise eligible step of taking blood and measuring the concentration of a metabolite in the blood. But the fact that the test is in the prior art can not be considered (again: your restriction, not mine).

          Lay out the analysis for us wherein the judge determines what the utility of that claim is.

          1. 4.3.2.2.1

            I appreciate the engagement, we are on new ground.

            Lay out the analysis for us wherein the judge determines what the utility of that claim is

            In helping to solve this eligibility problem, we have to stipulate that the policy will exists to make procedural changes, because without those, no reform is really possible regardless of how useful a proposed doctrine may be.

            So we have to assume a Markman like process where the judge is construing the invention, akin to claim construction. This preliminary construction is not limited to eligibility- its designed to shape the invalidity and non-infringement positions of the parties prior to major discovery and expert evidence.

            Assuming something like that is happening, the utility analysis is that difficult.

            An inventor should be able to answer two questions: what is the nature of the utility your invention provides and in which of the allowed four statutory categories is your invention best located?

            Because you gotta pick at least one.

            If they wish, the presumption of validity and the prosecution record can stand alone, or they can further inform the judge how their invention delivers it’s utility via technology demonstration and lawyer argument, just as claim construction is now handled.

            If a litigant or the judge can’t say why people might want to use the purported invention, something ain’t working in the procedure.

            There will rarely be issues finding at least some putative form of expected utility in a machine, composition, or manufacture claim. We all accept that new and beneficial mechanical, chemical, and nuclear changes are useful and proper subjects of the patent system.

            Processes are the substantial problem, and I assume we can stipulate that “determine and infer” claims will all be processes for the purposes of meeting the requirements of 101.

            From there its not a complex evolution.

            Is the useful result of the process a chemical, mechanical, or nuclear change? Yes or No. If yes, eligible.

            If no, is the useful result of the process some species of information? If no, that’s going to be one hel luva interesting invention.

            If yes, does the useful result of the information arise in a human mind? If yes, ineligible. If no, eligible. Stock trading, diagnostic correlations, maps of shopping malls, tabs on spreadsheets, and a million other items of patent rub bish can go away. Information used by people is always 100% abstract. No human mind, no abstraction.

            If no, if the user is a decoder or a sensor or an algo working on another algo or a network device or anything under the sun that ain’t a human mind, the putative subject matter should be eligible. That information result can’t be abstract. It’s a manufacture or machine component, not a process.

            The standards for obviousness and invention v. variation in the digital world may certainly need calibration by experts and eventually by the digital trail of all the code in the world.

            What we have is absurd and untenable. What I propose is understandable by the average American. It makes some sense, which is a lot more than what one mostly sees.

            1. 4.3.2.2.1.1

              That information result can’t be abstract. It’s a manufacture or machine component, not a process.

              ?

              An information result (if I follow you) is…

              Information.

              Information that you now want to “classify” as a ‘manufacture or machine component’….

              Am I following you?

              If so, how is ANY software anything OTHER THAN a manufacture or machine component?

              Software is nothing more than a design choice of wares in the computing arts.

              As has been put to you nigh countless times (in the appropriate patent law terrain), software is equivalent (and please note the difference in term between ‘equivalent’ and ‘exactly equal’) to hardware or firmware.

              1. 4.3.2.2.1.1.1

                Yes, software is exactly equal to hardware. And hardware that produces a useful result comprised of information is also ineligible if the utility provided by the purported novelty in the hardware is obtained from the use of information in a human mind.

                If the novelty makes the information result “better” it ain’t eligible.

                If the novelty makes the hardware perform its processing better, without reference to the human meaning of that information, it’s peachy. Humans don’t consume floating point ops or quantum gates or whatever you may have in mind.

                1. Yes, software is exactly equal to hardware.

                  You blundered directly into the error I warned you against.

                  Try again.

                2. And hardware that produces a useful result comprised of information is also ineligible if the utility provided by the purported novelty in the hardware is obtained from the use of information in a human mind.

                  Let’s go (again) in this circle:

                  Traffic Lights.

              1. 4.3.2.2.1.2.1

                Ok Traffic lights

                1) I claim: a traffic light powered by a bespoke beehive. I claim it as an improved machine. The novelty is the power system. Is the claim a method? No? It’s a machine. Machines are eligible. The infringing behavior is making or selling a beehive powered traffic light.

                2) I claim: A method of traffic control whereby red lights are displayed, and upon seeing the display, a driver stops. The infringing behavior is putting up a traffic light, of any construction, and people stopping at the light. Is it a method? Yes. Is the result of the method an item of information ? (the color of the light) yes. Does the utility of the information arise from use of the information in a human mind? yes. The method is ineligible.

                Again and again this is explained and again and again you say it makes no difference if machine or method, because all utility is the same utility. I say that’s non sense.

                Human use of information is the sine qua non of abstraction. (closed the darn tag there…)

    4. 4.4

      On the other hand, your efforts to entertain succeed highly & somehow my spirit is lifted to know Covid didn’t take you. Yet.

      Just checking:link to patentlyo.com

      Yup. Still there (that is some “highly successful” entertainment)

  4. 3

    Like nobody ever heard of printed folders or 3 ring notebooks for staff meetings with tabbed spread sheets? Even with the admission of “familiar notebook tabs”?
    Also, this is not actually 3-dimentional, since it is a display on a single plane surface of a computer screen.

    1. 3.1

      The eligibility decision was mocked in real time because it was absurd and wrong. Classic case of the CAFC working backwards to find a way to keep the claims “alive” because …. reasons! The ultimate “techno” excuse for eligibility was far removed from the actual concept of the claims (described in the claims themselves) which is probably what gave the patentee the “cover” it needed to switch tracks during the infringement phase.

      But they were busted. Unfortunately the patent wasn’t put into the woodchipper where it belongs.

      1. 3.1.1

        Your posting decisions are mocked in real time.

        So what does “mocking in real time” have to do with anything (on its face)?

  5. 2

    “during the eligibility determination, the patentee pushed its case as an improvement to three-dimensional spreadsheets, and the court relied upon those arguments”

    And then the patentee attempted to disown those assertions because they no longer provided a benefit to the patentee which is why sanctions are totally appropriate here.

    Discuss.

    1. 2.1

      First point: did you read this decision?

      (I suggest you stop and do that before proceeding).

      Second, do you understand the meaning of making a colorful argument?

      It is important to your desired point to recognize that even a very long shot type of argument is not “sanction-worthy.”

      Third: do you recognize why the attempted distinction was made, and — if accepted — would have provided an abundantly colorful argument?

      Your feelings may differ, I certainly grant you that — but that is expressly why you need to step through the questions provided and “show your work” in any inte11ectually honest discussion.

      Let’s see if you can tackle this easy one.

      1. 2.1.1

        “ even a very long shot type of argument is not “sanction-worthy.”

        There’s no doubt you deeply wish this to be true. And it’s easy to understand why.

        1. 2.1.1.1

          ?

          There is no “wish” from me here.

          Perhaps you should follow the directions put to you instead of reacting merely with (attempted) insults.

          C’mon man — you asked for a discussion, after all.

  6. 1

    The point is being offered that the patentee is “stuck” with its 101 position.

    And yet, the CAFC has been (and is likely to continue to be) all over the map with their 101 positions, creating a Gordian Knot of eligibility jurisprudence.

    1. 1.1

      “ The point is being offered that the patentee is “stuck” with its 101 position.”

      Put another way, to the extent the accused is forcing that issue (that the patentee can’t switch now) and the CAFC is agreeing with the accused, this case is an example of the CAFC being consistent and the result is thus the fair and correct one. This is actually how things are supposed to work and most of the time they do work this way. To the extent the CAFC manages to treat eligibility similarly across the Board, (giving the term “structure” a consistent meaning throughout all fields) you will definitely not like it.

      1. 1.1.1

        You are correct in that I do not like how the CAFC has treated eligibility.

        But the rest of your insinuations and such are woefully errant.

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