Data Engine Technologies LLC v. Google LLC

Case: 21-1050 Document: 41 Page: 1 Filed: 08/26/2021

United States Court of Appeals

for the Federal Circuit

______________________

DATA ENGINE TECHNOLOGIES LLC,

Plaintiff-Appellant

v.

GOOGLE LLC,

Defendant-Appellee

______________________

2021-1050

______________________

Appeal from the United States District Court for the

District of Delaware in No. 1:14-cv-01115-LPS, Judge

Leonard P. Stark.

______________________

Decided: August 26, 2021

______________________

JUSTIN CHEN, Ahmad, Zavitsanos, Anaipakos, Alavi &

Mensing P.C., Houston, TX, argued for plaintiff-appellant.

Also represented by AMIR H. ALAVI, MASOOD ANJOM, SCOTT

W. CLARK, KYUNG KIM.

GINGER ANDERS, Munger, Tolles & Olson LLP, Wash-

ington, DC, argued for defendant-appellee.

______________________

Before REYNA, HUGHES, and STOLL, Circuit Judges.

STOLL, Circuit Judge.

Case: 21-1050 Document: 41 Page: 2 Filed: 08/26/2021

2 DATA ENGINE TECHS. LLC v. GOOGLE LLC

This is the second appeal in this case. Data Engine

Technologies LLC (DET) appeals the United States Dis-

trict Court for the District of Delaware’s summary judg-

ment of noninfringement. The district court’s summary

judgment was premised on its construction of the term

“three-dimensional spreadsheet” recited in the preamble of

the asserted claims. For the reasons below, we hold that

the preamble is limiting and adopt the district court’s con-

struction of that term. Because DET does not argue that

the accused product infringes under the district court’s con-

struction, we affirm.

BACKGROUND

I

DET filed suit against Google LLC for infringing cer-

tain claims of U.S. Patent Nos. 5,590,259; 5,784,545; and

6,282,551 (the “Tab Patents”). The Tab Patents are di-

rected to systems and methods for displaying and navi-

gating three-dimensional electronic spreadsheets by

implementing user-customizable “notebook tabs” on the

spreadsheet interface. In discussing prior art spread-

sheets, the Tab Patents explain that “three-dimensionality,

as presently implemented, is an advanced feature beyond

the grasp of many spreadsheet users.” ’259 patent col. 3

ll. 9–11. According to the Tab Patents, prior art spread-

sheets “require[] the user to manipulate each additional

spread of a three-dimensional spreadsheet as a separate

window in a graphical windowing environment.” Id.

at col. 3 ll. 14–17. By contrast, the claimed notebook tabs

“allow[] the user to simply and conveniently ‘flip through’

several pages of the notebook to rapidly locate information

of interest.” Id. at col. 8 ll. 51–57. Figure 4G illustrates an

embodiment of the invention, with the user-customizable

notebook tabs located along the bottom edge of the page:

Case: 21-1050 Document: 41 Page: 3 Filed: 08/26/2021

DATA ENGINE TECHS. LLC v. GOOGLE LLC 3

Id. Fig. 4G. According to the Tab Patents, the notebook

tabs provide users with a “highly intuitive interface—one

in which advanced features (e.g., three-dimensionality) are

easily learned.” Id. at col. 6 ll. 59–63. “Thus, the spread-

sheet notebook of the present invention provides a 3-D in-

terface which readily accommodates real-world

information in a format the user understands . . . .” Id.

at col. 10 ll. 35–38.

Claim 12 is representative of the claims on appeal and

recites:

12. In an electronic spreadsheet system for storing

and manipulating information, a computer-imple-

mented method of representing a three-dimen-

sional spreadsheet on a screen display, the method

comprising:

displaying on said screen display a first spread-

sheet page from a plurality of spreadsheet pages,

each of said spreadsheet pages comprising an array

of information cells arranged in row and column

Case: 21-1050 Document: 41 Page: 4 Filed: 08/26/2021

4 DATA ENGINE TECHS. LLC v. GOOGLE LLC

format, at least some of said information cells stor-

ing user-supplied information and formulas opera-

tive on said user-supplied information, each of said

information cells being uniquely identified by a

spreadsheet page identifier, a column identifier,

and a row identifier;

while displaying said first spreadsheet page, dis-

playing a row of spreadsheet page identifiers along

one side of said first spreadsheet page, each said

spreadsheet page identifier being displayed as an

image of a notebook tab on said screen display and

indicating a single respective spreadsheet page,

wherein at least one spreadsheet page identifier of

said displayed row of spreadsheet page identifiers

comprises at least one user-settable identifying

character;

receiving user input for requesting display of a sec-

ond spreadsheet page in response to selection with

an input device of a spreadsheet page identifier for

said second spreadsheet page;

in response to said receiving user input step, dis-

playing said second spreadsheet page on said

screen display in a manner so as to obscure said

first spreadsheet page from display while continu-

ing to display at least a portion of said row of

spreadsheet page identifiers; and

receiving user input for entering a formula in a cell

on said second spreadsheet page, said formula in-

cluding a cell reference to a particular cell on an-

other of said spreadsheet pages having a particular

spreadsheet page identifier comprising at least one

user-supplied identifying character, said cell refer-

ence comprising said at least one user-supplied

identifying character for said particular spread-

sheet page identifier together with said column

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DATA ENGINE TECHS. LLC v. GOOGLE LLC 5

identifier and said row identifier for said particular

cell.

Id. at col. 26 l. 44–col. 27 l. 17 (emphasis added to disputed

limitation).

II

In 2016, Google filed a motion for judgment on the

pleadings under Federal Rule of Civil Procedure 12(c), ar-

guing that the asserted claims are ineligible for patenting

under 35 U.S.C. § 101. Applying the two-step test set forth

in Alice Corp. v. CLS Bank International, 573 U.S. 208

(2014), the district court concluded that representative

claim 12 of the ’259 patent is “directed to the abstract idea

of using notebook-type tabs to label and organize spread-

sheets” and does not recite an inventive concept. Data En-

gine Techs. LLC v. Google LLC (Data Engine I), 211

F. Supp. 3d 669, 678–79 (D. Del. 2016). The district court

therefore held the asserted claims ineligible under § 101.

Id.

DET appealed, arguing that the “key innovation” of the

Tab Patents “was to improve the user interface by reimag-

ining the three-dimensional electronic spreadsheet using a

notebook metaphor.” Appellant’s Br., Data Engine Techs.

LLC v. Google Inc., No. 2017-1135, 2017 WL 1423236, at *8

(Fed. Cir. Apr. 10, 2017). Specifically, DET argued that

claim 12 is directed to a patent-eligible concept that solves

“a problem that is unique to not only computer spreadsheet

applications . . . , but specifically three-dimensional elec-

tronic spreadsheets.” Id. at *20 (emphasis added); id. (ar-

guing that claim 12 “recites a particular structure for an

improved graphical user interface for a three-dimensional

electronic spreadsheet”). Thus, according to DET, “the in-

vention made a distinct improvement to the user interface

of a pre-existing software product, an electronic three di-

mensional spreadsheet. . . . [T]he invention applies only to

a three-dimensional spreadsheet on a computer screen dis-

play.” Id. at *21.

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6 DATA ENGINE TECHS. LLC v. GOOGLE LLC

We agreed with DET. Data Engine Techs. LLC

v. Google LLC (Data Engine II), 906 F.3d 999, 1002

(Fed. Cir. 2018). 1 At step one of Alice, we considered

whether the claims at issue are directed to a patent-ineli-

gible concept and determined that “claim 12 is directed to

more than a generic or abstract idea as it claims a particu-

lar manner of navigating three-dimensional spreadsheets,

implementing an improvement in electronic spreadsheet

functionality.” Data Engine II, 906 F.3d at 1011. We ex-

plained that the claimed invention solves a “known techno-

logical problem in computers in a particular way—by

providing a highly intuitive, user-friendly interface with fa-

miliar notebook tabs for navigating the three-dimensional

worksheet environment.” Id. at 1008. Thus, “consider[ing]

the claim as a whole,” we concluded that the claimed “note-

book tabs are specific structures within the three-dimen-

sional spreadsheet environment that allow a user to avoid

the burdensome task of navigating through spreadsheets

in separate windows using arbitrary commands.” Id. at

1011. We therefore reversed the district court’s judgment

that the asserted claims are ineligible and remanded for

further proceedings. Id.

III

On remand, Google requested the district court reopen

claim construction 2 and construe the preamble term

“three-dimensional spreadsheet” in view of our eligibility

determination in Data Engine II. The parties disputed

1 We affirmed the district court’s determination that

claim 1 of the ’551 patent is ineligible under § 101. Data

Engine II, 906 F.3d at 1012–13.

2 In 2015, prior to the district court’s entry of judg-

ment on the pleadings, the parties had requested the court

construe the preamble term “three-dimensional spread-

sheet,” later agreeing that the term did not need construc-

tion.

Case: 21-1050 Document: 41 Page: 7 Filed: 08/26/2021

DATA ENGINE TECHS. LLC v. GOOGLE LLC 7

(1) whether the preamble is a limitation of the asserted

claims needing construction and (2) if so, what would be

the proper construction of this term. The district court

agreed with Google that the preamble is limiting and de-

termined that the term “three-dimensional spreadsheet”

means a “spreadsheet that defines a mathematical relation

among cells on different spreadsheet pages, such that cells

are arranged in a 3-D grid.” Data Engine Techs. LLC

v. Google LLC (Data Engine III), C.A. No. 14-1115-LPS,

2019 WL 6701290, at *3 (D. Del. Dec. 9, 2019).

Thereafter, Google moved for summary judgment of

noninfringement, arguing that the accused product, Google

Sheets, is not a “three-dimensional spreadsheet” as re-

quired by all of the asserted claims. The district court

granted the motion, finding it “undisputed that Google

Sheets does not allow a user to define the relative position

of cells in all three dimensions and is, therefore, incapable

of infringing” the asserted claims of the Tab Patents. Data

Engine Techs. LLC v. Google LLC (Data Engine IV), C.A.

No. 14-1115-LPS, 2020 WL 5411188, at *4 (D. Del. Sept. 9,

2020).

DET appeals. We have jurisdiction under 28 U.S.C.

§ 1295(a)(1).

DISCUSSION

There is no dispute on appeal that Google does not in-

fringe under the district court’s construction of “three-di-

mensional 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 pre-

amble is limiting and adopt its construction, and therefore

affirm its summary judgment of noninfringement.

Whether a preamble is limiting is an issue of claim con-

struction. Arctic Cat Inc. v. GEP Power Prods., Inc., 919

F.3d 1320, 1327 (Fed. Cir. 2019). Claim construction is a

Case: 21-1050 Document: 41 Page: 8 Filed: 08/26/2021

8 DATA ENGINE TECHS. LLC v. GOOGLE LLC

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 address-

ing DET’s argument that the preamble term “three-dimen-

sional spreadsheet” is not limiting and thus does not have

patentable weight. We disagree.

In its first appeal to this court, DET urged us to hold

that the asserted claims of the Tab Patents are eligible sub-

ject matter under § 101 by placing particular importance

on the claimed improvement being unique to three-dimen-

sional spreadsheets. As part of the eligibility analysis, we

are required at step one of Alice to “consider the claims ‘in

their entirety to ascertain whether their character as a

whole is directed to excluded subject matter.’” CardioNet,

LLC v. InfoBionic, Inc., 955 F.3d 1358, 1367–68 (Fed. Cir.

2020) (quoting McRO, Inc. v. Bandai Namco Games Am.

Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016)). “We also con-

sider the patent’s written description, as it informs our un-

derstanding of the claims.” CardioNet, 955 F.3d at 1368.

Accordingly, in the first appeal, we considered the claims

as a whole in light of the written description and agreed

with DET that the asserted claims are directed to improve-

ments in three-dimensional spreadsheets. That determi-

nation ascribes patentable weight to the preamble term

“three-dimensional spreadsheet.”

DET’s assertion that the preamble term “three-dimen-

sional spreadsheet” is not limiting effectively seeks to ob-

tain a different claim construction for purposes of

infringement than we applied, at DET’s insistence, in hold-

ing the asserted claims of the Tab Patents eligible under

§ 101. We have repeatedly rejected efforts to twist claims,

Case: 21-1050 Document: 41 Page: 9 Filed: 08/26/2021

DATA ENGINE TECHS. LLC v. GOOGLE LLC 9

“like ‘a nose of wax,’” in “one way to avoid [invalidity] and

another to find infringement.” Amazon.com, Inc.

v. Barnesandnoble.com, 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 eligi-

bility, we conclude that the preamble term “three-dimen-

sional spreadsheet” is limiting.

II

We turn next to the district court’s construction of

“three-dimensional spreadsheet.” Both parties agree that

a three-dimensional spreadsheet requires cells “arranged

in a 3-D grid,” Appellant’s Br. 22; Appellee’s Br. 45, but dis-

pute whether it also requires “a mathematical relation

among cells on different spreadsheet pages,” as required by

the district court’s construction, see Data Engine III,

2019 WL 6701290, at *3. We conclude that it does.

The words of a claim are generally given their ordinary

meaning, which is “the meaning that the term would have

to a person of ordinary skill in the art in question at the

time of the invention.” Phillips v. AWH Corp., 415 F.3d

Case: 21-1050 Document: 41 Page: 10 Filed: 08/26/2021

10 DATA ENGINE TECHS. LLC v. GOOGLE LLC

1303, 1312–13 (Fed. Cir. 2005) (en banc). The claims, how-

ever, “do not stand alone” and “must be read in view of the

specification” and the prosecution history. Id. at 1315

(quoting Markman v. Westview Instruments, Inc., 52 F.3d

967, 978–79 (Fed. Cir. 1995) (en banc)), 1317 (citing Mark-

man, 52 F.3d at 980). “[T]he prosecution history can often

inform the meaning of the claim language by demonstrat-

ing how the inventor understood the invention and

whether the inventor limited the invention in the course of

prosecution, making the claim scope narrower than it

would otherwise be.” Phillips, 415 F.3d at 1317. For ex-

ample, “a patentee may define a claim term . . . in the pros-

ecution history.” Honeywell Inc. v. Victor Co. of Japan,

Ltd., 298 F.3d 1317, 1323 (Fed. Cir. 2002). Additionally,

“[a] patentee may, through a clear and unmistakable disa-

vowal in the prosecution history, surrender certain claim

scope to which he would otherwise have an exclusive right

by virtue of the claim language.” Vita-Mix Corp. v. Basic

Holding, Inc., 581 F.3d 1317, 1324 (Fed. Cir. 2009).

Here, the claims themselves do not answer the ques-

tion of whether a three-dimensional spreadsheet requires

a mathematical relation among cells on different spread-

sheets. Nor does the specification provide any guidance on

this front. Based on the prosecution history, however, we

agree with the district court that the preamble term “three-

dimensional spreadsheet” requires a mathematical rela-

tion.

During prosecution of the application that led to the

’259 patent, the applicants provided an explicit definition

of a “true” three-dimensional spreadsheet and distin-

guished prior art under this definition. Specifically, the

Examiner rejected the pending claims over a prior art

spreadsheet known as Lotus 1-2-3 that allowed a user to

link “different user-named spreadsheet files” by referring

to cells in one spreadsheet file in cells of another.

J.A. 2286–88. The Examiner “point[ed] to the linked

spreadsheet files as suggesting user-nameable page

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DATA ENGINE TECHS. LLC v. GOOGLE LLC 11

identifiers in a 3D spreadsheet.” J.A. 2287. The applicants

distinguished Lotus 1-2-3 from the claimed invention, ar-

guing that it “falls far short of a true 3D spreadsheet.”

J.A. 2287. According to the applicants, a “3D spreadsheet

defines a mathematical relation among cells on the differ-

ent pages so that operations such as grouping pages and

establishing 3D ranges have meaning.” J.A. 2287. There-

fore, giving effect to this express definition in the prosecu-

tion history, we determine that the claims require a three-

dimensional spreadsheet that “defines a mathematical re-

lation among cells on the different pages.”

DET reads the prosecution history differently. Accord-

ing to DET, the passage defining a three-dimensional

spreadsheet does not rise to the level of “clear and unmis-

takable” disclaimer when read in context. Appellant’s

Br. 25. Specifically, DET contends that because it admit-

ted later on in the same applicant remarks that Lotus 1-2-3

is a three-dimensional spreadsheet, it could not have been

distinguishing Lotus 1-2-3 on that basis. Appellant’s Br.

22 (quoting J.A. 2288 (applicant remarks stating “Lotus’[s]

techniques for displaying and navigating between pages

within a single 3D spreadsheet”)). Rather, DET argues it

distinguished Lotus 1-2-3 solely because “Lotus’[s] disclo-

sure relative to linking different user-named spreadsheet

files” is not the same as the claimed “user-named pages in

a 3D spreadsheet.” Appellant’s Br. 19–20 (some emphasis

omitted) (quoting J.A. 2288). According to DET, therefore,

the prosecution history statements defining a “true” three-

dimensional spreadsheet are irrelevant. We disagree.

“Prosecution history disclaimer plays an important role

in the patent system. It ‘promotes the public notice func-

tion of the intrinsic evidence and protects the public’s reli-

ance on definitive statements made during prosecution.’”

Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090,

1095 (Fed. Cir. 2013) (quoting Omega Eng’g, Inc. v. Raytek

Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003)). For this rea-

son, we have held patentees to distinguishing statements

Case: 21-1050 Document: 41 Page: 12 Filed: 08/26/2021

12 DATA ENGINE TECHS. LLC v. GOOGLE LLC

made during prosecution even if they said more than

needed to overcome a prior art rejection. See, e.g., Saffran

v. Johnson & Johnson, 712 F.3d 549, 559 (Fed. Cir. 2013)

(“[A]n applicant’s argument that a prior art reference is

distinguishable on a particular ground can serve as a dis-

claimer of claim scope even if the applicant distinguishes

the reference on other grounds as well.” (quoting Andersen

Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1374 (Fed.

Cir. 2007))). And we do so here. True, the applicants

acknowledged that Lotus 1-2-3 allows users to navigate

within a single three-dimensional spreadsheet file and ar-

gued that Lotus 1-2-3’s user-named spreadsheet files differ

from the claimed user-named pages in a three-dimensional

spreadsheet. Even if this alone would have been sufficient

to overcome the Examiner’s rejection, the applicants went

further, providing an express definition of a three-dimen-

sional spreadsheet and arguing that Lotus 1-2-3 is not a

“true” three-dimensional spreadsheet under that defini-

tion. DET cannot escape the import of its statements to the

Patent Office by suggesting they were not needed to over-

come the Examiner’s rejection. Consistent with the public

notice function of the prosecution history, the public is en-

titled to rely on these statements as defining the scope of

the claims.

CONCLUSION

We have considered DET’s remaining arguments and

find them unpersuasive. For the foregoing reasons, we

adopt the district court’s claim construction and therefore

affirm its summary judgment of noninfringement.

AFFIRMED