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.‎