October 10, 2018
The decisions of the Supreme Court in Alice Corp. v. CLS Bank International and Mayo Collaborative Servs. v. Prometheus Labs., Inc. led to the so-called two-step Alice/Mayo test for assessing patent eligibility under 35 U.S.C. 101. Under a first step, one assesses whether a patent claim is directed to a judicial exception (such as being abstract). If true, under a second step, one determines whether there is something else in the claim that represents something significantly more than the exception itself. On October 9, in Data Engine Technologies LLC v. Google LLC, a Federal Circuit panel concluded that an improvement to a spreadsheet program passed the first step of the Alice/Mayo test by not being abstract. In reaching this decision, the panel appeared impressed by factual evidence that many patent practitioners would recognize as being secondary considerations more ordinarily employed to traverse an obviousness rejection under 35 U.S.C. 103.
This appeal came to the Federal Circuit following the trial court’s entry of judgment on the pleadings based upon a finding that the claims were directed to abstract ideas and hence not patent-eligible under 35 U.S.C. 101. The panel described these patents as having claims for “systems and methods for making complex electronic spreadsheets more accessible by providing familiar, user-friendly interface objects—specifically, notebook tabs—to navigate through spreadsheets while circumventing the arduous process of searching for, memorizing, and entering complex commands.” The panel then concluded that “These claims are not abstract, but rather are directed to a specific improved method for navigating through complex three-dimensional electronic spreadsheets.”
It is interesting that on the way to reaching that conclusion, the panel described, in some detail, factual evidence comprising “seven articles dated between 1992 and 1993, all touting the advantages of [this] use of notebook tabs to improve navigation through three-dimensional spreadsheets.” For example, the panel quoted the following content from InfoWorld, written when the publication named the patented product, Quattro Pro, the product of the year for productivity applications:
We collected all the word processors, spreadsheets, databases, personal information managers, and other productivity applications and asked ourselves a question: “Which of these programs really changed the way an individual user goes about handling data? Does any one stand out as a productivity booster?”
Our answer was Quattro Pro for Windows. The reason: Borland designed this program from the ground up and examined how spreadsheet users would work in a Windows environment. The notebook metaphor, with pages and tabs for different worksheets, simplifies handling large worksheets. The “interface builder” lets a user design custom dialog boxes without extensive macro programming. And, of course, Quattro Pro’s graphics are stellar.
Numerous court decisions and the examination guidelines of the USPTO are making it increasingly clear that in-depth factual inquiries can be highly relevant to assessing whether a patent claim is directed to a judicial exception. The Data Engine decision presents an example where those facts included public lauding deemed relevant to the claimed subject matter.
For more information on this ruling, please contact Fitch Even partner Steven G. Parmelee, author of this alert.
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