Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Data Engine Technologies LLC v. Google LLC, No. 21-1050 (August 26, 2021), affirming the District of Delaware’s summary judgment of noninfringement premised on its construction of the term “three-dimensional spreadsheet” recited in the preamble of the asserted claims.
The Federal Circuit previously concluded that the “key innovation” of the asserted patents “was to improve the user interface by reimagining the three-dimensional electronic spreadsheet using a notebook metaphor,” reversing the District of Delaware’s earlier judgment that the asserted claims were unprotectable under Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208 (2014). On remand, Google, successfully urged the district court to reopen claim construction and construe the preamble term “three-dimensional spreadsheet” in view of the Federal Circuit’s earlier eligibility determination, ultimately prevailing on summary judgment by arguing its “Google Sheets” product was not a “three-dimensional spreadsheet” and, therefore, is incapable of infringing the asserted Data Engine patents. Data Engine appealed, challenging only the district court’s claim construction.
The Federal Circuit affirmed, rejecting each of Data Engine’s arguments concerning the limiting effect of the preamble term “three-dimensional spreadsheet.” As a preliminary matter, the Court noted that Data Engine’s current arguments that the preamble should be nonlimiting conflict with its earlier arguments concerning patent eligibility under Alice, where Data Engine relied on the preamble to support its eligibility arguments and to distinguish prior art. The Court further noted that Data Engine had also emphasized the preamble term “three-dimensional spreadsheet” to distinguish prior art during prosecution of the patent in suit. The Court held that, consistent with the public notice function of the prosecution history, the public is entitled to rely on Data Engine’s statements suggesting the preamble had a limiting effect on the scope of the claims.