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Benn Wilson’s practice focuses on complex civil litigation, principally in the areas of patent and IP litigation. He previously represented clients in complex patent disputes before both federal district courts and the International Trade Commission.

B.S. Chemical Engineering
M.S. Chemical Engineering

Federal Circuit Affirms Rejection of Broad, Computer-Based ClaimsAs we’ve covered in other summaries, the Federal Circuit continues to define the line between computer-implemented claims that are patent ineligible under 35 U.S.C. § 101 for being directed to an abstract idea with no inventive concept applied to it and eligible claims directed to more than simply an abstract idea. The Federal Circuit’s recent decision in In re: Downing illustrates that broad, vague claims directed to an aspirational idea to be implemented on a computer will continue to be rejected. The decision further illustrates that such claims are also vulnerable to rejections under § 112. Applicants seeking computer-based claims should be mindful that claims addressing a technological problem in a specific, well-defined way remains the best path to avoid these pitfalls.

In Downing, the Federal Circuit affirmed the Patent Trial and Appeal Board’s decision that rejected all pending claims of the application as directed to ineligible subject matter, lacking adequate written description, and indefinite.

The Claims at Issue

The application at issue, No. 12/454,528 related to an allegedly new and improved planning model using electronic spreadsheets. Claim 1 was the only pending independent claim:

  1. A resource planning forecast product operable in a computer and recorded on a non-transitory computer-readable medium for retrieval interlinking non-business or business information relevant to the end user without mandatory reliance on a network or another computer file or Internet access to operate wherein the product is produced by processes of:

(a) designing a diffusion-based proprietary forecasting technique on an Excel computer platform for operation within a resource planning framework to: (1) simplify forecasting initialization with defaults option and exclusion of advanced statistical requirements in forecasting, (2) consider social and technological change, (3) make forecasts of operations and development and strategic plans of 1-5-15 years simultaneously, and (4) provide automatic updates reducing manual operations and storage requirements such that this process taken in combination improves the end user’s ease of operation and assessments;

(b) structuring presentations on the same computer platform by linking display of the forecasted data with features of: (1) additional resource planning applications beyond the typical such as an information resource utility and intangibles, (2) adjacent display of the operations and development and strategic plans’ 1-5-15 year forecasts, and (3) comprehensive print views available simultaneously of forecasted activity reports, resource plans, and yearly performance next 15 years such that this process taken in combination expands the utility of resource planning in the field of forecasting; and

(c) constructing one-time settings for the structure, on the same computer platform, for the capability of accommodating the full extent of resource planning cited and more efficient operation by: (1) fixed display of self-explanatory instructions and definitions, (2) only 4 required settings of initializing diffusion indices, starting calendar date, nonfinancial or financial mode, and the names for activity reports, resource plans, and optional information reports, and (3) optional settings related to goals-objective-missions, allocations, and risk-impact data such that this process taken in combination improves the end users’ ease of use and availability of forecasted resource planning applications;

such that this product’s capabilities and features accommodate the full extent of resource types and resource planning (encompassing the five categories of planning noted) for operation by nontechnical or technical users in one unbundled computer file through end user interaction with displays.

The PTO’s Decision

The examiner rejected all pending claims on three grounds: 1) they were directed to patent-ineligible subject matter, 2) they lacked adequate written description support, and 3) they were indefinite. Specifically, the examiner concluded the claims were directed to the abstract idea of creating an electronic spreadsheet for personal management and did not contain significantly more than that idea as any additional limitations were generic computer elements. The examiner further concluded that the term “intangibles” in the asserted claims lacked adequate written description. The term was not included in the original specification, and the examiner rejected amendments to the specification to describe the term as introducing new matter. Finally, the examiner concluded the claims were indefinite for two reasons: 1) it was unclear what class of invention the claims were directed to and 2) the term “end user” lacked antecedent basis. On appeal, the Board affirmed the examiner’s rejections on all three grounds. Downing then appealed to the Federal Circuit.

The Federal Circuit’s Decision

Beginning with the eligibility rejection, the Federal Circuit applied its standard two-step test from Alice Corp.: 1) whether the claims are directed to a patent-ineligible concept and, if so, 2) whether an element or combination of elements in the claim provides an “inventive concept” that amounts to more than a patent on the ineligible concept itself. At the first step, the Federal Circuit agreed that the claims were directed to the ineligible concepts of personal management, resource planning, or forecasting. The court likened the claims to others related to collecting, analyzing, and displaying information that it previously rejected as directed to abstract ideas and was not persuaded Downing’s reliance on cases such as McRO, Inc. v. Bandai Namco Games Am., Inc., 873 F.3d 1299 (Fed. Cir. 2016), and DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), in which the court approved the eligibility of claims directed to improvements in computer technology. At step two, the court found no inventive concept as the claims recited only generic computer elements such as a “computer platform” using Excel or a “display.”

Turning to the written description rejection, the Federal Circuit agreed that “intangibles” lacked sufficient written description. The court noted that written description must be judged as of the filing date. As a result, written description must be found in the originally filed specification, and any amendments to add new matter to the specification during prosecution are prohibited. Echoing the examiner’s statement, the court found that “intangibles” was not disclosed or mentioned in the original specification. The court also agreed with the examiner’s objection to Downing’s attempt to amend the specification to define “intangibles” during prosecution. Lastly, the court approved the Board’s finding that a person of ordinary skill in the art would not have understood “intangibles” to refer to several specific items Downing pointed to in the specification.

Finally, the Federal Circuit agreed that the claims were indefinite. The court explained that while the claims purported to be product-by-process claims—“wherein the product is produced by processes of”—the remaining limitations did not define the process for making the product. Instead, those claim limitations—“designing a diffusion-based proprietary forecasting technique on an Excel computer platform for operation within a resource planning framework,” “structuring presentations on the same computer platform,” and “constructing one-time settings for the structure, on the same computer platform”—described functions or features of the product. Because the claims did note recite the steps for making the claimed product, they were indefinite.

The court disagreed with the Board’s conclusion that the claims were also indefinite because “end user” lacked antecedent basis. The court noted that the claims referenced one “end user,” which could only refer to the end user of the product. Thus, lack of an antecedent basis for that term did not render it indefinite.

The claims at issue were exactly the type an applicant for a computer-implemented invention should seek to avoid—vague, difficult-to-follow claims directed to an aspirational idea to be implemented on a computer. The takeaway continues to be that an applicant seeking to avoid Alice eligibility problems should focus on defining a technological problem and claiming a specific implementation that solves that problem and improves computer functionality.

Federal Circuit Holds Notebook-Tabbed Spreadsheets Are Patent EligibleIn recent years, the Federal Circuit has issued a number of decisions attempting to define the line between computer-implemented claims that are patent ineligible under 35 U.S.C. § 101 for being directed to an abstract idea with no inventive concept applied to it and eligible claims directed to more than simply an abstract idea. The Federal Circuit’s recent decision in Data Engine Technologies LLC v. Google LLC illustrates both types and the key distinctions between them: moving beyond claiming a highly generalized concept or desired result and instead claiming specific structures or implementations that improve computer functionality.

In Data Engine Technologies, the Federal Circuit affirmed in part and reversed in part the district court’s ruling that claims directed to aspects of electronic spreadsheets were not patent-eligible subject matter. The Federal Circuit distinguished patent-eligible claims “directed to a specific improved method for navigating through complex three-dimensional electronic spreadsheets” from ineligible claims “directed to the abstract idea of collecting, recognizing, and storing changed information” or “identifying and storing electronic spreadsheet pages.”

The Asserted Patents

The patents at issue, U.S. Patent Nos. 5,590,259; 5,784,545; 6,282,551; and 5,303,146, all relate to electronic spreadsheets. The ’259, ’545, and ’551 patents (Tab Patents) specifically relate to the use of notebook tabs to navigate through three-dimensional electronic spreadsheets. As explained by the court, the Tab Patents “identify problems with navigation through prior art three-dimensional or multipage electronic spreadsheets” and “claim a method of implementing a notebook-tabbed interface, which allows users to easily navigate through three-dimensional electronic spreadsheets.” Claim 12 of the ’259 patent is representative:

12. In an electronic spreadsheet system for storing and manipulating information, a computer-implemented method of representing a three-dimensional spreadsheet on a screen display, the method comprising:

displaying on said screen display a first spreadsheet page from a plurality of spreadsheet pages, each of said spreadsheet pages comprising an array of information cells arranged in row and column format, at least some of said information cells storing user-supplied information and formulas operative 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, displaying 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 second 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, displaying said second spreadsheet page on said screen display in a manner so as to obscure said first spreadsheet page from display while continuing 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 including a cell reference to a particular cell on another of said spreadsheet pages having a particular spreadsheet page identifier comprising at least one user-supplied identifying character, said cell reference comprising said at least one user-supplied identifying character for said particular spreadsheet page identifier together with said column identifier and said row identifier for said particular cell.

The ’146 patent relates to “methods that allow electronic spreadsheet users to track their changes.” Claim 1 of the ’146 patent is representative:

In an electronic spreadsheet system for modeling user-specified information in a data model comprising a plurality of information cells, a method for automatically tracking different versions of the data model, the method comprising:

(a) specifying a base set of information cells for the system to track changes;

(b) creating a new version of the data model by modifying at least one information cell from the specified base set; and

(c) automatically determining cells of the data model which have changed by comparing cells in the new version against corresponding ones in the base set.

The District Court Decision

Data Engine Technologies asserted various claims of the Tab Patents and the ’146 patent against Google. Google sought dismissal of all claims under Rule 12(c) on the grounds that all asserted claims were ineligible under 35 U.S.C. § 101. The district court granted that motion in its entirety. The court found that the Tab Patents were “directed to the abstract idea of using notebook-type tabs to label and organize spreadsheets” and lacked any inventive concept to confer eligibility. Similarly, the court found that the ’146 patent “was directed to the abstract idea of collecting spreadsheet data, recognizing changes to spreadsheet data, and storing information about the changes” and again lacked any inventive concept. Data Engine Technologies appealed.

The Federal Circuit Decision

The Federal Circuit applied the standard two-step test from Alice Corp.: 1) whether the claims are directed to a patent-ineligible concept and, if so, 2) whether an element or combination of elements in the claim provides an “inventive concept” that amounts to more than a patent on the ineligible concept itself.

Beginning with the Tab Patents, the Federal Circuit disagreed with the district court’s conclusion that the claims were directed to the abstract idea of using notebook tabs to organize a spreadsheet. Instead, the court concluded that representative claim 12 was directed “to a specific method for navigating through three-dimensional electronic spreadsheets.” The Tab Patents identified a “known technological problem in computers”—the complexity of navigating and using prior art electronic spreadsheets—and then described and claimed a specific solution to that problem—providing user-friendly notebook tabs to navigate the spreadsheet. Rather than claim “the idea of navigating through spreadsheet pages using buttons or a generic method of labeling and organizing spreadsheets,” the Tab Patents claimed “a specific interface and implementation” that provided a “technical solution and improvement in computer spreadsheet functionality” that was lauded in the industry at the time.

In that respect, the claims were similar to those at issue in the Federal Circuit’s prior decision in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc. In that case, the court held that claims directed to an improved display interface were patent-eligible because the claimed invention “increased the efficiency with which users could navigate through various views and windows.” In both instances, the claims were directed to a particular implementation that improved existing technology.

Google argued the claims were no different than those in several Federal Circuit decisions in which the court held that claims directed to methods of organizing and presenting information are abstract. The court found all of those cases to be distinguishable because those claims lacked “any specific structure or improvement of computer functionality.” On the other hand, reading the claim as a whole as Alice requires, claim 12 moved beyond simply claiming the manipulation or organization of information to improve navigation in electronic spreadsheets and claimed “a specific structure (i.e., notebook tabs)” to perform “a specific function (i.e., navigating within a three-dimensional spreadsheet).”

The Federal Circuit did, however, reach a contrary conclusion as to one claim of the Tab Patents. The court concluded that claim 1 of the ’551 patent did not claim “the specific implementation of a notebook tab interface.” Instead, it generically claimed associating a spreadsheet with a user-settable page identifier and thus was directed to “the abstract idea of identifying and storing electronic spreadsheet pages.” Because the claim was “not limited to the specific technical solution and improvement” found in the remaining claims of the Tab Patents, claim 1 was directed to an ineligible abstract idea. Considering the claim as a whole, the court could find no inventive concept. Thus, the Federal Circuit affirmed the district court’s decision that claim 1 was not directed to patent-eligible subject matter.

The Federal Circuit reached the same conclusion as to the ’146 patent. The court agreed with the district court’s assessment that representative claim 1 was “directed to the abstract idea of collecting spreadsheet data, recognizing changes to spreadsheet data, and storing information about the changes.” The court found nothing in claim 1 that “improve[d] spreadsheet functionality in a specific way sufficient to render the claims not abstract.” Concluding that the ’146 patent claims included only generic steps and lacked any inventive concept, the Federal Circuit affirmed the district court’s decision that the claims of the ’146 patent were not directed to patent-eligible subject matter.

This decision underscores that an applicant seeking to avoid Alice eligibility problems for a computer-implemented invention should focus on defining a technological problem and claiming a specific implementation that solves that problem and improves computer functionality. Broad and generic claims covering any and all implementations of an abstract desired result will continue to be vulnerable under Alice. On the other hand, those alleged to infringe generic, abstract claims should pursue an Alice-based motion to bring litigation to a conclusion as early as practicable.