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
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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.
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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,
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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