Google Urges Full Fed. Circ. To Review 'Dangerous' IP Ruling
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Law360 (November 30, 2018, 4:43 PM EST) -- Google has urged the full Federal Circuit to reconsider an earlier decision undoing an Alice win for the tech giant over three spreadsheet patents owned by a unit of patent licensing company Acacia Research, arguing that the “dangerous” ruling allows future litigants to claim that electronic versions of familiar ideas are patentable when they are not.
Google LLC on Thursday filed a petition for rehearing en banc of a panel decision in October that found that Data Engine Technologies LLC’s patents were patent-eligible improvements in spreadsheet technology, reversing a Delaware federal court’s ruling that the patents were directed to an abstract idea under the U.S. Supreme Court’s Alice v. CLS Bank decision.
The patents at issue cover technology for making spreadsheets more accessible by including user-friendly features similar to tabs found in a notebook to aid navigation. Specifically, the tabs allow users to “flip through” pages to locate information rather than scrolling through one large spreadsheet.
In its petition, Google argued that the panel decision could not be squared with Alice’s holding that abstract ideas on a computer can’t be patented, as Data Engine’s patents only “generically import[ed] an age-old practice from paper-based record keeping into an analogous computer application.” Electronic tabbing did the exact same thing as paper tabbing, it argued.
"The decision is dangerous because it invites future applicants and plaintiffs to claim electronic metaphors of familiar concepts," Google said. "If electronic tabbing can be patented, why not electronic photo ‘albums' that resemble physical albums, electronic 'buttons’ on calculators that mimic the physical buttons of traditional calculators, or electronic document 'bookmarks' analogous to physical bookmarks? Alice was supposed to have put an end to patents on computerization of abstract ideas."
Data Engine is a subsidiary of Acacia, which says on its website that it has signed more than 1,200 patent license agreements with major companies, generating $1.5 billion in revenue. It sued Google over the spreadsheet patents in 2014, alleging that Google Docs and Google Sheets infringed them.
Chief Judge Leonard P. Stark had granted judgment on the pleadings that the patents cover only the “abstract idea of using notebook-type tabs to label and organize spreadsheets.” But the panel disagreed, finding that the patents covered a “specific improved method” by providing a more user-friendly interface with familiar notebook tabs for navigating the spreadsheets. It noted that such technological improvements have been found patent-eligible in other cases since Alice was decided.
However, the panel also held that one claim of the tab patents was correctly found invalid under Alice because it is directed not to the tabs, but to a more general method of identifying spreadsheet pages. In addition, it found that a fourth patent covered only the abstract idea of tracking modifications in a spreadsheet and was thus invalid.
The patents-in-suit are U.S. Patent Numbers 5,590,259; 5,784,545; 6,282,551; and 5,303,146.
Counsel for both parties did not immediately respond to requests for comment Friday.
Data Engine is represented by Amir Alavi, Iftikhar Ahmed and Alisa Lipski of Ahmad Zavitsanos Anaipakos Alavi & Mensing PC.
Google is represented by Amelia G. Yowell of King & Spalding LLP and Dan L. Bagatell and Andrew T. Dufresne of Perkins Coie LLP.
The case is Data Engine Technologies LLC v. Google LLC, case number 2017-1135, in the U.S. Court of Appeals for the Federal Circuit.
--Additional reporting by Ryan Davis. Editing by Alyssa Miller.