Google Wins Noninfringement Ruling in Acacia Database Suit for Patents That Previously Survived Alice

  • September 11, 2020
  • Category: COVID-19, Patent Litigation Feature
    Tag: COVID-19

A Delaware judge has issued a noninfringement ruling for Alphabet (Google) in a long-running database lawsuit waged by Data Engine Technologies LLC, a subsidiary of Acacia Research Corporation. On September 9, Chief District Judge Leonard Stark ruled that Google Sheets does not infringe the asserted claims of the three remaining patents-in-suit, holding that the product does not involve “three-dimensional electronic spreadsheets”, a key claim limitation, as construed by the court. Those three patents previously survived a trip down the Alice rabbit hole: Judge Stark ruled in 2016 that the patents were invalid as unpatentably directed to an abstract idea, but the Federal Circuit reversed that conclusion in 2018 as to all but a single claim, holding instead that the patents’ subject matter described nonabstract improvements to computer database technology.

Data Engine filed its lawsuit against Google in September 2014 (1:14-cv-01115), asserting six patents in its complaint (5,303,146; 5,416,895; 5,590,259; 5,623,591; 5,784,545; 6,282,551). The parties later stipulated, in June 2015, to the dismissal of the ‘895 patent with prejudice. In January 2016, shortly after the start of claim construction briefing, Google filed a motion for judgment on the pleadings, asserting that the ‘259, ‘545, and ‘551 patents (purportedly claiming a method for using renamable spreadsheet tabs; hence, the “tab patents”) are directed to the abstract idea of “using notebook-type tabs to label and organize spreadsheets”; and the ‘146 patent (claiming a method of tracking changes made to cells), to the abstract idea of “collecting data from a user, recognizing certain data within the collected data set, and storing that recognized data”. That same July, as later summarized by Google, Data Engine also dropped its asserted claims from the ‘591 and ‘146 patents in its Final Election of Asserted Claims but “reserved its rights with respect to those patents”. Google moved to dismiss due to lack of standing in August 2016, with the heavily redacted, public version of that sealed order suggesting that Data Engine had not acquired proper title to the patents-in-suit, but that motion did not reach a ruling and was mooted following the entry of final judgment.

As detailed further below, Judge Stark granted Google’s Alice motion in its entirety, only to see that ruling largely reversed by the Federal Circuit in 2018: The appeals court affirmed the invalidation of the ‘146 patent but reversed and remanded as to the ‘259, ‘545, and ‘551 patents (apart from claim 1 of the ‘551 patent).

On remand, the court held a second claim construction hearing in October 2019, after having issued a first Markman order in February 2016 that did not address the claim term here at issue. In its second claim construction order in December 2019, the court construed the term “three-dimensional spreadsheet” as “[a] spreadsheet that defines a mathematical relation among cells on different spreadsheet pages, such that cells are arranged in a 3-D grid”. By so ruling, the court agreed with Google that “the term requires a mathematical relation among cells on different spreadsheet pages, such that cells are arranged in a three-dimensional grid” but rejected its assertion that “all claimed embodiments of three-dimensional spreadsheets must allow ranging”. In April 2020, Google moved for summary judgment of noninfringement on the basis of that ruling as to the claims from the ‘259, ‘545, and ‘551 patents that remained in suit.

 

The Court’s Noninfringement Ruling

Ruling on September 9, Judge Stark granted summary judgment of noninfringement for Google, ruling that the first of the four asserted grounds—the one based on the “three-dimensional spreadsheet” limitation—was sufficient (and not addressing the others). While the court noted that its construction of that term “does not require any particular functionality in order to be a 3-D spreadsheet, it does require a 3-D grid structure that could support functions such as grouping or ranging.” Here, the court held that Google was correct to argue that “a 3-D grid establishes the relative dimensions of cells in three dimensions, including across pages”. Because the parties agree that Google Sheets lacks such a 3-D grid structure, the court held that the product cannot infringe: “It is 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 patents.”

To further clarify its conclusion, the court explained how the record shows that Google Sheets is not a 3-D spreadsheet product. In Google Sheets, spreadsheets are “described” in the service’s long-term disk storage as “a series of two-dimensional grids”. The product maintains an ordered list of the pages within a workbook in active memory, “but the ordering of pages does not align the cells on the different pages into a 3-D grid”. “In other words”, clarified Judge Stark, “Google Sheets knows the relative position of cells in terms of rows and columns, and allows a user to make relative references to a cell's relative column and row position . . . [but] does not define the relative position of cells on two different spreadsheet pages along a third (i.e., page) dimension”. For this reason, the court concluded that “no reasonable juror could find that Google Sheets’ data structure is able to identify” the type of 3-D relationship required by the court’s construction of “three-dimensional spreadsheet”.

In a joint status update submitted on September 11, the parties indicated that no matters remain to be resolved by the court before the case can be closed.

 

Patent Eligibility: The Federal Circuit Largely Overturns Judge Stark’s Alice Order

As noted above, the aforementioned litigation over infringement was preceded by a trip to the Federal Circuit over Judge Stark’s decision granting Google’s Alice challenge. In that September 2016 ruling, District Judge Leonard Stark agreed with Google that the ‘259, ‘545, and ‘551 (the “tab patents”) are directed to the abstract idea of “using notebook-type tabs to label and organize spreadsheets” and are merely implemented through generic computer limitations of the very type contemplated in Alice. Judge Stark also invalidated the ‘146 patent, though defining the underlying abstract idea more narrowly than in Google’s motion: as “collecting spreadsheet data, recognizing changes to spreadsheet data, and storing information about the changes” (emphasis from original omitted).

Ruling on appeal in October 2018, the Federal Circuit affirmed Judge Stark’s ruling as to the ‘146 patent  but reversed as to all but one claim of the tab patents. The appeals court rejected Judge Stark’s abstract idea analysis as to those assets, holding instead that the patents were not directed to an abstract idea because they described meaningful improvements to prior art database technology. While prior art spreadsheet systems required complex, often arbitrary commands to perform basic spreadsheet manipulation functions, the Federal Circuit found that the claimed notebook-tabbed interface solved this “known technological problem in computers” by allowing computers, “for the first time, to provide rapid access to and processing of information in different spreadsheets” and enabling users to easily navigate through “three-dimensional electronic spreadsheets”. The representative claim, held the Federal Circuit, “recites precisely this technical solution and improvement in computer spreadsheet functionality” by claiming a “specific interface and implementation . . . using techniques unique to computers”. The only claim from the tab patents that the Federal Circuit held to be ineligible was claim 1 of the ‘551 patent (one of nine asserted claims), which the court found is directed to “the abstract idea of identifying and storing electronic spreadsheet pages” and is not meaningfully limited to the “the specific technical solution and improvement in electronic spreadsheet functionality” that saved the other tab patent claims.

For more details on these decisions, see “Federal Circuit Partially Reverses Alice Invalidation in Acacia Suit Against Google” (October 2018).

 

The Court Had Pushed Back a Scheduled Trial Due to COVID-19

Judge Stark’s summary judgment order also follows his July 15 decision to continue a trial originally scheduled for August 31. The parties had jointly requested that continuance, both citing the ongoing safety concerns posed by conducting a trial during the COVID-19 pandemic. In particular, both Data Engine and Google noted that infection rates in the relevant districts (those from which counsel, experts, and witnesses would ostensibly travel) remain elevated. Data Engine further asserted that it would not suffer prejudice under the circumstances, noting that the asserted patent was expired, the plaintiff had requested only damages and not injunctive relief, and neither party had previously requested any other continuances.

Should the trial have proceeded as scheduled, both parties stated their opposition to holding that trial on an entirely remote basis. Google, joined by Data Engine, had proposed a set of safeguards under which such a trial might instead be conducted, including a requirement that experts be permitted to appear live but that fact witnesses appear remotely, another that the court order the parties to develop procedures for remote testimony, and another that the court provide special jury instructions on the consideration of remote testimony.

As recently reported by RPX, the District of Delaware previously gave presiding judges discretion over whether to conduct jury trials remotely. However, on July 17—two days after he continued the Data Engine trial—Judge Stark issued a district-wide order continuing all jury trials scheduled through August 31. Judge Stark has since extended that continuance for all trials set through September 15, also pushing back the second stage of the district’s reopening plan (which will allow the resumption of jury trials).

For more on how Delaware and other patent hotspots have approached jury trials during the pandemic, along with an analysis of COVID-19 infection rates in those districts, see “As the COVID-19 Pandemic Rages On, Top Patent Venues Diverge on Jury Trials” (August 2020). An additional overview of the nation’s first patent jury trial held since the start of the pandemic, held in the Eastern District of Texas by District Judge Rodney Gilstrap, can be found here. Another RPX analysis also takes a look at District Judge Alan D. Albright’s recent decision to resume patent jury trials in the Waco Division of the Western District of Texas, though no such trial has yet taken place.

×
×

Thank you for your feedback

×
×