representative claim Archives

Not Just a Blip: Section 101 as Affirmative Defense

On appeal from a motion to dismiss based on subject matter eligibility, the US Court of Appeals for the Federal Circuit held that a district court appropriately analyzed certain claims as representative claims and that the claims were directed to an abstract idea and did not recite an inventive concept. Mobile Acuity, Ltd. v. Blippar Ltd., Case No. 22-2216 (Fed. Cir. Aug. 6, 2024) (Lourie, Bryson, Stark, JJ.)

Mobile Acuity sued Blippar for infringement of claims from two patents directed to software for accessing stored information with a captured image. Mobile Acuity’s operative second amended complaint asserted that Blippar infringed “at least Claims 9, 11, and 16” of one patent and “Claims 9, 11, and 16” of the other. Blippar asserted that claim 9 of each patent was “representative of the entire claim set in each respective Asserted Patent” and that the patents were invalid under 35 U.S.C. § 101. The district court granted Blippar’s motion and subsequently denied Mobile Acuity’s motion to amend the judgment and for leave to file a third amended complaint.

Mobile Acuity appealed, asserting that the district court committed several errors, including the treatment of claim 9 in each asserted patent as a representative claim and the holding that the asserted patents were invalid as claiming ineligible subject matter.

Mobile Acuity first argued that the district court erred in holding that a challenge under § 101 is not an affirmative defense. The Federal Circuit agreed that an eligibility challenge on § 101 grounds is an affirmative defense but found that the district court simply misspoke when it stated during oral argument “[w]e are not talking about an affirmative defense.” However, the Federal Circuit concluded that the “error in word choice was harmless because the district court applied the correct legal standard for evaluating an affirmative defense at the motion to dismiss stage.”

In support of its denied motion to amend, Mobile Acuity argued that “the district court required it to ‘anticipate [the] defendant’s affirmative defense in its complaint.’” The Federal Circuit rebuffed this argument, concluding that the district court did not grant the motion to dismiss on the grounds that Mobile Acuity failed to address patentable subject matter in its complaints but correctly dismissed based on an affirmative defense that “clearly appears on the face of the pleading.” The Court stated that “as we have repeatedly recognized, it is possible and proper to determine patent eligibility under 35 U.S.C. § 101 on a Rule 12(b)(6) motion.”

On the merits, the Federal Circuit first determined that the district court did not merely treat claim 9 of each of the asserted patents as representative of all claims. The Federal Circuit explained that “the court did more, separately analyzing all six claims Mobile Acuity specifically identified in the operative complaint,” as well as two additional claims. The Federal Circuit also agreed with the district court that the six claims were representative “of all claims of the two Asserted Patents.”

As to the merits of the motion to dismiss, [...]

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3D Chess at the Federal Circuit: Can’t Walk Back Arguments in Prior Appeal or Prosecution History

In the second appeal to the US Court of Appeals for the Federal Circuit, the preamble term “three-dimensional spreadsheet” was found to be a limitation in the context of claims directed to organizing and presenting information in electronic spreadsheets based on prosecution disclaimer and arguments made in the first appeal. Data Engine Techs, LLC v. Google LLC, (DET II), Case No. 21-1050 (Fed. Cir. Aug. 26, 2021) (Stoll, J.)

In the first appeal (DET I), the Federal Circuit found that DET’s representative claim was “directed to more than a generic or abstract idea as it claims a particular manner of navigating three-dimensional spreadsheets,” improving on electronic spreadsheet functionality and, therefore, directed to patent-eligible subject matter. The Court reversed and remanded. On remand, Google requested that the district court reopen claim construction and construe the preamble term “three-dimensional spreadsheet” in the representative claim.

The district court found the preamble to be limiting and construed “three-dimensional spreadsheet” to mean a “spreadsheet that defines a mathematical relation among cells on different spreadsheet pages, such that cells are arranged in a 3-D grid.” The district court went on to grant Google’s motion for summary judgment of noninfringement as there was no dispute that the accused product (Google Sheets) did not meet the “three-dimensional spreadsheet” limitation under the court’s construction. DET appealed.

Applying de novo review to the claim construction issue presented, the Federal Circuit noted that in DET I, its conclusion that the asserted claims were directed to improvements in three-dimensional spreadsheets ascribed patentable weight to the preamble term “three-dimensional spreadsheet.” The dispute related to whether the claim requires “a mathematical relation among cells on different spreadsheet pages,” as required by the district court’s construction.

The Federal Circuit found that neither the claims themselves nor the specification provided guidance in construing “three-dimensional spreadsheet.” Turning to the prosecution history, the Court noted that during prosecution, the applicants provided an explicit definition of a “true” three-dimensional spreadsheet and distinguished prior art under this definition. Indeed, as the Court noted, its ruling in DET I expressly relied on that definition from the prosecution history in determining that the claims required a three-dimensional spreadsheet that “defines a “three-dimensional spreadsheet” in support of patent eligibility. Thus, the Court concluded that the preamble term was limiting.

In the present appeal, DET contended that the prosecution history passage defining a three-dimensional spreadsheet did not rise to the level of “clear and unmistakable” disclaimer when read in context of the spreadsheet (Lotus 1-2-3) it was distinguishing. The Federal Circuit rejected the argument noting, “DET cannot escape the import of its statements to the Patent Office by suggesting they were not needed to overcome the Examiner’s rejection. Consistent with the public notice function of the prosecution history, the public is entitled to rely on these statements as defining the scope of the claims.” In rejecting DET’s arguments, the Court again cited to the imagery of twisting claims, “like ‘a nose of wax,’ ‘one way to avoid [invalidity] and another to [...]

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Not Just a Blip: Section 101 as Affirmative Defense

3D Chess at the Federal Circuit: Can’t Walk Back Arguments in Prior Appeal or Prosecution History

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