In Meiresonne v. Google, Inc., No. 2016-1755 (Fed. Cir. Mar. 7, 2017), the Federal Circuit affirmed the PTAB’s final written decision in IPR2014-01188 that the challenged claims in U.S. Patent No. 8,156,096 (the “’096 patent”) are unpatentable as obvious over the 1997 book “World Wide Web Searching for Dummies, 2nd Edition” by Brad Hill (“Hill”) and U.S. Patent No. 6,271,840 (“Finseth”). The sole issue before the Federal Circuit was whether Hill and Finseth teach away from the claimed invention.
The ’096 patent teaches a directory website that contains (1) a plurality of links to supplier websites, (2) “a supplier descriptive portion” located near a corresponding supplier link, (3) “a descriptive title portion” describing the class of goods or services listed on the website, and (4) “a rollover view area” that displays information about at least one of the suppliers corresponding to a link. See the ’096 patent at 2:57–3:3. The Board found Hill disclosed all limitations of the representative challenged claim except for the “rollover viewing area” limitation, which the Board found to be disclosed in Finseth.
The Patent Owner, Mr. Meiresonne, argued that Hill and Finseth teach away from combining descriptive text with a rollover viewing area because both criticized the use of descriptive text. The Patent Owner contended that Finseth recommended replacing textual descriptions with graphical previews and that Hill described the abstract text as “gibberish” and advocates visiting the actual site instead of reading the unreliable abstract text.
The Federal Circuit disagreed. It concluded that although Finseth teaches graphical previews in a rollover window, Finseth never implies that text and graphics are mutually exclusive. Further, the Federal Circuit questioned the Patent Owner’s characterization of Finseth by pointing out that the words “replace” and “unreliable,” used repeatedly in the Patent Owner’s briefs to explain how the reference teaches away, are completely absent from Finseth. Similarly, the Federal Circuit determined that the Patent Owner mischaracterized Hill’s teachings because Hill’s description of website abstracts as sometimes “gibberish” is followed in the very next sentence with an acknowledgement that “[o]ther abstracts can prove more useful.” Therefore, according to the court, nothing in either reference indicates that descriptive text would render Finseth’s rollover area inoperative for its intended purpose.
Finally, the court clarified that the issue of whether prior art references teach away is not a question reviewed de novo, but for substantial evidence. The Federal Circuit accordingly concluded that the Board’s finding that the prior art references do not teach away from combining text descriptions with a rollover viewing area is supported by substantial evidence.
Paying homage to the Dummies series, which typically ends with “The Part of Tens,” a section where a list of takeaways are included, here is the “Part of Three:” (1) showing that a proposed combination would defeat the intended purpose of the prior art references would help support a finding of teach away; (2) the Federal Circuit pays attention to how a party characterizes or mischaracterizes the teaching of a prior art reference, including possibly performing a word search; and (3) it’s never good to have your claims found obvious in view of a for-Dummies book.