Meiresonne v. Google, Inc.
849 F.3d 1379
| Fed. Cir. | 2017Background
- Michael Meiresonne owns U.S. Patent No. 8,156,096, covering a web-directory system that combines supplier links, adjacent descriptive text, descriptive title portions, and a rollover viewing area that displays information when a cursor is over links or descriptions.
- Claim 19 (representative) recites a server-hosted website with a keyword input, results page listing related links each with adjacent descriptive portions, and a rollover viewing area that displays information for multiple links when the cursor is over/near links or their descriptive portions.
- Google petitioned for inter partes review challenging claims 16, 17, 19, and 20 as obvious under 35 U.S.C. § 103 based on Hill (a 1997 Web-searching book) and Finseth (U.S. Patent No. 6,271,840).
- Hill discloses search-engine result lists with textual abstracts/descriptions adjacent to links (noting some abstracts are weak but others useful). Finseth teaches graphical thumbnails/preview (a rollover viewing area) accompanying hyperlinks to help users evaluate results quickly.
- The Board found Hill and Finseth, in combination, rendered the challenged claims obvious, concluding Finseth supplies the rollover viewing area and Hill supplies the adjacent descriptive text; the Board found the references did not teach away from combining text and graphical rollover previews.
- The Federal Circuit reviewed the Board’s legal conclusions de novo and factual findings for substantial evidence, and affirmed the Board’s § 103 unpatentability decision.
Issues
| Issue | Meiresonne's Argument | Google/Board's Argument | Held |
|---|---|---|---|
| Whether Hill and Finseth teach away from combining descriptive text with a rollover viewing area | Hill and Finseth disparage textual descriptions and thus teach abandoning text in favor of graphical previews; combining is discouraged | Neither reference criticizes or discourages combining text with graphical previews; they do not suggest text must be replaced | The references do not teach away; affirmed |
| Whether Finseth supplies the rollover viewing area limitation | Implied Finseth’s focus on graphics means text should be abandoned, so combination is nonobvious | Finseth expressly teaches thumbnail/graphical previews in a rollover and does not preclude coexisting text | Finseth discloses the rollover viewing area; combination is supported |
| Whether Hill supplies adjacent descriptive portions for links | Hill’s abstracts are unreliable, so they cannot be read as supporting the claim’s descriptive portions | Hill discloses adjacent descriptive abstracts and acknowledges some are useful despite variability | Hill supplies the adjacent descriptive text limitation |
| Whether the combination would have been obvious to a person of ordinary skill | Combining was not obvious because prior art teaches away | Combining known elements yielding predictable results is obvious absent teaching away | Combining was obvious; claims unpatentable under § 103 |
Key Cases Cited
- In re Gartside, 203 F.3d 1305 (Fed. Cir.) (standard: review legal conclusions de novo and factual findings for substantial evidence)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (obviousness of combination of known elements when yielding predictable results)
- Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034 (Fed. Cir.) (obviousness is a legal conclusion grounded in factual findings)
- DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314 (Fed. Cir.) (prior art taught away where it showed addition would impair intended function)
- Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731 (Fed. Cir.) (definition of teaching away)
- In re Mouttet, 686 F.3d 1322 (Fed. Cir.) (teaching-away is a factual inquiry)
- Consol. Edison Co. v. NLRB, 305 U.S. 197 (substantial evidence standard)