Access practice tools, as well as industry leading news, customizable alerts, dockets, and primary content, including a comprehensive collection of case law, dockets, and regulations. Leverage...
By Peter Leung
Google Inc.'s successful attack on a search engine patent, based in part on the book “World Wide Web Searching for Dummies,” was affirmed March 7 by a federal appeals court.
The U.S. Court of Appeals for the Federal Circuit upheld a Patent Trial and Appeal Board ruling that U.S. Patent No. 8,156,096 was invalid because it is obvious in light of two pieces of prior art ( Meiresonne v. Google Inc. , Fed. Cir., No. 2016-1755, 3/7/17 ).
The court’s decision offers guidance on when previous patents or literature discourage or teach away a feature in a patent, an important issue when evaluating a patent’s scope. In patent law, teaching away refers to describing a solution to a problem in a way that excludes another particular solution in a later invention.
The patent here describes a system where a user can identify suppliers associated with links, such as in search results, with one limitation being a rollover window with text describing a link. Inventor Mark A. Jotanovic argued that the two prior art references taught away from his particular invention—the use of text in the rollover window.
The Federal Circuit disagreed, finding that the prior art references did not teach away the use of text to describe a link. For example, the “Dummies” book said that “abstracts” used by search engines at the time were sometimes “gibberish,” which did not discourage the use of text categorically.
Similarly, the other piece of prior art, which uses a graphical preview window, said that text descriptions may be incomplete. However, that doesn’t teach away the use of text because it doesn’t imply that text would be misleading or wrong, the court wrote.
The court contrasted these instances with a typical case of teaching away, where a piece of prior art describing a spinal assembly taught away the use of a rigid screw because it would reduce the assembly’s shock absorbing capabilities.
Jotanovic’s lawyer did not respond to a request for comment. Google through its lawyer, declined to comment on the case.
Judge Kimberly A. Moore wrote the decision, which Chief Judge Sharon Prost and Judge Alan D. Lourie joined. Brooks Kushman PC represented Jotanovic, while Jones Day represented Google.
To contact the reporter on this story: Peter Leung in Washington at firstname.lastname@example.org
To contact the editor responsible for this story: Mike Wilczek at email@example.com
Text available at http://src.bna.com/mLN
Copyright © 2017 The Bureau of National Affairs, Inc. All Rights Reserved.
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to firstname.lastname@example.org.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to email@example.com.
Put me on standing order
Notify me when new releases are available (no standing order will be created)