Google Attack on Patent Using ‘Dummies’ Book Upheld

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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.

Sometimes Gibberish

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 pleung@bna.com

To contact the editor responsible for this story: Mike Wilczek at mwilczek@bna.com

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