Meiresonne v. Google, Inc.

United States Court of Appeals

for the Federal Circuit

______________________

MICHAEL MEIRESONNE,

Appellant

v.

GOOGLE, INC.,

Appellee

______________________

2016-1755

______________________

Appeal from the United States Patent and Trademark

Office, Patent Trial and Appeal Board in No. IPR2014-

01188.

______________________

Decided: March 7, 2017

______________________

MARK A. JOTANOVIC, Brooks Kushman PC, Southfield,

MI, argued for appellant. Also represented by THOMAS A.

LEWRY, WILLIAM G. ABBATT, JOHN S. LEROY.

GREGORY A. CASTANIAS, Jones Day, Washington, DC,

argued for appellee. Also represented by ISRAEL SASHA

MAYERGOYZ, Chicago, IL; KRISTA SCHWARTZ, San Francis-

co, CA.

______________________

2 MEIRESONNE v. GOOGLE, INC.

Before PROST, Chief Judge, LOURIE, and MOORE, Circuit

Judges.

MOORE, Circuit Judge.

Michael Meiresonne appeals from the final inter

partes review (“IPR”) decision of the U.S. Patent and

Trademark Office’s Patent Trial and Appeal Board

(“Board”) holding that claims 16, 17, 19, and 20 of U.S.

Patent No. 8,156,096 (the “’096 patent”) are unpatentable

under 35 U.S.C. § 103. For the reasons discussed below,

we affirm.

BACKGROUND

Mr. Meiresonne is the sole inventor of the ’096 patent,

titled “Supplier Identification and Locator System and

Method.” The specification discloses a “system whereby a

user can identify a supplier of goods or services over the

Internet.” ’096 patent at 2:55–57. It 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 window that displays

information” about at least one of the suppliers corre-

sponding to a link. Id. at 2:57–3:3.

Claim 19 is representative:

A computer system including a server comprising:

at least one web site stored on the server

and accessible by a user via the Internet,

wherein the web site comprises:

a home page on the server accessible by

the user using a computer via the Internet

wherein the home page comprises an in-

put receiving area and wherein a user in-

puts keyword search term information

into the input receiving area;

MEIRESONNE v. GOOGLE, INC. 3

a keyword results displaying web page

that comprises:

a listing of a plurality of related subject

matter links to web sites that are also re-

lated to the keyword search term infor-

mation inputted into the input receiving

area;

a plurality of descriptive portions, wherein

each descriptive portion is an associated

descriptive portion that is adjacent to and

associated by the user with an associated

related subject matter link, which is one of

the plurality of related subject matter

links; and

a rollover viewing area that individually

displays information corresponding to

more than one of the related subject matter

links in the same rollover viewing area

when the user’s cursor is at least substan-

tially over any of the links, at least sub-

stantially over a link’s descriptive portion,

or substantially adjacent [sic] the corre-

sponding descriptive portion and wherein

the rollover viewing area is located sub-

stantially adjacent to the plurality of re-

lated subject matter links.

’096 patent at 11:18–12:19 (emphasis added).

Google petitioned for IPR of claims 16, 17, 19, and 20

of the ’096 patent. The Board instituted review of the four

claims under 35 U.S.C. § 103 based on a combination of

the 1997 book “World Wide Web Searching for Dummies,

2nd Edition” by Brad Hill (“Hill”) and U.S. Patent No.

6,271,840 (“Finseth”).

Hill describes the user interfaces for several popular

search engines in the 1990s, including Lycos and Yahoo!.

4 MEIRESONNE v. GOOGLE, INC.

The depicted user interfaces include a list of web links

along with an abstract of accompanying text describing

the website at the associated link. Specifically, Hill

teaches:

An Abstract is a one-paragraph description of the

site. Don’t expect a ton of information from these

abstracts because the Lycos staff doesn’t write

them. Sometimes they’re about as informative as

a paragraph full of gibberish. Other abstracts can

prove more useful—and you can always get the

story straight from the horse’s mouth by clicking

on the link to visit the actual site.

J.A. 1603.

Finseth teaches a visual index for a graphical search

engine that provides “graphical output from search engine

results or other URL lists.” In the background section of

the specification, Finseth notes:

One of the great drawbacks of current search en-

gines is the output that they provide to the user.

Often, such results are in the form of a list of hy-

perlinks with a cursory, if not cryptic, excerpt of

initial text present on the web page. Few, if any,

search engine interfaces provide means by which

to gauge graphically the contents of the web page.

Such review or perusal of some summary form of

a web page, even if cursory, provides a significant

amount of information as the form in which

graphical information is presented often indicates

to a significant degree its content.

J.A. 1632 at 1:54–63. In order to “provide a better and

quicker review of search engine results and/or URL list

information,” Finseth teaches a “means by which thumb-

nail or other representational graphic information can

accompany hyperlinks that result at the end of a search

engine search.” Id. at 2:26–31; J.A. 1633 at 3:8–10.

MEIRESONNE v. GOOGLE, INC. 5

The Board held claims 16, 17, 19, and 20 of the ’096

patent unpatentable under 35 U.S.C. § 103 based on the

combined teachings of Hill and Finseth. It found that Hill

discloses all limitations of claim 19 except for the “rollover

viewing area” limitation, which it found disclosed by

Finseth. While the Board recognized that Finseth refers

to descriptive text as “cursory” and indicates that a graph-

ical preview is more useful than plain text, it nonetheless

found that a person of ordinary skill in the art would not

have read Finseth to teach away from the solution of the

’096 claims. Mr. Meiresonne appeals. We have jurisdic-

tion pursuant to 28 U.S.C. § 1295(a)(4)(A).

DISCUSSION

We review the Board’s legal conclusions de novo and

its factual findings for substantial evidence. In re Gart-

side, 203 F.3d 1305, 1316 (Fed. Cir. 2000). A finding is

supported by substantial evidence if a reasonable mind

might accept the evidence as adequate support for the

finding. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229

(1938). Obviousness is a question of law based on under-

lying facts. Apple Inc. v. Samsung Elecs. Co., 839 F.3d

1034, 1047 (Fed. Cir. 2016) (en banc). What the prior art

teaches, whether a person of ordinary skill in the art

would have been motivated to combine references, and

whether a reference teaches away from the claimed

invention are questions of fact. Id. at 1047–48; In re

Mouttet, 686 F.3d 1322, 1330 (Fed. Cir. 2012).

A combination of known elements is likely to be obvi-

ous when it yields predictable results. KSR Int’l Co. v.

Teleflex Inc., 550 U.S. 398, 416 (2007). Obviousness may

be defeated if the prior art indicates that the invention

would not have worked for its intended purpose or other-

wise teaches away from the invention. DePuy Spine, Inc.

v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326

(Fed. Cir. 2009). A reference teaches away “when a

person of ordinary skill, upon reading the reference,

6 MEIRESONNE v. GOOGLE, INC.

would be discouraged from following the path set out in

the reference, or would be led in a direction divergent

from the path that was taken” in the claim. Galderma

Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir.

2013). A reference that “merely expresses a general

preference for an alternative invention but does not

criticize, discredit, or otherwise discourage investigation

into” the claimed invention does not teach away. Id.

The sole issue before us is whether Hill and Finseth

teach away from the invention of the ’096 patent, which

combines descriptive text with a rollover viewing area.

The parties agree that Hill teaches links and text descrip-

tions and Finseth teaches links and a rollover viewing

area. Mr. Meiresonne argues that Hill and Finseth teach

away from the combination of descriptive text and a

rollover viewing area because both prior art references

disparage and criticize the use of descriptive text. He

argues that Finseth’s solution to the “cursory, if not

cryptic” descriptive text was abandoning and replacing

textual descriptions with graphical previews. He also

notes that Hill describes the abstract text as “gibberish”

and advocates “visit[ing] the actual site” instead of read-

ing the unreliable abstract text.

Reviewing both references, we conclude that substan-

tial evidence supports the Board’s fact finding that the

prior art does not teach away from the claimed combina-

tion. Though Finseth teaches graphical previews in a

rollover window, it never implies that text and graphics

are mutually exclusive or advocates abandoning text

descriptions wholesale. The words “replace” and “unreli-

able,” used repeatedly in Mr. Meiresonne’s briefs to ex-

plain how the references teach away from the ’096

invention, are completely absent from Finseth. Instead,

Finseth explains that thumbnail images of websites are

highly desirable in order to more “quickly filter through

the vast information available from the simplest of

searches,” J.A. 1632 at 2:15–17, and the addition of

MEIRESONNE v. GOOGLE, INC. 7

graphical previews makes web browsing “easier and more

useful, even for the novice,” J.A. 1636 at 10:40–44.

The fact that Finseth describes descriptive text as

“[o]ften[] . . . cursory, if not cryptic” does not automatically

convert the reference to one that teaches away from

combining text descriptions with a rollover window. This

description implies only that text descriptions may be

incomplete or insufficient to fully understand the content.

Finseth does not say or imply that text descriptions are

“unreliable,” “misleading,” “wrong,” or “inaccurate,” which

might lead one of ordinary skill in the art to discard text

descriptions completely. The word “cursory” implies that

the information is accurate but could use supplementa-

tion—it does not demand replacement. Finseth also

describes the graphical thumbnails in its claimed inven-

tion as “cursory,” but notes that they still “provide[] a

significant amount of information as the form in which

graphical information is presented often indicates to a

significant degree its content.” J.A. 1632 at 1:59–63.

Similarly, Hill’s description of website abstracts as

“[s]ometimes . . . as informative as a paragraph of gibber-

ish” does not amount to promoting abandonment of text

descriptions. The very next sentence acknowledges that

“[o]ther abstracts can prove more useful.” J.A. 1603.

While Hill teaches that a user should not “expect a ton of

information” from the text, it never advocates abandoning

text wholesale—it merely encourages supplementing the

text by visiting the website itself. Id.

This case is unlike previous cases in which we af-

firmed lower tribunal findings that prior art references

taught away from the invention. In DePuy Spine, for

example, the prior art taught that the addition of a rigid

screw to the prior art spinal assembly would have elimi-

nated or reduced the device’s desired “shock absorber”

effect, thereby rendering the device inoperative for its

intended purpose. 567 F.3d at 1326–27. In that case, the

8 MEIRESONNE v. GOOGLE, INC.

prior art reference expressed a concern for failure of the

assembly and stated that the shock absorber effect “de-

crease[d] the chance of failure of the screw or the bone-

screw interface.” Id. at 1327 (internal quotation marks

omitted). The prior art depicted a “causal relationship

between rigidity and screw failure,” which supported the

finding that it taught away from using rigid screws. Id.

Here, neither Hill nor Finseth indicates that inclusion

of descriptive text would detract in any way from Fin-

seth’s goal of using a rollover viewing area to peruse data

“much faster” than previous methods and “determin[ing]

which web pages would be of most interest to the user.”

J.A. 1636 at 10:31–47. Finseth does not express concern

that text descriptions would hinder the goal of communi-

cating information about website links to a person brows-

ing the internet. Instead it encourages the addition of

graphical previews to known systems to “mak[e] the

Internet even more advantageous than before.” Id.

at 10:40–42. Text descriptions—even if cursory or cryp-

tic—and graphical previews both help a user to determine

whether a link is relevant to the information he is looking

for. And nothing in either reference indicates that de-

scriptive text would render Finseth’s rollover area inoper-

ative for its intended purpose.

Whether the prior art references teach away is not a

question that we review de novo. The Board found that

the references do not teach away from combining text

descriptions with a rollover window, and we review that

finding for substantial evidence. The Board’s fact finding

that these prior art references do not teach away from

combining text descriptions with additional information

in a rollover viewing area is supported by substantial

evidence.

CONCLUSION

For the foregoing reasons, we affirm the Board’s con-

clusion that claims 16, 17, 19, and 20 of the ’096 patent

MEIRESONNE v. GOOGLE, INC. 9

are unpatentable under 35 U.S.C. § 103 based on the

teachings of Hill and Finseth.

AFFIRMED