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Mild discouragement of combination, without evidence of inoperability, does not amount to a “teaching away”

Do references that show different—but not mutually exclusive—manners of displaying information “teach away” from using both manners together? Unless there are express statements discouraging the combination or evidence of its inoperability, the answer will likely be “no.”

In Meiresonne v. Google Inc., the Federal Circuit affirmed the PTAB’s finding of unpatentability of all challenged claims in IPR 2014-01188. The claims were directed to computer systems with a “keyword results displaying web page” that displayed (1) a list of links, (2) descriptions relating to the links, and (3) a “rollover viewing area.”

FIG. 2 from the patent at issue (U.S. Patent No. 8,156,096) is shown below with these three elements highlighted.

Meiresonne graphic

The sole issue on appeal was whether two prior art references teach away from using descriptive text (shown in orange above) in combination with a rollover viewing area (shown in red above). The first reference (Hill) disclosed a results page that included hyperlinks with descriptive text. The second reference (Finseth) disclosed a results page that included hyperlinks with thumbnail images or other graphical information. Meiresonne argued that statements in Finseth disparaging the effectiveness of descriptive text amounted to a teaching away from using both descriptive text and graphical information in a results page. In the Final Written Decision, the PTAB disagreed:

We are not persuaded that Finseth disparages the use of descriptive portions sufficiently for us to conclude that Finseth teaches away from the claimed invention. Rather, we read Finseth as providing an explanation of how to provide visual representations of web pages that can be used to enhance search results presentations. We do not read Finseth as suggesting that these visual representations should replace all other types of search results, such as Hill’s descriptive portions. Notably, although Finseth describes the descriptive text of the time as “cursory,” and describes the graphical preview as being more useful to the user, we do not see why a person of ordinary skill in the art would have read the reference as discouraging the particular solution recited in the claims, i.e., using both (even though one may be more useful than the other).

Whether a reference teaches away from a claimed invention is a factual finding that the Federal Circuit reviews for substantial evidence. Here, the Federal Circuit found that the PTAB’s decision was adequately supported by the evidence. In reaching this finding, the Federal Circuit provided the following comments on the “teaching away” argument raised by the patent owner:

Identifying shortcomings in one approach does not demand replacement over supplementation:  “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 supplementation—it does not demand replacement.”

The combined approach does not render the resulting system inoperable:  “Here, neither Hill nor Finseth indicates that inclusion of descriptive text would detract in any way from Finseth’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.’ … Text descriptions—even if cursory or cryptic—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 descriptive text would render Finseth’s rollover area inoperative for its intended purpose.”

Posted on 3/7/2017 by Deakin T. Lauer