Addressing issues of obviousness in the context of an asserted teaching away, the US Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) decision finding that the challenged claims were unpatentable based on the teachings of the prior art references. Meiresonne v. Google, Inc., Case No. 16-1755 (Fed. Cir., Mar. 7, 2017) (Moore, J).
Google petitioned for inter partes review of Meiresonne's claims directed to "a supplier identification and locator system and method," asserting that the challenged claims were obvious over two prior art references. The PTAB agreed with Google and found that a person of ordinary skill in the art would not have read the references to teach away from the solution of Meiresonne's claims. Meiresonne appealed.
On appeal, Meiresonne argued that the references taught away from the combination of descriptive text having a rollover viewing area because both prior art references disparaged and criticized the use of descriptive text. Meiresonne argued that the reference's solution to "cursory, if not cryptic" descriptive text was abandoning it and replacing textual descriptions with graphical previews. Meiresonne further argued that the prior art reference described abstract text as "gibberish" and advocated "visiting the actual site" instead of reading an unreliable abstract text.
The Federal Circuit disagreed, explaining that 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. The Court reasoned that the prior art's description of descriptive text as "cursory, if not cryptic" did not convert the reference to one that teaches away from the claimed combination because the prior art reference did not state or imply that the text descriptions were "unreliable," "misleading," "wrong" or "inaccurate." The Court explained that the word "cursory" implied that the information was accurate but could use supplementation, and did not demand replacement. Similarly, the Court reasoned that the description of website abstracts as "sometimes . . . as informative as a paragraph of gibberish" did not amount to promoting abandonment of text description, but instead merely encouraged supplementing the text.
The Federal Circuit further distinguished this case from its 2009 decision in DePuy Spine, in which the Court affirmed the lower tribunal findings that prior art references taught away from the invention based on the reasoning that the prior art references rendered the device inoperative for its intended purpose ( IP Update, Vol. 9, No. 12). The prior reference in this case did not express concerns that the text descriptions would hinder the goal of communicating information about website links to a person browsing the internet or detract in any way from the goal of using a rollover viewing area to peruse data "much faster" than previous methods. Instead, the prior art encouraged the addition of the graphical previews to make the internet even more advantageous than before, and helped a user to determine whether a link is relevant to their information.
To Teach Away, Prior Art Must Criticize, Discredit or Discourage the Invention
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