Categories: 103
Date: Mar 12, 2015
Title: I/P Engine, Inc. v. AOL Inc.: Obviousness Findings Before a Jury
| Title | I/P Engine, Inc. v. AOL Inc., No. 2013-1307, -1313 (Fed. Cir. Aug. 15, 2014) (non-precedential). | |
Issues | [The Obviousness Determination] The Google Defendants argue that I/P Engine’s claimed invention is obvious as a matter of law because it simply combines content-based and collaborative filtering, two information filtering methods that were well-known in the art. I/P Engine, Inc., at *8. | |
| [The Jury’s Findings] I/P Engine points to the fact that the jury found that there were differences between the prior art and the claimed invention[…], and argues that on appeal “the only question is whether substantial evidence supports the jury’s findings.”[…]. Id. at *16 (internal citations omitted). | ||
| [Secondary Conditions] […] I/P Engine’s argument that the commercial success of Google’s accused advertising systems provides objective evidence of non-obviousness. Id. at *18. | ||
Holdings | [The Obviousness Determination] [T]he prior art contained explicit statements describing the advantages of combining these two filtering techniques, and […] it would have been obvious to include a user’s query in the filtering process[…]. We […] hold that no reasonable jury could conclude otherwise. I/P Engine, Inc., at *8 (internal citations omitted). | |
| [The Jury’s Findings] [W]hile the jury made underlying determinations as to the differences between the asserted claims and the prior art, it did not address the ultimate legal conclusion as to obviousness. Thus, while the jury found that the prior art did not disclose all of the elements of the asserted claims[…], it never determined whether it would have been obvious to one skilled in the art to bridge any differences between the prior art and the claimed invention[…]. Id. at *17 (internal citations omitted). | ||
| [Secondary Conditions] We find no merit in I/P Engine’s argument that the commercial success of Google’s accused advertising systems provides objective evidence of non-obviousness. Evidence of commercial success, or other secondary considerations, is only significant if there is a nexus between the claimed invention and the commercial success. […]. Id. at *18 (footnote omitted)(internal citations omitted) )(internal quotation marks omitted). Accordingly, secondary considerations cannot overcome the strong prima facie case of obviousness[…]. Id. at *19 (footnote omitted)(internal citations omitted). | ||
| Procedural History | I/P Engine, Inc. (“I/P Engine”) brought an action against AOL Inc., Google Inc. (“Google”), IAC Search & Media, Inc., Gannett Company, Inc., and Target Corporation (collectively, the “Google Defendants”) alleging infringement of U.S. Patent Nos. 6,314,420 (the “’420 patent”) and 6,775,664 (the “’664 patent”). A jury returned a verdict finding that all asserted claims were infringed and not anticipated. J.A. 4163-73. The district court then determined that the asserted claims were not obvious and entered judgment in I/P Engine’s favor. See I/P Engine, Inc. v. AOL Inc., No. 11-CV-0512, 2012 U.S. Dist. LEXIS 166555 (E.D. VA Nov. 20, 2012) (“Non-Obviousness Order”). I/P Engine, Inc., at *2. | |
| Legal Reasoning (per curiam) | ||
| Background | ||
Representative claims at issue | Asserted claim 10 of the ’420 patent recites: A search engine system comprising: a system for scanning a network to make a demand search for informons relevant to a query from an individual user; a content-based filter system for receiving the informons from the scanning system and for filtering the informons on the basis of applicable content profile data for relevance to the query;and a feedback system for receiving collaborative feedback data from system users relative to informons considered by such users; the filter system combining pertaining feedback data from the feedback system with the content profile data in filtering each informon for relevance to the query[…]. I/P Engine, Inc., at *3–4 (internal citations omitted). | |
| Asserted claim 1 of the ’664 patent provides: A search system comprising: a scanning system for searching for information relevant to a query associated with a first user in a plurality of users; a feedback system for receiving information found to be relevant to the query by other users; and a content-based filter system for combining the information from the feedback system with the information from the scanning system and for filtering the combined information for relevance to at least one of the query and the first user[…]. Id. at *4 (internal citations omitted). | ||
Prior art | The WebHound reference explains that “content-based and automated collaborative filtering are complementary techniques, and the combination of [automated collaborative filtering] with some easily extractable features of documents is a powerful information filtering technique for complex information spaces.” […]. Id. at *9 (internal citations omitted). | |
| The Fab reference likewise notes that “[o]nline readers are in need of tools to help them cope with the mass of content available on the World-Wide Web,” and explains that “[b]y combining both collaborative and content-based filtering systems,” many of the weaknesses in each approach can be eliminated. […]. Id. at *9 (internal citations omitted). | ||
| Similarly, the Rose patent, which was filed in 1994 by engineers at Apple Computer, Inc., states that “[t]he prediction of relevance [to a user’s interests] is carried out by combining data pertaining to the content of each item of information with other data regarding correlations of interests between users.” […]. Id. at *9 (internal citations omitted). | ||
| In the Culliss system, Internet articles are assigned a “key term score” for significant words or phrases[…]. Culliss teaches content-based analysis because the key term score can initially be based on the number of times a particular term appears in an article[…]. Culliss also describes collaborative feedback analysis because the key term score will be increased when search engine users who query particular key terms select an article from the search results list[…]. Significantly, moreover, Culliss presents articles to users based upon their key term scores for the terms that were used in a user’s search query[…]. Culliss, therefore, squarely discloses using combined content and collaborative. Id., at 11–12 (footnote omitted)(internal citations omitted). Notably, moreover, Culliss discloses an embodiment in which articles that are given an “X-rated” score for adult content are filtered out and not displayed to persons who enter “Grated” queries[…]. Id. at *12–13 (internal citations omitted). | ||
| As the asserted patents themselves acknowledge, however, search engines, content based filtering, and collaborative filtering were all well known in the art at the time of the claimed invention[…]. Id. at *9 (internal citations omitted). | ||
| The Obviousness Determination | ||
Legal standards: Standard of review and Obviousness determination | “Whether the subject matter of a patent is obvious is a question of law and is reviewed de novo.” Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 993 (Fed. Cir. 2009); see PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1359 (Fed. Cir. 2007). I/P Engine, Inc., at *8. | |
| The factual findings underlying an obviousness determination include: (1) the scope and content of the prior art; (2) the differences between the claimed invention and the prior art; (3) the level of ordinary skill in the art; and (4) any objective indicia of non-obviousness. See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). Id. at *8. | ||
| Obviousness of query based filtering | Very basic logic dictates that a user’s search query can provide highly pertinent information in evaluating the overall relevance of search results[…]. As Ungar explained, the query would be just “sitting there” with the results of a search, and it would have been obvious to one skilled in the art “to keep around the query and use that also for filtering.”[…]. Because the query was readily available and closely correlated to the overall relevance of search results—and the prior art unequivocally disclosed hybrid content-based/collaborative filtering—retaining the query for use in filtering combined content and collaborative data was “entirely predictable and grounded in common sense.”[…] Id. at *14–15 (footnote omitted)(internal citations omitted). | |
| Claims obvious over Culliss and common sense | The Culliss patent renders the asserted claims obvious because it plainly discloses using combined content and collaborative data when analyzing information for relevance to a user’s search query. Id., at *11. While our conclusion that the asserted claims are invalid as obvious is grounded on the determination that the prior art, most notably Culliss, disclosed use of the search query when filtering combined content-based and collaborative data, the common sense of a skilled artisan would likewise have suggested retaining the query for use in the filtering process. Id. at *15. | |
| References other than Cullis | [The WebHound, Fab, and Rose] references, individually and collectively, teach the clear advantages of combining content-based and collaborative filtering. Id., at *9 (text added)(footnote omitted)(internal citations omitted). […] I/P Engine does not dispute that the prior art disclosed hybrid content-based and collaborative filtering. Id. at *10. | |
| Applicant’s admission | Given that its own patents acknowledge that using the original search query for filtering was a “conventional” technique, I/P Engine cannot now evade invalidity by arguing that integrating the query into the filtering process was a non-obvious departure from the prior art[…]. Id. at *10–11 (internal citations omitted). | |
| Regarding The Jury’s Findings | ||
| The jury’s findings are a “mixed bag” | First, not all of the jury’s findings support non-obviousness. To the contrary, the jury found that the invention claimed in the ’664 patent had been “independent[ly] invent[ed] . . . by others before or at about the same time as the named inventor thought of it.” […]. As we have previously made clear, near simultaneous development of a claimed invention by others can, under certain circumstances, demonstrate obviousness[…]. Thus, as the Google Defendants correctly note, the jury’s findings are a “mixed bag” on the obviousness question[…]. I/P Engine, Inc., at *16 (internal citations omitted). | |
| The jury’s findings appear internally inconsistent | Second, some of the jury’s findings appear internally inconsistent. In making their arguments on obviousness, neither I/P Engine nor the Google Defendants drew any distinction between the ’420 patent and the ’664 patent. Indeed, counsel for I/P Engine referred to the asserted patents simply as the “Lang and Kosak invention” when discussing differences between the prior art and the asserted claims. J.A. 3730. The jury found, however, that the invention claimed in the ’664 patent had been independently invented by others, whereas the invention claimed in the ’420 patent had not[…]. Likewise, while the jury found that there had been unsuccessful attempts by others to develop the invention claimed in the ’420 patent, it determined that there were no such attempts with respect to the invention disclosed in the ’664 patent[…]. Id. at *16–17 (internal citations omitted). | |
| Secondary Considerations | ||
| Scant evidence | Here, however, I/P Engine introduced scant evidence on secondary considerations[…]. Indeed, the district court did not even cite to the jury’s findings on secondary considerations when it concluded that the asserted claims were not invalid for obviousness[…]. I/P Engine, Inc., at *17 (internal citations omitted). | |
| No nexus | “Evidence of commercial success, or other secondary considerations, is only significant if there is a nexus between the claimed invention and the commercial success.” […] At trial, however, I/P Engine never established a nexus between the success of Google’s accused systems and the patented invention. Indeed, I/P Engine’s damages expert agreed that the accused technology encompassed numerous features not covered by the asserted patents, and acknowledged that he had not evaluated the issue of whether the patented technology drove consumer demand for Google’s advertising platform[…]. Id. at *18 (footnote omitted)(internal citations omitted). | |
| Jury deference | At trial, however, I/P Engine never established a nexus between the success of Google’s accused systems and the patented invention. Indeed, I/P Engine’s damages expert agreed that the accused technology encompassed numerous features not covered by the asserted patents, and acknowledged that he had not evaluated the issue of whether the patented technology drove consumer demand for Google’s advertising platform[…]. Id. at *18. | |
| Conclusory testimony | Likewise, although the jury found “unexpected and superior results from the claimed invention,” […], there was no evidence, other than conclusory testimony from Carbonell[…], that the results of the patented system were unexpected. Id. at *19 (internal citations omitted). | |
| Conclusion | ||
| Accordingly, the judgment of the United States District Court for the Eastern District of Virginia is reversed. I/P Engine, Inc., at *19. | ||
| MAYER, Circuit Judge, concurring. I/P Engine, Inc., Mayer Op., at *1. | ||
| Ineligible subject matter | Because the claims asserted by I/P Engine, Inc. (“I/P Engine”) disclose no new technology, but instead simply recite the use of a generic computer to implement a well-known and widely-practiced technique for organizing information, they fall outside the ambit of 35 U.S.C. § 101. And if this determination had been made in the first instance as directed by the Supreme Court, unnecessary litigation, and nearly two weeks of trial and imposition on citizen jurors, could have been avoided. I/P Engine, Inc., Mayer Op., at *1-2. | |
| No improvement to the technical field | I/P Engine’s claimed invention, which describes a system which filters information for relevance to a user’s query using combined content and collaborative data, see U.S. Patent No. 6,314,420 col.28 ll.1-15; U.S. Patent No. 6,775,664 col.27 ll.27-37, does not pass muster under section 101. The asserted claims do not meet subject matter eligibility requirements because they do not “improve the functioning of the computer itself” or “effect an improvement in any other technology or technical field.” Alice, 134 S. Ct. at 2359. To the contrary, the use of search engines was well-established and the clear advantages of combining content-based and collaborative filtering were widely recognized at the time of the claimed invention[…]. Id. at *6 (some internal citations omitted). | |
| Weighing disclosure versus claim breadth | I/P Engine’s asserted claims fall outside section 101 because their broad and sweeping reach is vastly disproportionate to their minimal technological disclosure. Id. at *7–8. | |
| Resolve 101 eligibility first | From a practical perspective, there are clear advantages to addressing section 101’s requirements at the outset of litigation. Patent eligibility issues can often be resolved without lengthy claim construction, and an early determination that the subject matter of asserted claims is patent ineligible can spare both litigants and courts years of needless litigation. To the extent that certain classes of claims—such as claims on methods of doing business—are deemed presumptively patent ineligible, moreover, the United States Patent and Trademark Office will have more resources to devote to expeditiously processing applications which disclose truly important advances in science and technology. Id. at *8–9. | |
| CHEN, Circuit Judge, dissenting. I/P Engine, Inc.,, Chen Op., at *1. | ||
| The jury decision | After a twelve-day trial during which both sides presented evidence about the teachings of the prior art, the jury made detailed factual findings pertaining to the obviousness of the ’420 and ’664 patents. The jury found, among other findings, that elements of the asserted claims were not present in the prior art. Based on the jury’s findings, the district court determined that the Defendants had failed to prove by clear and convincing evidence that the asserted claims were obvious. I/P Engine, Inc., Chen Op., at *1. | |
| Deference necessary | At the outset, it is worth noting that obviousness is a mixed question of law and fact. […]. Although we must examine the legal conclusion of obviousness de novo, we should tread lightly when reviewing a legal conclusion—reached by a trial court—that rests upon a jury’s findings of fact. […].Where a jury’s findings concerning the prior art are supported by substantial evidence, and where a trial court makes its obviousness determination based on those findings, I would exercise caution in wielding our own common sense as part of our review of the judgment. Id. at *2. (internal citations omitted). | |
| Significance of the jury’s findings | With respect to both patents, the jury found that the prior art did not disclose a tightly integrated search system, and could not filter information relevant to the query.[…]. The majority downplays the significance of the jury’s findings, explaining that the jury never determined whether it would have been obvious to one skilled in the art to bridge any differences between the prior art and the claimed invention[…]. Without such a determination, the majority suggests, we must resort to common sense to address the question left unanswered by the jury—that is, whether it would have been obvious to one of skill in the art to use the search query as part of the filtering of collaborative data. Id. at *4 (footnote omitted)(citations omitted)(internal quotation marks omitted). | |
| No Explicit Motivation in Record | [B]y contrast, the record does not suggest a benefit or rationale that would have caused a skilled artisan to use the query as part of collaborative filtering in 1998. Although we know that the query was “sitting there,” we do not know why one of skill in the art would have thought that mixing the query with the collaborative filter would produce, to use the language of Perfect Web, “successful” filtering. We need something beyond the invocation of the phrase “common sense” or “simple logic” to demonstrate the reason to combine the prior art references in this case. See KSR, 550 U.S. at 418; Innogenetics, 512 F.3d at 1374. Id. at *8–9. | |