Paper No. 38
`Entered: January 20, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE, INC.,
`Petitioner,
`
`v.
`
`MICHAEL MEIRESONNE,
`Patent Owner.
`____________
`
`Case IPR2014-01188
`Patent 8,156,096 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, GLENN J. PERRY, and TINA E. HULSE,
`Administrative Patent Judges.
`
`PERRY, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`I. INTRODUCTION
`In this inter partes review trial, instituted pursuant to 35 U.S.C. § 314,
`Petitioner Google, Inc. (“Google”) challenges the patentability of claims 16,
`17, 19, and 20 (“the challenged claims”) of U.S. Patent No. 8,156,096 B2
`(Ex. 1001, “the ’096 patent”), owned by Michael Meiresonne
`(“Meiresonne”). This Final Written Decision, issued pursuant to 35 U.S.C.
`§ 318(a) and 37 C.F.R. § 42.73, addresses issues and arguments raised
`during trial. For the reasons discussed below, we determine that Google has
`met its burden to prove, by a preponderance of the evidence, that claims 16,
`17, 19, and 20 of the ’096 patent are unpatentable under 35 U.S.C. § 103(a)
`based on the combined teachings of Hill and Finseth.
`A. Procedural History
`On July 18, 2014, Google filed a Petition (Paper 1, “Pet.”) requesting
`inter partes review of claims 16, 17, 19, and 20 of the ’096 patent.
`Meiresonne filed a Patent Owner’s Preliminary Response. Paper 6. In a
`January 22, 2015 Decision on Institution of Inter Partes Review (Paper 9,
`“Dec.”), we instituted trial on claims 16, 17, 19, and 20 of the ’096 patent on
`the ground of obviousness based on Hill1 and Finseth.2
`After institution, Meiresonne filed a Response to the Petition (Paper
`21, “Resp.”) and Google replied (Paper 26, “Reply”). Meiresonne moved to
`exclude Exhibit 1019 (Paper 28, “Meiresonne Mot.”); Google opposed
`(Paper 33, “Google Oppos.”); and Meiresonne replied (Paper 34). Google
`moved to exclude Exhibits 2004, 2005, 2009, 2010, 2015, 2016, 2018, and
`
`
`1 “World Wide Web Searching for Dummies, 2d Edition” by Brad Hill, IDG
`Books Worldwide” (1997) (“Hill”) (Exhibit 1006).
`2 U.S. Patent 6,271,840 B1 – Finseth et al. (“Finseth”) (Exhibit 1007).
`
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`2019, and portions of Exhibit 2013 (Paper 29, “Google Mot.”); Meiresonne
`opposed (Paper 32, “Meiresonne Oppos.”); and Google replied (Paper 35).
`We heard oral argument on October 7, 2014. Paper 37 (“Tr.”).
`B. Related Proceedings
`Meiresonne indicates that the ’096 patent is asserted in Industrial
`Quick Search, Inc. v. Google, Inc., Case No. 1:13-cv-00770-JTN, filed on
`July 17, 2013 in the Western District of Michigan. Paper 5, 1.
`
`II. THE ’096 PATENT (Ex. 1001)
`A. Described Invention
`The ’096 patent, titled “Supplier Identification and Locator System
`and Method,” issued on April 10, 2012, from U.S. Patent Application No.
`13/241,554, filed September 23, 2011. Ex. 1001. It sought to address a
`need for a directory website “to include numerous links to a variety of goods
`and services suppliers related to a particular topic while providing easy and
`quick navigation to and from any number of supplier Web sites so that the
`user can find out more detailed information than that which is provided by
`the directory.” Id. at 2:46–52. For example, a user who has carried out a
`search for “widgets” may locate and use a “key word displaying web page”
`as shown in Figure 2 of the ’096 patent, reproduced below.
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`Figure 2 shows an abbreviated directory page for widgets, a hypothetical
`good, according to an embodiment of the invention. Links (e.g., 18a, 18b,
`etc.) to search results (e.g., “AAA, Inc.”) are listed vertically. “Descriptive
`portions” (e.g., 20a, 20b, etc.) corresponding to those links are displayed
`adjacent to corresponding links. A “rollover viewing area” (22) displays an
`image of a web page corresponding to a subject matter link when the user
`rolls over (i.e., mouses over) a link or rolls over an associated descriptive
`portion. The ’096 patent Specification describes rollover viewing area 22 as
`follows:
`
`[W]hen a user’s cursor is located over such a link, prior to
`activation of the link, the window 22, which can be any
`suitable size and may or may not have a border, displays
`more detailed information regarding the specific supplier of
`the goods or services of the directory, including the
`supplier’s logo, without the user having to activate the link
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`and wait for a new internet page to load into their internet
`browser.
`
`Id. at 5:37–44. “[M]ore than one rollover window 22 may be utilized such
`that a rollover window is readily viewable whenever the user’s cursor is
`placed over any of the links.” Id. at 5:53–56.
`B. Illustrative Claim
`Of the challenged claims, claims 16 and 19 are independent. Claim
`17 depends from claim 16 and claim 20 depends from claim 19. Claim 19 is
`illustrative and is reproduced below.
`
`19. 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
`input receiving area and wherein a user inputs keyword search
`term information into the input receiving area;
`a key word results displaying web page that comprises:
`a listing of a plurality of related subject matter links to web sites
`that are also related to the key word search term information
`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 substantially over any of the links, at least substantially over
`a link’s descriptive portion, or substantially adjacent the
`corresponding descriptive portion and wherein the rollover
`
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`viewing area is located substantially adjacent to the plurality of
`related subject matter links.
`
`Claim 16 is substantially the same as claim 19, but requires the listing of
`links to be “vertical” and does not include the limitation directed to a “home
`page.”
`
`III. CLAIM CONSTRUCTION
`We analyzed each claim term in light of its broadest reasonable
`interpretation, as understood by one of ordinary skill in the art and as
`consistent with the Specification of the ’096 patent. 37 C.F.R. § 42.100(b);
`See In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1281–82 (Fed. Cir.
`2015). We construed the terms “keyword results displaying web page” and
`“in the same rollover viewing area” in the Decision on Institution. See Dec.
`6–7.
`
`During the course of the trial, neither party asked us to modify our
`constructions or construe any other claim terms. We see no reason to alter
`the constructions of these claim terms as set forth in the Decision on
`Institution, and we incorporate our previous analysis for purposes of this
`Decision. For the reasons set forth in the Decision on Institution, we
`interpret certain claim terms of the ’096 patent as follows:
`A. “keyword results displaying web page”
`The term “keyword results displaying web page” appears in all of the
`claims at issue. We construe the term “keyword results displaying web
`page” as a web page that displays search results—gathered information
`relating to one or more search term(s) (key words) input by a user to a search
`engine. This claim term does not in and of itself require links to web pages
`found in the search. Nor does it require that an input form for receiving the
`
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`key words appear on the keyword results displaying web page itself.
`The challenged claims themselves impose additional requirements on
`the “keyword results displaying web page,” including: 1) subject matter
`links to web sites, 2) descriptive portions, and 3) a rollover viewing area.
`See Claim 19.
`
`B. “in the same rollover viewing area”
`The term “in the same rollover viewing area” appears in all of the
`claims at issue.
`The claim language requires that for a “keyword results displaying
`web page” including the “rollover viewing area,” images resulting from
`rollovers are presented in the same rollover viewing area. The ’096 patent
`Specification does not specify that the rollover area must be rigidly fixed. In
`fact, it describes the possibility of multiple rollover windows. Ex. 1001,
`5:53–56. The broadest reasonable construction allows for some movement
`of the rollover viewing area to be accommodated by the claim language.
`
`IV. MEIRESONNE MOTION TO EXCLUDE EVIDENCE
`Meiresonne moves under Federal Rules of Evidence 402 and 403 to
`exclude a source code appendix to Finseth and all testimony and argument
`(Meiresonne Mot. 6–8) based on the source code because it is not prior art.
`Petitioner and Petitioner’s expert, Benjamin B. Bederson, Ph.D., rely on
`Exhibit 1019, which are excerpts of the file history of Finseth including the
`source code, referred to in Finseth as “Exhibit 2.” See, e.g., Pet. 24, 28; Ex.
`1011 ¶ 54; Ex. 1020 ¶ 18.
`Meiresonne argues that: 1) the source code was not explicitly
`incorporated by reference into the Finseth application (Meiresonne Mot. 1);
`and 2) the source code was not submitted in proper source code appendix
`
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`form in accordance with USPTO rules then in effect, which required a
`microfiche appendix, as set forth in the Manual of Patent Examining
`Procedure (7th ed., July 1998). Id. (citing Ex. 2002).
`Google opposes, arguing that the original Examiner recognized the
`source code as part of the Finseth patent, and the Finseth patent properly
`incorporated the source code appendix. Google Oppos. 1–5. According to
`Google, the Examiner did not object to the source code appendix as being
`improper or require that the source code be placed on a microfiche. Id. at 1.
`Meiresonne argues that we should exclude portions of Dr. Bederson’s
`Declaration (Ex. 1011) that rely upon the source code. Dr. Bederson’s
`references to the source code are examples that we do not rely upon in
`reaching our decision. Nor do we rely upon Exhibit 1019 itself.
`Meiresonne’s Motion to Exclude is therefore dismissed as moot.
`
`V. GOOGLE MOTION TO EXCLUDE EVIDENCE
`Google moves to exclude evidence as summarized in the table below.
`Google Mot.
`Exhibit
`Ex. 2004
`
`Response Page
`21, 24–25
`
`Ex. 2005
`
`Ex. 2009
`
`21
`
`21
`
`Basis
`F.R.E. 106, 401–403,
`801, 802, 901; Ex.
`1024 at 4–7; Ex. 1025
`at 5–7)
`F.R.E. 106, 401–03,
`801–02, 901 (Ex. 1024
`at 4–7; Ex. 1025 at 5–
`7) pp. 21
`F.R.E. 106, 401–03,
`801–02, 901 (Ex. 1024
`at 4–7; Ex. 1025 at 5–
`7)
`
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`Basis
`F.R.E. 106, 401–03,
`801–02, 901 (Ex. 1024
`at 4–7; Ex. 1025 at 5–
`7)
`F.R.E. 401–03, 702–03
`(Ex. 1025 at 1–2)
`F.R.E. 401–03, 801–
`02, 901 (Ex. 1025 at 2–
`5)
`F.R.E. 401–03, 801–
`02, 901 (Ex. 1025 at 2–
`5)
`F.R.E. 401–03, 901
`(Ex. 1025 at 5–7)
`F.R.E. 401–03, 901
`(Ex. 1025 at 2–5)
`
`Response Page
`
`21
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`18–23
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`22
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`22
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`23
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`Exhibit
`Ex. 2010
`
`Ex. 2013
`
`Ex. 2015
`
`Ex. 2016
`
`Ex. 2018
`
`Ex. 2019
`
`
`Meiresonne relies upon Exhibits 2004, 2005, 2009, and 2010 to
`establish Google customer satisfaction with an “Instant Previews” feature
`used by Google. Resp. 21–22. Instant Previews provided a clickable
`magnifying glass icon by which a user could view a web page image without
`actually visiting the web page. Id. According to Meiresonne, this evidence
`is relevant as objective evidence of nonobviousness.
`Google argues that customer satisfaction is not well-recognized as an
`objective indicator of nonobviousness. Reply 13.
`Nevertheless, such evidence is relevant if tied to the challenged
`claims. We therefore do not exclude the evidence. Rather, we admit it and
`weigh it appropriately. Performing an obviousness analysis requires that we
`consider objective evidence related to obviousness and we do so. This is not
`a jury trial. There is no danger in this case of “confusing the issues, . . .
`undue delay, [and] wasting time,” as provided for in F.R.E. 403.
`
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`Google argues that we should exclude Exhibits 2005 and 2009 as
`inadmissible hearsay under F.R.E. 801–802. Google Mot. 3. Exhibit 2005
`is a print of a web page from “Mashable,” authored by Ben Parr and
`including quotes from Google employee Ben Gomes, and titled “Google
`Now Lets You Preview Search Results Before You Click Them.” Exhibit
`2009 appears to be a print of a web page from the Forbes website including
`an article from “Forbes,” authored by Quentin Hardy and including quotes
`from Mr. Gomes, and titled “Google Fasterer!” Google argues that both
`exhibits are written assertions made by declarants not testifying in this
`proceeding, and that Meiresonne relies on both exhibits for the truth of the
`matter asserted in the statements contained in those exhibits. See Google
`Mot. 2–3 (citing Resp. 21 (“Google boasted about these test results to the
`tech media.”)).
`Exhibits 2005 and 2009 are articles that include statements from Mr.
`Gomes, a Google employee. Thus, the Gomes statements are potentially
`hearsay within hearsay. See F.R.E. 805. Meiresonne correctly notes,
`however, that the Gomes statements are made by a Google employee offered
`against Google. Meiresonne Oppos. 4–5. Therefore, the Gomes statements
`are not hearsay under F.R.E. 801(d)(2). Nevertheless, even if the Gomes
`statements do not constitute hearsay, we agree with Google that the articles
`themselves are being offered by Meiresonne to prove the truth of the matter
`asserted in those exhibits. As such, they are hearsay, and Meiresonne has
`not pointed to any hearsay exception that would apply to the articles under
`the circumstances. We therefore exclude Exhibits 2005 and 2009.
`Google argues that portions of the Declaration of Paul S. Jacobs,
`Ph.D. (Exhibit 2013) should be excluded under F.R.E. 401–403 and 702.
`
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`Google Mot. 2–12. In Exhibit 2013, Dr. Jacobs testifies to the alleged long-
`felt but unmet need of the claimed invention. Google requests that this
`Board strike paragraphs 40–49 of Exhibit 2013 as irrelevant and
`inadmissible under F.R.E. 401–403 and 702. Id.
` Federal Rule of Evidence 702 precludes expert testimony when it is
`not “based on sufficient facts or data” or is not “the product of reliable
`principles and methods.” F.R.E. 702(b)–(c). Expert opinion that is not
`“sufficiently tied to the facts of the case” is “not relevant and, ergo, non-
`helpful.” Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 591 (1993).
`F.R.E. 702 thus serves “a ‘gatekeeping role,’ the objective of which is to
`ensure that expert testimony admitted into evidence is both reliable and
`relevant.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356,
`1360 (Fed. Cir. 2008).
`Dr. Jacobs was deposed by Google and that deposition is of record as
`Exhibit 1023. We do not exclude Dr. Jacobs’s Declaration, but have taken
`into account all of the facts and circumstances, including the underlying
`basis for the testimony, and his cross-examination deposition (Ex. 1023), in
`weighing his testimony.
`Google argues that confidential Exhibits 2015 and 2016 should be
`excluded as irrelevant under Federal Rules of Evidence 401–403.
`Meiresonne relies on these exhibits to support his argument that users of the
`Google search engine experienced “customer satisfaction” with Google’s
`Instant Previews feature (Resp. 21–22).
`Exhibits 2015 and 2016 are relevant even though “customer
`satisfaction” is not a well-recognized “secondary consideration.” We
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`therefore do not exclude them. These exhibits are given appropriate weight
`in our consideration of the objective indicia of nonobviousness.
`Google argues that Exhibits 2018 and 2019 should be excluded as irrelevant
`and inadmissible under F.R.E. 401–403. Google Mot. 12. Meiresonne relies
`on Exhibits 2018 to support his allegation of a nexus.3 Resp. 23. According
`to Google, these exhibits should be excluded for the reasons explained
`above. We do not exclude the evidence and give it appropriate weight in our
`deliberations.
`
`VI. CHALLENGE RELYING ON HILL AND FINSETH
`A. Hill
`Hill is a book titled “World Wide Web Searching for Dummies.” Ex.
`1006. It discusses various search engines that were known and used in 1997.
`Petitioner focuses on Hill Figure 6.2, reproduced below.
`
`
`3 Meiresonne does not appear to cite Exhibit 2019 in the Response.
`
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`Id. at 101. Figure 6.2 illustrates a web page having a key word entry form
`for initiating a search. Search results for entered key words (e.g., “Left
`Bank”) are displayed as a vertical listing of descriptions of websites
`including hyperlinks to those websites. Ex. 1006, Fig. 6.2; Pet. 18.
`
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`B. Finseth
`Finseth describes a graphical search engine visual index. Ex. 1007,
`Title. Finseth Figure 5 is reproduced below.
`
`
`
`
`
`Figure 5 illustrates a screen output resulting from the described visual index
`method. Ex. 1007, 3:41–43. On this screen, a user can review results of an
`Internet search or other URL4 listing. Id. at 8:49–51. A “dedicated
`graphical screen area” 140, which may be resized or moved in real time
`using a mouse, allows a user to preview search results. Pet. 18 (citing Ex.
`1007, 8:31–38). When a cursor is positioned over a hyperlink (left side), an
`associated rendered web page 142 is displayed in area 140. Pet. 18–19
`(citing Ex. 1007, 12:32–36); see Ex. 1011 ¶¶ 52–53. This rendered web
`page includes an image of the page and hyperlinks. Ex. 1007, 8:46–55.
`Finseth describes how to generate a preview window (e.g., Figure 3
`
`
`4 Uniform Resource Locator (“URL”).
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`and its description). However, as explained below, we find no suggestion in
`Finseth that descriptive text should be replaced. Google points to Finseth
`Figure 3, reproduced below.
`
`Finseth Figure 3 is a schematic diagram demonstrating Finseth’s visual
`index method. User 90 requests and receives information 92 from browser
`94 having interface 96. That request is passed to search engine 110. Search
`engine 110 includes user interface 112 that provides formatted output to
`browser user interface 96 when response or reply 114 is delivered from
`search engine 110 back to browser user interface 96. “The search engine
`response may be determined predominately or in significant part by the
`visual index method page rendering process 52 that is associated with both
`the search engine user interface 112 and search engine database 116.” Id. at
`
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`7:21–25.
`[T]he search engine interface 112 may parse the request and
`pass it to the search engine database 116. The search engine
`database may either or both rely upon its list of URLs with
`summary information and/or make request of the web
`crawler 32 that a search be performed. The web crawler 32
`retrieves the data associated with the URLs from either the
`web crawler search or from the search engine database 116.
`
`Id. at 7:33–41. Web crawler 32 passes the associated media and URL
`information to visual index method page renderer process 52. Rendered
`pages are output to user interface 112. Image maps may also be included
`with the rendered images. Interface 112 “transmits formatted and rendered
`pages 38 in its response 114 to the browser user interface 96 and ultimately
`to the user 90.” Id. at 7:51–53.
`C. Level of Ordinary Skill in the Art
`“Section 103(a) forbids issuance of a patent when ‘the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 405
`(2007) (quoting 35 U.S.C. § 103(a)). Dr. Bederson testifies that he believes
`a person of ordinary skill in the art would have had “at least a bachelor’s
`degree in computer science or related field, and approximately one year of
`experience in web site design.” Ex. 1011 ¶ 27. Dr. Jacobs agrees. Ex. 2013
`¶¶ 17–18. Based on the record presented, including our review of the
`’096 patent and the types of problems and solutions described in the
`’096 patent and cited prior art, we determine that a person of ordinary skill
`in the art would have had an undergraduate degree in computer science or a
`
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`related field (or equivalent work experience) and at least one year of
`experience with web site design, and apply this level of ordinary skill in the
`art for purposes of this Decision.
`D. Combining Hill and Finseth
`There is no dispute that each limitation of the challenged claims is
`found in one or the other of Hill and Finseth. See Pet. 20–29. For example,
`with respect to claim 19, Hill describes the listing of descriptive links and
`descriptive portions. Id. at 20–23. Finseth describes the claimed rollover
`viewing area. Id. at 23–25. However, the parties disagree as to whether the
`teachings of Hill and Finseth would have been combined by one of ordinary
`skill in the art to meet the limitations of the challenged claims. During trial,
`the parties focused on motivation to combine, whether Finseth teaches away
`from combining, and whether or not there is objective evidence of
`nonobviousness.
`Google argues that there was ample motivation to combine Hill and
`Finseth. Pet. 19–20 (citing Ex. 1011 ¶¶ 59–61); Reply 2–4. Google notes
`that the two references themselves provide evidence that they pertain to the
`same field of endeavor and would have been known to one of ordinary skill
`in this field of endeavor. Pet. 19–20. Hill discloses known elements of
`conventional Internet search engines. Id. When a user inputs a key word, a
`search results page returns a listing of results and hyperlinks to follow to
`find additional results. Id. at 20–23. Finseth discloses how to improve
`search results for a conventional search engine. Id. at 23–25. Both the Hill
`reference and the Finseth reference discuss precisely the same conventional
`search engines (e.g., AltaVista, Lycos, Infoseek, Excite, and Yahoo). Id. at
`20–25. Thus, according to Google, one of ordinary skill would have been
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`motivated to use the Finseth preview window in combination with the Hill
`search results to obtain the predictable result of a display enabling the user to
`better review those results more quickly. Id. at 19–20.
`Google argues that the references themselves provide evidence of a
`motivation to combine. Id. Google points to passages of Finseth describing
`the problem to be solved, namely that known search engines returned results
`in the form of a list of hyperlinks with cursory if not cryptic initial text
`presentations on those web pages. Id. (citing Ex. 1007, 1:47–59). The
`known vertical listing of search results made it difficult for a user to quickly
`find a desired link. Finseth’s solution was to present a thumbnail image or
`other representational graphic information accompanying the hyperlinks.
`Ex. 1007, 2:25–31.
`Meiresonne argues that the Petition and supportive testimony of
`Dr. Bederson (Ex. 1011) do not provide a reason that one of ordinary skill
`would have made the claimed combination, referring to Dr. Bederson’s
`explanation of motivation as “broad” and not specifically directed to why
`one would have kept the descriptive text when adding Finseth’s web page
`graphical representation. Resp. 13. Meiresonne also points out that both
`Hill and Finseth identify problems with text descriptions that accompany
`links on a search results page, with Hill stating that descriptions can be
`“about as informative as a paragraph full of gibberish” and Finseth stating
`that descriptive text can be “cursory, if not cryptic.” Id. at 8 (citing
`Ex. 1006, 2, Ex. 1007, 1:54–63). According to Meiresonne, a person of
`ordinary skill in the art would not have had reason to incorporate Finseth’s
`rollover viewing area in Hill’s arrangement because Finseth eliminates and
`replaces the descriptive portions, rather than merely adding them to the
`
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`search results page. Id. at 8–12. Meiresonne also challenges the testimony
`of Dr. Bederson. Id. at 13–16.
`Meiresonne’s arguments are not persuasive, however, because they do
`not consider Finseth’s teachings as a whole. See Medichem, S.A. v. Rolabo,
`S.L., 437 F.3d 1157, 1166 (Fed. Cir. 2006) (explaining that in an
`obviousness analysis, “the prior art must be considered as a whole for what
`it teaches”). Although it is true that Finseth describes the descriptive text of
`the time as “cursory, if not cryptic,” Finseth describes an express benefit to
`using a graphical preview of the contents of the linked web pages—namely,
`that more information is available to the user. See Pet. 19–20; Reply 9–11;
`Ex. 1011 ¶¶ 60–61; Ex. 1007, 1:54–63 (“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.”), 2:27–34 (the graphical
`preview “greatly enhances the ability to review search engine results”),
`3:11–14 (the graphical preview “provide[s] quicker review of search engine
`results”), 8:30–32 (“more convenient perusal or review of the results of the
`Internet search or other URL listing”), 10:31–63 (“By providing the visual
`index method of the present invention, vast amounts of graphical data can be
`perused by a user much faster than by previously available methods or
`means.”); see also Brown & Williamson Tobacco Corp. v. Philip Morris
`Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000) (evidence of a motivation to
`combine prior art references “may flow from the prior art references
`themselves”). Thus, Finseth would have suggested to a person of ordinary
`skill in the art that the graphical view is better than the descriptive text of the
`time, but does not suggest that the descriptive text should be abandoned
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`wholesale. In the end, both sources—the descriptive text and the graphical
`preview—provide information useful to the user; the only difference is that
`one is more useful than the other.
`We are persuaded by Google’s argument that in its proposed
`combination, the elements disclosed in Hill and Finseth would operate in
`known ways to achieve predictable results. See Pet. 19; Reply 4; Ex. 1011
`¶ 59. Additionally, based on the record presented, we do not see any reason
`why incorporating Finseth’s preview feature into the arrangement of Hill
`would have achieved an unexpected result or would have been uniquely
`challenging or otherwise beyond the level of skill of an ordinarily skilled
`artisan. See KSR, 550 U.S. at 416, 421; Leapfrog Enters., Inc. v.
`Fisher-Price, Inc., 485 F.3d 1157, 1161–62 (Fed. Cir. 2007). Google’s
`arguments as to why a person of ordinary skill in the art would have had
`reason to combine the teachings of Hill and Finseth are supported by the
`disclosures of the references themselves, as well as the testimony of
`Dr. Bederson,5 and are persuasive. See KSR, 550 U.S. at 417–18 (requiring
`“some articulated reasoning with some rational underpinning to support the
`legal conclusion of obviousness” based on the combined teachings of the
`references) (quotation omitted)).
`
`5 We are not persuaded by Meiresonne’s arguments regarding
`Dr. Bederson’s testimony. See Resp. 14–16. As Petitioner points out,
`Dr. Bederson testified regarding reasons to combine the references in his
`declaration. See Ex. 1011 ¶¶ 59–61. Meiresonne’s questions during
`cross-examination, to which Dr. Bederson responded that he had no
`“opinion,” were directed to specific aspects of Hill, not the general
`combination that Dr. Bederson describes in his declaration. See Ex. 2014,
`37:24–38:21. Dr. Bederson also corrected his testimony later during
`cross-examination and explained why adding Finseth’s preview functionality
`would have improved the “user experience.” Id. at 38:24–39:15.
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`E. Teaching Away
`Meiresonne argues that Finseth “[led] in a path different from the ’096
`patent claims, and disparaged the claimed ‘descriptive portions.’” Resp. 12.
`Thus, according to Meiresonne, combining Hill and Finseth would have led
`to a search results display on which the Finseth image representation would
`have replaced Hill’s descriptive portions, rather than supplemented them.
`Id. According to Meiresonne, at the time of the invention, Finseth’s
`graphical approach, without descriptive portions, would have been the
`obvious solution to the problem of gibberish and cursory descriptions that
`both Hill and Finseth identified. Id. Further, combining Hill and Finseth to
`achieve the ’096 patent claims would require the impermissible use of
`hindsight according to Meiresonne. Resp. 17. Google disagrees, arguing
`that Finseth nowhere describes that text should be replaced. Reply 8–9; Tr.
`9:1–5.
`Petitioner argued (Reply 26, 7–8; Tr. 9:6–10:13) that Figure 3 of
`Finseth shows that the Finseth invention is used in the context of a search
`engine running on a server. We note the search engine in the upper right-
`hand portion of Figure 3. The Finseth process returns search results through
`search engine database 116. Those results are passed to both the search
`engine and renderer process 52, which generates thumbnail images of web
`pages 38. User interface 112 determines how those thumbnail images are
`displayed by browser 96. Thus, Finseth appears to be agnostic as to how the
`information is presented.
`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
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`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). A reference does not
`teach away if it expresses merely a general preference for an alternative
`invention from amongst options available to the ordinarily skilled artisan,
`and the reference does not “criticize, discredit, or otherwise discourage the
`solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
`F. Claim 19
`Google presents a detailed reading of claim 19 on Hill and Finseth at
`pages 17–29 of the Petition. Hill discloses all of the limitations of claim 19
`except for the rollover viewing area, which is taught by Finseth. Finseth
`provides a detailed explanation of how to provide a rollover preview for we