Trials@uspto.gov
`571-272-7822
`
`Paper No. 38
`Entered: January 20, 2016
`
`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 CFR. $ 42.73
`
`
`571-272-7822
`
`Paper No. 38
`Entered: January 20, 2016
`
`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 CFR. $ 42.73
`
`
`
`Case IPR2014-01188 |
`Patent 8,156,096 B2
`
`I. INTRODUCTION
`In this interpartes 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 preponderanceofthe 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
`
`OnJuly 18, 2014, Google filed a Petition (Paper 1, “Pet.”) requesting
`
`inter partes review of claims 16, 17, 19, and 20 of the ’096 patent.
`
`Meiresonnefiled a Patent Owner’s Preliminary Response. Paper 6. Ina
`
`January 22, 2015 Decision on Institution of Inter Partes Review (Paper9,
`“Dec.”), we instituted trial on claims 16, 17, 19, and 20 of the 7096 patent on
`the ground of obviousness based on Hill’ and Finseth.?
`
`After institution, Meiresonnefiled a Responseto 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 Meiresonnereplied (Paper 34). Google
`
`movedto exclude Exhibits 2004, 2005, 2009, 2010, 2015, 2016, 2018, and
`
`! “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).
`
`2
`
`
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`Case IPR2014-01188
`Patent 8,156,096 B2
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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).
`
`Weheardoral argument on October 7, 2014. Paper 37 (“Tr.”).
`
`B. Related Proceedings
`
`Meiresonneindicates that the ’096 patent is asserted in Industrial
`
`Quick Search, Inc. v. Google, Inc., Case No. 1:13-cv-00770-JIN,filed on
`
`July 17, 2013 in the Western District of Michigan. Paper5, 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 numerouslinks to a variety of goods ~
`
`and services suppliers related to a particular topic while providing easy and
`
`quick navigation to and from any numberof supplier Websites so that the
`
`user can find out more detailed information than that which is provided by
`
`the directory.” Jd. at 2:46—-52. For example, a user who hascarried out a
`
`search for “widgets” may locate and use a “key word displaying web page”
`
`as shownin Figure 2 of the ’096 patent, reproduced below.
`
`
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`Case IPR2014-01188
`Patent 8,156,096 B2
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`/
`
`\ FADDRESS|htip//widgetscomssCs=“‘“‘(‘“CSN™#O;OC!CO#C(*dSYYOOOOCCCOCOCSdLSCé‘ésS
`‘s
`2477)
`QUICK SEARCH
`ENGINE
`A DETAILED DIRECTORY OF WIDGETS, EQUIPMENT AND MANUFACTURERS,20a
`AAAinc,
`18aGrandRapids, MI
`616-555-5555
`BBBinc.
`:
`.
`“Grand Rapids, MI
`616-555-5555
`
`¢
`A A A mc
`.
`
`—
`
`1b
`
`Designers.and manufacturers
`
`2
`
`Manufacturers of industriat widgets
`
`20b
`
`:
`:
`Ite
`be
`Manufacturers of a complete line of industrial
`‘
`rs
`widgets used for most applications:
`__ 20c
`
`MANUFACTURERS OF
`INDUSTRIAL STRENGTH
`WIDGETS USEDIN ALMOST
`EVERY APPLICATION ©
`IMAGINABLE
`.
`AAA inc,
`GrandRapids, MI
`616-555-5555
`
`eranSeni. ml
`tic
`——
`tedae sds. Hi
`a
`apids,
`616-555-5555
`EEEinc.
`a .
`‘ee
`Oranecepeng
`FFFinc.
`gfGrand Rapids, MI
`616-555-5555
`
`Manufacturers of a complete line of residential
`and commercially used widgets
`206.
`Manufacturers of commerciat widgets used
`tn
`hi
`:
`:
`ee
`obs
`in high weight restricted situations
`299
`
`of industrial widgets
`
`,20F
`
`Designers.of widgets
`
`FIG, 2
`
`Figure 2 showsan abbreviated directory page for widgets,a hypothetical
`good, according to an embodimentof 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.) correspondingto 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]hena user’s cursoris located over suchalink, prior to
`activation of the link, the window 22, which can be any
`suitable size and may or may not have a border, displays
`moredetailed 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
`
`
`
`Case IPR2014-01188
`Patent 8,156,096 B2
`
`and wait for a new internet page to load into their internet
`browser.
`
`Id. at 5:37-44. “[MlJore than one rollover window 22 maybeutilized such
`
`that a rollover window is readily viewable wheneverthe user’s cursor is
`
`placed over any ofthe links.” Jd. at 5:53—56.
`
`B.Illustrative Claim
`
`Ofthe 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 website 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 wordresults displaying web page that comprises:
`a listing of a plurality of related subject matter links to websites
`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
`portionis an associated descriptive portion thatis 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 morethan oneofthe related subject matterlinks
`in the same rollover viewing area when the user’s cursoris at
`least substantially over any ofthe 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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`Case IPR2014-01188
`Patent 8,156,096 B2
`
`viewing area is located substantially adjacent to the plurality of
`related subject matterlinks.
`
`Claim 16 is substantially the same as claim 19, but requiresthe listing of
`
`links to be “vertical” and does not include the limitation directed to a “home
`
`page.”
`
`II. CLAIM CONSTRUCTION
`
`Weanalyzed each claim term in light of its broadest reasonable
`
`interpretation, as understood by oneof 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 onInstitution. See Dec.
`
`6-7.
`
`During the course ofthetrial, neither party asked us to modify our
`
`constructions or construe any other claim terms. We see no reasontoalter
`
`the constructions of these claim termsas set forth in the Decision on
`
`Institution, and we incorporate our previous analysis for purposesofthis
`
`Decision. For the reasonsset forth in the Decision on Institution, we
`
`interpret certain claim termsof the ’096 patent as follows:
`
`A. “keyword results displaying web page”
`
`The term “keyword results displaying web page” appearsin all of the
`
`claims at issue. We construe the term “keyword results displaying web
`
`page” as a web pagethat displays search results—gathered information
`relating to one or more search term(s) (key words) input by a userto a search
`
`engine. This claim term does notin andofitself require links to web pages
`
`found in the search. Nor doesit require that an input form for receiving the
`
`
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`Case IPR2014-01188
`Patent 8,156,096 B2
`
`key words appear on the keywordresults displaying web pageitself.
`
`The challenged claims themselves impose additional requirements on
`
`the “keywordresults displaying web page,” including: 1) subject matter
`
`links to websites, 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” appearsin all of the
`claimsat issue.
`|
`
`The claim language requires that for a “keywordresults 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 mustberigidly 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 bythe claim language.
`
`IV. MEIRESONNE MOTION TO EXCLUDE EVIDENCE
`
`Meiresonne movesunderFederal Rules of Evidence 402 and 403 to
`
`exclude a source code appendix to Finseth andall testimony and argument
`
`(Meiresonne Mot. 6—8) based on the source code becauseit is not priorart.
`
`Petitioner and Petitioner’s expert, Benjamin B. Bederson,Ph.D., rely on
`Exhibit 1019, which are excerptsofthe file history of Finseth including the
`
`source code, referred to in Finseth as “Exhibit 2.” See, e.g., Pet. 24, 28; Ex.
`
`1011 9 54; Ex. 1020 { 18.
`
`Meiresonnearguesthat: 1) the source code wasnot 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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`Case IPR2014-01188
`Patent 8,156,096 B2
`form in accordance with USPTOrulesthen in effect, which required a
`microfiche appendix, as set forth in the Manual of Patent Examining
`Procedure (7"ed., July 1998). Jd. (citing Ex. 2002).
`
`Google opposes, arguing that the original Examiner recognized the
`
`source codeas 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
`
`improperor require that the source code be placed on a microfiche. /d. at 1.
`
`Meiresonne arguesthat 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 werely upon Exhibit 1019 itself.
`Meiresonne’s Motion to Excludeis therefore dismissed as moot.
`
`V. GOOGLE MOTION TO EXCLUDE EVIDENCE
`
`Google movesto exclude evidence as summarizedin the table below.
`
`Google Mot.
`
`
`|__—iExhibit_|—sBasis__—|~——sResponsePage_
`
`
`
`Ex. 2004 FRE. 106, 401-403,|21, 24-25
`
`801, 802, 901; Ex.
`1024 at 4-7; Ex. 1025
`
`
`
`
`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-
`
`
`
`
`
`
`Ex. 2009
`
`
`
`
`
`
`
`
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`Case IPR2014-01188
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`Ex. 2010
`
`Ex. 2015
`
`Ex. 2016
`
`
`
`
`22ea5
`
`
`
`F.R.E. 106, 401-03,
`801-02, 901 (Ex. 1024
`
`
`at 4-7; Ex. 1025 at 5—
`
`
`7
`
`
`21
`
`Ex. 1025 at 1-2
`F.R.E. 401-03, 801-
`02, 901 (Ex. 1025 at 2-
`5
`F.R.E. 401-03, 801-
`
`22
`
`Ex. 1025 at 5-7
`
`
`Ex. 1025 at 2—5
`
`
`
`
`
`
`Meiresonnerelies upon Exhibits 2004, 2005, 2009, and 2010 to
`
`establish Google customersatisfaction with an “Instant Previews” feature
`
`used by Google. Resp. 21-22. Instant Previews provided a clickable
`
`magnifying glass icon by whicha user could view a web page image without
`actually visiting the web page. Jd. According to Meiresonne,this evidence
`is relevant as objective evidence of nonobviousness.
`
`Google argues that customersatisfaction is not well-recognized as an
`
`objective indicator of nonobviousness. Reply 13.
`
`Nevertheless, such evidenceis relevantif 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. Thisis not
`a jury trial. There is no dangerin this case of “confusing the issues,. .
`.
`
`undue delay, [and] wasting time,” as provided for in F.R.E. 403.
`
`
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`Case IPR2014-01188
`Patent 8,156,096 B2
`
`Google argues that we should exclude Exhibits 2005 and 2009as
`
`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,andtitled “Google
`NowLets You Preview Search Results Before You Click Them.” Exhibit
`
`2009 appearsto 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,andtitled “Google Fasterer!”” Google argues that both
`
`exhibits are written assertions made by declarants nottestifying in this
`
`proceeding, and that Meiresonnerelies 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 2009arearticles that include statements from Mr.
`Gomes, a Google employee. Thus, the Gomesstatements are potentially
`
`hearsay within hearsay. See F.R.E. 805. Meiresonnecorrectly notes,
`
`however, that the Gomesstatements are made by a Google employeeoffered
`
`against Google. Meiresonne Oppos. 4—5. Therefore, the Gomesstatements
`
`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 Meiresonneto provethetruth 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. Wetherefore 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.
`
`10
`
`
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`Case IPR2014-01188
`Patent 8,156,096 B2
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`Google Mot. 2-12. In Exhibit 2013, Dr. Jacobstestifies to the alleged long-
`
`felt but unmet need of the claimed invention. Google requests thatthis
`
`Board strike paragraphs 40-49 of Exhibit 2013 as irrelevant and
`“inadmissible under F.R.E. 401-403 and 702. Jd.
`
`Federal Rule of Evidence 702 precludes expert testimony whenit 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 ‘gatekeepingrole,’ the objective of whichis to
`
`ensure that expert testimony admitted into evidenceis 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 accountall 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.
`
`Meiresonnerelies on these exhibits to support his argumentthat users of the
`
`Google search engine experienced “customersatisfaction” with Google’s
`
`Instant Previewsfeature (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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`Case IPR2014-01188
`Patent 8,156,096 B2
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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 excludedasirrelevant
`
`and inadmissible under F.R.E. 401-403. Google Mot. 12. Meiresonnerelies
`
`on Exhibits 2018 to support his allegation of a nexus.> Resp. 23. According
`
`to Google, these exhibits should be excluded for the reasons explained
`
`above. Wedo not exclude the evidence and give it appropriate weight in our
`
`deliberations.
`
`VI. CHALLENGE RELYING ON HILL AND FINSETH
`
`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.
`
`A. Hill
`
`Petitioner focuses on Hill Figure 6.2, reproduced below.
`
`3 Meiresonne doesnot appearto cite Exhibit 2019 in the Response.
`
`12
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`
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`Link to site
`
`Lycos.
`
`Left Bank Restaurants Left Bank reviewedby smh
`
`Bermstein 507 Magnolia Avenue Larkspur, CA 94...
`httpJems bpe.com iparts (100%, 2 of 2 terms}
`t
`
`Bex 981 (Rte, 172) City’ Blue Hill State:..
`NittyJAnamare hideuster.comt
`(29%, 2 af 2 terns}
`_
`on Gonk {20/7
`
`CA
`| arkspus,
`4aqnotta Ave,
`b Ave, Larkspur, CA} Samy
`
`.
`
`Figure 6-2:
`Part of a
`search
`results
`page in
`
`!
`
`,
`
`:
`
`URL Relevancy percentage
`
`Site description
`
`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.
`
`13
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`Case IPR2014-01188
`Patent 8,156,096 B2
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`B. Finseth
`
`Finseth describes a graphical search engine visual index. Ex. 1007,
`
`Title. Finseth Figure 5 is reproduced below.
`
`wel~aeSse8 SSdydaheeae ftriesvt
`
`ase“age=, eet
`
`“| SEARCH RESULT 1
`S| SEARCH RESULT2
`
`SEARCH RESULT
`
`ee7.
`
`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 URL’listing. Id. at 8:49-51. A “dedicated
`
`graphical screen area” 140, which may be resized or movedin real time
`
`using a mouse, allows a user to preview search results. Pet. 18 (citing Ex.
`
`1007, 8:31-38). When a cursoris positioned over a hyperlink (left side), an
`
`associated rendered web page 142is displayed in area 140. Pet. 18-19
`
`(citing Ex. 1007, 12:32—36); see Ex. 1011 4952-53. This rendered web
`
`page includes an imageof 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”).
`
`14
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`Case IPR2014-01188
`Patent 8,156,096 B2
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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.
`
`PROCESS ON SERVER
`
`peceeeeeinieaer
`
`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 autput to
`
`browseruser interface 96 whenresponseorreply 114 is delivered from
`
`search engine 110 back to browseruser interface 96. “The search engine
`response may be determined predominately orin 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
`
`15
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`Case IPR2014-01188
`Patent 8,156,096 B2
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`7:21-25.
`
`[T]he search engine interface 112 may parse the request and
`passit to the search engine database 116. The search engine
`database mayeither or both rely uponits 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 outputto user interface 112. Image maps mayalso be included
`
`with the rendered images. Interface 112 “transmits formatted and rendered
`
`pages 38 in its response 114 to the browseruser interface 96 and ultimately
`
`to the user 90.” Jd. 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 andthe prior art are such
`
`that the subject matter as a whole would have been obviousat the time the
`
`invention was madeto a person having ordinary skill in the art to which said
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`subject matter pertains.”” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 405
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`(2007) (quoting 35 U.S.C. § 103(a)). Dr. Bedersontestifies that he believes
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`a person ofordinary skill in the art would have had “at least a bachelor’s
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`degree in computerscienceor related field, and approximately one year of
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`experience in website design.” Ex. 101127. Dr. Jacobs agrees. Ex. 2013
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`q{ 17-18. Based on the record presented, including our review ofthe
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`’096 patent and the types of problems andsolutions described in the
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`°096 patent andcited prior art, we determine that a person ofordinary skill
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`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
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`art for purposes of this Decision.
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`D. Combining Hill and Finseth
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`There is no dispute that each limitation of the challenged claimsis
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`foundin one orthe other of Hill and Finseth. See Pet. 20-29. For example,
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`with respect to claim 19, Hill describes the listing of descriptive links and
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`descriptive portions. /d. at 20-23. Finseth describes the claimed rollover
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`viewing area. Jd. at 23-25. However, the parties disagree as to whether the
`teachings ofHill and Finseth would have been combined by one ofordinary
`skill in the art to meet the limitations of the challenged claims. Duringtrial,
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`the parties focused on motivation to combine, whether Finseth teaches away
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`from combining, and whetheror not there is objective evidence of
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`nonobviousness.
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`Google argues that there was ample motivation to combine Hill and
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`Finseth. Pet. 19-20 (citing Ex. 1011 9 59-61); Reply 2-4. Google notes
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`that the two references themselves provide evidence that they pertain to the
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`samefield of endeavor and would have been known to oneofordinary skill
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`in this field of endeavor. Pet. 19-20. Hill discloses known elements of
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`conventional Internet search engines. Jd. When a user inputs a key word,a
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`search results page returns a listing of results and hyperlinks to follow to
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`find additional results.
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`/d. at 20—23. Finseth discloses how to improve
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`search results for a conventionalsearch engine. Id. at 23-25. Both the Hill
`reference and the Finseth reference discuss precisely the same conventional
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`search engines(e.g., AltaVista, Lycos, Infoseek, Excite, and Yahoo). /d. at
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`20-25. Thus, according to Google, one of ordinary skill would have been
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`motivated to use the Finseth preview windowin combination with the Hill
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`search results to obtain the predictable result of a display enabling the user to
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`better review those results more quickly. /d. at 19-20.
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`Google argues that the references themselves provide evidence of a
`motivation to combine. Id. Google points to passages ofFinseth describing
`the problem to be solved, namely that knownsearch enginesreturned results
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`in the form of a list of hyperlinks with cursory if not cryptic initial text
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`presentations on those webpages. /d. (citing Ex. 1007, 1:47—59). The
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`knownvertical listing of search results madeit difficult for a user to quickly
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`find a desired link. Finseth’s solution was to present a thumbnail image or
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`other representational graphic information accompanying the hyperlinks.
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`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
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`would have madethe claimed combination,referring to Dr. Bederson’s
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`explanation of motivation as “broad” and not specifically directed to why
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`one would havekept the descriptive text when adding Finseth’s web page
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`graphical representation. Resp. 13. Meiresonnealso points out that both
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`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 paragraphfull of gibberish” and Finseth stating
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`that descriptive text can be “cursory, if not cryptic.” Jd. at 8 (citing
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`Ex. 1006, 2, Ex. 1007, 1:54-63). According to Meiresonne, a person of
`
`ordinary skill in the art would not have had reasonto 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. Jd. at 8-12. Meiresonnealso challenges the testimony
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`of Dr. Bederson.
`/d. 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,
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`S.L., 437 F.3d 1157, 1166 (Fed. Cir. 2006) (explaining that in an
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`obviousness analysis, “the prior art must be considered as a whole for what
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`it teaches”). Althoughit is true that Finseth describes the descriptive text of
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`the time as “cursory,if not cryptic,” Finseth describes an express benefit to
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`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;
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`Ex. 1011 9 60-61; Ex. 1007, 1:54—-63 (“Such review orperusal of some
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`summary form of a web page, even if cursory, provides a significant amount
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`of information as the form in whichgraphical information is presented often
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`indicates to a significant degree its content.”), 2:27—34 (the graphical
`preview “greatly enhancesthe ability to review search engineresults”),
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`3:11—14 (the graphical preview “provide[s] quicker review of search engine
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`results”), 8:30-32 (“more convenient perusal or review ofthe results of the
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`Internet search or other URL listing”), 10:31-63 (“By providing the visual
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`index method ofthe present invention, vast amounts of graphical data can be
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`perused by a user muchfaster than by previously available methodsor
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`means.”); see also Brown & Williamson Tobacco Corp. v. Philip Morris
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`Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000) (evidence of a motivation to
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`combineprior art references “may flow from the prior art references
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`themselves”). Thus, Finseth would have suggested to a person of ordinary
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`skill in the art that the graphical view is better than the descriptive text of the
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`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—provideinformation usefulto the user; the only differenceis that
`one is more useful than the other.
`
`Weare persuaded by Google’s argumentthat in its proposed
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`combination, the elements disclosed in Hill and Finseth would operate in -
`knownwaysto achieve predictable results. See Pet. 19; Reply 4; Ex. 1011
`q 59. Additionally, based on the record presented, we do not see any reason
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`whyincorporating Finseth’s preview feature into the arrangement ofHill
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`would have achieved an unexpected result or would have been uniquely
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`challenging or otherwise beyondthe level of skill of an ordinarily skilled
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`artisan. See KSR, 550 U.S. at 416, 421; Leapfrog Enters., Inc. v.
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`Fisher-Price, Inc., 485 F.3d 1157, 1161-62 (Fed. Cir. 2007). Google’s
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`arguments as to whya personofordinary skill in the art would have had
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`reason to combinethe teachings of Hill and Finseth are supported by the
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`disclosures of the references themselves, as well as the testimony of
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`Dr. Bederson,° and are persuasive. See KSR, 550 U.S.at 417-18 (requiring
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`“some articulated reasoning with somerational underpinning to support the
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`legal conclusion of obviousness” based on the combined teachingsof the
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`references) (quotation omitted)).
`
`> Weare not persuaded by Meiresonne’s arguments regarding
`Dr. Bederson’s testimony. See Resp. 14-16. As Petitioner points out,
`Dr. Bedersontestified regarding reasons to combinethe referencesin 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.” Jd. at 38:24—39:15.
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`E. Teaching Away
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`Meiresonnearguesthat Finseth “[led] in a path different from the ’096
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`patent claims, and disparaged the claimed ‘descriptive portions.’” Resp. 12.
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`Thus, according to Meiresonne, combining Hill and Finseth would have led
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`to a search results display on which the Finseth image representation would
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`have replacedHill’s descriptive portions, rather than supplemented them.
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`Id. According to Meiresonne,at the time of the invention, Finseth’s
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`graphical approach, without descriptive portions, would have been the
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`obvioussolution to the problem of gibberish and cursory descriptions that
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`both Hill and Finseth identified. Jd. Further, combining Hill and Finseth to
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`achieve the ’096 patent claims would require the impermissible use of
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`hindsight according to Meiresonne. Resp. 17. Google disagrees, arguing
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`that Finseth nowhere describes that text should be replaced. Reply 8-9;Tr.
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`9:1-5.
`Petitioner argued (Reply 26, 7-8; Tr. 9:6—10:13) that Figure 3 of
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`Finseth showsthat the Finseth invention is used in the context of a search
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`engine running on a server. Wenote the search engine in the upperright-
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`hand portion of Figure 3. The Finseth process returns search results through
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`search engine database 116. Those results are passed to both the search
`engine and renderer process 52, which generates thumbnail images ofweb |
`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
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`information is presented.
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`Weare not persuadedthat Finseth disparages the use of descriptive
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`portions sufficiently for us to conclude that Finseth teaches away from the
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`claimed invention. Rather, we read Finseth as providing an explanation of
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`how to provide visual representations of web pagesthat can be used to
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`enhancesearchresults presentations. We do not read Finseth as suggesting
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`that these visual representations should replaceall other types of search
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`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
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`person ofordinary skill in the art would have read the reference as
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`discouraging the particular solution recited in the claims,i.e., using both
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`(even though one may be moreuseful than the other). A reference does not
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`teach away if it expresses merely a general preference for an alternative
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`invention from amongst options available to the ordinarily skilled artisan,
`and the reference does not “criticize, discredit, or otherwise discourage the
`solution claimed.” Jn re Fulton, 391 F.
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