Michael Meiresonne, sole inventor and owner of U.S. Patent No. 8,156,096 titled "Supplier Identification and Locator System and Method" directed to a directory website displaying supplier links with nearby descriptive text portions and a rollover window showing additional supplier information, appealed the PTAB's final written decision in IPR2014-01188 instituted on Google's petition holding claims 16, 17, 19, and 20 obvious under 35 U.S.C. § 103 over prior art references Hill (teaching links with text descriptions) and Finseth (teaching links with rollover viewing areas). Meiresonne argued the references taught away from combining descriptive text with rollover viewing area by disparaging and criticizing text descriptions as cursory unreliable or gibberish advocating graphical previews instead. The Federal Circuit reasoned that teaching away requires prior art to criticize discredit discourage or imply the combination would not work or be inoperable but Hill and Finseth did not disparage text to the extent of mutual exclusivity nor advocate wholesale abandonment of text descriptions with words like replace or unreliable absent from Finseth and the Board correctly found no teaching away supported by substantial evidence. The court affirmed the Board's decision of unpatentability.
- Prior art teaches away from a claimed invention only if it criticizes discredits discourages the combination or indicates it would be inoperable or not work: Meiresonne v. Google, Inc., 849 F.3d 1379, 1382-1383 (Fed. Cir. 2017).
- Mere preference for an alternative solution such as graphical previews over text descriptions without implying mutual exclusivity or abandonment does not constitute teaching away: Meiresonne v. Google, Inc., 849 F.3d 1379, 1383 (Fed. Cir. 2017).
- Substantial evidence review applies to PTAB's factual finding on whether prior art teaches away in obviousness determinations: Meiresonne v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017).
Michael Meiresonne Vs. Google, Inc., Order date: March 7, 2017, Case Number: 2016-1755, Neutral Citation: 849 F.3d 1379 (Fed. Cir. 2017), Name of court: United States Court of Appeals for the Federal Circuit, Name of Judge: Circuit Judge Kimberly A. Moore (opinion), with Chief Judge Sharon Prost and Circuit Judge Alan D. Lourie.
[Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]
[Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi]
