Digest of I/P Engine, Inc. V. AOL Inc., -1313 (Fed. Cir. Aug. 15, 2014) (non-precedential). On appeal from E.D. Va. Before Wallach, Mayer, and Chen (per curiam).
Procedural Posture: Accused infringers AOL, Inc., Google, Inc., IAC Search and Media, Inc., Gannett Co., and Target Corp. (collectively, the “Google Defendants”) appealed from a jury verdict finding that all asserted claims were infringed and not anticipated, and from the District Court’s determination that claims were not obvious. CAFC overturned the District Court’s determination and found that the claims were invalid as obvious.
- Obviousness: The asserted claims were directed to an internet search system that combines content-based and collaborative filtering. Content-based filtering determines relevance, for example, by using extracted text from an information item. Collaborative filtering determines relevance based on feedback from other users, i.e., considering what items other users with similar interests found relevant. The asserted patents acknowledged that both filters were well known in the art at the time of invention. Many prior art references taught that the filters could be combined. I/P Engine asserted that the prior art did not use the user’s original search query in the collaborative search filtering process. The CAFC held that the patent holder had acknowledged in the specification that conventional search engines filter search results using the original inquiry and could not now argue otherwise. Additionally, the obviousness inquiry requires consideration of common knowledge and common sense and using the original query in the collaborative filtering step is a “routine step” that a person of ordinary skill in the art would employ. When evaluating the jury’s factual findings, the CAFC stated that (i) they did not clearly support or not support a finding of obviousness, (ii) some of the findings were internally inconsistent, and (iii) the jury only addressed whether the prior art disclosed all of the elements of the asserted claims, not if they would be obvious. Further the CAFC found that there was “scant evidence” of secondary considerations.
- Patent Eligibility (Section 101): Judge Mayer stated that the asserted claims should have been invalid pursuant to 35 U.S.C. § 101 as directed to ineligible subject matter. Judge Mayer applied the “technological arts test” and found that there was no “inventive concept.” The claimed invention does not “improve the function of the computer itself” or “effect an improvement in other technology or technical field.” He further indicated that the 101 issue should have been addressed before the obviousness inquiry, in part, because doing so would have eliminated the need for the jury trial.
- Obviousness: Judge Chen found that there was not enough factual support for the majority’s conclusion that it would have been common sense to modify collaborative filtering systems to incorporate search queries. He further found that the patents did not combine information technology with “the Internet” and that the majority did not explain what the “routine” steps were that render the claim obvious. He also found that there was no suggestion, benefit, or rationale that would cause a person of skill in the art to use the original query as part of the collaborative filter. He further stated that the majority did not give proper deference to the jury’s findings.