Google have been involved in a dispute with Israeli company Spring Ventures (previously Buy2 Networks) regarding their “I’m feeling lucky” button which, once clicked, takes the user straight to Google’s top-ranked search link.
Spring Ventures asserted that the button infringed their patent, US 8,661,094, which is directed towards “entering information associated with a website and then directly displaying said page, using a browser, without any additional user intervention”.
The Patent Trial and Appeal Board (PTAB) at the US Patent and Trademark Office (USPTO) ruled on 15 January 2019 in favour of Google, dismissing Spring Ventures’ claim and declaring their patent invalid due to a lack of inventive step.
You can read the full decision here.
For a patent to be granted it must be novel and inventive. Novel means it must not be known to the public, anywhere in the world, before the date of filing the patent application. Inventive means whatever is novel about the invention, must not be merely a straightforward development of something that is known, but must be an inventive step, i.e. not obvious to someone with skill and knowledge in that particular field. The question of novelty typically has a clear yes or no answer – something is either present or not. On the other hand, whether or not something is obvious is a more subjective question and so objective tests are used to determine inventive step, such as whether a particular novel feature provides a technical advantage.
The Spring Ventures patent relates to ASCII symbols and their use in the creation of webpages.
The vast majority of the internet is written using ASCII symbols. This is a 7-bit character set containing 128 characters such as the numbers 0-9, the upper and lower case English letters from A to Z, and some special characters. The character sets used in modern computers, HTML, and on the Internet, are all based on ASCII.
Spring Ventures described a way of finding webpages that were not written in ASCII. A user could type in something very close to a non-ASCII name in ASCII and the Spring Ventures system would automatically work out what the user was looking for. They asserted that the scope of protection they had under their US patent meant that any system, such as Google’s, which directed a user to a website without the user typing in the full website address, was an infringement of their patent.
Google fought their corner. With the support of prior art such as a patent for “Intelligent automatic searching” from 1997, which passed a search request in a browser bar that wasn’t a full URL, through to a search engine which displayed a results page to the user (rather than the standard, and quite frustrating, “404 Not Found” error message), Google were able to successfully argue that the Spring Ventures patent was not valid. In light of what was known in the field before the Spring Ventures application was filed, the patent was not valid because it should be considered obvious (i.e. not inventive). The patent could not therefore be enforced.
It is not yet known whether Spring Ventures will take this any further.
They can appeal this decision though, so watch this space…