One Plus One Does Not Equal New. The Federal Circuit Invalidates I/P Engine’s Patents
I/P Engine brought a patent infringement lawsuit against Google and several other defendants for infringing on several of its patents. The patents at issue relate to a method for filtering Internet search results. The patents’ main operational features determine the relevance of an Internet search by, for example, extracting text from a web page (known as content-based filtering), and by looking at items that other users with similar interests found to be relevant (known as collaborative filtering). I/P Engine’s complaint alleged that Google’s AdWords, Adsense for Search, and Adsense for Mobile Search systems infringed its patents because they used content-based and collaborative filtering. In this case, I/P Engine argued that combining content-based and collaborative filtering was a brand new idea.
At trial, Google contended that I/P Engine’s patents were obvious in view of what is commonly known in the Internet search world, and because they were obvious, they were invalid. By statute, the only inventions that are patentable are new and nonobvious inventions. This means that if you have an idea for a gizmo that you bring to life, and one other person on the other side of the planet had the created the same gizmo or one very similar to yours first, your idea is not patentable because it is not new or it would have been obvious. Although Google seemingly had a good argument and had plenty of evidence to back it up, the jury did not buy it, and returned a verdict to the tune of $30 million dollars for I/P Engine.
The Court of Appeals disagreed, however, and held that I/P Engine’s patents were obvious and thus invalid. The court was persuaded by Google’s evidence on the record that there was nothing new about either content-based filtering or collaborative filtering, just like there is nothing new about cars and bikes. And combining them to make a “new” product, like putting an engine on a bike, is really a not an advancement, but rather a no brainer. The court further stated that whether something is obvious or not requires consideration of common knowledge and common sense, and determined that combining content-based and collaborative filtering techniques was common sense.
The concurrence also artfully stated that “the patent system represents a carefully crafted bargain that encourages both the creation and the public disclosure of new and useful advances in technology, in return for an exclusive monopoly for a limited period of time … [and that] a patentee does not uphold his end of this bargain if he seeks broad monopoly rights over a fundamental concept or basic idea without a concomitant contribution to the existing body of scientific and technological knowledge.” Our patent system thus limits protection for those truly novel ideas, while allowing the public to benefit from everything else.
This decision goes to the very basis of what it takes to secure patent protection. For more information about patents in general, or if you live in the OC and need a registered patent attorney to analyze whether you have a patentable idea, give us a call.