$30 Million Verdict Against Google Overturned Due (in part) to Prior Art Admissions in Patents
On August 15, 2014, the United States Court of Appeals for the Federal Circuit, in I/P Engine, Inc. v. AOL, Inc. et al, reversed a lower court’s decision granting I/P Engine, Inc. an award for over $30 million in damages against Google, AOL, and Target for patent infringement. The Appeals Court’s reversal was based on its determination that the asserted patents were invalidated as anticipated and obvious.
The patents involved were U.S. Patent Nos. 6,314,420 (the “’420 patent”) and 6,775,664 (the “’664 patent”). These patents involve technology for filtering Internet search results that utilize both content-based and collaborative filtering. Google and the other defendants argued that both the 420 patent and the 664 patent should have been held invalid as obvious as a matter of law, because I/P Engine’s claimed technology simply combined two well known methods of filtering- primarily content-based filtering and collaborative filtering.
The court noted that the cited prior art contained explicit statements disclosing the advantages of combining the two filtering methods, but perhaps more importantly, also noted several statements in I/P Engine’s own patents indicating admissions of prior art that bolstered Google and the other defendant’s position. Particularly, the court noted: “[g]iven that its own patents acknowledge that using the original search query for filtering was a “conventional” technique, I/P Engine cannot now evade invalidity by arguing that integrating the query into the filtering process was a non-obvious departure from the prior art.”
One of I/P Engine’s arguments was based on the lack of enablement of the prior art- arguing that using or performing the methods described in the prior art patent would not result in the intended outcome. I/P Engine’s reasoning was that since the prior art was not enabling, it could not be used to invalidate the patents. The court was not persuaded for a number of reasons, including well established law that dictates as follows: “while a prior art reference cannot anticipate a claimed invention if the allegedly anticipatory disclosures cited as prior art are not enabled,” (citing In re Antor Media Corp., 689 F.3d 1282, 1289 (Fed. Cir. 2012)) … a non-enabling reference can potentially qualify as prior art for the purpose of determining obviousness, (citing Symbol Techs. Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991)); therefore, the court concluded on this issue, “even assuming arguendo that the [prior art] filtering system was not fully functional, this does not mean that it does not qualify as prior art for purposes of the obviousness analysis.”
The court went on to add that the obviousness analysis requires a common sense approach, including consideration of common knowledge. Hence, the court reasoned that since there was ample evidence presented that showed use of a hybrid method of filtering Internet searches, including content-based and collaborative filtering methods, I/P Engine’s invention of combining the two methods was predictable since the combination was commonsensical.
The court notated apparently conflicting findings by the jury and explained that ultimately the jury had not made a determination on the legal issue of obviousness. I/P Engine also tried to argue that evidence of commercial success presented showed that I/P Engine’s technology was not obvious. The court disagreed and stated that “[e]vidence of commercial success, or other secondary considerations, is only significant if there is a nexus between the claimed invention and the commercial success.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006). The court thus rejected that argument noting that during the trial no evidence was presented to support such findings.
PRACTICE TIP: It is always easy to look at patents that have been invalidated since we have the advantage of retrospect, but an important practice tip that gets affirmed in this case is to leave out any potential admissions of prior art in the patent document as well as the prosecution history, whenever possible.
Saul Acherman
JAFARI LAW GROUP®, INC.