I/P Engine, Inc. v. Aol Inc. , 576 F. App'x 982 ( 2014 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
I/P ENGINE, INC.,
Plaintiff-Cross Appellant,
v.
AOL INC., GOOGLE INC., IAC SEARCH & MEDIA,
INC., GANNETT COMPANY, INC., AND
TARGET CORPORATION,
Defendants-Appellants.
______________________
2013-1307, -1313
______________________
Appeals from the United States District Court for the
Eastern District of Virginia in No. 11-CV-0512, Judge
Raymond Alvin Jackson.
______________________
Decided: August 15, 2014
______________________
DAVID A. PERLSON, Quinn Emanuel Urquhart & Sulli-
van LLP, of San Francisco, California, argued for defend-
ants-appellants. With him on the brief were EMILY C.
O’BRIEN, ANTONIO R. SISTOS, MARGARET P. KAMMERUD,
and JOSHUA L. SOHN; and DAVE NELSON, of Chicago,
Illinois. Of counsel were DAVID L. BILSKER and KEVIN
ALEXANDER SMITH, of San Francisco, California, and
ROBERT B. WILSON, of New York, New York. Of counsel
2 I/P ENGINE, INC. v. AOL INC.
on the brief for Google Inc. were DARYL L. JOSEFFER, King
& Spalding LLP, of Washington, DC, and ADAM M.
CONRAD, of Charlotte, North Carolina.
JOSEPH R. RE, Knobbe, Martens, Olson & Bear, LLP,
of Irvine, California, argued for plaintiff-cross appellant.
With him on the brief was STEPHEN W. LARSON. Of Coun-
sel on the brief were JEFFREY K. SHERWOOD, FRANK C.
CIMINO, JR., KENNETH W. BROTHERS, DAWN RUDENKO
ALBERT, CHARLES J. MONTERIO, JR., and JONATHAN L.
FALKLER, Dickstein Shapiro LLP, of Washington, DC.
EDWARD R. REINES and JILL J. SCHMIDT, Weil, Gotshal
& Manges LLP, of Redwood Shores, California, for amici
curiae Newegg Inc., et al.
______________________
Before WALLACH, MAYER, and CHEN, Circuit Judges.
Opinion for the court filed PER CURIAM. Concurring
Opinion filed by Circuit Judge MAYER. Dissenting
Opinion filed by Circuit Judge CHEN.
PER CURIAM.
I/P Engine, Inc. (“I/P Engine”) brought an action
against AOL Inc., Google Inc. (“Google”), IAC Search &
Media, Inc., Gannett Company, Inc., and Target Corpora-
tion (collectively, the “Google Defendants”) alleging in-
fringement of U.S. Patent Nos. 6,314,420 (the “’420
patent”) and 6,775,664 (the “’664 patent”). A jury re-
turned a verdict finding that all asserted claims were
infringed and not anticipated. J.A. 4163-73. The district
court then determined that the asserted claims were not
obvious and entered judgment in I/P Engine’s favor. See
I/P Engine, Inc. v. AOL Inc., No. 11-CV-0512, 2012 U.S.
Dist. LEXIS 166555 (E.D. VA Nov. 20, 2012) (“Non-
Obviousness Order”). Because the asserted claims of the
I/P ENGINE, INC. v. AOL INC. 3
’420 and ’664 patents are invalid for obviousness, we
reverse.
BACKGROUND
The ’420 and ’664 patents both claim priority to the
same parent patent, U.S. Patent No. 5,867,799. They
relate to a method for filtering Internet search results
that utilizes both content-based and collaborative filter-
ing. See ’420 patent col.1 ll.10-16, col.2 ll.20-26; ’664
patent col.23 ll.29-44. 1 Content-based filtering is a tech-
nique for determining relevance by extracting features
such as text from an information item. ’420 patent col.4
ll.22-26; see also J.A. 487. By contrast, collaborative
filtering assesses relevance based on feedback from other
users—it looks to what items “other users with similar
interests or needs found to be relevant.” ’420 patent col.4
ll.28-29; see also J.A. 487. The asserted patents describe a
system “wherein a search engine operates with collabora-
tive and content-based filtering to provide better search
responses to user queries.” ’420 patent col.1 ll.14-16.
Specifically, the asserted claims describe a filter system
that combines content and collaborative data in filtering
each “informon”—or information item—for relevance to a
user’s query. 2 Asserted claim 10 of the ’420 patent re-
cites:
1 The specifications of the ’420 and ’664 patents are
substantively identical, but employ slightly dissimilar line
numbering. Unless otherwise noted, citations to the
specification refer to the line numbering used in the ’420
patent.
2 The parties stipulated that the term “informon”
referred to an “information entity of potential or actual
interest to the [individual/first] user.” I/P Engine, Inc. v.
AOL Inc., 874 F. Supp. 2d 510, 517 (E.D. Va. 2012) (inter-
nal quotation marks omitted) (“Claim Construction Or-
4 I/P ENGINE, INC. v. AOL INC.
A search engine system comprising: a system
for scanning a network to make a demand search
for informons relevant to a query from an individ-
ual user; a content-based filter system for receiv-
ing the informons from the scanning system and
for filtering the informons on the basis of applica-
ble content profile data for relevance to the query;
and a feedback system for receiving collaborative
feedback data from system users relative to in-
formons considered by such users; the filter sys-
tem combining pertaining feedback data from the
feedback system with the content profile data in
filtering each informon for relevance to the query.
Id. col.28 ll.1-15; see also id. col.29 ll.32-44.
Asserted claim 1 of the ’664 patent provides:
A search system comprising: a scanning sys-
tem for searching for information relevant to a
query associated with a first user in a plurality of
users; a feedback system for receiving information
found to be relevant to the query by other users;
and a content-based filter system for combining
the information from the feedback system with
the information from the scanning system and for
filtering the combined information for relevance to
at least one of the query and the first user.
’664 patent col.27 ll.27-37.
Claim 26 of the ’664 patent is similar to claim 1, but
cast as a method claim:
A method for obtaining information relevant
to a first user comprising: searching for infor-
der”). The asserted patents explain that an “informon”
can be all or part of a text, video, or audio file. ’420 patent
col.3 ll.30-35.
I/P ENGINE, INC. v. AOL INC. 5
mation relevant to a query associated with a first
user in a plurality of users; receiving information
found to be relevant to the query by other users;
combining the information found to be relevant to
the query by other users with the searched infor-
mation; and content-based filtering the combined
information for relevance to at least one of the
query and the first user.
Id. col.28 ll.56-65.
On September 15, 2011, IP/Engine 3 filed a complaint
in the United States District Court for the Eastern Dis-
trict of Virginia alleging that Google’s AdWords, AdSense
for Search, and AdSense for Mobile Search systems,
which display advertisements on web pages, infringed
claims 10, 14, 15, 25, 27, and 28 of the ’420 patent and
claims 1, 5, 6, 21, 22, 26, 28, and 38 of the ’664 patent.
See Claim Construction Order, 874 F. Supp. 2d at 514-15.
On December 5, 2011, the Google Defendants filed coun-
terclaims, seeking declaratory judgments of non-
infringement and invalidity of both the ’420 and ’664
patents. Id. at 514.
Following a Markman hearing, the district court con-
strued disputed claim terms. The court concluded that:
(1) the term “collaborative feedback data” refers to “data
from system users regarding what informons such users
found to be relevant”; (2) the term “scanning a network”
means “looking for or examining items in a network”; and
(3) the term “demand search” refers to “a single search
engine query performed upon a user request.” Id. at 525
(internal quotation marks omitted).
During a twelve-day trial, the Google Defendants
pointed to numerous prior art references to support their
3 In 2012, I/P Engine became a subsidiary of Vrin-
go, Inc. J.A. 2046-47.
6 I/P ENGINE, INC. v. AOL INC.
contention that the claims of the ’420 and ’664 patents
were invalid as anticipated and obvious. In particular,
they argued that U.S. Patent No. 6,006,222 (“Culliss”)
anticipated the asserted claims, and that those claims
were obvious in view of: (1) U.S. Patent No. 6,202,058(“Rose”); (2) Yezdezard Z. Lashkari, Feature Guided
Automated Collaborative Filtering (July 25, 1995) (M.S.
thesis, Massachusetts Institute of Technology)
(“WebHound”); and (3) Marko Balabanovic & Yoav Sho-
ham, Content-Based, Collaborative Recommendation, 40
Comms. of the ACM 66 (1997) (“Fab”).
The jury returned a verdict on November 6, 2012,
finding that the Google Defendants had infringed all
asserted claims and awarding damages of $30,496,155. 4
J.A. 4173. The jury also found that the asserted claims
were not anticipated, and answered a special verdict form
on factual issues pertaining to the obviousness inquiry.
J.A. 4169-72. Specifically, the jury found that “Rose,
[WebHound] and Fab[] were profile systems that did not
disclose a tightly integrated search system, and could not
filter information relevant to the query.” J.A. 4170, 4171-
72.
On November 20, 2012, the district court ruled that
the Google Defendants had “failed to prove, by clear and
convincing evidence, that the ’420 Patent or the ’664
Patent [was] obvious.” Non-Obviousness Order, 2012 U.S.
Dist. LEXIS 166555, at *9. The district court further
determined that the equitable doctrine of laches barred
I/P Engine from recovering damages for any infringement
occurring prior to September 15, 2011, the date of its
complaint. I/P Engine, Inc. v. AOL Inc., 915 F. Supp. 2d
736, 746-49 (E.D. Va. 2012). The court explained that I/P
Engine “had constructive notice that the Google Adwords
4 The jury also awarded I/P Engine a running royal-
ty of 3.5%. J.A. 4173.
I/P ENGINE, INC. v. AOL INC. 7
system potentially infringed its patents as of July 2005
and [yet] failed to undertake any reasonable investigation
to further determine if infringement was occurring.” Id.
at 744. The court stated, moreover, that “[a]lthough
Congress is best left to consider the merits of non-
practicing patent entities in our patent system, the dilato-
ry nature of [I/P Engine’s] suit is precisely why the doc-
trine of laches has been applied to patent law.” Id. at 748.
On December 18, 2012, the Google Defendants filed
motions for a new trial and for judgment as a matter of
law on non-infringement, invalidity, and damages. J.A.
4252-381. I/P Engine also filed post-trial motions, argu-
ing that the district court erred in applying the doctrine of
laches to preclude recovery of damages for infringement
in the period prior to September 15, 2011. J.A. 4433,
4550-56. All of these motions were denied by the district
court. J.A. 59-67.
The Google Defendants then filed a timely appeal
with this court. They argue that: (1) the infringement
determination should be set aside because the accused
systems do not meet claim limitations which require
“combining” content data with feedback data and filtering
“the combined information”; (2) the accused systems do
not meet the limitation contained in claim 10 of the ’420
patent requiring a “demand search”; (3) I/P Engine im-
properly relied on marketing documents, rather than
source code, in attempting to establish infringement and
misled the jury by insinuating that Google had “copied”
the system claimed in I/P Engine’s patents; (4) the district
court erred as a matter of law in finding the asserted
claims non-obvious; (5) the asserted claims are invalid as
anticipated because Culliss discloses filtering Internet
articles based on scores that combine both content and
collaborative feedback data; and (6) I/P Engine failed to
introduce any credible evidence of damages in the period
following the filing of its complaint. I/P Engine filed a
cross-appeal in which it argues that the district court
8 I/P ENGINE, INC. v. AOL INC.
erred in applying the doctrine of laches to bar recovery for
infringement occurring prior to September 15, 2011. I/P
Engine further contends that even if laches does apply, it
is entitled to damages of more than $100 million for
infringement occurring after the date it filed its com-
plaint. We have jurisdiction under 28 U.S.C. § 1295(a)(1).
DISCUSSION
I. Standard of Review
“Whether the subject matter of a patent is obvious is a
question of law and is reviewed de novo.” Procter &
Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 993
(Fed. Cir. 2009); see PharmaStem Therapeutics, Inc. v.
ViaCell, Inc., 491 F.3d 1342, 1359 (Fed. Cir. 2007). The
factual findings underlying an obviousness determination
include: (1) the scope and content of the prior art; (2) the
differences between the claimed invention and the prior
art; (3) the level of ordinary skill in the art; and (4) any
objective indicia of non-obviousness. See Graham v. John
Deere Co., 383 U.S. 1, 17-18 (1966).
II. The Obviousness Determination
The Google Defendants argue that I/P Engine’s
claimed invention is obvious as a matter of law because it
simply combines content-based and collaborative filtering,
two information filtering methods that were well-known
in the art. They assert, moreover, that the prior art
contained explicit statements describing the advantages
of combining these two filtering techniques, and that it
would have been obvious to include a user’s query in the
filtering process. See Br. of Defendants-Appellants at 35-
38.
We agree and hold that no reasonable jury could con-
clude otherwise. The asserted claims describe a system
that combines content and collaborative data in filtering
each “informon”—or information item—for relevance to an
individual user’s search query. ’420 patent col.28 ll.1-15;
I/P ENGINE, INC. v. AOL INC. 9
’664 patent col.27 ll.27-37. As the asserted patents them-
selves acknowledge, however, search engines, content-
based filtering, and collaborative filtering were all well-
known in the art at the time of the claimed invention. See
’420 patent col.1 ll.20-45. The record is replete, moreover,
with prior art references recognizing that content-based
and collaborative filtering are complimentary techniques
that can be effectively combined. The WebHound refer-
ence explains that “content-based and automated collabo-
rative filtering are complementary techniques, and the
combination of [automated collaborative filtering] with
some easily extractable features of documents is a power-
ful information filtering technique for complex infor-
mation spaces.” J.A. 5427. The Fab reference likewise
notes that “[o]nline readers are in need of tools to help
them cope with the mass of content available on the
World-Wide Web,” and explains that “[b]y combining both
collaborative and content-based filtering systems,” many
of the weaknesses in each approach can be eliminated.
J.A. 5511. Similarly, the Rose patent, which was filed in
1994 by engineers at Apple Computer, Inc., states that
“[t]he prediction of relevance [to a user’s interests] is
carried out by combining data pertaining to the content of
each item of information with other data regarding corre-
lations of interests between users.” J.A. 5414. These
references, individually and collectively, teach the clear
advantages of combining content-based and collaborative
filtering. 5
5 I/P Engine points to recent United States Patent
and Trademark Office (“PTO”) reexamination proceedings
which concluded that Rose and WebHound do not antici-
pate the asserted claims of the ’420 patent. J.A. 7899-
902. Here, however, the question is not whether Rose and
WebHound anticipate the asserted claims, but instead
whether the prior art, viewed as a whole, renders the
10 I/P ENGINE, INC. v. AOL INC.
On appeal, I/P Engine does not dispute that the prior
art disclosed hybrid content-based and collaborative
filtering. It contends, however, that it would not have
been obvious to a person of ordinary skill in the art to
filter items for relevance to a user’s query using combined
content and collaborative data. In I/P Engine’s view, the
prior art simply took the results of content-based filtering
and “threw them over a proverbial wall to a separate
profile-based [filtering] system,” but did not also throw
the search query “over the wall” for use in the filtering
process. Br. of Plaintiff-Cross Appellant at 6-7; see also
id. at 40-43; J.A. 3689-90, 3728-31.
The fundamental flaw in I/P Engine’s argument is
that using an individual user’s search query for filtering
was a technique widely applied in the prior art. Indeed,
the shared specification of the ’420 and ’664 patents
acknowledges that “conventional search engines” filtered
search results using the original search query. See ’420
patent col.2 ll.15-18 (explaining that “conventional search
engines initiate a search in response to an individual
user’s query and use content-based filtering to compare
the query to accessed network informons” (emphasis
added)). Given that its own patents acknowledge that
using the original search query for filtering was a “con-
ventional” technique, I/P Engine cannot now evade inva-
lidity by arguing that integrating the query into the
asserted claims obvious. See Cohesive Techs., Inc. v.
Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008) (“Ob-
viousness can be proven by combining existing prior art
references, while anticipation requires all elements of a
claim to be disclosed within a single reference.”); Medi-
chem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1166 (Fed. Cir.
2006) (explaining that in an obviousness analysis “the
prior art must be considered as a whole for what it teach-
es”).
I/P ENGINE, INC. v. AOL INC. 11
filtering process was a non-obvious departure from the
prior art. See PharmaStem, 491 F.3d at 1362 (“Admis-
sions in the specification regarding the prior art are
binding on the patentee for purposes of a later inquiry
into obviousness.”); see also Constant v. Advanced Micro-
Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) (“A
statement in a patent that something is in the prior art is
binding on the applicant and patentee for determinations
of anticipation and obviousness.”).
While I/P Engine acknowledges that the prior art dis-
closed “conventional ‘content-based filtering’ in response
to a query,” it contends that the prior art did “not show or
suggest using content and collaborative data together in
filtering items for relevance to a query.” Br. of Plaintiff-
Cross Appellant at 43. This argument “tak[es] an overly
cramped view of what the prior art teaches.” Allergan,
Inc. v. Apotex Inc., 754 F.3d 952, 963 (Fed. Cir. 2014).
The Culliss patent renders the asserted claims obvious
because it plainly discloses using combined content and
collaborative data when analyzing information for rele-
vance to a user’s search query. In the Culliss system,
Internet articles are assigned a “key term score” for
significant words or phrases. J.A. 5521. Culliss teaches
content-based analysis because the key term score can
initially be based on the number of times a particular
term appears in an article. 6 J.A. 5526. Culliss also
6 Dr. Jaime Carbonell, I/P Engine’s expert, asserted
that Culliss does not disclose content-based filtering as
required by the asserted claims because Culliss’ repeated
feedback-based adjustments to a key term score will
dilute or “swamp” the content portion of the score over
time. J.A. 3714, 3787. Notably, however, while the
asserted claims require content-based filtering, they do
not mandate that content-based analysis play a dominant
role in the filtering process. See ’420 patent col.28 ll.1-15;
12 I/P ENGINE, INC. v. AOL INC.
describes collaborative feedback analysis because the key
term score will be increased when search engine users
who query particular key terms select an article from the
search results list. J.A. 5521. Significantly, moreover,
Culliss presents articles to users based upon their key
term scores for the terms that were used in a user’s
search query. J.A. 5521 (“As users enter search queries
and select articles, the scores are altered. The scores are
then used in subsequent searches to organize the articles
that match a search query.” (emphasis added)). Culliss,
therefore, squarely discloses using combined content and
collaborative data in analyzing items for relevance to a
query.
I/P Engine contends that Culliss does not anticipate
because it “describes a system for ranking items, not
filtering them, as required by the asserted claims.” Br. of
Plaintiff-Cross Appellant at 54. As Dr. Lyle Ungar, the
Google Defendants’ expert, explained at trial, however,
“the standard way of filtering is to rank things and pick
all items above a threshold.” J.A. 3366. Notably, moreo-
ver, Culliss discloses an embodiment in which articles
’664 patent col.27 ll.27-37. Thus, the fact that in the
Culliss system content data may play less and less of a
role as more user feedback is obtained does not mean that
Culliss does not disclose content-based filtering. To the
contrary, Culliss explains that while feedback can raise
an article’s key term score (when the article is clicked on
by other users), it can also lower that score (when the
article is not clicked on by other users). J.A. 5527 (“[I]f
the user does not select the matched article, the key term
score for that matched article under that key term can be
assigned a negative score.”). Thus, the positive and
negative feedback adjustments could potentially nearly
“cancel each other out,” and content data could play a
very significant role in setting an article’s overall score.
I/P ENGINE, INC. v. AOL INC. 13
that are given an “X-rated” score for adult content are
filtered out and not displayed to persons who enter “G-
rated” queries. J.A. 5525. At trial, Carbonell asserted
that Culliss was not enabled because it did not provide for
a “workable” filtering system. J.A. 3717. In support, he
argued that a certain number of G-rated searchers might
have to view an article before it would be labeled as X-
rated and screened from subsequent G-rated searches.
J.A. 3718-19. There is no credible evidence, however, that
Culliss would not ultimately succeed in filtering X-rated
articles from being viewed by G-rated searchers. See
Cephalon, Inc. v. Watson Pharms., Inc., 707 F.3d 1330,
1337 (Fed. Cir. 2013) (emphasizing that a patent is pre-
sumptively enabled and that “the challenger bears the
burden, throughout the litigation, of proving lack of
enablement by clear and convincing evidence”). Even
more importantly, while “a prior art reference cannot
anticipate a claimed invention if the allegedly anticipa-
tory disclosures cited as prior art are not enabled,” In re
Antor Media Corp., 689 F.3d 1282, 1289 (Fed. Cir. 2012)
(citations and internal quotation marks omitted), a non-
enabling reference can potentially qualify as prior art for
the purpose of determining obviousness, Symbol Techs.
Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991);
see Geo. M. Martin Co. v. Alliance Mach. Sys. Int’l LLC,
618 F.3d 1294, 1302 (Fed. Cir. 2010) (“Under an obvious-
ness analysis, a reference need not work to qualify as
prior art; it qualifies as prior art, regardless, for whatever
is disclosed therein.” (citations and internal quotation
marks omitted)); Beckman Instruments, Inc. v. LKB
Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989)
(“Even if a reference discloses an inoperative device, it is
prior art for all that it teaches.”). Thus, even assuming
arguendo that the Culliss filtering system was not fully
functional, this does not mean that it does not qualify as
prior art for purposes of the obviousness analysis.
14 I/P ENGINE, INC. v. AOL INC.
Significantly, moreover, the obviousness inquiry “not
only permits, but requires, consideration of common
knowledge and common sense.” DyStar Textilfarben
GmbH & Co. v. C.H. Patrick Co., 464 F.3d 1356, 1367
(Fed. Cir. 2006); see KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007) (eschewing “[r]igid preventative rules that
deny factfinders recourse to common sense”); Perfect Web
Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed.
Cir. 2009) (explaining that the obviousness analysis “may
include recourse to logic, judgment, and common sense
available to the person of ordinary skill that do not neces-
sarily require explication in any reference or expert
opinion”); Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1161 (Fed. Cir. 2007) (emphasizing that “the
common sense of those skilled in the art” can be sufficient
to “demonstrate[] why some combinations would have
been obvious where others would not”). Very basic logic
dictates that a user’s search query can provide highly
pertinent information in evaluating the overall relevance
of search results. See, e.g., 420 patent col.1 ll.21-23 (ex-
plaining that a “query” is “a request for information
relevant to . . . a field of interest”); id. col.4 ll.5-6 (“The
‘relevance’ of a particular informon broadly describes how
well it satisfies the user’s information need.”). As Ungar
explained, the query would be just “sitting there” with the
results of a search, and it would have been obvious to one
skilled in the art “to keep around the query and use that
also for filtering.” J.A. 3173. 7 “A person of ordinary skill
is . . . a person of ordinary creativity, not an automaton,”
KSR, 550 U.S. at 421, and the obviousness inquiry must
take account of the “routine steps” that a person of ordi-
7 The parties stipulated that, for purposes of both
the ’420 and ’664 patents, a person of ordinary skill in the
art was “an individual with a bachelor’s degree in com-
puter science with at least [two] years of experience.” J.A.
39.
I/P ENGINE, INC. v. AOL INC. 15
nary skill in the art would employ, Ball Aerosol & Spe-
cialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984,
993 (Fed. Cir. 2009); see Soverain Software LLC v.
Newegg Inc., 705 F.3d 1333, 1344, amended on reh’g, 728
F.3d 1332 (Fed. Cir. 2013) (concluding that claims di-
rected to an online shopping system were invalid as
obvious given that the patentee “did not invent the Inter-
net, or hypertext, or the URL” and using hypertext to
communicate transaction information was no more than
“a routine incorporation of Internet technology into
existing processes”). Because the query was readily
available and closely correlated to the overall relevance of
search results—and the prior art unequivocally disclosed
hybrid content-based/collaborative filtering—retaining
the query for use in filtering combined content and collab-
orative data was “entirely predictable and grounded in
common sense.” Ball Aerosol, 555 F.3d at 993; see W.
Union Co. v. MoneyGram Payment Sys., Inc., 626 F.3d
1361, 1372 (Fed. Cir. 2010) (concluding that the asserted
dependent claims, which “add[ed] only trivial improve-
ments that would have been a matter of common sense to
one of ordinary skill in the art,” were obvious as a matter
of law); Perfect Web, 587 F.3d at 1331 (concluding that a
claimed method for sending e-mails was obvious because
“simple logic suggests that sending messages to new
addresses is more likely to produce successful deliveries
than re-sending messages to addresses that have already
failed”); Muniauction, Inc. v. Thomson Corp., 532 F.3d
1318, 1326-27 (Fed. Cir. 2008) (concluding that claims
which added a web browser to a prior art electronic sys-
tem were obvious as a matter of law). While our conclu-
sion that the asserted claims are invalid as obvious is
grounded on the determination that the prior art, most
notably Culliss, disclosed use of the search query when
filtering combined content-based and collaborative data,
the common sense of a skilled artisan would likewise have
suggested retaining the query for use in the filtering
process.
16 I/P ENGINE, INC. v. AOL INC.
III. The Jury’s Findings
I/P Engine points to the fact that the jury found that
there were differences between the prior art and the
claimed invention, see J.A. 4170-72, and argues that on
appeal “the only question is whether substantial evidence
supports the jury’s findings.” Br. of Plaintiff-Cross Appel-
lant at 40. There are a number of reasons why we do not
find this reasoning persuasive. First, not all of the jury’s
findings support non-obviousness. To the contrary, the
jury found that the invention claimed in the ’664 patent
had been “independent[ly] invent[ed] . . . by others before
or at about the same time as the named inventor thought
of it.” J.A. 4172. As we have previously made clear, near-
simultaneous development of a claimed invention by
others can, under certain circumstances, demonstrate
obviousness. See Geo. M. Martin, 618 F.3d at 1305 (“In-
dependently made, simultaneous inventions, made within
a comparatively short space of time, are persuasive evi-
dence that the claimed apparatus was the product only of
ordinary mechanical or engineering skill.” (citations and
internal quotation marks omitted)). Thus, as the Google
Defendants correctly note, the jury’s findings are a “mixed
bag” on the obviousness question. Br. of Defendants-
Appellants at 40.
Second, some of the jury’s findings appear internally
inconsistent. In making their arguments on obviousness,
neither I/P Engine nor the Google Defendants drew any
distinction between the ’420 patent and the ’664 patent.
Indeed, counsel for I/P Engine referred to the asserted
patents simply as the “Lang and Kosak invention” when
discussing differences between the prior art and the
asserted claims. J.A. 3730. The jury found, however, that
the invention claimed in the ’664 patent had been inde-
pendently invented by others, whereas the invention
claimed in the ’420 patent had not. J.A. 4171-72. Like-
wise, while the jury found that there had been unsuccess-
ful attempts by others to develop the invention claimed in
I/P ENGINE, INC. v. AOL INC. 17
the ’420 patent, it determined that there were no such
attempts with respect to the invention disclosed in the
’664 patent. J.A. 4170, 4172.
Finally, and most importantly, while the jury made
underlying determinations as to the differences between
the asserted claims and the prior art, it did not address
the ultimate legal conclusion as to obviousness. Thus,
while the jury found that the prior art did not disclose all
of the elements of the asserted claims, J.A. 4170-71, it
never determined whether it would have been obvious to
one skilled in the art to bridge any differences between
the prior art and the claimed invention. See Bos. Scien-
tific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 990 (Fed.
Cir. 2009) (“When we consider that, even in light of a
jury’s findings of fact, the references demonstrate an
invention to have been obvious, we may reverse its obvi-
ousness determination.”); see also Soverain, 705 F.3d at
1337 (emphasizing that “the question of obviousness as a
matter of law receives de novo determination on appeal”);
Jeffries v. Harleston, 52 F.3d 9, 14 (2d Cir. 1995) (conclud-
ing that “hopelessly irreconcilable” jury findings did not
require a retrial because “elementary principles” of law
compelled one result).
IV. Objective Indicia of Non-Obviousness
“This court has consistently pronounced that all evi-
dence pertaining to the objective indicia of nonobvious-
ness must be considered before reaching an obviousness
conclusion.” Plantronics, Inc. v. Aliph, Inc., 724 F.3d
1343, 1355 (Fed. Cir. 2013). Here, however, I/P Engine
introduced scant evidence on secondary considerations.
See Allergan, Inc. v. Sandoz Inc., 726 F.3d 1286, 1293
(Fed. Cir. 2013) (concluding that secondary considerations
did “not weigh heavily in the obviousness analysis”).
Indeed, the district court did not even cite to the jury’s
findings on secondary considerations when it concluded
that the asserted claims were not invalid for obviousness.
18 I/P ENGINE, INC. v. AOL INC.
See Non-Obviousness Order, 2012 U.S. Dist. LEXIS
166555, at *7-9.
We find no merit in I/P Engine’s argument that the
commercial success of Google’s accused advertising sys-
tems provides objective evidence of non-obviousness.
“Evidence of commercial success, or other secondary
considerations, is only significant if there is a nexus
between the claimed invention and the commercial suc-
cess.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299,
1311-12 (Fed. Cir. 2006). At trial, however, I/P Engine
never established a nexus between the success of Google’s
accused systems and the patented invention. 8 Indeed, I/P
Engine’s damages expert agreed that the accused technol-
ogy encompassed numerous features not covered by the
asserted patents, and acknowledged that he had not
evaluated the issue of whether the patented technology
drove consumer demand for Google’s advertising platform.
J.A. 2772-73.
Under certain circumstances, the “copying” of an in-
vention by a competitor may constitute evidence that an
invention is not obvious. See Iron Grip Barbell Co., Inc. v.
USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004);
Vandenberg v. Dairy Equip. Co., 740 F.2d 1560, 1567
(Fed. Cir. 1984). Contrary to I/P Engine’s assertions,
however, the fact that one of Google’s patents cited to the
’420 patent does not establish that Google copied the
invention disclosed in that patent. Nor is the fact that
Google did not provide evidence at trial as to how it
developed its accused advertising system sufficient to
8 Nor did I/P Engine present evidence that any
owner of the asserted patents had ever used the claimed
system commercially. See Soverain, 705 F.3d at 1346
(finding no commercial success where the claimed elec-
tronic commerce system “was abandoned by its developers
and almost all of its original users”).
I/P ENGINE, INC. v. AOL INC. 19
establish that it copied the claimed invention. See Wyers
v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010)
(“Our case law holds that copying requires evidence of
efforts to replicate a specific product, which may be
demonstrated through internal company documents,
direct evidence such as disassembling a patented proto-
type, photographing its features, and using the photo-
graph as a blueprint to build a replica, or access to the
patented product combined with substantial similarity to
the patented product.”).
The jury found “[a]cceptance by others of the claimed
invention as shown by praise from others in the field or
from the licensing of the claimed invention.” J.A. 4171-
72. Carbonell acknowledged, however, that although he
had been in the “search industry” for thirty years he was
unaware of any “praise” that I/P Engine’s purported
invention had received. J.A. 3788. Likewise, although
the jury found “unexpected and superior results from the
claimed invention,” J.A. 4171-72, there was no evidence,
other than conclusory testimony from Carbonell, see J.A.
3691-92, 3740, that the results of the patented system
were unexpected. See SkinMedica, Inc. v. Histogen Inc.,
727 F.3d 1187, 1210 (Fed. Cir. 2013) (emphasizing that
expert opinions that “are conclusory and incomplete” have
little evidentiary value). Accordingly, secondary consid-
erations cannot overcome the strong prima facie case of
obviousness. 9 See Leapfrog, 485 F.3d at 1162.
CONCLUSION
Accordingly, the judgment of the United States Dis-
trict Court for the Eastern District of Virginia is reversed.
REVERSED
9 Because we conclude that the asserted claims are
obvious as a matter of law, we need not reach issues
related to infringement and damages.
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
I/P ENGINE, INC.,
Plaintiff-Cross Appellant,
v.
AOL INC., GOOGLE INC., IAC SEARCH & MEDIA,
INC., GANNETT COMPANY, INC., AND TARGET
CORPORATION,
Defendants-Appellants.
______________________
2013-1307, -1313
______________________
Appeals from the United States District Court for the
Eastern District of Virginia in No. 11-CV-0512, Judge
Raymond Alvin Jackson.
______________________
MAYER, Circuit Judge, concurring.
The Supreme Court in Alice Corporation v. CLS Bank
International, 573 U.S. __, 134 S. Ct. 2347, 2359 (2014),
for all intents and purposes, recited a “technological arts”
test for patent eligibility. Because the claims asserted by
I/P Engine, Inc. (“I/P Engine”) disclose no new technology,
but instead simply recite the use of a generic computer to
implement a well-known and widely-practiced technique
for organizing information, they fall outside the ambit of
35 U.S.C. § 101. And if this determination had been made
in the first instance as directed by the Supreme Court,
2 I/P ENGINE, INC. v. AOL INC.
unnecessary litigation, and nearly two weeks of trial and
imposition on citizen jurors, could have been avoided.
I.
“[T]he patent system represents a carefully craft-
ed 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.” Pfaff v. Wells Elecs., Inc., 525 U.S.
55, 63 (1998). A patentee does not uphold his end of this
bargain if he seeks broad monopoly rights over a funda-
mental concept or basic idea without a concomitant con-
tribution to the existing body of scientific and
technological knowledge. Alice thus made clear that
abstract ideas untethered to any significant advance in
science and technology are ineligible for patent protection,
concluding that a computer-implemented system for
mitigating settlement risk fell outside section 101 because
it did not “improve the functioning of the computer itself”
or “effect an improvement in any other technology or
technical field.” 134 S. Ct. at 2359; see also id. at 2358(explaining that the claims in Diamond v. Diehr, 450 U.S.
175, 177-79 (1981) (“Diehr”), were patent eligible because
they disclosed an “improve[ment]” to a “technological
process”).
Application of the technological arts test 1 for patent
eligibility requires consideration of whether the claimed
“inventive concept,” Mayo Collaborative Servs. v. Prome-
1 One of our predecessor courts likewise applied a
technological arts test for patent eligibility. It recognized
that patentable processes must “be in the technological
arts so as to be in consonance with the Constitutional
purpose to promote the progress of ‘useful arts.’” In re
Musgrave, 431 F.2d 882, 893 (CCPA 1970) (quoting U.S.
Const. art. I, § 8, cl. 8).
I/P ENGINE, INC. v. AOL INC. 3
theus Labs., Inc., 132 S. Ct. 1289, 1294 (2012), is an
application of scientific principles or natural laws. See In
re Bilski, 545 F.3d 943, 1010 (Fed. Cir. 2008) (en banc)
(Mayer, J., dissenting), aff’d on other grounds sub nom.
Bilski v. Kappos, 561 U.S. 593 (2010) (“[A] process is non-
technological where its inventive concept is the applica-
tion of principles drawn not from the natural sciences but
from disciplines such as business, law, sociology, or psy-
chology.”). Importantly, claims do not meet the demands
of section 101 simply because they recite the use of com-
puters or other technology. Instead, the inventive concept
itself must be new technology, a novel application of
scientific principles and natural laws to solve problems
once thought intractable. See id. at 1002 (“Although
business method applications may use technology—such
as computers—to accomplish desired results, the innova-
tive aspect of the claimed method is an entrepreneurial
rather than a technological one.”). The claims at issue in
Alice may well have described a useful and innovative
method of doing business, 2 but because they did not
2 In Alice, the Supreme Court concluded that the
concept of intermediated settlement was a patent-
ineligible abstract idea. 134 S. Ct. at 2355-57. But
whether the “concept” of intermediated settlement is an
abstract idea is a wholly different question from whether
the claimed invention provided a useful and innovative
application of that concept. Significantly, in determining
whether the asserted claims disclosed an inventive con-
cept sufficient to make the claimed abstract idea patent
eligible, the Court looked solely at the technology—asking
only whether the recited computer elements were “well-
understood, routine, [and] conventional.” Id. at 2359(citations and internal quotation marks omitted). The
issue of whether the claimed intermediated settlement
technique represented an innovative method for improv-
ing commercial transactions was not addressed because
4 I/P ENGINE, INC. v. AOL INC.
disclose any significant advance in science or technology,
they fell outside section 101. See 134 S. Ct. at 2359(noting that the claimed method simply “require[d] a
generic computer to perform generic computer functions”).
Section 101 mandates not only that claims disclose an
advance in science or technology—as opposed to an inno-
vation in a non-technological discipline such as business,
law, sports, sociology, or psychology—but also that this
advance be both significant and well-defined. Id. at 2360(“[T]he claims at issue amount to nothing significantly
more than an instruction to apply the abstract idea of
intermediated settlement using some unspecified, generic
computer.” (citations and internal quotation marks omit-
ted) (emphasis added)); see also Mayo, 132 S. Ct. at 1297(“The question before us is whether the claims do signifi-
cantly more than simply describe” a law of nature. (em-
phasis added)). Of course, if claims are drawn to the
application of principles outside of the scientific realm—
such as principles related to commercial or social interac-
tion—no amount of specificity can save them from patent
ineligibility. In Bilski, for example, a method was reject-
ed under section 101 notwithstanding the fact that it
described a very specific method of using historical
weather-related data to hedge against price increases.
130 S. Ct. at 3223-24; see Parker v. Flook, 437 U.S. 584,
593 (1978) (“Flook”) (rejecting the argument “that if a
process application implements a principle in some specif-
ic fashion, it automatically falls within the patentable
subject matter of § 101”). Meaningful, well-defined limits
on the application of a principle or idea are thus a neces-
sary, but not a sufficient, prerequisite for patent eligibil-
ity. Requiring carefully circumscribed bounds on the
advances in non-technological disciplines, such as busi-
ness, are irrelevant for purposes of the section 101 in-
quiry.
I/P ENGINE, INC. v. AOL INC. 5
application of scientific principles and natural laws serves
to ensure that “the basic tools of scientific and technologi-
cal work,” Gottschalk v. Benson, 409 U.S. 63, 67, (1972),
remain “free to all men and reserved exclusively to none,”
Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127,
130 (1948); see Mayo, 132 S. Ct. at 1293. 3
In the more difficult cases—where it is uncertain
whether claims are sufficiently “technological” to warrant
patent protection—subject matter eligibility will often
turn on whether the claims describe a narrow inventive
application of a scientific principle, or instead simply
recite steps that are necessarily part of the principle
itself. See Mayo, 132 S. Ct. at 1297 (explaining that a
process reciting a law of nature is not patent eligible
unless it “has additional features that provide practical
assurance that the process is more than a drafting effort
designed to monopolize the law of nature itself”). In
Mayo, for example, claims were rejected, in part, because
they were “overly broad,” id. at 1301, and did “not confine
their reach to particular applications,” id. at 1302. The
need for specificity sufficient to cabin the scope of an
invention is particularly acute in the software arena,
where claims tend to be exceedingly broad, development
proceeds at breakneck speed, and innovation often occurs
3 There is, of course, some “overlap” between the el-
igibility analysis under section 101 and the obviousness
inquiry under 35 U.S.C. § 103. Mayo, 132 S. Ct. at 1304.
Section 103, however, asks the narrow question of wheth-
er particular claims are obvious in view of the prior art.
By contrast, the section 101 inquiry is broader and more
essential: it asks whether the claimed subject matter,
stripped of any conventional elements, is “the kind of
‘discover[y]’” that the patent laws were intended to pro-
tect. Flook, 437 U.S. at 593.
6 I/P ENGINE, INC. v. AOL INC.
despite the availability of patent protection rather than
because of it.
Finally, and most importantly, the technological arts
test recognizes that there has to be some rough correla-
tion between “the give and the get”—applicants who make
little, if any, substantive contribution to the existing body
of scientific and technological knowledge should not be
afforded broad monopoly rights that potentially stifle
future research and development. In assessing patent
eligibility, “the underlying functional concern . . . is
a relative one: how much future innovation is foreclosed
relative to the contribution of the inventor.” Mayo, 132 S.
Ct. at 1303. At its core, section 101 prohibits claims
which are “overly broad,” id. at 1301, in proportion to the
technological dividends they yield.
II.
I/P Engine’s claimed invention, which describes a sys-
tem which filters information for relevance to a user’s
query using combined content and collaborative data, see
U.S. Patent No. 6,314,420 col.28 ll.1-15; U.S. Patent No.
6,775,664 col.27 ll.27-37, does not pass muster under
section 101. The asserted claims do not meet subject
matter eligibility requirements because they do not “im-
prove the functioning of the computer itself” or “effect an
improvement in any other technology or technical field.”
Alice, 134 S. Ct. at 2359. To the contrary, the use of
search engines was well-established and the clear ad-
vantages of combining content-based and collaborative
filtering were widely recognized at the time of the claimed
invention. See ante at 8-9.
The asserted claims simply describe the well-known
and widely-applied concept that it is often helpful to have
both content-based and collaborative information about a
I/P ENGINE, INC. v. AOL INC. 7
specific area of interest. 4 A person planning to visit
London, for example, might consult a guidebook that
would provide information about particular museums in
London (content data) as well as information about what
other people thought of these museums (collaborative
data). See J.A. 4255-56.
I/P Engine’s claimed system is merely an Internet it-
eration of the basic concept of combining content and
collaborative data, relying for implementation on “a
generic computer to perform generic computer functions.”
Alice, 134 S. Ct. at 2359; see also id. (explaining that
using a computer to obtain data is “well-understood” and
“routine” (citations and internal quotation marks omit-
ted)); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1370 (Fed. Cir. 2011) (concluding that a claim which
disclosed the “mere collection and organization of data
regarding credit card numbers and Internet addresses”
was patent ineligible).
Moreover, the scope of the claimed invention is stag-
gering, potentially covering a significant portion of all
online advertising. I/P Engine’s asserted claims fall
outside section 101 because their broad and sweeping
4 In its appeal brief, I/P Engine notes that the
shared specification of the asserted patents describes “a
variety of ways in which content and collaborative feed-
back data can be combined,” including through the use of
a “complex neural network function.” Br. of Plaintiff-
Cross Appellant at 10. As we recently made clear, howev-
er, “the important inquiry for a § 101 analysis is to look to
the claim[s].” Accenture Global Servs., GmbH v. Guide-
wire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013).
Accordingly, “the complexity of the implementing soft-
ware or the level of detail in the specification does not
transform a claim reciting only an abstract concept into a
patent-eligible system or method.” Id.8 I/P ENGINE, INC. v. AOL INC.
reach is vastly disproportionate to their minimal techno-
logical disclosure.
III.
The Supreme Court has dictated that the subject mat-
ter eligibility analysis must precede the obviousness
inquiry. Flook, 437 U.S. at 593 (“The obligation to deter-
mine what type of discovery is sought to be patented” so
as to determine whether it falls within the ambit of sec-
tion 101 “must precede the determination of whether that
discovery is, in fact, new or obvious.”); Bilski, 130 S. Ct. at
3225 (explaining that the issue of whether claims are
directed to statutory subject matter is “a threshold test”);
see also In re Comiskey, 554 F.3d 967, 973 (Fed. Cir. 2009)
(“Only if the requirements of § 101 are satisfied is the
inventor allowed to pass through to the other require-
ments for patentability, such as novelty under § 102 and
. . . non-obviousness under § 103.” (citations and internal
quotation marks omitted)). To fail to address at the very
outset whether claims meet the strictures of section 101 is
to put the cart before the horse. Until it is determined
that claimed subject matter is even eligible for patent
protection, a court has no warrant to consider subordinate
validity issues such as non-obviousness under 35 U.S.C.
§ 103 or adequate written description under 35 U.S.C.
§ 112.
From a practical perspective, there are clear ad-
vantages to addressing section 101’s requirements at the
outset of litigation. Patent eligibility issues can often be
resolved without lengthy claim construction, and an early
determination that the subject matter of asserted claims
is patent ineligible can spare both litigants and courts
years of needless litigation. To the extent that certain
classes of claims—such as claims on methods of doing
business—are deemed presumptively patent ineligible,
moreover, the United States Patent and Trademark Office
will have more resources to devote to expeditiously pro-
I/P ENGINE, INC. v. AOL INC. 9
cessing applications which disclose truly important ad-
vances in science and technology.
Even more fundamentally, the power to issue patents
is not unbounded. To the contrary, the constitutional
grant of authority “[t]o promote the Progress of Science
and useful Arts, by securing for limited Times to Authors
and Inventors the exclusive Right to their respective
Writings and Discoveries,” U.S. Const. art. I, § 8, cl. 8, “is
both a grant of power and a limitation,” Graham v. John
Deere Co., 383 U.S. 1, 5 (1966); see Bonito Boats, Inc. v.
Thunder Craft Boats, Inc., 489 U.S. 141, 146 (1989).
Section 101’s vital role—a role that sections 103 and 112
“are not equipped” to take on, Mayo, 132 S. Ct. at 1304—
is to insure that patent protection promotes, rather than
impedes, scientific progress and technological innovation.
A robust application of section 101 ensures that the
nation’s patent laws remain tethered to their constitu-
tional moorings.
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
I/P ENGINE, INC.,
Plaintiff-Cross Appellant,
v.
AOL INC., GOOGLE INC., IAC SEARCH & MEDIA,
INC., GANNETT COMPANY, INC., AND TARGET
CORPORATION,
Defendants-Appellants.
______________________
2013-1307, -1313
______________________
Appeals from the United States District Court for the
Eastern District of Virginia in No. 11-CV-0512, Judge
Raymond Alvin Jackson.
______________________
CHEN, Circuit Judge, dissenting.
After a twelve-day trial during which both sides pre-
sented evidence about the teachings of the prior art, the
jury made detailed factual findings pertaining to the
obviousness of the ’420 and ’664 patents. The jury found,
among other findings, that elements of the asserted
claims were not present in the prior art. Based on the
jury’s findings, the district court determined that the
Defendants had failed to prove by clear and convincing
evidence that the asserted claims were obvious. In re-
versing the district court’s judgment, the majority finds
2 I/P ENGINE, INC. v. AOL INC.
that the prior art discloses a key claim limitation that the
jury found was missing, and also concludes that the
district court erred in failing to use “common sense” to
bridge the differences between the prior art and the
claims. In my view, the majority fails to accord sufficient
deference to the jury’s findings of fact. Moreover, I find
that the majority’s use of common sense to bridge the gap
between the prior art and the claims is unsupported by
sufficient evidence and reasoning. I respectfully dissent.
At the outset, it is worth noting that obviousness is a
mixed question of law and fact. Kinetic Concepts, Inc. v.
Smith & Nephew, Inc., 688 F.3d 1342, 1356 (Fed. Cir.
2012). Although we must examine the legal conclusion of
obviousness de novo, we should tread lightly when review-
ing a legal conclusion—reached by a trial court—that
rests upon a jury’s findings of fact. See Polaroid Corp. v.
Eastman Kodak Co., 789 F.2d 1556, 1558 (Fed. Cir. 1986)
(“Though it is well settled that the ultimate conclusion on
obviousness is . . . a legal conclusion, that does not
mean . . . that we may proceed on a paper record as
though no trial had taken place. This court reviews
judgments. Because we do not retry the case, [the appel-
lant] must to prevail convince us that the judgment
cannot stand on the record created at trial . . . . ”); cf.
Haebe v. DOJ, 288 F.3d 1288, 1299 (Fed. Cir. 2002)
(“[G]reat deference must be granted to the trier of fact
who has had the opportunity to observe the demeanor of
the witnesses, whereas the reviewing body looks only at
cold records.”) (internal quotation marks omitted). Where
a jury’s findings concerning the prior art are supported by
substantial evidence, and where a trial court makes its
obviousness determination based on those findings, I
would exercise caution in wielding our own common sense
as part of our review of the judgment.
The asserted claims in this case are based, in part, on
filtering techniques used in two types of information
systems found in the prior art: content-based systems and
I/P ENGINE, INC. v. AOL INC. 3
profile-based (or “collaborative”) systems. Content-based
systems filtered search results for relevance to a user’s
query, as reflected in “conventional search engines.” See
Majority Op. at 10 (quoting ’420 patent col.2 ll.15–18).
Collaborative systems, meanwhile, filtered information
for relevance based on “the user’s long-term information
desires or preferences,” and incorporated the information
preferences of similar users. J.A. 3690.
As the majority explains, the prior art suggested that
content-based and collaborative filtering could be com-
bined. See Majority Op. at 8–9. The majority identifies
prior art systems that passed content-based results
(which were returned based on the user’s query) over to a
distinct collaborative filter. The query in these systems
was used only to obtain the initial results; it played no
role in subsequent filtering on the collaborative side. The
asserted claims, however, require using the query itself—
not just the results returned by the query—on the collabo-
rative side, thus combining content-based and collabora-
tive filtering. See ’420 patent, col.28 ll.1–15; ’664 patent,
col.27 ll.27–37.
At trial, experts for both sides testified about whether
a person of skill in the art would have found it obvious to
supply the key claim limitation missing from the prior
art—the use of the query as part of a combined content-
based and collaborative filter. I/P Engine’s expert testi-
fied that a person of skill in the art in 1998 would not
have “appreciated the advantages of tight integration” of
search systems and profile systems, particularly with
regard to the “relevance to the query.” J.A. 3739. In
response, the Defendants’ expert testified that the prior
art did “feature a tight integration between the search
system and the content collaborative sys-
tem . . . [b]ecause . . . it would have been obvious to one of
ordinary skill in the art that if you are filtering search
results, it’s obvious to keep around the query and use that
also for filtering.” Id. at 3172–73.
4 I/P ENGINE, INC. v. AOL INC.
With respect to both patents, the jury found that the
prior art “did not disclose a tightly integrated search
system, and could not filter information relevant to the
query.” J.A. 4170, 4172. The majority downplays the
significance of the jury’s findings, explaining that the jury
“never determined whether it would have been obvious to
one skilled in the art to bridge any differences between
the prior art and the claimed invention.” Majority Op. at
17. Without such a determination, the majority suggests,
we must resort to “common sense” to address the question
left unanswered by the jury—that is, whether it would
have been obvious to one of skill in the art to use the
search query as part of the filtering of collaborative data. 1
We have explained that “the mere recitation of the
words ‘common sense’ without any support adds nothing
to the obviousness equation. Thus, we have required that
obviousness findings grounded in ‘common sense’ must
contain explicit and clear reasoning providing some
rational underpinning why common sense compels a
1 The majority also concludes that this claim limita-
tion is taught by the Culliss patent because that reference
“squarely discloses using combined content and collabora-
tive data in analyzing items for relevance to a query.”
Majority Op. at 11–12. But the majority’s conclusion
squarely conflicts with the jury’s express finding that
Culliss “lack[s] any content analysis and filtering for
relevance to the query.” J.A. 4170. Based on the record, I
would defer to the jury’s fact finding. In the face of con-
flicting testimony about what Culliss disclosed, the jury
was free to credit the opinion of I/P Engine’s expert. See
Power-One, Inc. v. Artesyn Technologies, Inc., 599 F.3d
1343, 1351 (Fed. Cir. 2010) (explaining that the jury was
free to either credit or disbelieve expert testimony about
“the differences between the prior art and the invention
claimed”).
I/P ENGINE, INC. v. AOL INC. 5
finding of obviousness.” Plantronics, Inc. v. Aliph, Inc.,
724 F.3d 1343, 1354 (Fed. Cir. 2013) (internal citations
omitted). As the Supreme Court emphasized, “it can be
important to identify a reason that would have prompted
a person of ordinary skill in the relevant field to combine
the elements in the way the claimed new invention
does . . . because inventions in most, if not all, instances
rely upon building blocks long since uncovered, and
claimed discoveries almost of necessity will be combina-
tions of what, in some sense, is already known.” KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We may not
find a patent invalid for obviousness on the basis of “mere
conclusory statements.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006).
Here, in support of its finding of a “strong prima facie
case of obviousness,” the majority concludes that “retain-
ing the query for use in filtering combined content and
collaborative data was entirely predictable and grounded
in common sense.” Majority Op. at 15, 19 (internal quota-
tions omitted). 2 The use of the query is a matter of com-
2 The majority also takes issue with the jury’s find-
ings on secondary considerations, noting that two of the
findings with respect to the ’420 patent and the ’664
patent “appear internally inconsistent.” Majority Op. at
16. The majority generally characterizes the findings on
secondary considerations as a “mixed bag.” Id. Even
assuming, however, that the jury’s secondary considera-
tion findings are as muddled as the majority describes,
they are relevant only insofar as the majority is correct
that its invocation of “common sense” may support a
prima facie case of obviousness that must be overcome.
See Dow Chemical Co. v. Halliburton Oil Well Cementing
Co., 324 U.S. 320, 330 (1945) (“[Secondary] considerations
are relevant only in a close case where all other proof
leaves the question of invention in doubt.”).
6 I/P ENGINE, INC. v. AOL INC.
mon sense, the majority explains, “[b]ecause the query
was readily available and closely correlated to the overall
relevance of search results.” Id. at 14. In support of its
suggestion that one of skill in the art would find it obvious
to use the readily available query, the majority cites the
testimony of the Defendants’ expert:
As [the Defendants’ expert] explained, the query
would be just “sitting there” with the results of a
search, and it would have been obvious to one
skilled in the art to “keep around the query and
use that also for filtering.”
Id. (citing J.A. 3173).
I find this testimony inadequate to support the major-
ity’s conclusion. The expert’s “sitting there” explanation
tells us nothing about whether one of skill in the art in
1998 would have been struck by common sense to modify
collaborative filtering systems so as to incorporate search
queries. All prior art references are “just sitting there” in
the metaphorical sense. What is needed—and what is
missing from the cited testimony—is some explanation of
why one would use the query as the asserted claims do.
See Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363,
1374 (Fed. Cir. 2008) (“[S]ome kind of motivation must be
shown from some source, so that the jury can understand
why a person of ordinary skill would have thought of
either combining two or more references or modifying one
to achieve the patented method.” (internal citations
omitted)). Such evidence or reasoning is lacking here.
The testimony of the Defendants’ expert amounts to a
“mere conclusory statement” that may not serve as a basis
for finding the asserted claims obvious. See In re Kahn,
441 F.3d at 988; see also InTouch Techs., Inc. v. VGO
Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)
(holding that expert’s testimony could not support a
finding of obviousness where “testimony primarily con-
sisted of conclusory references to [the expert’s] belief that
I/P ENGINE, INC. v. AOL INC. 7
one of ordinary skill in the art could combine these refer-
ences, not that they would have been motivated to do so”).
As for the majority’s observation that the query is
“closely correlated to the overall relevance of search
results,” no one disputes that the prior art taught that a
query was relevant to a user’s content-based search.
What is disputed is whether the prior art taught the
query’s “overall relevance” to collaborative filtering. See
J.A. 3172–73, 3739. To bridge the gap, we must identify a
non-circular reason that would have prompted a person of
skill in the art to appreciate the relevance of the query to
collaborative data. See KSR, 550 U.S. at 418.
The gap in the prior art references here is unlike gaps
we have encountered in other cases—cited by the majori-
ty—where we have found patents obvious for merely
adding “the Internet” or “a web browser” to a well-known
prior art reference. See Majority Op. at 14–15 (citing
Soverain Software LLC v. Newegg Inc., 705 F.3d 1333,
1344, amended on reh’g (Fed. Cir. 2013); Muniauction,
Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008)). In
those cases, we observed that skilled artisans had already
performed the same type of combination with similar
elements. See Soverain, 705 F.3d at 1344 (finding that
the use of use of hypertext to perform the known process
of transmitting documents “was a routine incorporation of
Internet technology into existing processes”); Muniauc-
tion, 532 F.3d at 1326–27 (concluding that “[t]he record in
this case demonstrates that adapting existing electronic
processes to incorporate modern internet and web browser
technology was similarly commonplace at the time the
’099 patent application was filed”).
In this case, the majority does not identify analogous
“routine” combinations that would render obvious the
patents’ incorporation of the search query into a collabo-
rative filtering system. The asserted patents did not
merely combine information technology with “the Inter-
8 I/P ENGINE, INC. v. AOL INC.
net.” Rather, the patents combined elements from two
known information filtering systems. The patents took
the query data (input for a content system) and mixed it
with collaborative data (input for a profile-based system).
What was claimed was the combination of elements of two
evolving systems in the field of information science, not a
combination of a known process and a web browser.
Nor is this case like Perfect Web Technologies, Inc. v.
InfoUSA, Inc., 587 F.3d 1324 (Fed. Cir. 2009), where we
affirmed a district court’s conclusion that a patent was
obvious as a matter of common sense. In Perfect Web, the
asserted patent claimed a four-step method for distrib-
uting bulk emails. It was undisputed that the first three
steps of the method were disclosed in the prior art. Id. at
1330. The fourth step—which was not present in the
prior art—recited repeating the first three steps over and
over until all the emails were delivered. As we described
the method, it “simply recites repetition of a known
procedure until success is achieved.” Id. Moreover, we
found that the “relevant art required only a high school
education and limited marketing and computer experi-
ence,” and that no expert opinion was required to appreci-
ate the value of repeating the three steps. Id.In affirming the district court’s conclusion that the
patented method was obvious, we observed that “simple
logic suggests that sending messages to new addresses is
more likely to produce successful deliveries than re-
sending messages to addresses that have already failed.”
Id. at 1331. To put it another way, one of skill in the art
would have been motivated to add the fourth step because
it would increase success—more recipients would receive
email messages. We identified a benefit that would have
been readily apparent to one of skill in the art at the time
of the invention.
Here, by contrast, the record does not suggest a bene-
fit or rationale that would have caused a skilled artisan to
I/P ENGINE, INC. v. AOL INC. 9
use the query as part of collaborative filtering in 1998.
Although we know that the query was “sitting there,” we
do not know why one of skill in the art would have
thought that mixing the query with the collaborative filter
would produce, to use the language of Perfect Web, “suc-
cessful” filtering. We need something beyond the invoca-
tion of the phrase “common sense” or “simple logic” to
demonstrate the reason to combine the prior art refer-
ences in this case. See KSR, 550 U.S. at 418; Innogenet-
ics, 512 F.3d at 1374.
For these reasons, I respectfully dissent from the ma-
jority’s holding that the asserted claims of the ’420 and
’664 patents are invalid for obviousness.