Brief Summary: PTAB’s finding of no teaching away “supported by substantial evidence” (e.g., “nothing in either reference indicates that descriptive text would render Finseth’s rollover area inoperative for its intended purpose”) and therefore affirmed the decision.
Summary: Mr. Meiresonne appealed PTAB final IPR decision that claims 16, 17, 19 and 20 of US 8,156,096 relating to a computer system with at least one website including “related subject matter links” and “a rollover viewing area that individually displays information corresponding to more than one of the related subject matter links in the same rollover viewing area” stored thereupon are unpatentable for obviousness in view of a book (World Wide Web Searching for Dummies (“Hill”)) and US 6,271,840 (“Finseth”). The PTAB “found that Hill discloses all the limitations of claim 19 except for the ‘rollover viewing area’ limitation, which it found disclosed by Finseth” and “that a person of ordinary skill in the art would not have read Finseth to teach away from the [claimed] solution.” The FC panel explained that it reviews the Board’s legal determinations de novo (In re Elsner, FC 2004) and the “factual findings underlying those determinations for substantial evidence” (Consol. Edison, US 1938 (“a reasonable mind might accept” it supports the finding); Apple, FC 2016 (“Obviousness is a question of law based on underlying facts.”); In re Mouttet, FC 2012 (“What the prior art teaches, whether a person of ordinary skill in the art would have been motivated to combine the references, and whether a reference teaches away from the claimed invention are questions of fact.”)). It also explained that “[a] combination of known elements is likely to be obvious when it yields predictable results” (KSR, US 2007), “[o]bviousness may be defeated if the prior art indicates that the invention would not have worked for its intended purpose or otherwise teaches away from the invention” (DePuy Spine, FC 2009), and that “[a] reference teaches away ‘when a person of ordinary skill…would be discouraged from following the path set out” (not shown by the expression of a “general preference” without “criticiz[ing], discredit[ing], or otherwise discourage[ing] investigation into’ the claimed invention” (Galderma, FC 2013). The “sole issue” on appeal is “whether Hill and Finseth teach away from the invention of the ‘096 patent, which combines descriptive text with a rollover viewing area.” The FC panel found that Finseth, e.g., “never…advocates abandoning text descriptions wholesale” and that its description of “descriptive text as ‘[o]ten…cursory, if not cryptic’ does not automatically convert the reference to one that teaches away” (“Finseth does not say or imply that text descriptions are ‘unreliable,’ ‘misleading,’ ‘wrong,’ or ‘inaccurate,’ which might lead of ordinary skill in the art to discard text descriptions completely.”) And “Hill’s description of website abtracts as ‘[s]ometimes…as informative as a paragraph of gibberish’” was found not to “amount to promoting abandonment of text descriptions.” Thus, “nothing in either reference indicates that descriptive text would render Finseth’s rollover area inoperative for its intended purpose.” It therefore concluded the PTAB’s finding of no teaching away “is supported by substantial evidence” and therefore affirmed the decision.