Meiresonne v. Google (Fed. Cir. March 7, 2017) stands for the proposition that a proper teach away argument to defeat of obviousness rejection requires a discussion in the prior art of more than just a preference away, disparagement or being critical of the combination suggested by the examiner to make the claimed invention. A proper teach away argument requires that the prior art advocated abandoning the route to the claimed invention.
The Meiresonne case may be useful in providing instructions on a proper teach away argument to overcome an obviousness rejection and to also help understand how a patent drafter might not want to a prepare patent application to make it harder for competitors to secure patents around the patent owner’s existing patent portfolio.
I. Proper teach away argument
The Meiresonne case discussed the facts of the invention and how the prior art did not teach away from the combination suggested by the examiner. Also, the Meiresonne case was compared to a prior case wherein the Federal Circuit affirmed the teach away arguments presented by the patent owner.
A. Prior art did not teach away from the suggested combination
The Meiresonne invention was directed to a search engine’s results page wherein a list of hyperlinks are provided to an Internet user. (see US Pat. No. 8,156,096). The Internet user could hover over one of the hyperlinks in order to see a descriptive textual preview in a rollover window. Google filed an inter partes review action to invalidate the Meiresonne patent based on two prior art references whose combination disclosed all the elements of the Meiresonne’s claimed invention. The parties agreed that the first prior art reference teaches links and text descriptions and the second prior art reference teaches links in a rollover viewing area.
The patent owner characterize the prior art references as disparaging and criticizing the use of descriptive text in previews and a preference for graphical previews.
The Federal Circuit reviewed the prior art references and found that the prior art references taught graphical previews but did not advocate abandoning textual descriptions completely or that one can only either use graphical previews or descriptive textual based previews in a mutually exclusive way. Rather, the prior art references described the graphical previews as something to make web browsing easier and more useful. Although the prior art references may imply that descriptive textual previews may be unreliable, misleading, wrong or inaccurate, the prior art references did not recommend discarding textual based descriptions completely. The prior art references never advocated abandoning text wholesale but merely encouraged supplementing the text by visiting the website itself.
For these reasons, the Federal Circuit affirmed the conclusion of the Patent and Trademark Appeal Board that the prior art references did not teach away from the suggested combination of the claimed invention.
B. Instant case compared to DePuy Spine
In DePuy Spine, the prior art taught that the addition of a rigid screwed to the prior art spinal assembly would’ve eliminated or reduced the devices desired “shock absorber” effect, thereby rendering the device inoperative for its intended purpose. The prior art expressed a concern for failure of the assembly and stated that the shock absorber effect decreased the chance of failure of the screw or the bone screw interface. The prior art also depicted a causal relationship between the rigidity and screw failure which supported the finding that it taught away from using rigid screws.
The Federal Circuit discussed DePuy Spine and compared the facts of that case with the instant case to draw contrast between what is a proper teach away argument to what is an improper teach way argument. In DePuy Spine, the language used to describe what the prior art taught was tantamount to a complete failure. The court utilized terms such as inoperative, failure and causal relationship. The teaching of the prior art, to be tantamount to a teach way argument would preferably rise to this level of characterization of how the prior art taught away from the claimed invention. The prior art would preferably not merely suggest away but firmly teach away from the claimed invention.
II. Patent drafting insight
In drafting a patent application for an invention, the patent drafter may disparage the prior art in an attempt to draw a clear contrast with the prior art techniques versus the invention being described in the patent application. However, by disparaging the prior art in such a complete and total way, competitors may be able to utilize the disparaging language in the prior art in order to convince the examiner that the competitor’s invention is non-obvious and thus patentable.
The default route for a vast majority of patent applications is that the patent applications are held in secrecy for the first 18 months after the filing of the patent application with the USPTO. However, many patent applications are published even if they do not mature into an issued patent. As such, the information that one puts into a patent application becomes prior art to later filed patent applications. If the first filed patent application contained a discussion disparaging the prior art technique or combination in such a complete and total way that the applicant of the later filed patent application could argue that their invention is non-obvious based on disparaging comments made in the first filed patent application, then in this regard, such strong disparagement of the prior art technique a combination is in a way helping competitors by giving them potential teach away arguments.
The goal in patent drafting would be to help draw a clear distinction between the prior art and the invention and also to not help competitors in securing patents on their own inventions but to generate a border around your own invention so that others could not secure patent protection for invention similar to but different from your own invention. When drawing the clear distinction between the prior art and the instant invention, one may want to consider not completely disparaging the prior art but to merely describe it as being not preferred or to show how the prior art technique may not be as useful. In other words don’t use such strong language so as to completely disparage the prior art. In this way, the patent application may be characterized as drawing a distinction between the prior art technique and the present invention and not allowing competitors to utilize any distinctions made in the patent application to their benefit in arguing that the disparagement discussion included in the patent application teaches away from the claimed combination suggested by the competitor.
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