May, 9th, 2017

By Benjamin N. Luehrs

A patentee can overcome obvious-type rejections by establishing that a prior art reference “teaches away” from the applicant’s invention. This argument is often difficult to make, however. Unless the prior art renders the applicant’s invention inoperable, success primarily hinges on showing that the prior art “discourages” the applicant’s invention.

In March 2017, the Federal Circuit decided Meiresonne v. Google, Inc.,[1] which added to the body of caselaw addressing the “teaching away” doctrine. 849 F.3d 1379 (Fed. Cir. 2017). Meiresonne’s invention, in relevant part, comprised a search engine results page with link descriptions having both text and graphics. The PTAB invalidated Meiresonne’s patent based on the combination of “World Wide Web Searching for Dummies, 2nd Edition,” (“Hill”) and US Pat. No. 6,271,840 (“Finseth”), concluding that Finseth taught the graphical descriptions absent in Hill. On appeal, Meiresonne argued patentability because both references teach away from text-based link descriptions. Specifically, Applicant argued Hill teaches that “[s]ometimes [text abstracts are] about as helpful as a paragraph full of gibberish” and Finseth teaches that text excerpts are often “cursory” and “cryptic” or not as useful as graphical depictions.

The CAFC explained that teaching away occurs “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken.” Meiresonne, 849 F.3d at 1382 (citation omitted). Expressions of “general preference,” without language criticizing, discrediting, or otherwise discouraging “investigation into the claimed invention” do not constitute teaching away. Id. Applying this standard in affirming invalidity, the CAFC held that the teaching away doctrine did not apply because Finseth “never implies that text and graphics are mutually exclusive or advocates abandoning the text descriptions wholesale.” Id. at 1383. Neither did Finseth teach that text descriptions “hinder the goal of communicating information about website links to a person browsing the internet” or “render Finseth’s rollover area inoperative for its intended purpose.” Id. at 1383-84.

Meiresonne falls squarely into a category of cases in which a reference’s allegedly discouraging language falls short of teaching away. Similar cases include Allied Erecting,[2] in which the Federal Circuit held that description of a feature’s “disadvantage[s]” was insufficient to show teaching away. Likewise, in In re Ethicon,[3] a reference did not teach away when one embodiment of the reference at issue was “probably more desirable” than another.

Meiresonne does not foreclose all application of the teaching away doctrine. The facts in Meiresonne are distinguishable from cases like DePuy,[4] Santarus.[5] and Crocs.[6] In DePuy, “teaching away” was established when a reference sought to avoid a feature it associated with failure. DePuy, 567 F.3d at 1326—28. In Santarus, a reference “taught away” from one of four articulated solutions by expressly ruling it out.[7] In Crocs, the applicant used a material for shoes (inelastic foam) and a shoe configuration (buckle-less straps) that were at odds with the prior art’s desired characteristics, including elasticity and use of a strap-adjustment mechanism.

Practice Points

  • A reference must do more than dislike or be disinterested in a certain embodiment to teach away from that embodiment.
  • To increase the likelihood of success with teaching away arguments, applicants should primarily argue that a reference discourages the outcome of the applicant’s invention rather than the specifics of the language in the reference.

[1] Google petitioned for IRP of claims 16, 17, 19 and 20 of US Patent No. 8,156,096 to Meiresonne.

[2] Allied Erecting and Dismantling Co., Inc. v. Genesis Attachments, LLC, 825 F.3d 1373 (Fed. Cir. 2016).

[3] In re Ethicon, Inc., 844 F.3d 1344 (Fed. Cir. 2017).

[4] DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314 (Fed. Cir. 2009).

[5] Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344 (Fed. Cir. 2012).

[6] Crocs, Inc. v Int’l Trade Com’n, 598 F.3d 1294 (Fed. Cir. 2010).

[7] Notably, and in line with Meiresonne, the reference’s description of another option as “second best” did not constitute “clear discouragement.” Santarus, 694 F.3d at 1356.

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