Google Inc v. MeireSonne Michael

1. Case Identification

• Case #: IPR2014-01188
• Patent #: 8,156,096
• Filed: July 18, 2014
• Petitioner(s): Google Inc.
• Patent Owner(s): Industrial Quick Search, Inc.
• Challenged Claims: 16-17 and 19-20

2. Patent Overview

• Title: Supplier Identification and Locator System and Method
• Brief Description: The ’096 patent relates to a directory website user interface that displays a list of supplier links with associated descriptive text. The claimed invention features a dedicated "rollover viewing area" which displays additional information corresponding to a link when a user’s cursor is positioned over or adjacent to that link or its description.

3. Grounds for Unpatentability

Ground 1: Claims 16-17 and 19-20 are obvious over Hill in view of Finseth.

• Prior Art Relied Upon: Hill (a 1997 book, World Wide Web Searching For Dummies), and Finseth (Patent 6,271,840).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Hill disclosed all elements of the challenged claims except for the "rollover viewing area." Specifically, Hill described conventional web search engines from the 1990s, like Lycos and Yahoo!, which provided a search results page containing a vertical list of hyperlinks to websites, with each link accompanied by adjacent descriptive text about the site. Petitioner asserted that Finseth supplied the missing element by disclosing a "dedicated graphical screen area" adjacent to a list of hyperlinks on a search results page. This area in Finseth displays graphical summary information (e.g., a rendered web page image) corresponding to a hyperlink when a user's cursor "passes the cursor over the corresponding hyperlink."
  • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine Hill’s conventional search results page with Finseth’s preview functionality. The motivation stemmed from the recognized need to make reviewing long lists of text-based search results more efficient. Finseth explicitly identified the drawbacks of search engines like those in Hill and provided a direct solution—a graphical preview—to help users quickly gauge the content of a linked page without clicking.
  • Expectation of Success: A POSITA would have reasonably expected success in this combination, as it involved applying a known user interface improvement (a preview pane) to a standard system (a search results page) to achieve the predictable result of more efficient browsing.

Ground 2: Claims 16-17 and 19-20 are anticipated by, or in the alternative obvious over, Morrison.

• Prior Art Relied Upon: Morrison (Application # 2002/0042750).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Morrison, which discloses an electronic shopping website, anticipated every limitation of the challenged claims. Morrison’s system included a search engine that could generate a "list format category order page" displaying a vertical listing of items. These listings included "descriptive item name hyperlinks." Crucially, Morrison explicitly disclosed a "mouse-over preview window" that displayed "a small preview image of the item" when the user’s mouse pointer passed over the item listing. Petitioner contended this preview window, located in the upper frame of the page, met the "rollover viewing area" and "substantially adjacent" limitations under the broadest reasonable construction. The system, therefore, taught a web page with a list of links, descriptive portions, and an adjacent rollover preview area triggered by cursor position.
  • Key Aspects: The core of this ground was that Morrison disclosed all claimed features within a single, integrated system for online shopping. The alternative obviousness argument was presented to counter a narrower construction of "substantially adjacent," asserting that a POSITA would find it a simple matter of design choice to reposition Morrison’s preview window directly to the side of the item list for better space utilization, as suggested by other layout options within Morrison itself.

Ground 3: Claims 16-17 and 19-20 are anticipated by, or in the alternative obvious over, Petropoulos.

• Prior Art Relied Upon: Petropoulos (Application # 2003/0146939).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Petropoulos anticipated the claims by disclosing a system to improve the review of internet search results. Petropoulos taught displaying "preview information" when a user's mouse pointer "navigates or passes over a defined area," which could include a result's title, descriptive text, or hyperlink. This information was displayed in a "preview window" that Petropoulos stated "can be located anywhere on results page 59," including in a location adjacent to the search results list. Petitioner argued that this disclosure of a search results page with links, descriptive text, and a configurable, cursor-activated preview window met all claim limitations.
  • Motivation to Combine (for alternative ground): In the alternative, if Petropoulos were found not to inherently disclose a standard search homepage, Petitioner argued for combining it with Hill. A POSITA would have been motivated to provide a conventional entry point for the advanced search review features of Petropoulos, and Hill’s disclosure of a standard homepage with a keyword entry form represented a well-known and user-friendly way to do so.

4. Key Claim Construction Positions

• Petitioner argued that for the purposes of the inter partes review (IPR), the Board should adopt several claim constructions proposed by the Patent Owner itself in parallel district court litigation. This included broad constructions for terms like "server" and "rollover" ("an action triggered upon placing a cursor over an item").
• For the term "descriptive portions," Petitioner argued for a broad construction of "any displayed information about the web site to which a link leads," which would include text, graphics, and hyperlinks. This opposed the Patent Owner's narrower "text-only" construction.
• For the phrase "associated by the user," Petitioner noted the term was likely indefinite but argued that for the IPR, it should be broadly construed to mean any relationship in location, appearance, or content that could cause a user to connect two elements on a web page.

5. Key Technical Contentions (Beyond Claim Construction)

• Petitioner dedicated a significant portion of its argument to contending that the challenged claims were not entitled to the August 23, 2001 priority date of the earliest-filed application in the patent's family chain.
• The argument was that key limitations, particularly the concept of triggering the rollover display when a cursor is "substantially adjacent the corresponding descriptive portion," constituted new matter that was first introduced in a 2003 continuation-in-part application.
• Establishing this later priority date of April 23, 2003 was critical to the petition, as it ensured that key prior art references like Finseth and Morrison qualified as prior art under 35 U.S.C. §102(b), which requires a reference to be published more than one year before the effective filing date.

6. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 16-17 and 19-20 of Patent 8,156,096 as unpatentable.