Google LLC v. Valtrus Innovations Ltd

1. Case Identification

• Case #: IPR2022-01545
• Patent #: 6,728,704
• Filed: September 15, 2022
• Petitioner(s): Google LLC
• Patent Owner(s): Valtrus Innovations Limited
• Challenged Claims: 1-23

2. Patent Overview

• Title: Method and System for Arranging Search Results
• Brief Description: The ’704 patent discloses a method for arranging web search results that originate from multiple different search engines. The system merges the separate result lists into a single, ranked list for presentation to a user based on a calculated "representative value" for each search engine's list.

3. Grounds for Unpatentability

Ground 1: Obviousness over Bushee and Voorhees

• Claims 1-3, 5-9, 12-14, 17-20, and 23 are obvious over Bushee in view of Voorhees.
  • Prior Art Relied Upon: Bushee (Patent 6,711,569) and Voorhees (Patent 5,864,846).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Bushee taught a multi-search-engine system that performs nearly all steps of independent claim 1, including transmitting a query, receiving result lists, selecting a subset of entries, scoring them, and assigning an average score (a representative value) to each search engine. However, Petitioner contended that Bushee’s method for merging results—placing them in blocks—did not teach the limitation of merging results where the "representative value varies in accordance with [the] predetermined manner." Voorhees was asserted to teach this missing element by disclosing a method of "fusing" results from multiple search engines into a single list using a semi-random process weighted by the number of pages remaining to be selected from each engine. In Voorhees, this number of remaining pages is a representative value that necessarily varies (decrements) as each page is selected for the merged list.
    • Motivation to Combine: A POSITA would combine these references to improve upon Bushee’s rudimentary result merging method. Bushee’s system, which presents results in blocks, places the best results of a lower-ranked search engine after the worst results of a higher-ranked one. Petitioner asserted that Voorhees’s more sophisticated "fusion" method was a known alternative that would solve this problem by creating a truly integrated list, presenting the best overall results to the user in a transparent manner. This improved user experience provided a clear motivation for the combination.
    • Expectation of Success: Petitioner argued that a POSITA would have had a reasonable expectation of success because combining the known fusion technique of Voorhees with the multi-engine framework of Bushee was a predictable integration of prior art elements according to their established functions.

Ground 2: Obviousness over Bushee, Voorhees, and Koppel

• Claims 3-4, 9-10, 14-15, and 20-21 are obvious over Bushee in view of Voorhees and Koppel.

  • Prior Art Relied Upon: Bushee (Patent 6,711,569), Voorhees (Patent 5,864,846), and Koppel (Patent 7,257,766).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination in Ground 1 to address dependent claims requiring specific methods for selecting a subset of entries from result lists. Specifically, claim 3 requires selecting a uniform number of "uniformly spaced" entries, and claim 4 requires selecting a uniform number of entries "at random." While the base combination (Bushee) taught selecting a subset (the "first N results"), Koppel was introduced because it explicitly disclosed various methods for selecting a smaller number of search results from a larger set. Koppel’s disclosed methods included "selecting evenly...spaced sites from the search results" (mapping to claim 3) and "randomly selecting sites" (mapping to claim 4).
    • Motivation to Combine: Petitioner argued that a POSITA, seeking to implement the subset selection step taught in Bushee, would have found it obvious to use the well-known, simple alternative selection techniques disclosed in Koppel. The selection of a subset of items from a list was described as a basic activity, and Koppel merely provided conventional options for performing this step. The motivation was one of simple substitution with known alternatives to achieve a predictable result.
    • Expectation of Success: A POSITA would have expected success in applying Koppel's methods, as it involved implementing simple, well-known selection techniques that would not lead to unpredictable results.

• Additional Grounds: Petitioner asserted additional obviousness challenges against claims 1-3, 5-9, 12-14, 17-20, and 23 over Voorhees, Bushee, and Tso (Patent 6,385,602), and against claims 3-4, 9-10, 14-15, and 20-21 over that same combination further in view of Koppel. These grounds relied on similar rationales, with Tso being used to redundantly teach concepts like using an average score as a weight for a collection of search results.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be improper because the primary prior art references (Bushee, Voorhees, Tso, and Koppel) were not before the examiner during the original prosecution.
• Petitioner further argued that discretionary denial under Fintiv would be inappropriate. The petition was filed early in a parallel district court proceeding where no trial date had been set, discovery was in its initial stages, and no significant orders had been issued. Petitioner contended these factors, combined with the compelling merits of the unpatentability grounds, weighed strongly in favor of institution.

5. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-23 of the ’704 patent as unpatentable.