I/P Engine, Inc. v. Aol Inc.

576 F. App'x 982
CourtCourt of Appeals for the Federal Circuit
DecidedAugust 15, 2014
Docket2013-1307, 2013-1313
StatusUnpublished
Cited by11 cases

This text of 576 F. App'x 982 (I/P Engine, Inc. v. Aol Inc.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
I/P Engine, Inc. v. Aol Inc., 576 F. App'x 982 (Fed. Cir. 2014).

Opinions

PER CURIAM.

I/P Engine, Inc. (“I/P Engine”) brought an action against AOL Inc., Google Inc. (“Google”), IAC Search & Media, Inc., Gannett Company, Inc., and Target Corporation (collectively, the “Google Defendants”) alleging infringement of U.S. Patent Nos. 6,314,420 (the “'420 patent”) and 6,775,664 (the “'664 patent”). A jury returned a verdict finding that all asserted claims were infringed and not anticipated. J.A. 4163-73. The district court then determined that the asserted claims were not obvious and entered judgment in I/P Engine’s favor. See I/P Engine, Inc. v. AOL Inc., No. 11-CV-0512, 2012 U.S. Dist. LEXIS 166555 (E.D.Va. Nov. 20, 2012) (“Non-Obviousness Order ”). Because the asserted claims of the '420 and '664 patents are invalid for obviousness, we reverse.

BACKGROUND

The '420 and '664 patents both claim priority to the same parent patent, U.S. Patent No. 5,867,799. They relate to a method for filtering Internet search results that utilizes both content-based and collaborative filtering. See '420 patent col.l 11.10-16, col.2 11.20-26; '664 patent col.23 11.29 — 44.1 Content-based filtering is a technique for determining relevance by extracting features such as text from an information item. '420 patent col.4 11.22-26; see also J.A. 487. By contrast, collaborative filtering assesses relevance based on feedback from other users — it looks to what items “other users with similar interests or needs found to be relevant.” '420 patent col.4 11.28-29; see also J.A. 487. The asserted patents describe a system “wherein a search engine operates with [984]*984collaborative and content-based filtering to provide better search responses to user queries.” '420 patent col.l 11.14-16. Specifically, the asserted claims describe a filter system that combines content and collaborative data in filtering each “informon”— or information item — for relevance to a user’s query.2 Asserted claim 10 of the '420 patent recites:

A search engine system comprising: a system for scanning a network to make a demand search for informons relevant to a query from an individual user; a content-based filter system for receiving the informons from the scanning system and for filtering the informons on the basis of applicable content profile data for relevance to the query; and a feedback system for receiving collaborative feedback data from system users relative to informons considered by such users; the filter system combining pertaining feedback data from the feedback system with the content profile data in filtering each informon for relevance to the query.

Id. col.28 11.1-15; see also id. col.29 11.32— 44.

Asserted claim 1 of the '664 patent provides:

A search system comprising: a scanning system for searching for information relevant to a query associated with a first user in a plurality of users; a feedback system for receiving information found to be relevant to the query by other users; and a content-based filter system for combining the information from the feedback system with the information from the scanning system and for filtering the combined information for relevance to at least one of the query and the first user.

'664 patent col.2711.27-37.

Claim 26 of the '664 patent is similar to claim 1, but cast as a method claim:

A method for obtaining information relevant to a first user comprising: searching for information relevant to a query associated with a first user in a plurality of users; receiving information found to be relevant to the query by other users; combining the information found to be relevant to the query by other users with the searched information; and content-based filtering the combined information for relevance to at least one of the query and the first user.

Id. col.28 11.56-65.

On September 15, 2011, IP/Engine3 filed a complaint in the United States District Court for the Eastern District of Virginia alleging that Google’s AdWords, AdSense for Search, and AdSense for Mobile Search systems, which display advertisements on web pages, infringed claims 10, 14, 15, 25, 27, and 28 of the '420 patent and claims 1, 5, 6, 21, 22, 26, 28, and 38 of the '664 patent. See Claim Construction Order, 874 F.Supp.2d at 514-15. On December 5, 2011, the Google Defendants filed counterclaims, seeking declaratory judgments of noninfringement and invalidity of both the '420 and '664 patents. Id. at 514.

Following a Markman hearing, the district court construed disputed claim terms. The court concluded that: (1) the term [985]*985“collaborative feedback data” refers to “data from system users regarding what informons such users found to be relevant”; (2) the term “scanning a network” means “looking for or examining items in a network”; and (3) the term “demand search” refers to “a single search engine query performed upon a user request.” Id. at 525 (internal quotation marks omitted).

During a twelve-day trial, the Google Defendants pointed to numerous prior art references to support their contention that the claims of the '420 and '664 patents were invalid as anticipated and obvious. In particular, they argued that U.S. Patent No. 6,006,222 (“Culliss”) anticipated the asserted claims, and that those claims were obvious in view of: (1) U.S. Patent No. 6,202,058 (“Rose”); (2) Yezdezard Z. Lashkari, Feature Guided Automated Collaborative Filtering (July 25, 1995) (M.S. thesis, Massachusetts Institute of Technology) (“WebHound”); and (8) Marko Bala-banovic & Yoav Shoham, Content-Based, Collaborative Recommendation, 40 Comms. of the ACM 66 (1997) (“Fab”).

The jury returned a verdict on November 6, 2012, finding that the Google Defendants had infringed all asserted claims and awarding damages of $S0,496,155.4 J.A. 4173. The jury also found that the asserted claims were not anticipated, and answered a special verdict form on factual issues pertaining to the obviousness inquiry. J.A. 4169-72. Specifically, the jury found that “Rose, [WebHound] and Fab[-] were profile systems that did not disclose a tightly integrated search system, and could not filter information relevant to the query.” J.A. 4170, 4171-72.

On November 20, 2012, the district court ruled that the Google Defendants had “failed to prove, by clear and convincing evidence, that the '420 Patent or the '664 Patent [was] obvious.” Non-Obviousness Order, 2012 U.S. Dist. LEXIS 166555, at *9. The district court further determined that the equitable doctrine of laches barred I/P Engine from recovering damages for any infringement occurring prior to September 15, 2011, the date of its complaint. I/P Engine, Inc. v. AOL Inc., 915 F.Supp.2d 736, 746-49 (E.D.Va.2012). The court explained that I/P Engine “had constructive notice that the Google Ad-words system potentially infringed its patents as of July 2005 and [yet] failed to undertake any reasonable investigation to further determine if infringement was occurring.” Id. at 744. The court stated, moreover, that “[a]lthough Congress is best left to consider the merits of nonpracticing patent entities in our patent system, the dilatory nature of [I/P Engine’s] suit is precisely why the doctrine of laches has been applied to patent law.” Id. at 748.

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576 F. App'x 982, Counsel Stack Legal Research, https://law.counselstack.com/opinion/ip-engine-inc-v-aol-inc-cafc-2014.