Page 1
`
`I/P ENGINE, INC., Plaintiff-Cross Appellant, v. AOL INC., GOOGLE INC., IAC
`SEARCH & MEDIA, INC., GANNETT COMPANY, INC., AND TARGET
`CORPORATION, Defendants-Appellants.
`
`2013-1307, 2013-1313
`
`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`576 Fed. Appx. 982; 2014 U.S. App. LEXIS 15667
`
`August 15, 2014, Decided
`
`NOTICE:
`THIS DECISION WAS ISSUED AS
`UNPUBLISHED OR NONPRECEDENTIAL AND
`MAY NOT BE CITED AS PRECEDENT. PLEASE
`REFER TO FEDERAL RULES OF APPELLATE
`32.1 GOVERNING THE
`PROCEDURE
`RULE
`CITATION TO UNPUBLISHED OPINIONS.
`
`PRIOR HISTORY:
`[**1] Appeals from the United
`States District Court for the Eastern District of Virginia
`in No. 11-CV-0512, Judge Raymond Alvin Jackson.
`I/P Engine, Inc. v. AOL Inc., 2012 U.S. Dist. LEXIS
`166555 (E.D. Va., Nov. 20, 2012)
`
`DISPOSITION: REVERSED.
`
`COUNSEL: DAVID A. PERLSON, Quinn Emanuel
`Urquhart & Sullivan LLP, of San Francisco, California,
`argued for defendants-appellants. With him on the brief
`were EMILY C. O'BRIEN, ANTONIO R. SISTOS,
`MARGARET P. KAMMERUD,
`and JOSHUA L.
`SOHN; and DAVE NELSON, of Chicago, Illinois. Of
`counsel were DAVID L. BILSKER and KEVIN
`ALEXANDER SMITH, of San Francisco, California, and
`ROBERT B. WILSON, of New York, New York. Of
`counsel on the brief for Google Inc. were DARYL L.
`JOSEFFER, King & Spalding LLP, of Washington, DC,
`and ADAM M. CONRAD, of Charlotte, North Carolina.
`
`JOSEPH R. RE, Knobbe, Martens, Olson & Bear, LLP,
`
`of Irvine, California, argued for plaintiff-cross appellant.
`With him on the brief was STEPHEN W. LARSON. Of
`Counsel on the brief were JEFFREY K. SHERWOOD,
`FRANK C. CIMINO, JR., KENNETH W. BROTHERS,
`DAWN
`RUDENKO
`ALBERT,
`CHARLES
`J.
`MONTERIO, JR., and JONATHAN L. FALKLER,
`Dickstein Shapiro LLP, of Washington, DC.
`
`EDWARD R. REINES and JILL J. SCHMIDT, Weil,
`Gotshal & Manges LLP, of Redwood Shores, California,
`for amici curiae Newegg Inc., et al.
`
`JUDGES: Before WALLACH, [**2] MAYER, and
`CHEN, Circuit Judges. Concurring Opinion filed by
`Circuit Judge MAYER. Dissenting Opinion filed by
`Circuit Judge CHEN.
`
`OPINION
`
`[*983] 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
`
`1
`
`SAMSUNG-1065
`
`

`

`576 Fed. Appx. 982, *983; 2014 U.S. App. LEXIS 15667, **2
`
`Page 2
`
`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.1 ll.10-16, col.2 ll.20-26; '664 patent
`col.23 ll.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 ll.22-26; see
`also J.A. 487. By contrast, collaborative filtering assesses
`[**3] 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 ll.28-29;
`see also J.A. 487. The asserted patents describe a system
`"wherein a
`search engine operates with
`[*984]
`collaborative and content-based filtering to provide better
`search responses to user queries." '420 patent col.1
`ll.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 in-formons 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 [**4] to the
`query.
`
`1 The specifications of the '420 and '664 patents
`are substantively identical, but employ slightly
`dissimilar
`line numbering. Unless otherwise
`noted, citations to the specification refer to the
`line numbering used in the '420 patent.
`2 The parties stipulated that the term "informon"
`referred to an "information entity of potential or
`actual interest to the [individual/first] user." I/P
`Engine, Inc. v. AOL Inc., 874 F. Supp. 2d 510,
`517 (E.D. Va. 2012) (internal quotation marks
`omitted)
`("Claim Construction Order"). The
`asserted patents explain that an "informon" can be
`all or part of a text, video, or audio file. '420
`patent col.3 ll.30-35.
`
`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.27 ll.27-37.
`
`Claim 26 of the '664 patent is similar to claim 1, but
`cast as a method claim:
`
`A [**5] 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 ll.1-15; see also id. col.29 ll.32-44.
`
`Id. col.28 ll.56-65.
`
`2
`
`

`

`576 Fed. Appx. 982, *984; 2014 U.S. App. LEXIS 15667, **5
`
`Page 3
`
`IP/Engine 3
`filed a
`On September 15, 2011,
`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 non-infringement and invalidity of both the
`'420 and '664 patents. Id. at 514.
`
`In 2012, I/P Engine became a subsidiary of
`3
`Vrin-go, Inc. J.A. 2046-47.
`
`the district court
`Following a Markman hearing,
`construed disputed claim terms. The court concluded that:
`(1) the term [*985] "collaborative [**6] 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 (3) Marko Balabanovic & Yoav
`Sho-ham,
`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 $30,496,155.4
`J.A. 4173. The jury also found that the asserted claims
`were not anticipated, and answered a special
`[**7]
`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.
`
`4 The jury also awarded I/P Engine a running
`royalty of 3.5%. J.A. 4173.
`
`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 Adwords
`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
`non-practicing patent entities in our patent system, the
`dilatory nature of [I/P Engine's] suit is precisely why the
`[**8] doctrine of laches has been applied to patent law."
`Id. at 748.
`
`On December 18, 2012, the Google Defendants filed
`motions for a new trial and for judgment as a matter of
`law on non-infringement, invalidity, and damages. J.A.
`4252-381.
`I/P Engine also filed post-trial motions,
`arguing that
`the district court erred in applying the
`doctrine of laches to preclude recovery of damages for
`infringement in the period prior to September 15, 2011.
`J.A. 4433, 4550-56. All of these motions were denied by
`the district court. J.A. 59-67.
`
`The Google Defendants then filed a timely appeal
`with this court. They argue that: (1) the infringement
`determination should be set aside because the accused
`systems do not meet claim limitations which require
`"combining" content data with feedback data and filtering
`"the combined information"; (2) the accused systems do
`not meet the limitation contained [*986] in claim 10 of
`the '420 patent requiring a "demand search"; (3) I/P
`Engine improperly relied on marketing documents, rather
`than source code, in attempting to establish infringement
`and misled the jury by insinuating that Google had
`"copied" the system claimed in I/P Engine's patents; (4)
`the district court erred as a matter of law in [**9] finding
`the asserted claims non-obvious; (5) the asserted claims
`
`3
`
`

`

`576 Fed. Appx. 982, *986; 2014 U.S. App. LEXIS 15667, **9
`
`Page 4
`
`are invalid as anticipated because Culliss discloses
`filtering Internet articles based on scores that combine
`both content and collaborative feedback data; and (6) I/P
`Engine failed to introduce any credible evidence of
`damages in the period following the filing of
`its
`complaint. I/P Engine filed a cross-appeal in which it
`argues that
`the district court erred in applying the
`doctrine of
`laches to bar
`recovery for
`infringement
`occurring prior to September 15, 2011. I/P Engine further
`contends that even if laches does apply, it is entitled to
`damages of more than $100 million for infringement
`occurring after the date it filed its complaint. We have
`jurisdiction under 28 U.S.C. § 1295(a)(1).
`
`DISCUSSION
`
`I. Standard of Review
`
`"Whether the subject matter of a patent is obvious is
`a question of law and is reviewed de novo." Procter &
`Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989,
`993 (Fed. Cir. 2009); see PharmaStem Therapeutics, Inc.
`v. ViaCell, Inc., 491 F.3d 1342, 1359 (Fed. Cir. 2007).
`The
`factual
`findings
`underlying
`an
`obviousness
`determination include: (1) the scope and content of the
`prior art;
`(2)
`the differences between the claimed
`invention and the prior art; (3) the level of ordinary skill
`in
`the
`art;
`and
`(4)
`any
`objective
`indicia
`of
`non-obviousness. See Graham v. John Deere Co., 383
`U.S. 1, 17-18, 86 S. Ct. 684, 15 L. Ed. 2d 545 (1966).
`
`II. The Obviousness Determination
`
`I/P
`The Google [**10] Defendants argue that
`Engine's claimed invention is obvious as a matter of law
`because
`it
`simply
`combines
`content-based
`and
`collaborative filtering, two information filtering methods
`that were well-known in the art. They assert, moreover,
`that the prior art contained explicit statements describing
`the
`advantages of
`combining these
`two filtering
`techniques, and that
`it would have been obvious to
`include a user's query in the filtering process. See Br. of
`Defendants-Appellants at 35-38.
`
`We agree and hold that no reasonable jury could
`conclude otherwise. The asserted claims describe a
`system that combines content and collaborative data in
`filtering each "informon"--or
`information item--for
`relevance to an individual user's search query. '420 patent
`col.28 ll.1-15; '664 patent col.27 ll.27-37. As the asserted
`patents
`themselves acknowledge, however,
`search
`
`collaborative
`and
`filtering,
`content-based
`engines,
`filtering were all well-known in the art at the time of the
`claimed invention. See '420 patent col.1 ll.20-45. The
`record is replete, moreover, with prior art references
`recognizing that content-based and collaborative filtering
`are complimentary techniques that can be effectively
`combined. The WebHound reference explains
`that
`"content-based and automated [**11]
`collaborative
`filtering
`are
`complementary
`techniques,
`and
`the
`combination of [automated collaborative filtering] with
`some easily extractable features of documents is a
`powerful
`information filtering technique for complex
`information spaces." J.A. 5427. The Fab reference
`likewise notes that "[o]nline readers are in need of tools
`to help them cope with the mass of content available on
`the World-Wide Web," and explains that "[b]y combining
`both collaborative and content-based [*987]
`filtering
`systems," many of the weaknesses in each approach can
`be eliminated. J.A. 5511. Similarly,
`the Rose patent,
`which was filed in 1994 by engineers at Apple Computer,
`Inc., states that "[t]he prediction of relevance [to a user's
`interests] is carried out by combining data pertaining to
`the content of each item of information with other data
`regarding correlations of interests between users." J.A.
`5414. These references,
`individually and collectively,
`teach the clear advantages of combining content-based
`and collaborative filtering.5
`
`I/P Engine points to recent United States
`5
`Patent
`and
`Trademark
`Office
`("PTO")
`reexamination proceedings which concluded that
`Rose and WebHound do not anticipate the
`asserted claims of the '420 patent. J.A. [**12]
`7899-902. Here, however,
`the question is not
`whether Rose and WebHound anticipate the
`asserted claims, but instead whether the prior art,
`viewed as a whole, renders the asserted claims
`obvious. See Cohesive Techs., Inc. v. Waters
`Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008)
`("Obviousness can be proven by combining
`existing prior art references, while anticipation
`requires all elements of a claim to be disclosed
`within a single reference."); Medichem, S.A. v.
`Rolabo, S.L., 437 F.3d 1157, 1166 (Fed. Cir.
`2006) (explaining that in an obviousness analysis
`"the prior art must be considered as a whole for
`what it teaches").
`
`On appeal, I/P Engine does not dispute that the prior
`art disclosed hybrid content-based and collaborative
`
`4
`
`

`

`576 Fed. Appx. 982, *987; 2014 U.S. App. LEXIS 15667, **12
`
`Page 5
`
`filtering. It contends, however, that it would not have
`been obvious to a person of ordinary skill in the art to
`filter items for relevance to a user's query using combined
`content and collaborative data. In I/P Engine's view, the
`prior art simply took the results of content-based filtering
`and "threw them over a proverbial wall to a separate
`profile-based [filtering] system," but did not also throw
`the search query "over the wall" for use in the filtering
`process. Br. of Plaintiff-Cross Appellant at 6-7; see also
`id. at 40-43; J.A. 3689-90, 3728-31.
`
`The fundamental flaw in I/P Engine's argument is
`that using an individual [**13] user's search query for
`filtering was a technique widely applied in the prior art.
`Indeed, the shared specification of the '420 and '664
`patents acknowledges that "conventional search engines"
`filtered search results using the original search query. See
`'420 patent col.2 ll.15-18 (explaining that "conventional
`search engines initiate a search in response to an
`individual user's query and use content-based filtering to
`compare the query to accessed network informons"
`(emphasis
`added)). Given
`that
`its
`own
`patents
`acknowledge that using the original search query for
`filtering was a "conventional" technique, I/P Engine
`cannot now evade invalidity by arguing that integrating
`the query into the filtering process was a non-obvious
`departure from the prior art. See PharmaStem, 491 F.3d
`at 1362 ("Admissions in the specification regarding the
`prior art are binding on the patentee for purposes of a
`later inquiry into obviousness."); see also Constant v.
`Advanced Micro-Devices, Inc., 848 F.2d 1560, 1570
`(Fed. Cir. 1988) ("A statement in a patent that something
`is in the prior art is binding on the applicant and patentee
`for determinations of anticipation and obviousness.").
`
`While I/P Engine acknowledges that the prior art
`disclosed
`"conventional
`'content-based
`filtering'
`in
`response to a query," it contends that the prior art [**14]
`did "not show or suggest using content and collaborative
`data together in filtering items for relevance to a query."
`Br. of Plaintiff-Cross Appellant at 43. This argument
`"tak[es] an overly cramped view of what the prior art
`teaches." Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 963
`(Fed. Cir. 2014). The Culliss patent renders the asserted
`claims obvious because it plainly discloses using
`combined content and collaborative [*988] data when
`analyzing information for relevance to a user's search
`query. In the Culliss system, Internet articles are assigned
`a "key term score" for significant words or phrases. J.A.
`5521. Culliss teaches content-based analysis because the
`
`key term score can initially be based on the number of
`times a particular term appears in an article.6 J.A. 5526.
`Culliss also describes collaborative feedback analysis
`because the key term score will be increased when search
`engine users who query particular key terms select an
`article
`from the
`search
`results
`list.
`J.A.
`5521.
`Significantly, moreover, Culliss presents articles to users
`based upon their key term scores for the terms that were
`used in a user's search query. J.A. 5521 ("As users enter
`search queries and select articles, the scores are altered.
`The scores are then used in subsequent searches [**15]
`to organize the articles that match a search query."
`(emphasis added)). Culliss, therefore, squarely discloses
`using combined content and collaborative data in
`analyzing items for relevance to a query.
`
`Dr. Jaime Carbonell, I/P Engine's expert,
`6
`asserted
`that Culliss
`does
`not
`disclose
`content-based filtering as required by the asserted
`claims because Culliss' repeated feedback-based
`adjustments to a key term score will dilute or
`"swamp" the content portion of the score over
`time. J.A. 3714, 3787. Notably, however, while
`the asserted claims require content-based filtering,
`they do not mandate that content-based analysis
`play a dominant role in the filtering process. See
`'420 patent col.28 ll.1-15;
`'664 patent col.27
`ll.27-37. Thus, the fact that in the Culliss system
`content data may play less and less of a role as
`more user feedback is obtained does not mean that
`Culliss does not disclose content-based filtering.
`To the contrary, Culliss explains that while
`feedback can raise an article's key term score
`(when the article is clicked on by other users), it
`can also lower that score (when the article is not
`clicked on by other users). J.A. 5527 ("[I]f the
`user does not select the matched article, the key
`term score [**16] for that matched article under
`that key term can be assigned a negative score.").
`Thus,
`the
`positive
`and
`negative
`feedback
`adjustments could potentially nearly "cancel each
`other out," and content data could play a very
`significant role in setting an article's overall score.
`
`I/P Engine contends that Culliss does not anticipate
`because it "describes a system for ranking items, not
`filtering them, as required by the asserted claims." Br. of
`Plaintiff-Cross Appellant at 54. As Dr. Lyle Ungar, the
`Google Defendants' expert, explained at trial, however,
`"the standard way of filtering is to rank things and pick
`
`5
`
`

`

`576 Fed. Appx. 982, *988; 2014 U.S. App. LEXIS 15667, **16
`
`Page 6
`
`items above a threshold." J.A. 3366. Notably,
`all
`moreover, Culliss discloses an embodiment
`in which
`articles that are given an "X-rated" score for adult content
`are filtered out and not displayed to persons who enter
`"Grated" queries. J.A. 5525. At trial, Carbonell asserted
`that Culliss was not enabled because it did not provide for
`a "workable" filtering system. J.A. 3717. In support, he
`argued that a certain number of G-rated searchers might
`have to view an article before it would be labeled as
`X-rated and screened from subsequent G-rated searches.
`J.A. 3718-19. There is no credible [**17] evidence,
`however, that Culliss would not ultimately succeed in
`filtering X-rated articles from being viewed by G-rated
`searchers. See Cephalon, Inc. v. Watson Pharms., Inc.,
`707 F.3d 1330, 1337 (Fed. Cir. 2013) (emphasizing that
`a patent is presumptively enabled and that "the challenger
`bears the burden, throughout the litigation, of proving
`lack of enablement by clear and convincing evidence").
`Even more importantly, while "a prior art reference
`cannot anticipate a claimed invention if the allegedly
`anticipatory disclosures cited as prior art are not
`enabled," In re Antor Media Corp., 689 F.3d 1282, 1289
`(Fed. Cir. 2012) (citations and internal quotation marks
`omitted), a non-enabling reference can potentially qualify
`as prior art for the purpose of determining [*989]
`obviousness, Symbol Techs. Inc. v. Opticon, Inc., 935
`F.2d 1569, 1578 (Fed. Cir. 1991); see Geo. M. Martin
`Co. v. Alliance Mach. Sys. Int'l LLC, 618 F.3d 1294,
`1302 (Fed. Cir. 2010) ("Under an obviousness analysis, a
`reference need not work to qualify as prior art; it qualifies
`as prior art, regardless, for whatever is disclosed therein."
`(citations
`and internal quotation marks omitted));
`Beckman Instruments, Inc. v. LKB Produkter AB, 892
`F.2d 1547, 1551 (Fed. Cir. 1989) ("Even if a reference
`discloses an inoperative device, it is prior art for all that it
`teaches."). Thus, even assuming arguendo that the Culliss
`filtering system was not fully functional, this does not
`mean that it does not qualify as prior art for purposes of
`the obviousness analysis.
`
`the obviousness inquiry
`Significantly, moreover,
`[**18] "not only permits, but requires, consideration of
`common knowledge
`and common sense." DyStar
`Textilfarben GmbH & Co. v. C.H. Patrick Co., 464 F.3d
`1356, 1367 (Fed. Cir. 2006); see KSR Int'l Co. v. Teleflex
`Inc., 550 U.S. 398, 421, 127 S. Ct. 1727, 167 L. Ed. 2d
`705 (2007) (eschewing "[r]igid preventative rules that
`deny factfinders recourse to common sense"); Perfect
`Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329
`(Fed. Cir. 2009) (explaining that the obviousness analysis
`
`"may include recourse to logic, judgment, and common
`sense available to the person of ordinary skill that do not
`necessarily require explication in any reference or expert
`opinion"); Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
`485 F.3d 1157, 1161 (Fed. Cir. 2007) (emphasizing that
`"the common sense of those skilled in the art" can be
`sufficient
`to "demonstrate[] why some combinations
`would have been obvious where others would not"). Very
`basic logic dictates that a user's search query can provide
`highly pertinent
`information in evaluating the overall
`relevance of search results. See, e.g., 420 patent col.1
`ll.21-23 (explaining that a "query" is "a request for
`information relevant to . . . a field of interest"); id. col.4
`ll.5-6 ("The 'relevance' of a particular informon broadly
`describes how well
`it satisfies the user's information
`need."). As Ungar explained, the query would be just
`"sitting there" with the results of a search, and it would
`have been obvious to one skilled in the art "to keep
`around the query and use that also for filtering." J.A.
`3173.7 "A [**19] person of ordinary skill is . . . a person
`of ordinary creativity, not an automaton," KSR, 550 U.S.
`at 421, and the obviousness inquiry must take account of
`the "routine steps" that a person of ordinary skill in the
`art would employ, Ball Aerosol & Specialty Container,
`Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir.
`2009); see Soverain Software LLC v. Newegg Inc., 705
`F.3d 1333, 1344, amended on reh'g, 728 F.3d 1332 (Fed.
`Cir. 2013) (concluding that claims directed to an online
`shopping system were invalid as obvious given that the
`patentee "did not invent the Internet, or hypertext, or the
`URL" and using hypertext to communicate transaction
`information was no more than "a routine incorporation of
`Internet technology into existing processes"). Because the
`query was readily available and closely correlated to the
`overall relevance of search results--and the prior art
`unequivocally
`disclosed
`hybrid
`content-based/collaborative filtering--retaining the query
`for use in filtering combined content and collaborative
`data was "entirely predictable and grounded in common
`sense." Ball Aerosol, 555 F.3d at 993; see W. Union Co.
`v. MoneyGram Payment Sys., Inc., 626 F.3d 1361, 1372
`[*990]
`(Fed. Cir. 2010) (concluding that the asserted
`dependent
`claims, which
`"add[ed]
`only
`trivial
`improvements that would have been a matter of common
`sense to one of ordinary skill in the art," were obvious as
`a matter of
`law); Perfect Web, 587 F.3d at 1331
`(concluding that a claimed method for sending e-mails
`was obvious because "simple logic suggests that sending
`[**20] messages to new addresses is more likely to
`produce successful deliveries than re-sending messages to
`
`6
`
`

`

`576 Fed. Appx. 982, *990; 2014 U.S. App. LEXIS 15667, **20
`
`Page 7
`
`addresses that have already failed"); Muniauction, Inc. v.
`Thomson Corp., 532 F.3d 1318, 1326-27 (Fed. Cir.
`(concluding that claims which added a web
`2008)
`browser to a prior art electronic system were obvious as a
`matter of law). While our conclusion that the asserted
`claims are invalid as obvious is grounded on the
`determination that the prior art, most notably Culliss,
`disclosed use of
`the search query when filtering
`combined content-based and collaborative data,
`the
`common sense of a skilled artisan would likewise have
`suggested retaining the query for use in the filtering
`process.
`
`7 The parties stipulated that, for purposes of both
`the '420 and '664 patents, a person of ordinary
`skill
`in the art was "an individual with a
`bachelor's degree in computer science with at
`least [two] years of experience." J.A. 39.
`
`III. The Jury's Findings
`
`I/P Engine points to the fact that the jury found that
`there were differences between the prior art and the
`claimed invention, see J.A. 4170-72, and argues that on
`appeal "the only question is whether substantial evidence
`supports the jury's findings." Br. of Plaintiff-Cross
`Appellant at 40. There are a number of reasons why we
`do not find this [**21] reasoning persuasive. First, not
`all of the jury's findings support non-obviousness. To the
`contrary, the jury found that the invention claimed in the
`'664 patent had been "independent[ly] invent[ed] . . . by
`others before or at about the same time as the named
`inventor thought of it." J.A. 4172. As we have previously
`made clear, near-simultaneous development of a claimed
`invention by others can, under certain circumstances,
`demonstrate obviousness. See Geo. M. Martin, 618 F.3d
`at 1305 ("Independently made, simultaneous inventions,
`made within a comparatively short space of time, are
`persuasive evidence that the claimed apparatus was the
`product only of ordinary mechanical or engineering
`skill." (citations and internal quotation marks omitted)).
`Thus, as the Google Defendants correctly note, the jury's
`findings are a "mixed bag" on the obviousness question.
`Br. of Defendants-Appellants at 40.
`
`Second, some of the jury's findings appear internally
`inconsistent. In making their arguments on obviousness,
`neither I/P Engine nor the Google Defendants drew any
`distinction between the '420 patent and the '664 patent.
`Indeed, counsel for I/P Engine referred to the asserted
`patents simply as the "Lang and Kosak invention" when
`
`discussing differences between the prior art and the
`asserted claims. J.A. 3730. The jury [**22]
`found,
`however, that the invention claimed in the '664 patent
`had been independently invented by others, whereas the
`invention claimed in the '420 patent had not. J.A.
`4171-72. Likewise, while the jury found that there had
`been unsuccessful attempts by others to develop the
`invention claimed in the '420 patent, it determined that
`there were no such attempts with respect to the invention
`disclosed in the '664 patent. J.A. 4170, 4172.
`
`Finally, and most importantly, while the jury made
`underlying determinations as to the differences between
`the asserted claims and the prior art, it did not address the
`ultimate legal conclusion as to obviousness. Thus, while
`the jury found that the prior art did not disclose all of the
`elements of the asserted claims, J.A. 4170-71, it never
`determined whether it would have been obvious to one
`skilled in the art to bridge any differences between the
`prior
`[*991] art and the claimed invention. See Bos.
`Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982,
`990 (Fed. Cir. 2009) ("When we consider that, even in
`light of a jury's
`findings of
`fact,
`the references
`demonstrate an invention to have been obvious, we may
`reverse
`its obviousness determination.");
`see also
`Soverain, 705 F.3d at 1337 (emphasizing that "the
`question of obviousness as a matter of law receives de
`novo determination on appeal"); Jeffries v. Harleston, 52
`F.3d 9, 14 (2d Cir. 1995) (concluding [**23]
`that
`"hopelessly irreconcilable" jury findings did not require a
`retrial because "elementary principles" of law compelled
`one result).
`
`IV. Objective Indicia of Non-Obviousness
`
`"This court has consistently pronounced that all
`evidence
`pertaining
`to
`the
`objective
`indicia
`of
`nonobvious-ness must be considered before reaching an
`obviousness conclusion." Plantronics, Inc. v. Aliph, Inc.,
`724 F.3d 1343, 1355 (Fed. Cir. 2013). Here, however, I/P
`Engine
`introduced
`scant
`evidence
`on
`secondary
`considerations. See Allergan, Inc. v. Sandoz Inc., 726
`(concluding that
`F.3d 1286, 1293 (Fed. Cir. 2013)
`secondary considerations did "not weigh heavily in the
`obviousness analysis"). Indeed, the district court did not
`even
`cite
`to
`the
`jury's
`findings
`on
`secondary
`considerations when it concluded that the asserted claims
`were not invalid for obviousness. See Non-Obviousness
`Order, 2012 U.S. Dist. LEXIS 166555, at *7-9.
`
`We find no merit in I/P Engine's argument that the
`
`7
`
`

`

`576 Fed. Appx. 982, *991; 2014 U.S. App. LEXIS 15667, **23
`
`Page 8
`
`commercial success of Google's accused advertising
`systems provides objective evidence of non-obviousness.
`"Evidence of commercial success, or other secondary
`considerations,
`is only significant
`if there is a nexus
`between the claimed invention and the commercial
`success." Ormco Corp. v. Align Tech., Inc., 463 F.3d
`1299, 1311-12 (Fed. Cir. 2006). At trial, however, I/P
`Engine never established a nexus between the success of
`Google's accused systems and the patented invention.8
`Indeed, I/P Engine's damages [**24] expert agreed that
`the accused technology encompassed numerous features
`not covered by the asserted patents, and acknowledged
`that he had not evaluated the issue of whether the
`patented technology drove
`consu