Matthew "Chip" De Preter Secures Appellate Victory Against Google and Revives Patents for Inventor's Intellectual Property


Aronberg Goldgehn’s Matthew “Chip” De Preter recently obtained an appellate reversal before the United States Court of Appeals for the Federal Circuit in a case involving accusations of patent infringement.

In the case Weisner v. Google, 2021-2228 (Fed. Cir. October 13, 2022), Sholem Weisner created a system involving four patents to digitally record individuals’ interactions with others, either people or businesses. Those recorded interactions could then be utilized to further enhance internet search engine results.

Google invalidated all four patents before the district court. When the court analyzed the patents, it focused on only one of the patents at issue and determined that it failed to satisfy the requirements of 35 U.S.C. §101, deemed unpatentable subject matter and therefore was held invalid. The district court extended that determination to all the patents in suit, which in turn invalidated the remaining patents. Chip appealed that ruling on behalf of Mr. Weiser.

Since the Supreme Court decided the case of Alice v. CLS Bank, patents that involve the use of software have routinely been invalidated under §101. Statistics have shown that the federal circuit has determined over 80% of challenged claims to be invalid. However, on appeal, Chip was able to show that the district court’s reliance on a determination that a single patent was invalid to invalidate all the patents was improper. Rather, when addressing invalidity under §101 of multiple related patents, the proper analysis requires addressing each claim set individually.

In the case of the patents at issue, Chip showed that the claimed subject matter was patentable. Specifically, the Federal Circuit found that the claimed subject matter of two of the patents was directed to solving a problem unique to the internet. According to the claims of those patents, multiple individuals would have real-world encounters that would be utilized to enhance search results.

When a person later performed an internet search, the claimed system would utilize the encounters from the multiple individuals to tailor the search results of the searching person and increase the ranking of certain results. This allowed for uniquely tailored search results based on real-world activity, rather than previous search engine techniques that merely populated lists based on website popularity. Accordingly, the Federal Circuit reversed the district court’s ruling with respect to two of the patents at issue, revived those patents and remanded to the district court for further proceedings.

This notable case was outlined in both Bloomberg Law and Law360 (subscription required) for its precedential judgement.

An experienced attorney in intellectual property protection and enforcement, Chip De Preter has helped numerous companies and individuals protect, build value and profit from their creative products through patents, trademarks and copyrights.

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