Takeaway: The test for obviousness in at least some cases is not whether one could physically incorporate structure from one reference into another, but whether a person of ordinary skill in the art would have reason to incorporate the teachings of one of the references to modify the other.

In its Final Written Decision, the Board held that each of challenged claims 1, 4, 5, 7, 11, 14, 15, and 17 of the ‘668 patent is unpatentable under 35 U.S.C. § 103(a) as having been obvious in view of McDonald and Pinsley. Further, the Board denied Petitioner’s Motion to Exclude.

The ‘668 patent relates to a method in which user feedback on a web page may be provided via provision of an icon on the web page that may be clicked in order to solicit page-specific open-ended comments about the web page from the user. Thus, for example, when a user clicks on the icon, “a multi-level subjective rating scale becomes visible and allows users to provide reactions to the web page.” Moreover, certain embodiments provide that when the user clicks the icon, the user is presented with a pop-up window that “includes a field for the user to type in comments about a particular web page[.]”

The Board began by determining that no express claim constructions were necessary for its analysis. The Board then concluded that “a person of ordinary skill in the art at the time of the ’668 patent would have a Bachelor’s degree in computer science (or equivalent technical field) and at least two years of work experience, including familiarity with web-based programming and user interfaces.” The Board then went on to find that both Petitioner’s declarant (Mr. John Chisholm) and Patent Owner’s declarant (Dr. Michael Shamos) met the requirements of this definition.

In response to Petitioner’s assertion that claims 1, 4, 5, 7, 11, 14, 15, and 17 of the ‘668 patent would have been obvious under 35 U.S.C. § 103(a) in view of McDonald and Pinsley, Patent Owner argued that “a person of ordinary skill in the art would not have had reason to combine the references in the manner proposed by Petitioner and further that the combination of the references fails to teach or suggest all of the claim limitations.” The Board agreed with Petitioner in regard to this issue.

In particular, Petitioner had argued that McDonald discloses each limitation of the challenged claims, that Pinsley teaches several limitations of the challenged claims, and that the combination of Pinsley and McDonald would have rendered claims 1 and 11 obvious. Patent Owner, in reply, asserted that “McDonald does not teach three separate systems with a ‘feedback window’ being requested and received from a “’remote computer system.’” Patent Owner also “[contended] that neither McDonald nor Pinsley teaches or suggests soliciting ‘page-specific’ feedback concerning a particular web page, as required by independent claims 1 and 9.” Moreover, Patent Owner provided other patentability arguments in addition to these.

The Board was not persuaded by Patent Owner’s patentability arguments, finding that “they narrowly focus on small differences between McDonald and Pinsley and fail to consider the collective teachings of McDonald and Pinsley from the perspective of one of ordinary skill in the art.” As noted by the Board, “the test for obviousness is not whether one could physically incorporate Pinsley’s Nth visitor selection system (that solicits feedback from users through a remote system) into McDonald, but whether a person of ordinary skill in the art would have reason to incorporate the teachings of Pinsley to modify McDonald.”

Patent Owner attempted to rebut Petitioner’s positions by relying upon alleged secondary considerations of non-obviousness, including commercial success, industry praise, and copying. The Board was not persuaded by Patent Owner’s arguments at least because Patent Owner had not offered persuasive bases to support the allegation that its purportedly commercially successful product was coextensive with the claimed invention.

Finally, Petitioner had filed a Motion to Exclude Evidence that sought “to exclude portions of the Shamos Declaration (Ex. 2002) and portions of the deposition testimony of Dr. Shamos (Ex. 1022).” The Board denied Petitioner’s Motion, noting that it had determined that Petitioner had established the unpatentability of claims 1, 4, 5, 7, 11, 14, 15, and 17 of the ’668 patent without the Board having had to exclude this evidence, that Petitioner’s arguments went to the weight of the evidence, and that “[d]ecisions regarding the appropriate weight to accord to evidence are within the purview of the Panel.”

Qualtrics, LLC v. OpinionLab, Inc., IPR2014-00421
Paper 41: Final Written Decision
Dated: July 24, 2014
Patent: 8,024,668 B2
Before: Rama G. Elluru, Jeremy M. Plenzler, Georgianna W. Braden, and Carl M. DeFranco
Written by: Braden
Related proceedings: OpinionLab, Inc. v. Qualtrics Labs, Inc., No. 1:13-cv-01574 (N.D. Ill.); OpinionLab, Inc. v. iPerceptions Inc., No. 1:12-cv-05662 (N.D. Ill.); IPR 2014-00314 (requesting review of related U.S. Patent No. 6,421,724 B1); IPR2014-00356 (requesting review of related U.S. Patent No. 6,606,581 B1); IPR2014-00406 (requesting review of related U.S. Patent No. 7,085,820 B1); IPR2014-00366 (requesting review of related U.S. Patent No. 8,041,805 B1); IPR 2014-00420 (filed to request review of claims of U.S. Patent No. 7,370,285 B1, of which the subject ‘668 patent is a continuation)