Takeaway: It is not enough to show that a prior art reference could disclose a certain limitation. A petitioner must show that one of ordinary skill in the art reading the reference would believe it teaches or suggests that limitation. 

In its Final Written Decision, the Board found that Petitioner had not proven by a preponderance of the evidence that any of the challenged claims of the ’805 Patent (claims 1, 2, 5, 8, 10, 11, 14, 17-19, 22, 25-27, 30, and 33) are unpatentable. The ’805 Patent is directed to a system and method for soliciting and reporting feedback from a user of a commercial website. 

The Board first determined that none of the claim terms required express construction in order to analyze the challenged claims relative to the prior art.

Turning then to the single ground of obviousness, the Board noted that its analysis centered on a single limitation of independent claims 1, 10, 18, and 26 – “page-specific user feedback . . . having been provided by a user while the user remained at the particular web page.” Petitioner relied upon CustomerSat’s disclosure of “Pop!Up questionnaires” for teaching this limitation. Patent Owner argued that these surveys are provided on an entirely separate web page. The Board noted that CustomerSat does not describe or depict a pop-up questionnaire on the same web page as the pop-up survey invitation. The Board also found that the testimony of the parties’ declarants supported a finding that the user is directed to a different web page. The Board stated that the crux of the claimed invention is how the user feedback is provided and whether the user remains on the particular web page.

The Board then addressed Petitioner’s alternative argument that Medinets teaches a user feedback form that can be filled out while the user remains on a particular web page. The Board said the fact that the Medinets form could be modified to remain on the same web page as the submit button does not mean that one of skill in the art would have understood Medinets to teach or suggest such a capability.

Next, the Board addressed the third reference of the combination, HTML Spec. Petitioner argued that it teaches the use of “HTML frames,” which purportedly allow a user to provide feedback while remaining at the particular web page. However, Petitioner relied on Medinets for this argument, which the Board already determined does not disclose this limitation.

The Board also reviewed Petitioner’s motion to exclude Patent Owner’s expert declarant. Petitioner first argued that Patent Owner’s expert applied the wrong legal standard in determining the level of ordinary skill in the art. However, the Board found that Petitioner had mischaracterized the expert’s testimony. Petitioner also sought to exclude Patent Owner’s expert’s testimony regarding secondary considerations, but the Board did not review that testimony, therefore, the Board denied that portion of the motion as moot.

Qualtrics, LLC v. OpinionLab, Inc., IPR2014-00336

Paper 45: Final Written Decision

Dated: July 30, 2015

Patent 8,041,805 B2

Before: Rama G. Elluru, Jeremy M. Plenzler, Georgianna W. Braden, and Carl M. DeFranco

Written by: DeFranco