Qualtrics, LLC v. OpinionLab, Inc., IPR2014-00356, Paper 51 (July 30, 2015)

Qualtrics, LLC v. OpinionLab, Inc., IPR2014-00366, Paper 45 (July 30, 2015)

Qualtrics, LLC v. OpinionLab, Inc., IPR2014-00406, Paper 44 (July 24, 2015)

Qualtrics, LLC v. OpinionLab, Inc., IPR2014-00420, Paper 41 (July 24, 2015)

Qualtrics, LLC v. OpinionLab, Inc., IPR2014-00421, Paper 41 (July 24, 2015)

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The Patent Trial and Appeal Board (PTAB) recently held in five separate inter partes review proceedings that five of OpinionLab’s patents directed to providing web page-specific feedback were unpatentable.  Of particular note, the mere existence of OpinionLab’s [+] feedback symbol on websites and similarities between OpinionLab’s products and competitors’ products is insufficient to establish a sufficient nexus to support claim of non-obviousness based on commercial success, industry praise, or copying.  See e.g., Qualtrics, LLC v. OpinionLab, Inc., IPR2014-00406, Paper 44 at *15-19 (July 24, 2015).

The patents at issue are directed to systems or computer-readable media for accepting page-specific user feedback, reporting the user feedback to a database, or displaying the page-specific user feedback according to a specific website.  These systems allow a user to provide feedback to a website a user has accessed without having to leave the website.  Id.  The page-specific feedback is reported to the website owner to allow the website owner to view the subjective user feedback and provide other user’s with the this feedback.

During each proceeding, each of the patens at issue were determined to be unpatentable as obvious over various combinations of prior art.  The prior art was similar in some of the proceedings.

In response, the Patent Owner (OpinionLab) attempted to argue that the claims in each of the patents were nonobvious based on secondary considerations.  However, as the PTAB explained in Nuvasive, Inc. v. Warsaw Orthopedic, Inc. (IPR2013-00206, Paper No. 65, July 10, 2014), the Patent Owner must show a nexus between the secondary consideration and the claimed invention.  The mere disclosure of raw sales numbers or high industry praise is insufficient to establish a nexus.  Instead, the Patent Owner must show that sales or industry praise are a direct result of the claimed invention.  Id.

In particular, the Patent Owner argued that the products were adopted by hundreds of brands and implemented on thousands of websites through the world.  See e.g., Qualtrics, LLC v. OpinionLab, Inc., IPR2014-00356, Paper 51 at *16. (July 30, 2015).  The Patent Owner further explained that some of the products even contained a patent marking and that this was evidence alone of commercial success.  Id.  Yet, the products contained numerous patents markings, not just the markings of the patents at issue, and the Patent Owner could not point to a specific example of the patent marking increasing sales.  Id. at *16 and 17.

Similarly, the Patent Owner failed to establish a nexus between the patented inventions and the industry praise.  While there were numerous examples of the Patent Owner receiving praise in the industry, none of the praise specifically identified the patented inventions.  See e.g., Qualtrics, LLC v. OpinionLab, Inc., IPR2014-00406, Paper 44 at *18 (July 24, 2015).  Thus, the Patent Owner failed to establish nonobviousness based on industry praise of the claimed inventions.

The Patent Owner also tried to establish nonobviousness of the claims of the patents based on copying.  Yet, as discussed by the PTAB, “[c]opying requires evidence of efforts to replicate a specific product.”  Qualtrics, LLC v. OpinionLab, Inc., IPR2014-00420, Paper 41 at *32 (July 24, 2015) (internal quotations omitted).  Although the Patent Owner provided evidence of similar products, the Patent Owner was unable to provide specific evidence that the copying included the claimed features.  Accordingly, the Patent Owner failed to establish nonobviousness based on copying of the claimed invention.

The PTAB’s decision is indicative of the difficult burden on a Patent Owner attempting to rebut obviousness based on commercial success.  The PTAB’s approach is consistent with its holding in Nuvasive, Inc. and the Manual of Patent Examining Procedure, which recites at 716.03: “an applicant must show that the claimed features were responsible for the commercial success of an article if the evidence of nonobviousness is to be accorded substantial weight.”  Patents owners should obtain and present evidence that sales data or data of industry praise is specifically attributable to the claimed features of the product(s).