Takeaway: A patent marking on a product is merely an assertion that the product embodies some claim of the marked patent and does not establish that the marked product is coextensive with claims of the patent to support alleged commercial success.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that all challenged claims of the ’581 patent are unpatentable under two obviousness grounds. The ’581 patent relates to “a system and method for soliciting and reporting feedback from a user of a commercial website,” and particularly, “feedback on a page-specific basis by incorporating a ‘viewable icon’ into each web page of the website.”

As for claim construction, the Board stated that claim terms are to be construed under the broadest reasonable construction in light of the specification. However, the Board determined, in agreement with Patent Owner, that the claims terms do not require any express construction “in order to analyze the challenged claims relative to the asserted prior art.”

The Board next analyzed the asserted prior art, first addressing the combination of the CustomerSat and Medinets references. Patent Owner argued that the references do not disclose soliciting “page-specific user feedback” and that the combination does not disclose the ability for a website owner to “identify user feedback for any particular web pages that is notable relative to others.” The Board agreed with Petitioner while crediting its declarant, finding that while the references may disclose soliciting feedback on websites as a whole, they also disclose soliciting feedback “on a narrower, more definitive basis” as recited in the challenged claims. As to the limitations regarding accessing page-specific feedback, the Board noted that even Patent Owner’s declarant acknowledged the prior art disclosed the feature, extensively citing to the cross-examination of Patent Owner’s declarant.

With respect to the motivation to combine CustomerSat and Medinets, the Board agreed with Petitioner that the references “address the same problem … and in the same manner.” The Board found that Patent Owner’s arguments were unpersuasive because it defined the problem addressed by the prior art “in too narrow a fashion” and focused on the prior art references individually. Thus, the Board found that Petitioner established by a preponderance of the evidence that the claims challenged in view of CustomerSat and Medinets are unpatentable.

Petitioner further asserted the unpatentability of dependent claims in view of CustomerSat, Medinets, and further in view of HTML Spec. Patent Owner argued that HTML Spec does not disclose features of independent claims 1 and 19 that were analyzed with respect to Petitioner’s first ground. The Board noted, however, that Petitioner relied upon CustomerSat and Medinets as disclosing the limitations in question, and that HTML Spec was relied upon as disclosing features added in dependent claims 13 and 31. The Board was “unable to discern that [Patent Owner] articulates any meaningful rebuttal to [Petitioner’s] material proof of unpatentability of claims 13 and 31 separately from claims 1 and 19.” After considering the largely unrebutted evidence related to Petitioner’s second ground, the Board found that claims 13 and 31 are unpatentable.

The Board next discussed Patent Owner’s alleged secondary considerations of nonobviousness. As to alleged commercial success, Patent Owner contended that its marketed product is extensively used and that a nexus with the claimed invention is established by virtue of the fact that Patent Owner has marked the product with the ’581 patent. The Board was not persuaded, explaining that:

That patent marking, however, is only an assertion by OpinionLab that some feature of the marked product embodies some claim of the ’581 patent. Such a bare assertion does not constitute sufficient proof that the product is coextensive with the invention claimed in the ’581 patent. This is particularly so given the fact that the product is marked with approximately twenty patent numbers, which suggests that the product may include features outside the scope of the invention claimed in the ’581 patent.

Moreover, the Board found that Patent Owner did not adequately demonstrate that any alleged commercial success was “a direct result of the unique characteristics of the claimed invention, and not economic and commercial factors unrelated to the ’581 patent.” As to the alleged industry praise in light of the “many articles written on [Patent Owner’s] page-specific user feedback solution,” the Board found the evidence was “not tied to the claimed invention.” Finally, as to alleged copying, Patent Owner submitted a claim chart purporting to show how Petitioner’s product practices claims of the ’581 patent. The Board was not persuaded, stating that copying “requires evidence of efforts to replicate a specific product,” not merely an assertion of how the ’581 patent claims read on an accused product.

Finally, the Board denied Petitioner’s Motion to Exclude Evidence.