Qualtrics, LLC v. Opinionlab, Inc. , 679 F. App'x 1016 ( 2017 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
QUALTRICS, LLC,
Appellant
v.
OPINIONLAB, INC.,
Appellee
______________________
2016-1177
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2014-
00366.
______________________
Decided: February 13, 2017
______________________
ROBERT STEINBERG, Latham & Watkins LLP, Los
Angeles, CA, argued for appellant. Also represented by
GABRIEL BELL, ROBERT J. GAJARSA, Washington, DC.
CHRISTOPHER WOOD KENNERLY, Paul Hastings LLP,
Palo Alto, CA, argued for appellee. Also represented by
NAVEEN MODI, IGOR VICTOR TIMOFEYEV, Washington, DC.
______________________
2 QUALTRICS, LLC v. OPINIONLAB, INC.
Before PROST, Chief Judge, NEWMAN and LOURIE, Cir-
cuit Judges.
LOURIE, Circuit Judge.
Qualtrics, LLC (“Qualtrics”) appeals from the written
decision of the United States Patent and Trademark
Office (“PTO”) Patent Trial and Appeal Board (“the
Board”) in an inter partes review (“IPR”) proceeding
concluding that claims 1, 2, 5, 8, 10, 11, 14, 17–19, 22, 25–
27, 30, and 33 (“the challenged claims”) of U.S. Patent
8,041,805 (“the ’805 patent”), owned by OpinionLab, Inc.
(“OpinionLab”), are not unpatentable as obvious. Qual-
trics, LLC v. OpinionLab, Inc., IPR2014-00366, 2015 WL
4627944, at *6 (P.T.A.B. July 30, 2015) (“Final Decision”).
Because the Board did not err in concluding that the
challenged claims are not unpatentable, we affirm.
BACKGROUND
OpinionLab owns the ’805 patent, which describes a
system and method for gathering feedback from visitors to
a website. See ’805 patent, col. 1 l. 64–col. 2 l. 18. Accord-
ing to the patent, most prior art systems did “not provide
website owners with information about how users subjec-
tively react to their websites.” Id. col. 1 ll. 36–38. With-
out subjective feedback, it was difficult for website owners
to know how visitors navigated their sites and therefore
difficult to gauge how effectively each page engaged with
visitors. Id. col. 1 ll. 41–51. Even systems that provided
subjective feedback only provided reactions to the entire
website, rather than to any particular web page. Id. col 1
ll. 38–43.
The ’805 patent purports to improve on those prior art
systems by allowing website visitors to provide feedback
relating to a particular web page while the user remains
at that page. Id. col. 14 ll. 11–31, col. 16 ll. 16–41. Claim
1 is exemplary:
QUALTRICS, LLC v. OPINIONLAB, INC. 3
1. One or more computer-readable non-transitory
storage media embodying software operable when
executed to:
provide a user-selectable element viewable on
each of a plurality of particular web pages of a
website upon initial display of a particular web
page and soliciting page-specific user feedback
concerning the particular web page upon initial
display of the particular web page, the user-
selectable element appearing identically and
behaving consistently on each of the plurality of
particular web pages; and
receive the page-specific user feedback concerning
the particular web page for reporting to an in-
terested party, the page-specific user feedback
concerning the particular webpages having been
provided by a user while the user remained at
the particular web page, and the page-specific
user feedback comprising one or more page-
specific subjective ratings of the particular web
page and one or more associated page-specific
open-ended comments concerning the particu-
lar web page, the page-specific user feedback
allowing the interested party to access page-
specific subjective ratings and associated page-
specific open-ended comments across the plu-
rality of particular web pages to identify one or
more particular web pages for which the page-
specific user feedback is notable relative to
page-specific user feedback for other particular
web pages;
wherein the user-selectable element is viewable
within a browser window upon initial display of
the particular web page and remains viewable
within the browser window, at least prior to the
user selection, regardless of user scrolling.
4 QUALTRICS, LLC v. OPINIONLAB, INC.
Id. col. 25 l. 40–col. 26 l. 3 (emphasis added). The patent
contends that the system that it describes is easier to use
than existing systems, and will result in an increased
response rate. Id. col. 2 ll. 55–67.
Qualtrics petitioned for IPR, arguing that the chal-
lenged claims are unpatentable as anticipated and/or
obvious. J.A. 2137–43. The Board instituted review on
the basis that the challenged claims would have been
obvious over a combination of three references: (1) a
printout of and source code for the website Customer-
Sat.com, offering a service for receiving visitor feedback
through surveys accessed through a “Pop!Up” question-
naire (“CustomerSat”), see J.A. 388–464; (2) a book au-
thored by David Medinets for teaching the PERL software
programming language, describing a feedback form that
can be accessed by clicking a “submit” button (“Medi-
nets”), see J.A. 465–530; and (3) the specification for the
HTML web publishing language (“HTML Spec”), see J.A.
977–1343.
In its Patent Owner Response, OpinionLab argued
that the combination of CustomerSat, Medinets, and
HTML Spec did not disclose or suggest receiving customer
feedback while the visitor “remained at a particular web
page,” as required by the challenged claims. J.A. 204–06.
According to OpinionLab, CustomerSat required the user
to take a survey while the visitor was at a different web
page. See id. OpinionLab argued that this limitation was
used to distinguish the claims from U.S. Patent 6,741,967
(“Wu”) and another reference during the original exami-
nation at the PTO. J.A. 2222–23.
Qualtrics replied with two arguments. First, Qual-
trics contended that the combination of references did, in
fact, disclose the allegedly missing limitation. J.A. 2610–
13. Second, Qualtrics argued that “the prior art consid-
ered by the Examiner [i.e., Wu] expressly disclose[d]”
receiving customer feedback while the visitor remained at
QUALTRICS, LLC v. OPINIONLAB, INC. 5
a particular page. J.A. 2614 (emphasis removed). Alt-
hough Qualtrics did not specifically cite Wu, it did provide
a declaration from its expert, Mr. John Chisholm, opining
that Wu disclosed a visitor providing feedback while
remaining at a webpage. J.A. 3785–86.
At oral argument before the Board Qualtrics dis-
played a figure from Wu, which led to a discussion regard-
ing use of the reference. J.A. 4627–30. First, the Board
asked counsel for Qualtrics to explain why Wu was not
cited as prior art in the petition. J.A. 4628. Counsel for
Qualtrics responded that it was “sort of part of the back-
ground” because Qualtrics “didn’t think that this whole
pop-up thing was going to be an issue.” Id. Next, the
Board asked how Qualtrics “would have [the Board] use”
Wu. Id. Counsel for Qualtrics responded that Wu could
be used to show how a skilled artisan would have under-
stood CustomerSat’s “Pop!Up” disclosure. Id. The Board
persisted: “[W]ould [Qualtrics] have us use the Wu refer-
ence to establish the benchmark for the person of ordinary
skill in the art, their knowledge?” J.A. 4629. Counsel for
Qualtrics responded in the affirmative. Id.
In its written decision, the Board concluded that the
challenged claims are not unpatentable as obvious. First,
the Board found that CustomerSat did not disclose receiv-
ing user feedback while the user remained at a page.
Final Decision, 2015 WL 4627944, at *4. The Board
reasoned that CustomerSat did not directly depict such a
system, and that its disclosure indicated that the survey
did not appear on the same page. Id. The Board also
“credit[ed] the testimony of OpinionLab’s declarant, Dr.
Michael Shamos” to find that CustomerSat’s underlying
source code indicated that users were taken to a different
web page. Id. The Board found that, to the extent that
Mr. Chisholm offered a different opinion, “OpinionLab’s
declarant, Dr. Shamos, refutes expressly, and credibly,
the testimony of Mr. Chisholm.” Id.
6 QUALTRICS, LLC v. OPINIONLAB, INC.
The Board found that Medinets also did not disclose
that the user provided feedback while remaining at a
particular page because although Medinets’s feedback
form could be modified to remain on the same web page,
Medinets did not suggest that feature. Id. at *5. Instead,
the Board found that various features of Medinets sug-
gested “that users are taken to a different page, not that
they remain on the same page.” Id. The Board again
weighed the expert evidence, finding that “the record
reflects that both parties’ declarants agree that Medinets
fails to teach or suggest” a feedback form that appears on
the same page as the button that launches the form. Id.
The Board next turned to HTML Spec. The Board de-
termined that although HTML Spec provided general
information relating to the use of HTML, it did not dis-
close using HTML for “creating a feedback form for a
website.” Id. As evidence, the Board cited Mr. Chisholm’s
admission that HTML Spec does not disclose using HTML
to create a survey. Id.
The Board finally addressed whether the limitation
could be found in the background knowledge of a skilled
artisan. Although the Board did not specifically mention
Wu, it found that, “to the extent that Qualtrics may rely
on the knowledge of a skilled artisan to fill in the gaps
found to exist in the teaching of the HTML Spec, we are
not persuaded.” Id. at *6. The Board cited testimony
from Dr. Shamos that HTML Spec would not have moti-
vated a skilled artisan to make the inventions of the
OpinionLab patents, and found that Mr. Chisolm “testi-
fied similarly.” Id.
Based on those findings, the Board concluded that
Qualtrics had not proved that the challenged claims
would have been obvious over a combination of Custom-
erSat, Medinets, and HTML Spec. Id. Qualtrics timely
appealed. We have jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(4)(A).
QUALTRICS, LLC v. OPINIONLAB, INC. 7
DISCUSSION
We review the Board’s factual determinations for sub-
stantial evidence and its legal determinations de novo.
Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed.
Cir. 2015). Obviousness is a question of law based on
subsidiary findings of fact relating to “the scope and
content of the prior art, differences between the prior art
and the claims at issue, the level of ordinary skill in the
pertinent art, and any objective indicia of non-
obviousness.” Randall Mfg. v. Rea, 733 F.3d 1355, 1362
(Fed. Cir. 2013) (citing KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 406 (2007)). Accordingly, we review the Board’s
findings as to “what a reference teaches and the differ-
ences between the prior art and the claimed invention” for
substantial evidence. Allied Erecting & Dismantling Co.
v. Genesis Attachments, LLC, 825 F.3d 1373, 1380 (Fed.
Cir. 2016). In particular, “[w]e defer to the Board’s find-
ings concerning the credibility of expert witnesses.”
Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010).
We have interpreted KSR’s rejection of a “rigid ap-
proach to determining obviousness” as requiring us to
“read[] the prior art in context,” including, where rele-
vant, “the background knowledge possessed by a person
having ordinary skill in the art.” Randall, 733 F.3d at
1362 (quoting KSR, 550 U.S. at 418). Accordingly, we
have vacated and remanded the Board’s conclusion of
nonobviousness where there was a question whether the
Board properly included evidence of background
knowledge in its analysis. Ariosa Diagnostics v. Verinata
Health, Inc., 805 F.3d 1359, 1365–66 (Fed. Cir. 2015).
Qualtrics argues that the Board erred by focusing on
the specific disclosures of CustomerSat, Medinets, and
HTML Spec, and therefore failing to consider the back-
ground knowledge of a skilled artisan as our precedents
require. Specifically, Qualtrics argues that the Board
should have considered Wu, Mr. Chisholm’s testimony,
8 QUALTRICS, LLC v. OPINIONLAB, INC.
and the common sense of a skilled artisan when making
the findings underpinning its obviousness conclusion. For
example, Qualtrics urges that Wu expressly discloses a
website visitor entering feedback while the user remains
at a particular page. In light of Wu, Qualtrics argues, a
skilled artisan would have understood that CustomerSat’s
“Pop!Up” questionnaire appears in the pop-up window
while the user remains on a particular page.
OpinionLab responds that the Board fully considered,
and simply rejected, Qualtrics’s arguments relating to the
disclosure of the cited references. OpinionLab contends
that the Board considered Wu during the IPR hearing,
and discussed Mr. Chisholm’s supplemental declaration
addressing Wu in the written decision. As Wu was not
cited in the petition for IPR or addressed in more than a
cursory manner, OpinionLab argues, there was no error
in the Board’s treatment.
We agree with OpinionLab that the Board did not err
in reaching its conclusion that the challenged claims are
not unpatentable as obvious. We see no error in its anal-
ysis of the background knowledge of a skilled artisan, and
its finding that the cited references do not disclose or
suggest a visitor providing feedback while remaining at a
webpage is supported by substantial evidence.
The record establishes that the Board was aware of
Wu and Qualtrics’s arguments, and disagreed that the
background knowledge disclosed the missing limitation.
The Board specifically questioned counsel for Qualtrics
regarding Wu during the IPR hearing. In the written
decision, the Board addressed the supplemental declara-
tion in which Mr. Chisholm discussed Wu. Final
Descision, 2015 WL 4627944, at *4–6. Moreover, the
Board specifically found that “the knowledge of a skilled
artisan” did not “fill in the gaps found to exist in the
teaching of the HTML Spec.” Id. at *6. The only “gap” in
HTML Spec was whether it disclosed allowing a user to
QUALTRICS, LLC v. OPINIONLAB, INC. 9
provide feedback while remaining at a particular page, see
id. at *5; accordingly, the Board found that background
knowledge did not disclose that feature.
Our decisions in Randall and Ariosa do not counsel
otherwise. In Randall, the Board did not consider back-
ground knowledge at all, even though the references
establishing that knowledge had been considered by the
examiner during more than three years of inter partes
reexamination. 733 F.3d at 1357–58, 1360–62. In Ariosa,
the references at issue were presented in the petition for
IPR as well as the experts’ opening declarations. 805 F.3d
at 1365. In the present case, however, Qualtrics did not
include Wu in its petition, see J.A. 101–64, or in its open-
ing expert declaration, see J.A. 531–650. Even when Mr.
Chisholm did address Wu in his supplemental declara-
tion, he opined that Wu taught providing feedback while
the user remained at a particular page, but did not opine
whether or how Wu would have informed a skilled arti-
san’s understanding of CustomerSat. See J.A. 3785–86.
Qualtrics’s reply in the IPR similarly did not address
whether or how Wu would have informed the background
knowledge of a person of ordinary skill. See J.A. 2613–14.
Qualtrics cannot now complain that the Board focused on
the very references that Qualtrics insisted be the focus of
this IPR, not Wu.
Qualtrics also argues that Mr. Chisholm’s testimony
relating to CustomerSat and the background knowledge
of a skilled artisan establishes that CustomerSat’s survey
would have been understood to appear in a pop-up win-
dow. The Board, however, specifically considered Mr.
Chisholm’s testimony, weighed it against Dr. Shamos’s
testimony, and chose to credit Dr. Shamos. See Final
Descision, 2015 WL 4627944, at *4–5. Qualtrics’s argu-
ments do not convince us that the Board’s decision to
credit Dr. Shamos was in error, particularly in light of the
strong deference that we give to the Board’s credibility
determinations. See Yorkey, 601 F.3d at 1284.
10 QUALTRICS, LLC v. OPINIONLAB, INC.
To the extent that Qualtrics challenges any of the
findings that the Board made as to the disclosure of the
references, those findings are supported by substantial
evidence. The Board analyzed each reference, made
detailed and reasoned findings regarding their disclo-
sures, with specific citations to the references and the
record, and also addressed, in detail, the expert testimony
regarding each reference. Id. at *4–6. To the extent that
the experts disagreed with each other—and the Board
noted that in many instances they did not disagree—the
Board chose to credit the testimony of Dr. Shamos over
the testimony of Mr. Chisholm. Id. We discern no re-
versible error in that choice. Accordingly, the Board’s
factual findings are supported by substantial evidence. In
light of those findings, particularly the finding that the
combination of references did not disclose a visitor provid-
ing feedback while the visitor remained at a particular
web page, the Board did not err in concluding that the
challenged claims are not unpatentable as obvious.
CONCLUSION
We have considered the remaining arguments, but
find them unpersuasive. For the foregoing reasons, the
decision of the Board is affirmed.
AFFIRMED
COSTS
No costs.