By: Christopher W. Kennerly (Qualtrics-OpinionLab-CBM@paulhastings.com)
`Naveen Modi (Qualtrics-OpinionLab-CBM@paulhastings.com)
`Timothy P. Cremen (Qualtrics-OpinionLab-CBM@paulhastings.com)
`Paul Hastings LLP
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`QUALTRICS, LLC
`
`Petitioner
`
`v.
`
`OPINIONLAB, INC.
`
`Patent Owner
`
`_________________
`
`Case CBM2016-00003
`
`Patent 8,041,805
`
`_________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`
`2.
`
`3.
`
`2.
`
`Page
`INTRODUCTION ................................................................................ 1 
`THE ’805 PATENT.............................................................................. 3 
`THE BOARD FOUND THE CHALLENGED CLAIMS
`PATENTABLE OVER QUALTRICS’ PREVIOUS PETITION
`FOR IPR ............................................................................................... 7 
`The Board Denied Outright Two of the Three Grounds of
`Petitioner’s Previous Petition for IPR .................................................. 7 
`The Board Determined that Petitioner Failed to Prove that Its
`Third Ground Rendered Any Challenged Claims Unpatentable ......... 9 
`THE ’805 PATENT IS NOT ELIGIBLE FOR REVIEW
`UNDER § 18 OF THE AIA ............................................................... 10 
`The ’805 Patent Is Not a Covered Business Method Patent .............. 12 
`1.
`The Claims of the ’805 Patent Are Not Directed to a
`“Financial Product or Service” ................................................ 12 
`The ’805 Patent Is Not Directed to a “Financial Product
`or Service” Merely Because the Disclosed Techniques
`“Can Be Applied to Commercial Transactions” Or
`Utilized to “Improve The Effectiveness of the Web” .............. 16 
`The ’805 Patent Is Not Directed to a “Financial Product
`or Service” Merely Because Extrinsic Evidence Indicates
`the Usefulness of the Claimed Invention to an Investor .......... 22 
`The ’805 Patent Is Directed to a “Technological Invention” ............. 24 
`1.
`Considered as a Whole, the ’805 Patent Claims Recite
`Novel and Unobvious Technological Features ........................ 25 
`Considered as a Whole, the ’805 Patent Claims Provide a
`Technical Solution To a Technical Problem ............................ 29 
`THE CLAIMS OF THE ’805 PATENT ARE PATENT-
`ELIGIBLE UNDER SECTION 101 .................................................. 33 
`The Statute–35 U.S.C. § 101 .............................................................. 33 
`A.
`B. DDR Holdings Confirms that the Claims of the ’805 Patent Are
`Patent-Eligible .................................................................................... 34 
`-i-
`
`
`A.
`
`B.
`
`A.
`
`B.
`
`I.
`II.
`III.
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`IV.
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`V.
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`
`
`

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`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`
`VI.
`
`C.
`
`D.
`
`Petitioner Cannot Establish that the Claims of the ’805 Patent
`Are Directed to An Abstract Idea ....................................................... 39 
`The Claims of the ’805 Patent Recite An Inventive Concept that
`Ensures the Claims Are More Than An Abstract Idea Itself ............. 43 
`CONCLUSION .................................................................................. 49 
`
`
`
`
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`-ii-
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`

`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`CASES
`Alice Corp. v. CLS Bank,
`134 S. Ct. 2347 (2014) .................................................................................passim
`
`Apple Inc., v. ContentGuard Holdings, Inc.,
`CBM2015-00046, Paper No. 12 (PTAB June 3, 2015) .......................... 26, 28, 29
`
`Bilski v. Kappos,
`561 U.S. 593 (2010) ............................................................................................ 39
`
`Bloomberg LP v. Quest Licensing Corp.,
`CBM2014-00205, Paper No. 16 (PTAB Apr. 7, 2015) .......................... 11, 28, 29
`
`Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat.
`Ass’n,
`776 F.3d 1343 (Fed. Cir. 2014) .......................................................................... 34
`
`DDR Holdings, LLC v. Hotels.com, L.P.,
`773 F.3d 1245 (Fed. Cir. 2014) ...................................................................passim
`
`Epsilon Data Mgmt., LLC v. RPost Comm’ns Ltd.,
`CBM2014-00017, Paper No. 21 (PTAB Apr. 22, 2014) .............................. 27, 28
`
`J.P. Morgan Chase & Co. v. Intellectual Ventures II LLC,
`CBM2014-00160, Paper No. 11 (PTAB Jan. 29, 2015) ..............................passim
`
`Mayo v. Prometheus Labs.,
`132 S. Ct. 1289 (2011) .................................................................................passim
`
`Par Pharm., Inc. v. Jazz Pharm., Inc.,
`CBM2014-00149, Paper No. 12 (PTAB Jan. 13, 2015) ..................................... 21
`
`PNC Bank et al. v. Parus Holdings, Inc.,
`CBM2015-00109, Paper No. 10 (PTAB Nov. 9, 2015) ......................... 12, 15, 22
`
`Roxane Labs. Inc. v. Jazz Pharm., Inc.,
`CBM2014-00161, Paper No. 16 (PTAB Feb. 9, 2015) ................................ 12, 23
`
`
`
`
`
`-iii-
`
`
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`

`
`TABLE OF AUTHORITIES
`(continued)
`
` Page(s)
`
`Sega of Am., Inc. v. Uniloc USA, Inc.,
`CBM2014-00183, Paper No. 11 (PTAB Mar. 10, 2015) ............................. 15, 16
`
`ServiceNow, Inc. v. BMC Software, Inc.,
`CBM2015-00107, Paper No. 12 (PTAB Sept. 11, 2015) ....................... 20, 21, 23
`
`ServiceNow, Inc. v. Hewlett-Packard, Co.,
`CBM2015-00108, Paper No. 10 (PTAB October 7, 2015) .........................passim
`
`Sony Corp. of Am. v. Network-1 Tech., Inc.,
`CBM2015-00078, Paper No. 7 (PTAB July 1, 2015) ............................ 10, 12, 23
`
`STATUTES
`
`35 U.S.C. § 101 .................................................................................................passim
`
`35 U.S.C. § 315(e) ..................................................................................................... 2
`
`35 U.S.C. § 323 .......................................................................................................... 1
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.107(b) ................................................................................................ 1
`
`37 C.F.R. § 42.301(a) ........................................................................................... 2, 11
`
`37 C.F.R. § 42.301(b) .......................................................................................passim
`
`157 Cong. Rec. S5441 (daily ed. Sept. 8, 2011) ...................................................... 18
`
`AIA § 18 ............................................................................................................passim
`
`
`
`
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`
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`-iv-
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`

`
`
`I.
`
`INTRODUCTION
`
`CBM2016-00003
`Patent 8,041,805
`
`Pursuant to 35 U.S.C. § 323, Patent Owner OpinionLab, Inc. submits this
`
`Preliminary Response to Petitioner Qualtrics, LLC’s Petition for Covered Business
`
`Method Review of U.S. Patent No. 8,041,805 (the “’805 Patent”).1
`
`This is not the first time Petitioner has challenged the ’805 Patent before the
`
`Board. In January 2014, Petitioner filed a Petition for Inter Partes Review
`
`(“Petition for IPR”) of the ’805 Patent based on alleged prior art. IPR2014-00366,
`
`Paper No. 1 (PTAB January 17, 2014). The Board instituted review in July 2014
`
`and, after a detailed analysis of the evidence and a full hearing, concluded that
`
`“Qualtrics has not proven, by preponderant evidence, that any of the challenged
`
`claims are unpatentable.” IPR2014-00366, Paper No. 45 at 2 (PTAB July 30,
`
`2015). Petitioner does not explain why it did not advance the arguments in the
`
`instant Petition in parallel with its Petition for IPR almost two years ago, or at any
`
`point since.2 Delayed, serial challenges to the same patent were not contemplated
`
`
`1 This paper is filed within three months of the Notice of Filing Date Accorded to
`
`Petition (Paper No. 3) and is timely under 35 U.S.C. § 323 and 37 C.F.R. §
`
`42.107(b).
`
`2 It appears that the instant Petition is intended primarily to serve as a basis to
`
`extend the stay of an underlying Federal Court case between the parties pending
`
`
`
`
`
`1
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`

`
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`by the AIA,3 unnecessarily tax the resources of the Board, and prejudice patent
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`CBM2016-00003
`Patent 8,041,805
`
`owners such as Patent Owner here.
`
`Turning to the substance of the Petition, as a threshold matter, the claims of
`
`the ’805 Patent are not eligible for Covered Business Method Review (“CBMR”).
`
`The ’805 Patent claims do not contain a single element that can be characterized as
`
`being related to the “practice, administration, or management of a financial product
`
`or service.” AIA § 18(d)(1); see also 37 C.F.R. § 42.301(a). Rather, the claims are
`
`of “general utility” with no tie to any specific financial product or service. The
`
`Petition should be denied on this basis alone. See Section V.
`
`Moreover, even if the claims of the ’805 Patent were eligible for CBMR
`
`(which they are not), the purported basis for Petitioner’s challenge—that the ’805
`
`Patent claims are somehow not directed to patent-eligible subject matter under 35
`
`
`completion of PTAB proceedings relating to the ’805 Patent and other patents
`
`owned by Patent Owner that are also asserted in that case.
`
`3 For example, both 35 U.S.C. § 315(e) and AIA § 18 (a)(1)(D) prohibit, where a
`
`final decision has issued, serial challenges by a Petitioner where the ground could
`
`have been raised in the IPR or CBMR, respectively. Here, there is no reason
`
`Petitioner could not have originally presented all of its challenges simultaneously
`
`in a CBMR Petition. Petitioner’s strategy of delay should not be rewarded.
`
`
`
`
`
`2
`
`

`
`
`U.S.C. § 101—is wholly unsupported. The ’805 Patent is directed to a specific
`
`CBM2016-00003
`Patent 8,041,805
`
`technological solution (collecting and reporting web page-specific feedback on a
`
`web page-by-web page basis) to a problem created by the Internet (the need for
`
`particularized web page-specific feedback on the multitude of individual web
`
`pages that make up a website) that does not have any pre-Internet “real-world”
`
`analogue. The Federal Circuit has confirmed that such inventions are patent-
`
`eligible. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
`
`2014); see also Section VI, below.
`
`Because the claims of the ’805 Patent are not eligible for CBMR in the first
`
`instance, and in any event are patent-eligible under Section 101, the Petition
`
`should be denied.
`
`II. THE ’805 PATENT
`The ’805 Patent relates to tools for collecting and reporting user reactions to
`
`particular pages of a website. Ex. 1002 (hereinafter “the ’805 Patent”), 1:16-19.
`
`The ’805 Patent identifies several deficiencies in the prior art, including that
`
`previous techniques: (i) collected user reactions to transactions carried out using a
`
`website, but not subjective reactions to particular web pages of the website (id. at
`
`1:35-43); (ii) were difficult to use, obtrusive, or unstandardized, deterring users
`
`from providing their reactions (id. at 1:47-51); and (iii) provided results that were
`
`
`
`
`
`3
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`

`
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`often difficult to interpret or did not allow useful comparisons to be made between
`
`CBM2016-00003
`Patent 8,041,805
`
`reactions to particular web pages (id. at 1:51-55).
`
`To address these deficiencies, the ’805 Patent provides example
`
`embodiments of a web page-specific feedback collection and reporting mechanism.
`
`In one embodiment illustrated in
`
`Figures 2 and 3 (reproduced
`
`here), it provides a user reaction
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`measurement tool incorporated
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`into each web page of a website.
`
`Id. at 11:59-66. The tool appears
`
`as a standardized, easily
`
`identifiable icon 50 viewable on each particular page 28. Id. at 11:66-12:2. The
`
`icon 50 remains in substantially the same location relative to the border 54 of the
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`browser window 52 as the user scrolls through the page 28. Id. at 12:23-39. The
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`“user-selectable element” and “first element” recited in the challenged claims read
`
`on icon 50 on particular web page 28 of Figure 2.4
`
`
`4 OpinionLab provides these explanations of the claim language by way of
`
`example and solely to assist the Board in understanding the claim terminology.
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`
`
`
`
`4
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`

`
`When a user interacts with the icon 50, a multi-level subjective rating scale
`
`CBM2016-00003
`Patent 8,041,805
`
`
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`60 becomes viewable, allowing users to
`
`provide subjective reactions to the
`
`particular web page 28. Id. at 12:40-46.
`
`In one embodiment shown in Figure 6
`
`(reproduced here), the user may be
`
`presented with a window 78 containing
`
`one or more rating scales 72 each
`
`associated with a specified aspect of the particular web page 28 and a field 79 to
`
`receive open-ended comments about the particular page 28. Id. at 15:51-59.
`
`Critically, in these embodiments, the process of collecting user feedback
`
`takes place while the user remains at the particular web page 28. Id. at 25:51-54.
`
`The user is not required to access an entirely separate web page to provide
`
`feedback concerning the particular page 28 being evaluated. This feature is
`
`reflected in the challenged claims via the recitation “the page-specific user
`
`feedback concerning the particular webpages having been provided by a user while
`
`the user remained at the particular web page.” Id. at 25:50-54 (emphasis added).
`
`
`
`
`
`5
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`

`
`After the web page-specific feedback is collected, it may be reported to an
`
`CBM2016-00003
`Patent 8,041,805
`
`
`
`interested party, such as a website owner, in one or more of several possible
`
`formats. See generally id. at 16:65-25:30. In the example report shown in Figure
`
`8A (reproduced here), an
`
`interested party may review
`
`feedback via report 100, which
`
`allows one to identify particular
`
`web pages that have feedback
`
`notable relative to other pages.
`
`Specifically, lines 126 are provided for each particular web page 128, and the
`
`length of each line 126 represents the total number of ratings for the corresponding
`
`page 128 in each of the positive, neutral, and negative categories 138. This allows
`
`a website owner to, at a glance, identify particular web pages 128 that are notable,
`
`for example, because they have highly negative feedback. This web page-specific
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`reporting functionality is recited in the following portion of the challenged claims:
`
`… the page-specific user feedback allowing the interested party to
`
`access page-specific subjective ratings and associated page-specific
`
`open-ended comments across the plurality of particular web pages to
`
`identify one or more particular web pages for which the page-specific
`
`
`
`
`
`6
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`

`
`
`
`CBM2016-00003
`Patent 8,041,805
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`user feedback is notable relative to page-specific user feedback for
`
`other particular web pages ….
`
`Id. at 25:58-65. Each of the remaining challenged independent claims recite
`
`similar limitations.
`
`In view of the above, it is self-evident that each claim of the ’805 Patent is
`
`directed to Internet technology having “general utility” with no tie to any specific
`
`financial product or service.
`
`III. THE BOARD FOUND THE CHALLENGED CLAIMS PATENTABLE
`OVER QUALTRICS’ PREVIOUS PETITION FOR IPR
`A. The Board Denied Outright Two of the Three Grounds of
`Petitioner’s Previous Petition for IPR
`
`In January 2014, Petitioner filed its Petition for IPR of the ’805 Patent
`
`challenging Claims 1, 2, 5, 8, 10, 11, 14, 17, 18, 19, 22, 25-27, 30 and 33 on three
`
`prior art grounds: (1) anticipation in view of CustomerSat,5 (2) obviousness in
`
`
`5 “Customer Satisfaction Measurement, Surveys and Market Research by
`
`CustomerSat.com, The Internet Survey Experts,” <https://web.archive.org/web/
`
`19980526190826/http:/www. customersat.com/> (retrieved Nov. 21, 2013 from
`
`Internet Archive, Wayback Machine), 1-76 (May 26, 1998).
`
`
`
`
`
`7
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`

`
`
`view of CustomerSat and Medinets,6 and (3) obviousness in view of CustomerSat,
`
`CBM2016-00003
`Patent 8,041,805
`
`Medinets, and HTML Spec.7 IPR2014-00366, Paper No. 1. Patent Owner filed a
`
`Preliminary Response, demonstrating in detail how the asserted grounds were
`
`unsupported. Id., Paper No. 9.
`
`The Board denied Grounds 1 and 2 outright and instituted review solely on
`
`Ground 3. Id., Paper No. 10 at 7-11. In its Institution Decision, the Board
`
`reasoned that “[t]ypical commercial websites measure a user’s reaction to the
`
`website as a whole. In contrast, the claimed invention collects and reports user
`
`feedback on a page-specific basis by incorporating a ‘user reaction measurement
`
`tool’ into each web page of the website.” Id. at 2 (emphasis in original) (internal
`
`citations omitted). Thus, regarding Grounds 1 and 2, the Board confirmed that
`
`CustomerSat fails to disclose, or teach or suggest, “that [feedback] can be done on
`
`a ‘page-specific’ basis, as required by the claims.” Id. at 11; see also id. at 6-7.
`
`
`6 David Medinets, “The Easiest way to learn how to program!,” PERL5 by
`
`Example, Que Corp., 1-66 (1996).
`
`7 HTML Spec, World Wide Web Consortium (W3C), HTML 4.0 Specification,
`
`Dave Raggett et al. (ed.) (Apr. 24, 1998).
`
`
`
`
`
`8
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`

`
`
`
`CBM2016-00003
`Patent 8,041,805
`
`B.
`
`The Board Determined that Petitioner Failed to Prove that Its
`Third Ground Rendered Any Challenged Claims Unpatentable
`
`Regarding Ground 3, the Board’s Final Written Decision (hereinafter “Final
`
`Decision”) concluded that the challenged claims of the ’805 Patent had “not been
`
`proven to be unpatentable by a preponderance of the evidence.” Id., Paper No. 45
`
`at 14.
`
`To support its findings, the Board focused on the limitation “page-specific
`
`user feedback … having been provided by a user while the user remained at the
`
`particular web page.” Id. at 5.8 It first confirmed that “nowhere does CustomerSat
`
`describe or depict a pop-up questionnaire on the same web page as the pop-up
`
`survey invitation.” Id. at 6. In this regard, the Board found the testimony of both
`
`parties’ declarants compelling, which “buttress[ed] a finding that the user, in
`
`CustomerSat, provides feedback after being directed to a different web page, rather
`
`than while remaining on the same web page.” Id. at 7 (emphasis in original).
`
`
`8 As it did in its Institution Decision regarding Grounds 1 and 2, the Board
`
`reasoned that “[t]ypical commercial websites measure a user’s reaction to the
`
`website as a whole. In contrast, the system of the ’805 patent solicits and reports
`
`user feedback on a page-specific basis by incorporating a ‘user reaction
`
`measurement tool’ into each web page of the website.” Id. at 2 (emphasis in
`
`original).
`
`
`
`
`
`9
`
`

`
`The Board next turned to Medinets and concluded that its teachings did not
`
`CBM2016-00003
`Patent 8,041,805
`
`
`
`cure CustomerSat’s deficiencies, stating that it was “not persuaded that Medinet’s
`
`feedback form is a pop-up that appears on the same page as the submit button, but
`
`rather is a different web page.” Id. at 10. The Board found that the HTML Spec
`
`also failed to cure CustomerSat’s deficiencies. See id. at 10-11.
`
`Accordingly, the Board determined that the “preponderance weighs in favor
`
`of showing that neither CustomerSat, Medinets, nor HTML Spec, individually or
`
`collectively, would have taught or suggested to a skilled artisan the capability of
`
`providing feedback while the user remained at the particular web page from which
`
`the feedback was solicited, as required by each of the independent claims.” Id. at
`
`11-12.
`
`Thus, the Board has already concluded that the technical features recited in
`
`the ’805 Patent claims are novel and unobvious over what Petitioner must have
`
`considered to be the most relevant prior art.
`
`IV. THE ’805 PATENT IS NOT ELIGIBLE FOR REVIEW UNDER § 18
`OF THE AIA
`
`To be eligible for CBMR under § 18 of the AIA, a patent must be: (i) a
`
`“covered business method patent;” and (ii) not directed to a “technological
`
`invention.” Sony Corp. of Am. v. Network-1 Tech., Inc., CBM2015-00078, Paper
`
`No. 7 at 7-8 (PTAB July 1, 2015). It is Petitioner’s burden to prove that both
`
`
`
`
`
`10
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`

`
`
`elements are established. See 37 C.F.R. § 42.301(a); see also Bloomberg LP v.
`
`CBM2016-00003
`Patent 8,041,805
`
`Quest Licensing Corp., CBM2014-00205, Paper No. 16 at 7-11 (PTAB Apr. 7,
`
`2015).
`
`Regarding the first element, a patent can only be a “covered business method
`
`patent” if it “claims a method or corresponding apparatus for performing data
`
`processing or other operations used in the practice, administration, or management
`
`of a financial product or service . . . .” AIA § 18(d)(1) (emphasis added); see also
`
`37 C.F.R. § 42.301(a). Here, Petitioner has failed to point to any language in the
`
`claims relating to a financial product or service. This is because there is no such
`
`language—the challenged claims of the ’805 Patent are of “general utility” and
`
`have no particular relationship to any financial product or service.
`
`Regarding the second element, a patent is to a “technological invention” if
`
`“the claimed subject matter as a whole recites a technological feature that is novel
`
`and unobvious over the prior art; and solves a technical problem using a technical
`
`solution.” 37 C.F.R. § 42.301(b). Here, Petitioner fails to analyze the claims as a
`
`whole as required by 37 C.F.R. § 42.301(b)—Petitioner instead generalizes the
`
`challenged claims as a collection of some of their elements (e.g., icons, rating
`
`scales, and software) and alleges that such elements are generic and well-known.
`
`Pet. at 35-36. Such an approach is improper. Moreover, the Board has already
`
`found that Petitioner failed to prove that the challenged claims were anticipated or
`
`
`
`
`
`11
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`

`
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`obvious. IPR2014-00366, Paper No. 45 at 14. Petitioner’s position that the
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`CBM2016-00003
`Patent 8,041,805
`
`technical features of those claims are not novel and unobvious is thus wholly
`
`unsupported and contradicts the Board’s prior decision on that very issue.
`
`It is Petitioner’s burden to prove that the ’805 Patent is a “covered business
`
`method patent” and that it is not directed to a “technological invention.” Although
`
`Petitioner’s failure to meet its burden as to either requirement is sufficient to deny
`
`institution, here, Petitioner fails to meet its burden as to both requirements for
`
`CBMR under § 18 of the AIA. The Board should therefore deny institution.
`
`A. The ’805 Patent Is Not a Covered Business Method Patent
`1.
`The Claims of the ’805 Patent Are Not Directed to a
`“Financial Product or Service”
`The ’805 Patent is not a CBM Patent because it does not “claim[] a method
`
`or corresponding apparatus for performing data processing or other operations used
`
`in the practice, administration, or management of a financial product or
`
`service . . . .” AIA § 18(d)(1) (emphasis added).
`
`As Board precedent demonstrates, the proper focus of the CBM Patent
`
`inquiry should be on the patent claims. See, e.g., Roxane Labs. Inc. v. Jazz
`
`Pharm., Inc., CBM2014-00161, Paper No. 16 at 10 (PTAB Feb. 9, 2015) (“In
`
`making [the] determination [of whether a patent is a CBM Patent], our focus is
`
`firmly on the claims.”); Sony, Paper No. 7 at 11; PNC Bank et al. v. Parus
`
`
`
`
`
`12
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`

`
`
`Holdings, Inc., CBM2015-00109, Paper No. 10 at 15 (PTAB Nov. 9, 2015)
`
`CBM2016-00003
`Patent 8,041,805
`
`(“whether the [] patent is directed to a covered business method is based on what
`
`the patent claims”). Here, the challenged claims do not contain a single element
`
`related to a “financial product or service.” Claim 1 of the ’805 Patent reads:
`
`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 interested 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
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`particular web page, the page-specific user feedback allowing the
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`13
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`interested party to access page-specific subjective ratings and
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`associated page-specific open-ended comments across the plurality of
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`particular web pages to identify one or more particular web pages for
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`which the page-specific user feedback is notable relative to page-
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`specific user feedback for other particular web pages;
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`wherein the user-selectable element is viewable within a browser
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`window upon initial display of the particular web page and remains
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`viewable within the browser window, at least prior to the user
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`selection, regardless of user scrolling.
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`There is no term in Claim 1 (or the other challenged claims, which contain similar
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`elements) that expressly recites a financial product or service, or that provides any
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`particular relationship to such a product or service. Nor is there any reasonable
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`claim construction under which these claims could somehow be interpreted to have
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`such a relationship. Indeed, Petitioner does not advance a claim construction for
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`any element that is financial in nature. See Pet. at 13-17.9 This lack of any nexus
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`9 For the sake of expediency in this Preliminary Response, and because they do not
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`appear to affect the “reasonable likelihood” analysis, Patent Owner will utilize
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`Petitioner’s constructions of the claim terms identified in its Petition for purposes
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`of this Preliminary Response, except if otherwise indicated. Patent Owner does
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`between the claims and a “financial product or service” is fatal to Petitioner’s
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`attempt to institute CBMR. See, e.g., ServiceNow, Inc. v. Hewlett-Packard, Co.,
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`CBM2015-00108, Paper No. 10 at 15-16 (PTAB October 7, 2015) (hereinafter
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`“Hewlett-Packard”); J.P. Morgan Chase & Co. v. Intellectual Ventures II LLC,
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`CBM2014-00160, Paper No. 11 at 11-12 (PTAB Jan. 29, 2015); Sega of Am., Inc.
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`v. Uniloc USA, Inc., CBM2014-00183, Paper No. 11 at 11 (PTAB Mar. 10, 2015).
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`Rather than being directed to a financial product or service, Claim 1 is of
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`“general utility,” i.e., it recites a particular novel technique for capturing and
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`reporting user reaction feedback data on a web page-by-web page basis without
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`restricting the field of use of the claimed invention to the financial sector or
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`financial activity. When claims are of “general utility” with no tie to a specific
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`financial product or service, the Board has routinely denied institution. See, e.g.,
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`PNC Bank, Paper No. 10 at 15 (finding a patent claiming “methods, systems, and
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`devices for managing user communications, including using speech recognition to
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`interpret input from users” is not a CBM Patent because its “claims are not limited
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`not concede that any of Petitioner’s constructions are correct, however, and does
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`not waive any arguments regarding the “broadest reasonable construction” of these
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`terms (or any arguments regarding the constructions appropriate in any Federal
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`Court action).
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`to any particular context and, instead, are directed to commercial and non-
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`Patent 8,041,805
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`commercial applications alike”); Hewlett-Packard, Paper No. 10 at 15-16 (patent
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`claiming a “system for managing a conversation in a web service” is not a CBM
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`Patent because the “claims are of general utility” with no recitation of “finance-
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`related” terminology or limitations); J.P. Morgan Chase, Paper No. 11 at 11-12
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`(denying institution for patent claiming techniques for secure electronic
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`communications that had “general utility not limited or specific to any
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`application”); Sega, Paper No. 11 at 11 (denying institution for patent whose
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`“claims on their face are directed to technology that restricts the use of software”
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`having “no particular relationship to a financial product or service”).
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`2.
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`The ’805 Patent Is Not Directed to a “Financial Product or
`Service” Merely Because the Disclosed Techniques “Can Be
`Applied to Commercial Transactions” Or Utilized to
`“Improve The Effectiveness of the Web”
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`Apparently recognizing the lack of nexus between the challenged claims and
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`a “financial product or service,” Petitioner turns to citing snippets of the ’805
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`Patent’s specification in an attempt to stitch together a narrative that the patent
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`contemplates some relationship to financial activity.
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`Petitioner does not, however, assert that the specification in any way limits
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`the scope of the challenged claims to a financial product or service. Therefore, as a
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`threshold matter, its approach is irrelevant. As the Board explained in denying
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`institution in J.P. Morgan Chase, if the claims “have general utility not limited or
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`Patent 8,041,805
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`specific to any application” and the specification does not limit “the invention to
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`the financial services sector,” the patent is not a CBM Patent. Paper No. 11 at 11-
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`12. That reasoning should end the inquiry here.
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`Turning to Petitioner’s specific argument, it first contends that the ’805
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`Patent qualifies for CBMR because “the specification expressly recognizes that the
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`claims may be applied to commercial transactions, as well as market research and
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`usability testing.” Pet. at 22, 23 (citing ’805 Patent at 4:5-17); see generally id. at
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`22-24. Petitioner next contends that the ’805 Patent qualifies for CBMR because
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`the disclosed techniques may be used to “improve the effectiveness of websites,
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`including their marketing, interface usability, and customer communication
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`functions.” Id. at 24-25 (citing ’805 Patent at 1:29-33, 4:8-14); see generally id. at
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`24-31. Relying on extrinsic evidence, Petitioner contends that the disclosed
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`techniques increase the “return on investment (ROI)” and that the demographic
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`information captured using these techniques may be “sold for a fee.” Id. at 27-31.
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`Petitioner concludes that “[b]ecause the ’805 Patent is directed to a survey method
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`and system for improving the effectiveness of websites, it is directed to a financial
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`product or service . . . .” Id. at 30-31 (citing LinkedIn Corp. v. AVMarkets Inc.,
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`CBM2013-00025, Paper No. 13 at 9 (PTAB Nov. 12, 2014)).
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`Petitioner’s argument fails to carry its burden because there is no legally
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`cognizable link between the specification, let alone the claims, and a “financial
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`product or service.” As the Board has recognized, the breadth of what constitutes a
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`CBM Patent “has limits and does not cover every method that might be used in a
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`way that is incidental or complementary to a financial activity.” J.P. Morgan
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`Chase, Paper No. 11 at 6; see also 157 Cong. Rec. S5441 (daily ed. Sept. 8, 2011)
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`(statement of Sen. Leahy) (stating that the definition of a CBM Patent is not
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`intended to cover “technologies common in business environments across sectors
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`and that have no particular relation to the financial services sector, such as
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`computers, communications networks, and business software”).
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`Under Petitioner’s analysis, any patent (e.g., a patent to a new stapler or a
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`new supercomputer) would qualify for CBMR if it has the potential of being used
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`in a commercial transaction or increasing the profitability of the underlying
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`business because the “return on investment” would be increased. That is not the
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`law. Nor does LinkedIn support Petitioner. In LinkedIn, the Board found that the
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`challenged claim recited a method for “increasing sales leads” (e