Trials@uspto.gov
`571-272-7822
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` Paper 9
`Entered: April 13, 2016
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`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 B2
`____________
`
`Before RAMA G. ELLURU, JEREMY M. PLENZLER, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
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`

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`CBM2016-00003
`Patent 8,041,805 B2
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`I. INTRODUCTION
`OpinionLab, Inc. is the owner of U.S. Patent No. 8,041,805 B2 (“the ’805
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`patent”). Qualtrics, LLC filed a Petition (“Pet.”) for covered business method
`(“CBM”) review of claims 1–33 of the ’805 patent.1 OpinionLab, in turn, filed a
`Preliminary Response (“Prelim. Resp.”) opposing institution of CBM review.
`
`We have jurisdiction under 35 U.S.C. § 324(a). After considering the
`Petition and Preliminary Response, we conclude that Qualtrics fails to demonstrate
`that the ’805 patent is a “covered business method patent” as defined by § 18(d)(1)
`of the Leahy–Smith America Invents Act, Pub. L. No. 112–29, § 6, 125 Stat. 284,
`299–305 (2011) (“AIA”). We, therefore, deny the Petition for CBM review of the
`’805 patent.
`
`II. BACKGROUND
`
`Related Proceedings
`A.
`In a previous inter partes review proceeding, namely, IPR2014-00366
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`(“the -366 IPR”), Qualtrics challenged many of the same claims of the ’805 patent
`as it does now, only on different grounds. Specifically, following trial in the -366
`IPR, we determined that Qualtrics had failed to prove, by a preponderance of the
`evidence, that the claims of the ’805 patent were unpatentable under 35 U.S.C.
`§ 103. IPR2014-00366, Paper 14 (PTAB July 30, 2015). Now, in seeking CBM
`review, Qualtrics challenges the claims of the ’805 patent under 35 U.S.C. § 101 as
`directed to a patent-ineligible abstract idea. Pet. 39–61.
`The ’805 patent is also the subject of two district court actions: OpinionLab,
`Inc. v. Qualtrics Labs, Inc., 1:13-cv-01574 (N.D. Ill.), and OpinionLab, Inc. v.
`iPerceptions Inc., 1:12-cv-05662 (N.D. Ill.). Pet. 2.
`
`
`1 Qualtrics Labs, Inc. is also listed as a real party-in-interest. Pet. 2.
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`CBM2016-00003
`Patent 8,041,805 B2
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`B.
`
`The ’805 Patent
`The ’805 patent is directed to a system and method for soliciting “page-
`specific” feedback from website users. Ex. 1002, 1:16–19, 1:64–66. User
`feedback is solicited on a page-specific basis by incorporating a “user-selectable
`element,” or “viewable icon,” into each web page of the website.2 Id. at 1:66–2:5,
`5:37–50, 11:59–12:6, Figs. 2, 10, 11. The icon incorporated in each web page
`solicits the user’s subjective reaction to various aspects of the particular web page
`being viewed by the user. Id. When the user rolls over or clicks on the icon, a
`rating scale and/or question box appears within the user’s browser window. Id. at
`5:65–6:27, 12:40–14:10, Figs. 3–6. The rating scale and/or question box appears
`within the same browser window on which the user is viewing the particular web
`page itself. Id. at 12:23–39; compare Fig. 2 with Figs. 3, 5 (depicting icon 50 on
`web page 28 as being replaced by rating scales 60, 70). Software associated with
`the icon operates to collect and store the user’s reactions in a database for
`subsequent reporting to an interested party. Id. at 2:6–18, 15:27–31, Figs. 8A, 8B,
`9, 11, 12
`C.
`The Challenged Claims
`
`Of the challenged claims, claims 1, 10, 18, and 26 are independent.
`Common to each of the independent claims is an “element viewable on each of a
`plurality of particular webpages” for soliciting “page-specific user feedback” from
`a website user “while the user remain[s] at the particular webpage” and “regardless
`of user scrolling.” Claim 1 is illustrative of the claimed invention:
`
`1.
`One or more computer-readable non-transitory storage
`media embodying software operable when executed to:
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`
`
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`2 The ’805 patent also describes the user element or icon in terms of a “user
`reaction measurement tool.” Ex. 1002, 3:26–58, 11:59–12:6.
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`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 particular 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 plurality 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.
`Ex. 1002, 25:40–26:3 (emphasis added).
`III. ANALYSIS
`A transitional proceeding under section 18 of the AIA may be instituted only
`
`for a patent that is a covered business method (“CBM”) patent. AIA § 18(a)(1)(e).
`As the petitioner, Qualtrics bears the burden of demonstrating that the ’805 patent
`is a CBM patent. See 37 C.F.R. § 304(a). The AIA defines a CBM patent as “a
`patent that 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, except that the term does not include patents for
`technological inventions.” AIA § 18(d)(1) (emphasis added); 37 C.F.R.
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`CBM2016-00003
`Patent 8,041,805 B2
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`§ 42.301(a). The determination of whether a patent is eligible for CBM review
`focuses on “what the patent claims.” Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48,734, 48,736 (Aug. 14, 2012) (response to comment 8). A patent need have
`only one claim directed to a CBM to be eligible for review. Id.
`Qualtrics makes several arguments in support of its contention that the ’805
`patent is a CBM patent. Pet. 18–39. First, Qualtrics argues that the claimed
`invention is directed to a financial product or service because the specification
`states that the claimed invention may be used in connection with websites that
`conduct “commercial transactions.” Pet. 22–24. But, as discussed above, the
`relevant inquiry is on the claims and whether they are directed to a financial
`product or service. Here, the claims are devoid of any terms that could be
`reasonably argued as rooted in the financial sector or limited to a monetary
`transaction. Instead, the claims recite a software capability of general utility that
`crosses many sectors, commercial and non-commercial alike.
`Put simply, the claims recite a “user-selectable element,” i.e., an icon, that
`solicits and receives feedback from users without requiring them to navigate
`between webpages, i.e., “while the user remain[s] at the particular webpage” and
`“regardless of user scrolling.” As such, the claimed invention is nothing more than
`a website tool for gathering information—a quick and easy way to solicit
`contemporaneous reactions from website users. Ex. 1002, 2:51–67, 6:9–17.
`Soliciting feedback from website users is hardly the exclusive domain of the
`financial sector. Indeed, contrary to what Qualtrics argues, the specification of the
`’805 patent acknowledges the general utility of the claimed invention, stating that
`“the present invention may be similarly applied in connection with polling,
`surveying, product development research, market research, [and] usability testing.”
`Ex. 1002, 4:5–17. Thus, the specification contemplates both commercial and non-
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`commercial applications for the claimed website tool. As such, we are not
`persuaded by Qualtrics’ attempt to characterize the claimed invention as limited to
`“commercial” applications when both the claims and the specification indicate a
`more general utility.
`Next, Qualtrics argues that the claimed invention is limited to a financial
`product or service because “collecting user feedback is primarily used to improve
`the effectiveness of websites, including their marketing, interface usability, and
`customer communications functions.” Pet. 24. Even if true, however, the use of
`consumer feedback to improve the capabilities of a website does not necessarily
`make that use financial in nature. The statute authorizing review of CBM patents
`was not meant for “technologies common in business environments across sectors
`and that have no particular relation to the financial services sector, such as
`computers, communications networks, and business software.” 157 Cong. Rec.
`S5441 (Sept. 8, 2011) (statement of Sen. Leahy). Using consumer feedback for
`improving the quality of a product or service is a common practice that applies not
`only to commercial (.com) websites, but also to educational (.edu), government
`(.gov), and non-profit (.org) websites, many of which have no financial bent. See
`Ex. 1001 ¶¶ 32–50 (describing the “well-worn principle” of soliciting feedback on
`internet websites, including “.gov” and “.edu” domains). Indeed, Qualtrics itself
`recognizes that “[s]urveys have played a central role in business for decades,” and,
`in particular, “[t]he solicitation of customer satisfaction feedback in the form of
`one or more ratings conducted as part of a survey was well-known in the art.”
`Pet. 18; see also Ex. 1001 ¶¶ 29–50. Given the breadth of survey technology in the
`business world, we find that, more aptly, the claimed software capability crosses
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`the gamut of many business environments, with no particular relation to the
`financial sector.
`Of course, Qualtrics argues that the specification’s mention of using the
`claimed invention as a measure of the website’s value suggests it is financial in
`nature. Pet. 31–33 (citing Ex. 1002, 1:32–33). Qualtrics overlooks, however, that
`this potential use is purely exemplary, and that, as discussed above, both the
`specification and the claims actually speak in broader terms that include not only
`valuing the website in terms of “clicks,” but also collecting information for
`purposes of “polling, surveying, product development research, market research,
`[and] usability testing.” Ex. 1002, 4:5–17. Thus, far from being limited to a
`valuation tool, the specification and claims of the’805 patent make clear that the
`claimed invention is amenable to any number of a broad spectrum of uses where
`consumer feedback is desired.
`
`Also, we are not persuaded by Qualtrics’ argument that the ’805 patent’s
`discussion of “collecting user demographics” is financial in nature because it
`“might be available for a fee.” Pet. 29–30 (emphasis added). First and foremost,
`the argument is based on speculation. Qualtrics does not cite any part of the
`specification that describes a fee for the collection of information, demographic or
`otherwise. And we are not persuaded by Qualtrics’ conjecture about possible
`scenarios under which “data gathered by the [claimed] method might be available
`for a fee.” Id. at 30 (citing Ex. 1001 ¶¶ 107–108) (emphasis added). Again, our
`focus is on the claims, which simply recite that user feedback is collected “for
`reporting to an interested party,” without any further restriction. Ex. 1002, 25:51,
`26:63, 27:49–50, 28:56–57. In that regard, we do not discern any claim language
`that gives rise to a fee or other movement of money.
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`In sum, we reject Qualtrics’ narrow reading of the specification and claims.
`The fact that the specification may describe the website tool as capable of being
`used for commercial purposes does not mean that the claims are limited to such
`applications. Rather, as claimed, the website tool is concerned, quite simply, with
`soliciting feedback from website users and the manner in which it is accomplished,
`i.e., by means of a viewable element, or icon, that allows page-specific feedback
`“while the user remain[s] at the particular webpage” and “regardless of user
`scrolling.” Again, the focus of our inquiry is on the claims of the ’805 patent and
`whether they describe performing data processing or other operations used in the
`practice, administration, or management of a financial product or service. See AIA
`§ 18(d)(1). They do not. The claims are of general utility, describing simply a
`website tool that can be used in a wide variety of applications, without any
`particular connection to a financial product or service.
`
`Qualtrics’ position, in essence, would mean that any patent claiming
`something that might have potential application to a financial product or service
`would be eligible for CBM patent review, regardless of its general utility and
`application outside of finance. We are not persuaded that Qualtrics’ position is
`consistent with the statutory language, which requires us to focus on what is
`recited by the claims.
`
`IV. CONCLUSION
`Based on the present record and particular facts of this proceeding, we
`
`determine that the information presented in the Petition does not establish that the
`’805 patent qualifies as a “covered business method patent” under § 18(d)(1) of the
`AIA. Therefore, we do not institute a covered business method patent review on
`any of the asserted grounds as to any of the challenged claims.
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`CBM2016-00003
`Patent 8,041,805 B2
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`V. ORDER
`In consideration of the foregoing, it is ORDERED that the Petition is denied
`and no trial is instituted.
`
`
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`
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`PETITIONER:
`Robert Steinberg
`Philip X. Wang
`LATHAM & WATKINS LLP
`bob.steinberg@lw.com
`philip.wang@lw.com
`
`
`
`PATENT OWNER:
`Christopher W. Kennerly
`Naveen Modi
`Timothy P. Cremen
`PAUL HASTINGS LLP
`qualtrics-opinionlab-cbm@paulhastings.com
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