IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In re Covered Business Method
`Review of:
`U.S. Patent No. 8,041,805
`Issued: Oct. 18, 2011
`Application No.: 11/458,625
`Filing Date: Jul. 19, 2006
`
`For: System and Method for Reporting to a Website Owner User Reactions
`to Particular Web Pages of a Website
`
`
`FILED VIA PRPS
`
`
`PETITION FOR COVERED BUSINESS METHOD
`REVIEW OF U.S. PATENT NO. 8,041,805
`
`
`
`
`
`

`
`Petition for Covered Business Method Review of USPN 8,041,805
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`REQUIREMENTS FOR PETITION FOR COVERED BUSINESS
`METHOD REVIEW ........................................................................................ 1
`
`A.
` Grounds for Standing (37 C.F.R. § 42.304(a)) ..................................... 1
`Notice of Lead and Backup Counsel and Service Information ............. 2
`B.
`
`Notice of Real-Parties-in-Interest (37 C.F.R. § 42.8(b)(1)) .................. 2
`C.
`
` Notice of Related Matters (37 C.F.R. § 42.8(b)(2)) .............................. 2
`D.
`Fee for Covered Business Method Review ........................................... 4
`E.
`
`Proof of Service ..................................................................................... 4
`F.
`
`
`III.
`
`IDENTIFICATION OF CLAIMS BEING CHALLENGED
`(§42.304(B)) .................................................................................................... 4
`
`IV. OVERVIEW OF THE ’805 PATENT ............................................................ 4
`
`A.
`B.
`
`The Patent Describes a Website Response Measurement Tool ............ 4
`The User Feedback Tool Is Used for Improving the
`Effectiveness of Website Marketing and Customer
`Communications and Services, And Can Be Applied to
`Commercial Transactions. ..................................................................... 6
`
`V.
`
`CLAIM CONSTRUCTION .......................................................................... 11
`
`A.
` Applicable Law ................................................................................... 11
`Construction of Claim Terms .............................................................. 13
`B.
`
`1.
`“user-selectable element” and “element” ................................. 13
`2.
`“solicit” ..................................................................................... 15
`3.
`“page-specific user feedback concerning the particular
`web page” .................................................................................. 15
`“as a whole” .............................................................................. 17
`
`4.
`
`VI. PERSON HAVING ORDINARY SKILL IN THE ART ............................. 18
`
`VII. THE ’805 PATENT IS A COVERED BUSINESS METHOD
`PATENT ........................................................................................................ 18
`
`
`
`A.
`1.
`
`The ’805 Patent Is Directed to a Financial Product or Service ........... 20
`The ’805 Patent can be applied to commercial transactions,
`which is directly a financial activity. .................................................. 22
`
`
`
`
`
`

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`
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`Petition for Covered Business Method Review of USPN 8,041,805
`
`2.
`
`3.
`
`4.
`B.
`
`1.
`
`2.
`
`The ’805 Patent is directed to a survey tool for improving the
`effectiveness of websites for marketing, customer interfaces,
`usability, and customer communications. ........................................... 24
`The ’805 Patent is also directed to an evaluation tool used by
`investors to measure the value of websites. ........................................ 31
`All Claims of the ’805 Patent Are CBM-Eligible ............................... 34
`The ’805 Patent Is Not Directed to a Technological Invention .......... 34
`The patent includes only generic technology components that
`were well-known in the art. ................................................................. 35
`The patent does not solve a technical problem with a technical
`solution. ............................................................................................... 38
`
`VIII. THE CHALLENGED CLAIMS ARE UNPATENTABLE UNDER 35
`U.S.C. § 101 ................................................................................................... 39
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`J.
`
`K.
`
`
`
`The Legal Standard Under 35 U.S.C. § 101 ....................................... 39
`Claims 1 and 10 Are Unpatentable ..................................................... 42
`Claims 2 and 11 Are Unpatentable ..................................................... 55
`Claims 3 and 12 Are Unpatentable ..................................................... 56
`Claims 4 and 13 Are Unpatentable ..................................................... 57
`Claims 5 and 14 Are Unpatentable ..................................................... 58
`Claims 6 and 15 Are Unpatentable ..................................................... 58
`Claims 7 and 16 Are Unpatentable ..................................................... 59
`Claims 8 and 17 Are Unpatentable ..................................................... 60
`Claim 9 Is Unpatentable ...................................................................... 60
`Claims 18–33 Are Unpatentable ......................................................... 61
`
`IX. CONCLUSION .............................................................................................. 61
`
`
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`
`ii
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`Petition for Covered Business Method Review of USPN 8,041,805
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`EXHIBIT LIST
`
`Exhibit Description
`
`1001 Declaration of John Chisholm in Support of Petition for Covered Method
`Review of U.S. Patent No. 8,041,805 (“Chisholm Decl.”)
`
`1002 U.S. Patent No. 8,041,805, entitled System and Method for Reporting to
`a Website Owner User Reactions to Particular Web Pages of a Website,
`and issued on Oct. 18, 2011 (“’805 Patent”)
`
`1003
`
`File History for U.S. Patent No. 8,041,805 (“’805 File History”)
`
`1004 Curriculum Vitae of John Chisholm
`
`1005 Excerpts of Microsoft Press Computer Dictionary (1997)
`
`1006
`
`Scott E. Sampson, “Employing Internet Technologies to Gather
`Customers’ Quality Perceptions,” presented and published at the
`November 1997 annual meeting of the Decision Sciences Institute
`(“Sampson 1997”)
`
`1007
`
`Scott E. Sampson, “Gathering Customer Feedback via the Internet:
`Instruments and Prospects,” Industrial Management & Data Systems
`(vol. 2, 1998) (“Sampson 1998”)
`
`1008 HTML 4.0 Specification (April 24, 1998)
`
`1009 Hoagland website (July 10, 1998)
`
`1010 Citibank.com website (January 4, 1997)
`
`1011 Cisco.com website (December 20, 1996)
`
`1012
`
`iMall.com website (October 26, 1996)
`
`1013 BYTE.com website (December 20, 1996)
`
`1014
`
`John Pletz, “Call it the Eureka Index” (June 25, 2012)
`
`1015 Advertising Research Foundation Brochure (October 1998) (“ARF
`Brochure”)
`
`iii
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`

`
`
`1016
`
`1017
`
`Petition for Covered Business Method Review of USPN 8,041,805
`
`“Building Client Loyalty Yields Strong ROI for Major Financial Services
`Provider” (April 2004)
`
`John Chisholm, “Applying Customer, Market, and Workforce
`Intelligence in Mergers & Acquisitions” (January 23, 2005)
`
`1018
`
`File History for U.S. Patent No. 6,421,724 (“’724 File History”)
`
`1019 CustomerSat.com website, as of May 26, 1998 (“CustomerSat”)
`
`1020 Excerpts of PERL 5 by Example, by David Medinets, published 1996
`(“Medinets”)
`
`1021 U.S. Patent No. 6,421,724, entitled Web Site Response Measurement
`Tool, and issued on Jul. 16, 2002 (“’724 Patent”)
`
`Jeff Sengstack, “Fearless Feedback,” NewMedia (May 5, 2000)
`
`“OpinionLab Expands Integration of Customer Feedback with Web
`Analytics to Drive Actionable Insights” (Mar. 30, 2010)
`
`1022
`
`1023
`
`
`
`iv
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`

`
`Petition for Covered Business Method Review of USPN 8,041,805
`
`I.
`
`INTRODUCTION
`
`Petitioner Qualtrics LLC (“Petitioner” or “Qualtrics”), in accordance with 35
`
`U.S.C. § 321 and 37 C.F.R. 42.300, requests covered business method review of all
`
`claims 1–33, of U.S. Patent No. 8,041,805, titled “System and Method for
`
`Reporting to a Website Owner User Reactions to Particular Web Pages of a
`
`Website” (“’805 Patent”). According to USPTO records, the ’805 Patent is
`
`currently assigned to OpinionLab, Inc. (“Patent Owner” or “OpinionLab”). A copy
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`of the ’805 Patent is provided as Ex. 1002. The corresponding File History is
`
`provided as Ex. 1003.
`
`II. REQUIREMENTS FOR PETITION FOR COVERED BUSINESS
`METHOD REVIEW
` Grounds for Standing (37 C.F.R. § 42.304(a))
`The ’805 Patent is a covered business method patent for the reasons set forth
`
`A.
`
`in Section VII below. Petitioner certifies that it meets the eligibility requirements
`
`of 37 C.F.R. § 42.302, because Petitioner has been sued for infringement of the
`
`’805 Patent in the matter OpinionLab, Inc. v. Qualtrics Labs, Inc. et al., 1:13-cv-
`
`01574 (N.D. Ill.) and because Petitioner is not barred or estopped from requesting
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`covered business method review of all claims 1–33 of the ’805 Patent on the
`
`grounds identified in this petition.
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`

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`Petition for Covered Business Method Review of USPN 8,041,805
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`
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`B.
`
` Notice of Lead and Backup Counsel and Service Information
`
`Lead Counsel
`Robert Steinberg (Reg. No. 33144)
`
`Backup Counsel
`Neil A. Rubin (Reg. No. 67030)
`
`Bob.Steinberg@lw.com
`
`Neil.Rubin@lw.com
`
`Postal & Hand-Delivery Address:
`
`Postal & Hand-Delivery Address:
`
`Latham & Watkins LLP
`
`Latham & Watkins LLP
`
`355 South Grand Avenue
`
`355 South Grand Avenue
`
`Los Angeles, CA 90071-1560
`
`Los Angeles, CA 90071-1560
`
`213.485.1234
`
`213.891.8763 (Fax)
`
`213.485.1234
`
`213.891.8763 (Fax)
`
`
`Under 37 C.F.R. § 42.10(b), a Power of Attorney accompanies this petition.
`
`C.
`
` Notice of Real-Parties-in-Interest (37 C.F.R. § 42.8(b)(1))
`The real-parties-in-interest are Qualtrics, LLC and Qualtrics Labs, Inc. No
`
`other party exercised or could have exercised control over this petition; no other
`
`party funded or directed this petition. See Office Patent Trial Practice Guide, 77
`
`Fed. Reg. 48759-60.
`
` Notice of Related Matters (37 C.F.R. § 42.8(b)(2))
`D.
`The ’805 Patent was asserted by OpinionLab in OpinionLab, Inc. v.
`
`Qualtrics Labs, Inc. et al., 1:13-cv-01574 (N.D. Ill.) and OpinionLab, Inc. v.
`
`iPerceptions Inc. et al., 1:12-cv-05662 (N.D. Ill.).
`
`2
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`

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`Petition for Covered Business Method Review of USPN 8,041,805
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`
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`The ’805 Patent was also the subject of Petition for Inter Partes Review of
`
`U.S. Patent No. 8,041,805 (Case No. IPR2014-00366) in which claims 1, 2, 5, 8,
`
`10, 11, 14, 17–19, 22, 25–27, 30 and 33 were challenged. The Board determined
`
`that these challenged claims had not been proven to be unpatentable by a
`
`preponderance of the evidence. Qualtrics has filed a notice of appeal to the Federal
`
`Circuit in this proceeding.
`
`According to USPTO records, the ’805 patent is a continuation of U.S.
`
`Patent No. 7,085,820, which is in turn a continuation-in-part of U.S. Patent No.
`
`6,421,724 (the “’724 Patent”). The ’724 Patent was the subject of Petition for Inter
`
`Partes Review of U.S. Patent No. 6,421,724 (Case No. IPR2014-00314). The
`
`Board declined to institute Inter Partes Review in that proceeding. The ’724 Patent
`
`is also the subject of Petition for Covered Business Method Review of U.S. Patent
`
`No. 6,421,724 (Case No. CBM2015-00164). That proceeding is currently pending
`
`before the Board. The ’724 Patent is assigned to OpinionLab and has been asserted
`
`in the above-captioned litigation.
`
`Patents related to the ’805 Patent are the subject of completed Inter Partes
`
`Reviews: Petition for Inter Partes Review of U.S. Patent No. 7,085,820 (Case No.
`
`IPR2014-00406); Petition for Inter Partes Review of U.S. Patent No. 6,606,581,
`
`which is a continuation-in-part of the ’724 Patent (Case No. IPR2014-00356);
`
`Petition for Inter Partes Review of U.S. Patent No. 7,370,285 (Case No. IPR2014-
`
`3
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`

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`Petition for Covered Business Method Review of USPN 8,041,805
`
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`00420); Petition for Inter Partes Review of U.S. Patent No. 8,024,668 (Case No.
`
`IPR2014-00421), which is a continuation of U.S. Patent No. 7,370,285. Each of
`
`these patents is assigned to OpinionLab and has been asserted in the above-
`
`captioned litigation. In each of these four Inter Partes Review proceedings, the
`
`Board found that every challenged claim was invalid. OpinionLab has filed a
`
`notice of appeal to the Federal Circuit in each of these proceedings.
`
`According to USPTO records, no patents or patent applications claim the
`
`benefit of the priority of the filing date of the ’805 Patent.
`
`E.
`
`Fee for Covered Business Method Review
`
`
`The Director is authorized to charge the fee specified by 37 C.F.R.
`
`§ 42.15(b) to Deposit Account No. 506269.
`
`F.
`
`Proof of Service
`
`
`Proof of service of this petition on the patent owner at the correspondence
`
`address of record for the ’805 Patent is provided in Attachment A.
`
`III.
`
`IDENTIFICATION OF CLAIMS BEING CHALLENGED (§42.304(B))
`
`All claims 1–33 of the ’805 Patent (“Challenged Claims”) are unpatentable
`
`under 35 U.S.C. § 101 because each claims a patent-ineligible abstract idea.
`
`IV. OVERVIEW OF THE ’805 PATENT
`A. The Patent Describes a Website Response Measurement Tool
`The ’805 Patent describes software and a method “for measuring page-
`
`specific user feedback concerning each of a plurality of particular web pages[.]”
`
`4
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`Petition for Covered Business Method Review of USPN 8,041,805
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`(’805 Patent, Abstract.) While acknowledging the pre-existing use of website user
`
`feedback systems, the specification claims that “[p]rior techniques that do solicit
`
`subjective user reactions do so with respect to transactions carried out using the
`
`website, but not with respect to the website itself.” ’805 Patent at 1:38–41.
`
`More specifically, the ‘805 Patent specification discloses the use of a “user-
`
`selectable element,” such as the exemplary icon disclosed in the specification:
`
`,
`
`that is viewable on a web page. Id. at 11:59–12:6 & Fig. 2. “[A]ny suitable
`
`stationary or animated icon 50 may be used[.]” Id. at 12:14–15. This “element”
`
`may be selected by a website user (using a mouse pointer), after which software
`
`associated with the element presents a second “element” (e.g., “pop-up” window),
`
`through which the user can enter feedback in the form of one or more ratings
`
`and/or open-ended comments, e.g.:
`
`
`
`
`Id. at 12:40–
`13:48 & Fig. 3
`
`
`
`Id. at 13:60–
`14:3 & Fig. 4
`
`
`
`Id. at 14:11–
`15:27 & Fig. 5
`
`Id. at 15:51–59 & Fig. 6
`
`
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`The user’s selection(s) are then stored for reporting purposes. Id. at 15:28–
`
`31. User reactions can be obtained concerning various aspects of a web page. The
`
`web site owner may then use the user selection data to identify specific aspects of a
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`5
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`Petition for Covered Business Method Review of USPN 8,041,805
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`web page to be improved. Id. at 9:14–19.
`
`B.
`
`The User Feedback Tool Is Used for Improving the Effectiveness
`of Website Marketing and Customer Communications and
`Services, And Can Be Applied to Commercial Transactions.
`
`As the ’805 specification explains, “Many website owners desire
`
`information concerning usage of their websites.” ’805 Patent at 1:23–24. For
`
`example: “an Internet website owner might use a third party service to track the
`
`number of users that visit its website, the number of “clicks” these users
`
`collectively perform (using their mouse pointers) while visiting the website, and
`
`how long these users stay at the website.” Id. at 1:24–28.
`
`The ’805 specification recognizes that the website owner can use this
`
`feedback to measure the effectiveness of the website. For example: “Using this
`
`objective information, the website owner may determine that its website is not
`
`attracting a sufficient number of users or has been ineffective at keeping the
`
`interest of users once they arrive.” Id. at 1:29–32. The specification also recognizes
`
`that the website owner can use this feedback to improve the effectiveness of its
`
`website and business. As the specification explains: “The website owner may react
`
`accordingly to improve its websites and, possibly, the success of its associated
`
`business operations.” Id. at 1:32–33.1
`
`Specifically, user reactions can be obtained concerning various aspects of a
`
`1 Emphasis is added throughout this Petition, unless otherwise indicated
`
`6
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`Petition for Covered Business Method Review of USPN 8,041,805
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`web page, such as content, design and usability of the web page. Id. at 6:9–12;
`
`14:21–25. The ’805 Patent compiles this information into reports for the website
`
`owner. According to the ’805 Patent, the reports may include an overall rating to
`
`allow the website owner to gauge the effectiveness of the website. Describing an
`
`embodiment, the specification explains: “An overall rating assigned to website 26
`
`in the manner described above, according to subjective ratings for pages 28 of the
`
`website 26, may provide owner 12 with more meaningful information about the
`
`effectiveness of website 26 than collecting subjective ratings that each concern
`
`only website 26 as a whole.” Id. at 19:49–54.
`
`The ’805 Patent also recognizes that the ’805 claims and alleged invention
`
`may be applied to the applications of business-to-consumer commercial
`
`transactions and business-to-consumer commercial transactions, as well as market
`
`research and usability testing. As the specification states:
`
`Although embodiments of the present invention are described
`primarily in connection with the measurement and reporting of
`subjective user reactions to one or more particular pages of one or
`more websites, the present invention may be similarly applied in
`connection with polling, surveying, product development research,
`market research, usability testing, business-to-consumer (B2C)
`commercial transactions, business-to-business (B2B) commercial
`transactions, or any other suitable activity for which the measurement
`and reporting of user responses may be desirable. Those skilled in the
`
`7
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`Petition for Covered Business Method Review of USPN 8,041,805
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`
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`art will readily appreciate the application of the present invention to
`such activities based on these figures, descriptions, and claims.
`
`Id. at 4:5–17.
`
`The ’805 specification also describes collecting user demographics to better
`
`measure user reaction. As the specification explains, “user reaction measurement
`
`tool . . . collect[s] appropriate demographic or any other suitable information
`
`associated with user[.]” Id. 6:28–31. “Using such demographic information, the
`
`reactions of user 16 to pages 28 may be categorized and analyzed to obtain further
`
`information that may be valuable to owner 12 or to others.” Id. at 6:31–34. Further,
`
`dependent claims 7, 16, 24, and 32 of the ’805 Patent recite that the software
`
`receives “demographic information from the user.” The collection and reporting of
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`demographic information allows the web site owner to associate user demographic
`
`information with a user’s feedback data and thus tailor a web site to target a
`
`specific market segment based on demographic information.
`
`Related to this purpose, the patent describes a user registration system for
`
`collecting user demographics. “Fig. 7. illustrates an exemplary registration page 80
`
`that may be sent to user 16 in response to user 16 providing a general or specific
`
`reaction to at least one page 28 of a website 26.” Id. at 15:60–63.
`
`8
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`Petition for Covered Business Method Review of USPN 8,041,805
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`
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`In addition to basic information such as name, the demographic information
`
`may include various types of marketing information, including: “(5) a gender; (6)
`
`an age or age range; (7) a job title, position, profession, industry, or other
`
`employment information; (8) an employment status (for example, full-time, part-
`
`time, student, or retired); (9) number of persons in household; (10) a housing status
`
`(for example, homeowner or renter); (11) a highest level of education; (12)
`
`personal or household income or income range; [and] (13) information concerning
`
`one or more activities of user 16, such as computer usage patterns and
`
`preferences.” Id. at 16:6–14.
`
`This demographic information allows the web site to improve the website
`
`for particular users. As the specification explains: “Owner 12 may subsequently
`
`modify one or more pages 28 of website 26 according to the subjective ratings or
`
`other user reactions received from users 16 (and possibly their demographic
`
`9
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`Petition for Covered Business Method Review of USPN 8,041,805
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`profiles), as reflected in the reports, to improve the pages 28 or better tailor the
`
`pages 28 for particular categories of users 16.” Id. at 9:14–19.
`
`The ’805 claims are all directed to the user reaction measurement tool
`
`discussed in the specification. Independent claim 1 recites software to “receive the
`
`page-specific user feedback concerning the particular web page for reporting to an
`
`interested party “ where “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
`
`site.” Independent claims, 10, 18, and 26, are similar to claim 1.
`
`Dependent claims 2, 11, 19, and 27 recite that the software is “incorporated
`
`into software of each of the plurality of particular web pages.” Dependent claims 3,
`
`12, 20, and 28 recite that the software “comprises a call to a directory containing a
`
`script.” Dependent claims 4, 13, 21, and 29 recite that the software is “incorporated
`
`into a web browser of the user.” Dependent claims 5, 14, 22, and 30 recite that
`
`each subjective page subjective rating is about “the web page as a whole” or “at
`
`least one characteristic” of the web page as whole. Dependent claims 6, 15, 23, and
`
`31 recite that the page-specific user feedback comprises “a user response to an
`
`explicit question presented to the user.” Dependent claims 7, 16, 24, and 32 recite
`
`that the software receives “demographic information from the user.” Dependent
`
`claims 8, 17, 25, and 33 recite that “the plurality of particular web pages comprises
`
`10
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`Petition for Covered Business Method Review of USPN 8,041,805
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`substantially all web pages of the website.” Dependent claim 9 recites one or more
`
`computer systems as the host, associated with the interested party, and the user.
`
`V. CLAIM CONSTRUCTION2
`
`A.
`
` Applicable Law
`In deciding whether to institute covered business method review, “A claim
`
`in an unexpired patent shall be given its broadest reasonable construction in light
`
`of the specification of the patent in which it appears.” 37 C.F.R. § 42.300(b). This
`
`claim construction standard is different from – and broader than – that applied in
`
`district court. See Versata Dev. Group v. SAP America, Inc., 793 F.3d 1306, 1327–
`
`1328 (Fed. Cir. 2015).
`
`Under the broadest reasonable interpretation, “claims should always be read
`
`in light of the specification and teachings in the underlying patent. Microsoft Corp.
`
`v. Proxyconn, Inc. No. 2014-1532, -1543, Slip Op. at 7 (Fed. Cir. June 16, 2015).
`
`
`2 Petitioner expressly reserves the right to challenge one or more claims (and claim
`
`terms) of the ’805 Patent for failure to satisfy the requirements of 35 U.S.C. § 112,
`
`even though Petitioner does not challenge the claims on those grounds in this
`
`proceeding. Nothing in this Petition, or the constructions provided here, should be
`
`construed as waiver of such challenge, or agreement that the requirements of 35
`
`U.S.C. § 112 are met with respect to any claim of the ’805 Patent.
`
`11
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`Petition for Covered Business Method Review of USPN 8,041,805
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`“The PTO should also consult the patent’s prosecution history in proceedings in
`
`which the patent has been brought back to the agency for a second review.” Id.
`
`“Even under the broadest reasonable interpretation, the Board’s construction
`
`cannot be divorced from the specification and the record evidence and must be
`
`consistent with the one that those skilled in the art would reach.” Id.
`
`To the extent there is any ambiguity regarding the “broadest reasonable
`
`construction” of a claim term, the ambiguity should be resolved in favor of the
`
`broader construction absent amendment by the patent owner. Final Rules, 77 Fed.
`
`Reg. at 48699 (“[T]he broader standard serves to identify ambiguities in the claims
`
`that can then be clarified through claim amendments.”). Consistent with the patent
`
`owner’s responsibility to clarify ambiguous terms, “the Office may take into
`
`consideration inconsistent statements made by a patent owner about a claim, such
`
`as those submitted under 35 U.S.C. § 301(a), when applying the ‘broadest
`
`reasonable interpretation’ standard.” Id. Thus, while not controlling, claim
`
`constructions offered by a patent owner in related litigation (under the narrower
`
`standard applicable in district court) are relevant to the “broadest reasonable
`
`construction” applicable here. See, e.g., SAP America, Inc. v. Versata Dev. Group,
`
`Inc., CBM2012-00001, Paper 36 at 8–9 (Jan. 9, 2013) (adopting petitioner’s
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`proposed construction, in part, because it was “consistent with [patentee’s]
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`proposed construction in the related district court proceeding”).
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`12
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`Petition for Covered Business Method Review of USPN 8,041,805
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`
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`B.
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` Construction of Claim Terms
`OpinionLab has adopted constructions of several ’805 Patent claim terms in
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`related litigation. Absent amendment by OpinionLab (or disclaimer that its
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`construction(s) in related litigation are not “reasonable” under the broader standard
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`applicable here), the claim constructions adopted for purposes of these proceedings
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`should be, at a minimum, as broad as the corresponding constructions adopted by
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`OpinionLab. See Final Rules, 77 Fed. Reg. at 48699.
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`Each of the constructions offered below matches the constructions proposed
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`by Petitioner in its Petition for Inter Partes Review of U.S. Patent No. 8,041,805
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`(Case No. IPR2014-00366). OpinionLab did not offer any alternative construction
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`for any of these terms in that proceeding. See Final Written Decision, Case No.
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`IPR2014-00366, Paper 45 at 5. Further, the Board determined that no term required
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`construction. Id. (“We conclude that the claim terms do not require an express
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`construction in order to analyze the challenged claims relative to the asserted prior
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`art.”).
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`All claim terms not specifically addressed in this section have been accorded
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`their broadest reasonable interpretation as understood by one of ordinary skill in
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`the art and consistent with the specification of the ’805 Patent.
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`1.
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`“user-selectable element” and “element”
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`The term “user-selectable element” is used in independent claims 1 and 18
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`13
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`Petition for Covered Business Method Review of USPN 8,041,805
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`(and related dependent claims), each of which claims “a user-selectable element
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`viewable on each of a plurality of particular web pages . . . solicit[ing] page-
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`specific user feedback concerning the particular web page . . . .” Independent
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`claims 10 and 26 (and related dependent claims) similarly claim both a “first
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`element” and a “second element.”
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`According to the specification, a “user-selectable element” (also claimed as
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`a “first element”) is an icon viewable on the user’s screen. See, e.g., ‘805 Patent at
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`12:14–15 (“[A]ny suitable stationary or animated icon 50 may be used to represent
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`the association of tool 30 with page 28 . . . without departing from the intended
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`scope of the present invention.”); see also id. at 11:59–12:6 & Fig. 2. The
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`specification does not further define the term icon, but it provides an example of a
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`“first (user-selectable) element”:
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`, (id. at 11:59–12:6 & Fig. 2), and several
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`examples of a “second element.” See id. at 12:40–13:48 & Fig. 3; 13:60–14:3 &
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`Fig. 4; 14:11–15:27 & Fig. 5; 15:51–59 & Fig. 6. Each of these exemplary
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`“elements” (icons) comprises one or more graphical images, and some also include
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`text. See also id. at 7:45–62; 11:59–12:22; 22:15–33; Ex. 1005 (Microsoft Press
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`Computer Dictionary (1997)) at 243 (3) (“icon . . . A small image displayed on the
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`screen to represent an object that can be manipulated by the user . . . .”).
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`Accordingly, Petitioner’s proposed broadest reasonable construction of
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`“element” is “graphical image(s), optionally with text,” and Petitioner’s proposed
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`14
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`Petition for Covered Business Method Review of USPN 8,041,805
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`broadest reasonable construction of “user-selectable element” is “graphical
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`image(s), optionally with text, which may be selected by the user.” See Declaration
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`of John Chisholm (“Chisholm Decl.” attached as Ex. 1001) at ¶¶ 71–77.
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`“solicit”
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`2.
`The term “solicit[ing]” is used in each of the challenged independent claims.
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`See Claims 1 & 18 (“user-selectable element . . . solicit[ing] page-specific user
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`feedback concerning the particular web page”); Claims 10 & 26 (“first element . . .
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`solicit[ing] page-specific user feedback concerning the particular web page . . .
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`second element . . . soliciting one or more page-specific subjective ratings of the
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`particular web page and one or more associated page-specific open-ended
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`comments concerning the particular web page”).
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`
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`The term “solicit” is not defined in the specification. Petitioner’s proposed
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`broadest reasonable construction of “solicit” is “invite,” which accords with its
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`plain and ordinary meaning in light of the specification. See generally ‘805 Patent
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`at 11:59–16:64 & Figs. 4–6; Chisholm Decl. at ¶¶ 78–82.
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`3.
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`“page-specific user feedback concerning the particular web
`page”
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`The term “page-specific user feedback concerning the particular web page”
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`(and related terms regarding what comprises such feedback) is used in each of the
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`challenged independent claims (and related dependent claims). Claim 1 is
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`representative, reciting, inter alia:
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`15
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`Petition for Covered Business Method Review of USPN 8,041,805
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`
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`user-selectable element . . . soliciting page-specific user feedback
`concerning the particular web page . . . receive the page-specific user
`feedback concerning the particular web page . . . 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 . . . .”
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`a.
`Petitioner’s proposed broadest reasonable construction of “page-specific” is
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` “page-specific”
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`“relating to a web page,” which finds support throughout the specification, e.g.:
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`Where appropriate, the phrase ‘reaction to page 28’ is meant to
`include responses to one or more explicit questions concerning page
`28, concerning one or more visual, audible, or other elements of page
`28, or concerning one or more items with which page 28 is logically
`associated . . . . ‘[R]eaction to page 28’ may include responses to any
`explicit question, whether or not the subject of the question is related
`in some manner to page 28.
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`’805 Patent at 5:16–24; see id. at 6:12–17 (“Reactions measured using tool . . . may
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`include responses . . . concerning one or more items with which page 28 is
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`logically associated”); accord id. at 13:13–18; 17:3–7; see also 13:60–14:3 & Fig.
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`4; 15:51–59 & Fig. 6; see Chisholm Decl. at ¶¶ 83–86.
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`b.
`Petitioner believes that “concerning the particular web page” can be given its
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`“concerning the particular web page”
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`
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`plain and ordinary meaning in light of the specification, which (in the context of
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`16
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`Petition for Covered Business Method Review of USPN 8,041,805
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`the challenged claims) equates to “concerning the web page for which user
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`feedback is being collected.” See generally ’805 Patent at 11:59–16:64; Chisholm
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`Decl. at ¶ 87.
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`4.
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`“as a whole”
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`
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`The term “as a whole” is used in dependent claims 5, 14, 22 and 30. (See,
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`e.g., Claim 5 (“each page-specific subjective rating comprises one of: a page-
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`specific subjective rating of the particular web page as a whole; and a specific
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`page-specific subjective rating of at least one characteristic of the particular web
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`page as a whole”).)
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`
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`Petitioner’s proposed broadest reasonable construction of “as a
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`whole” is “overall.”3 This construction is consistent with the ’805 Patent
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`specification and the prosecu