Trials@uspto.gov
`571-272-7822
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` Paper 10
`Entered: July 31, 2014
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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 IPR2014-00366
`Patent 8,041,805 B2
`____________
`
`Before RAMA G. ELLURU, JEREMY M. PLENZLER, GEORGIANNA W.
`BRADEN, and CARL M. DEFRANCO, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`

`

`IPR2014-00366
`Patent 8,041,805 B2
`
`
`I. INTRODUCTION
`
`Qualtrics, LLC, filed a Petition requesting an inter partes review of claims 1,
`
`2, 5, 8, 10, 11, 14, 17-19, 22, 25-27, 30, and 33 of U.S. Patent No. 8,041,805 B2
`
`(“the ’805 patent”). Paper 1 (“Pet.”). Patent Owner, OpinionLab, Inc., filed a
`
`Preliminary Response. Paper 9 (“Prelim. Resp.”). We have jurisdiction under 35
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`U.S.C. § 314(a), which provides that an inter partes review may not be instituted
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`“unless . . . there is a reasonable likelihood that the petitioner would prevail with
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`respect to at least 1 of the claims challenged in the petition.”
`
` After considering the Petition and Preliminary Response, we determine that
`
`Qualtrics has established a reasonable likelihood of prevailing on the claims
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`challenged in the Petition. Accordingly, we institute an inter partes review of
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`claims 1, 2, 5, 8, 10, 11, 14, 17-19, 22, 25-27, 30, and 33 of the ’805 patent.
`
`’805 Patent1
`
`II. BACKGROUND
`
`The ’805 patent is directed to a system and method for reporting user
`
`A.
`
`
`
`reactions, i.e., feedback, to particular web pages of a website. Ex. 1001, 1:16-19.
`
`Typical commercial websites measure a user’s reaction to the website as a whole.
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`Id. at 1:35-56. In contrast, the claimed invention collects and reports user feedback
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`on a page-specific basis by incorporating a “user reaction measurement tool” into
`
`each web page of the website. Id. at 11:59-66. Appearing within a user’s browser
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`window is a “viewable icon” that solicits a user’s subjective reaction about the
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`particular web page. Id. at 11:67–12:6. When the user selects the icon with a
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`mouse pointer, a multi-level rating scale becomes viewable within the browser
`
`
`1 Qualtrics indicates that the ’805 patent is the subject of co-pending cases in
`
`the U.S. District Court for the Northern District of Illinois, captioned OpinionLab,
`Inc. v. Qualtrics Labs, Inc., 1:13-cv-01574; and OpinionLab, Inc. v. iPerceptions
`Inc., 1:12-cv-05662. Pet. 2.
`
`
`
`2
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`

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`IPR2014-00366
`Patent 8,041,805 B2
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`window. Id. at 12:40-46. The rating scale permits the user to rate his/her
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`subjective reaction to a particular web page by moving the mouse pointer over a
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`desired rating and clicking the mouse button. Id. Software associated with the
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`icon operates to collect and store the user’s reaction in a database for subsequent
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`reporting to a website owner. Id. at 2:6-18. A website owner can generate a report
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`for analyzing user reaction and feedback related to particular web pages of the
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`website. Id. at 15:27–21:54, Figs. 8A, 8B, 9. The report allows the website owner
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`to assess the success of each web page in the eyes of the user community. Id. at
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`13:49-52.
`
`B.
`
`Illustrative Claim
`
`Of the challenged claims, claims 1, 10, 18, and 26 are independent. Claim 1
`
`is illustrative of the claimed invention and recites:
`
`One or more computer-readable non-transitory storage media
`1.
`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
`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
`
`
`
`3
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`

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`IPR2014-00366
`Patent 8,041,805 B2
`
`
`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. 1001, 25:40–26:3.
`
`
`
`Independent claim 10 includes limitations similar to those of claim 1, but
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`recites the user-selectable element in terms of a “first element” and adds the
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`recitation that feedback occurs through a “second element” displayed in response
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`to a user’s selection of the first element. See Prelim. Resp. 6. Independent claims
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`18 and 26 recite limitations similar to those of claims 1 and 10, respectively,
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`except they cover a method rather than software. See Ex. 1001, 27:41, 28:31.
`
`C.
`
`Evidence of Record
`
`
`
`Qualtrics relies upon the following prior art as the basis for its assertion
`
`against the challenged claims of the ’805 patent.2
`
`
`
`References
`
`Patents/Printed Publications
`
`Date
`
`Exhibit
`
`May 26, 1998 1003
`
`CustomerSat 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).
`
`
`2 Qualtrics also proffers the Declaration of John Chisholm, who founded the
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`online survey research company that Qualtrics alleges as having published the
`CustomerSat reference. Ex. 1005 ¶¶ 13, 27.
`
`
`
`4
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`

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`IPR2014-00366
`Patent 8,041,805 B2
`
`
`Medinets
`
`DAVID MEDINETS, PERL5 BY EXAMPLE:
`THE EASIEST WAY TO LEARN HOW TO
`PROGRAM, Que Corp.
`HTML Spec World Wide Web Consortium (W3C),
`HTML 4.0 Specification, Dave Raggett
`et al. (ed.).
`
`
`
`
`
`D.
`
`Asserted Grounds of Unpatentability
`
`1996
`
`1004
`
`Apr. 24, 1998 1014
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`Qualtrics asserts the following grounds in challenging the patentability of
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`claims 1, 2, 5, 8, 10, 11, 14, 17-19, 22, 25-27, 30, and 33 of the ’805 patent. Pet. 3.
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`
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`Statutory Ground Basis
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`Challenged Claims
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`§ 102
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`§ 103
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`§ 103
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`CustomerSat
`
`CustomerSat and Medinets
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`1, 2, 5, 8, 10, 11, 14, 17-19,
`22, 25-27, 30, and 33
`
`1, 2, 5, 8, 10, 11, 14, 17-19,
`22, 25-27, 30, and 33
`
`CustomerSat, Medinets, and
`HTML Spec
`
`1, 2, 5, 8, 10, 11, 14, 17-19,
`22, 25-27, 30, and 33
`
`
`
`III. ANALYSIS
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`A.
`
`Claim Construction
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`In an inter partes review, claim terms are given their broadest reasonable
`
`interpretation in light of the specification in which they appear and the
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`understanding of one skilled in the relevant art. See 37 C.F.R. § 42.100(b). With
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`that standard in mind, we have considered the claim terms that the parties identify
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`for interpretation.3 See Pet. 6-14; Prelim. Resp. 22-23. At this stage of the
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`proceeding, we determine that no particular claim terms require an express
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`construction.
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`3 We note that, for purposes of this proceeding, OpinionLab does not dispute
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`the constructions proposed by Qualtrics. Prelim. Resp. 23.
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`
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`5
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`Patent 8,041,805 B2
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`B.
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`Asserted Grounds of Obviousness
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`
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`Qualtrics asserts two grounds of obviousness for institution. First, Qualtrics
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`challenges claims 1, 2, 5, 8, 10, 11, 14, 17-19, 22, 25-27, 30, and 33 on the basis
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`that the claimed invention would have been obvious over the combined teachings
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`of CustomerSat and Medinets. Pet. 3, 30-43. Additionally, Qualtrics challenges
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`the same set of claims on the basis that the claimed invention would have been
`
`rendered obvious by the HTML Spec in combination with CustomerSat and
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`Medinets. Id. at 43-45.
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`
`
`1.
`
`CustomerSat and Medinets
`
`With respect to Qualtrics’s challenge based on CustomerSat and Medinets,
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`we note that Qualtrics relies solely on CustomerSat for teaching the limitation of
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`the user selectable (first) element “remain[ing] viewable in the browser window
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`. . . regardless of user scrolling.” See Pet. 42-43. Qualtrics does not persuade us
`
`that CustomerSat teaches this limitation, which is found in each of the independent
`
`claims. Although Qualtrics contends that a skilled artisan would have understood
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`CustomerSat’s “Feedback” and “Pop!Up” icons as remaining stationary during
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`user scrolling, Qualtrics’s only evidence of such an understanding is the
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`conclusory statement by its declarant that CustomerSat’s icon “could be configured
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`to remain stationary.” See Pet. 40 (citing Ex. 1005 ¶ 195) (emphasis added).
`
`Speculation that something “could be configured” in the manner of the claimed
`
`invention, without more, does not amount to a teaching that it “would have been
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`obvious” to do so. See 35 U.S.C. § 103. Indeed, the declarant’s illustration of a
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`“Floating Survey Button” on what appears to be one of CustomerSat’s web pages
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`is not supported by the CustomerSat reference of record (i.e., the actual basis of the
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`challenge), which neither shows nor mentions a “floating” survey button.
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`Compare Ex. 1003 at 7 with Ex. 1005 ¶ 195. As such, based on the current record,
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`Patent 8,041,805 B2
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`Qualtrics does not persuade us that CustomerSat teaches or suggests an icon that
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`“remains viewable . . . regardless of user scrolling.” See, e.g., Ex. 1003 at 3, 7.
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`Thus, we deny Qualtrics’s challenge that CustomerSat and Medinets would have
`
`rendered obvious the claimed invention. See Pet. 43-45.
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`2.
`
`CustomerSat, Medinets, and the HTML Spec
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`
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`As for Qualtrics’s additional challenge based on the HTML Spec in
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`combination with CustomerSat and Medinets, OpinionLab argues that we should
`
`decline institution, because the references fail to teach two “material” limitations
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`found in each of the challenged independent claims. Prelim. Resp. 25-26, 47-53.
`
`First, OpinionLab contends that neither CustomerSat nor Medinets, either alone or
`
`in combination, teaches receiving page-specific user feedback “while the user
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`remain[s] at the particular web page” being evaluated. Id. at 25; see also id. at 47-
`
`51. According to OpinionLab, in CustomerSat and Medinets, the “user-selectable”
`
`or “first” element and “the claimed mechanism for providing user feedback are on
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`entirely different web pages.” Id. at 25; see also id. at 47 (arguing that Medinets
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`and CustomerSat both disclose entering feedback on a “separate page”). We
`
`disagree. Rather, based on the current record, we are persuaded that
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`CustomerSat’s Pop!Up icon enables a user to remain “at a particular webpage”
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`while entering feedback about that web page in a different window, as required by
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`each of the independent claims. See Ex. 1001, 25:53-54 (emphasis added).
`
`
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`For instance, CustomerSat discloses that “By the time you have read this far,
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`a Pop!Up survey invitation should have appeared on your screen. Give it a try!”
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`Ex. 1003 at 7. That the Pop!Up invitation appears on the web page being viewed
`
`suggests that the viewer can respond to the survey in the pop-up window while
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`remaining at the web page. Indeed, we are persuaded a skilled artisan would have
`
`understood CustomerSat’s disclosure of a Pop!Up as a smaller window viewable
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`7
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`IPR2014-00366
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`within a webpage. See Ex. 1005 ¶ 172 (“as a rule, pop-ups were displayed on the
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`web page from which they were launched and were smaller than the page itself (in
`
`order to allow the visitor to view the page while responding to the pop-up)”).
`
`Medinets and the HTML Spec likewise instruct a skilled artisan on the ability to
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`view a smaller window within a larger window of a webpage. For example,
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`Medinets teaches that “[y]ou can have more than one form per HTML document”
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`(Ex. 1004 at 439), and the HTML Spec teaches “HTML frames” that “offer
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`designers a way to keep certain information visible, while other views are scrolled
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`through or replaced . . . within the same window” (Ex. 1014 at 193). As such, for
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`purposes of institution, we are persuaded that CustomerSat, when combined with
`
`Medinets and the HTML Spec, would have rendered obvious the limitation of
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`receiving user feedback while the user “remains at the particular web page” being
`
`evaluated. See Pet. 38, 43-45.
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`
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`Second, OpinionLab faults the references as lacking any teaching of the
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`ability to identify a particular web page “for which the page-specific user feedback
`
`is notable relative to page-specific user feedback for other particular web pages.”
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`See Prelim. Resp. 25, 51-53. According to OpinionLab, we should decline
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`institution because, although CustomerSat and Medinets may “in cursory fashion”
`
`mention a reporting feature, neither reference teaches “comparing the page-specific
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`feedback across web pages to identify feedback for one particular web page that is
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`notable relative to others.” Prelim. Resp. 52; see also id. at 27, 39-40. We are not
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`persuaded. Specifically, Medinets’s guide to “Perl” software includes a chapter on
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`creating reports that display the data collected from a “Web page” feedback form.
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`Ex. 1004 at 29, 60. As disclosed, the Perl software “stores the feedback
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`information into a database” and allows the webmaster “to track the comments and
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`see which web pages generate the most feedback.” Ex. 1004 at 64. Using the Perl
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`IPR2014-00366
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`software, the webmaster can create basic reports (id. at 29-50) or generate more
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`detail-oriented reports that display various statistics and tables (id. at 57-59). See
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`also Ex. 1005 ¶ 183. But, although we are persuaded that the Perl software is able
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`to report user feedback on a page-specific basis, we are less convinced of its ability
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`to analyze such feedback “relative to” other webpages, as required by independent
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`claims 1 and 19.
`
`
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`Even so, Medinets notifies webmasters of the existence of alternative
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`software programs for performing further analysis of data resulting from user
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`feedback. See, e.g., Ex. 1004 at 65 (“There is no need for you to create Perl scripts
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`to do all of the analyzing. Some programmers have already done this type of work
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`and many of them have made their programs available on the Web for little or no
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`cost”). Given Medinets’s directive that webmasters faced with creating web-page
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`surveys look not only at Perl, but also other software programs for analyzing page-
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`specific feedback, we are persuaded that a skilled artisan would have been led to
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`enhance Medinets’s capability of performing page-specific analysis, by seeking to
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`identify how such analysis may be notable relative to other webpages. See Pet. 39-
`
`40 (citing Ex. 1005 ¶ 192).
`
`
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`In particular, CustomerSat teaches several ways of analyzing survey
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`responses, including “Segmentation,” “Cross-tabs,” and “Correlations.” Ex. 1003
`
`at 7, 25-26, 36; see also Ex. 1005 ¶¶ 184-186. CustomerSat describes
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`segmentation as “examin[ing] results for subsets of respondents,” cross-tabs as
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`“provid[ing] a systematic tabulation and display of results by respondent segment
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`for all choices of all questions of interest,” and correlations as “identify[ing] which
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`attributes are potentially the strongest drivers of overall satisfaction [and] which
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`attributes are most strongly correlated with each other.” Ex. 1003 at 25-26.
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`CustomerSat further explains that survey “[r]esults may be analyzed . . . by
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`respondent sub-group or segment; by cross-tabulation” and that “[a]n important
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`analysis is gauging the correlation between each attribute . . . to identify the
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`attributes that most contribute (or detract from) overall customer satisfaction.” Id.
`
`at 18. These teachings by CustomerSat amount to a way of tabbing and analyzing
`
`survey response data across web pages and comparing such data from one web
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`page “relative to” other web pages. See Ex. 1005 ¶¶ 184-185.
`
`
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`Because CustomerSat and Medinets are similarly concerned with the
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`analysis of website survey responses, and Medinets expressly directs webmasters
`
`faced with analysis of user response data to consider other software programs, we
`
`are persuaded that a skilled artisan would have been led to combine the teachings
`
`of CustomerSat and Medinets to create a report identifying web pages for which
`
`user responses are notable “relative to” other webpages. See Pet. 39-40 (citing Ex.
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`1005 ¶ 192). In addition, we find that such a comparison likely would have been a
`
`matter of common sense. Thus, based on the current record, Qualtrics has
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`sufficiently demonstrated a reasonable likelihood that the combined teachings of
`
`CustomerSat, Medinets, and the HTML Spec satisfy the “reporting” feature of the
`
`claimed invention.
`
`We find persuasive Qualtrics’s summary (and claim chart) of how the
`
`remaining limitations of independent claims 1, 10, 18, and 26 are taught by the
`
`combination of CustomerSat, Medinets, and the HTML Spec, and why a skilled
`
`artisan would have been led to arrive at the claimed invention. See Pet. 30-45, 46-
`
`57. For example, Qualtrics asserts that the HTML Spec teaches “HTML frames”
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`for controlling the display of webpage elements during user scrolling. Id. at 43-45
`
`(citing Ex. 1014 at 193). OpinionLab does not dispute Qualtrics’s reliance on the
`
`HTML Spec as evidence of obviousness, except to argue that the HTML Spec does
`
`not cure the deficiencies with Qualtrics’s reliance on CustomerSat and Medinets.
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`10
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`IPR2014-00366
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`See Prelim. Resp. 56. Nor does OpinionLab dispute Qualtrics’s assertion that a
`
`skilled artisan would have had reason to combine the teaching of the HTML Spec
`
`with those of CustomerSat and Medinets. See id. In any event, the burden remains
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`on Qualtrics. Based on the current record, we are persuaded that the arguments
`
`and evidence presented in Qualtrics’s petition demonstrate a reasonable likelihood
`
`that the combined teachings of CustomerSat, Medinets, and the HTML Spec would
`
`have rendered obvious this limitation of claims 1, 10, 18, and 36. See Pet. 43-45.
`
`
`
`Also, we have considered Qualtrics’s challenge of dependent claims 2, 5, 8,
`
`11, 14, 17, 19, 22, 25, 27, 30, and 33. See Pet. 40-41, 57-60. OpinionLab does not
`
`argue these dependent claims separately from the independent claims, and we are
`
`persuaded that Qualtrics has shown sufficiently that their limitations are taught by
`
`the combination of CustomerSat, Medinets and the HTML Spec. See id.
`
`C.
`
`Asserted Ground of Anticipation
`
`We have considered Qualtrics’s challenge of the claims on the basis of
`
`anticipation by CustomerSat, but find this ground unpersuasive. See Pet. 15-30.
`
`For example, although CustomerSat describes the reporting capability in terms of
`
`analyzing “segments” or “sub-groups” of feedback data, it fails to mention that it
`
`can be done on a “page-specific” basis, as required by the claims. See Ex. 1003 at
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`25-26. While such a capability likely would have been obvious (as discussed
`
`above), anticipation requires identity. As such, we deny Qualtrics’s challenge that
`
`CustomerSat anticipates the claimed invention.
`
`IV. CONCLUSION
`
`Based on the arguments and evidence presented in the Petition, we conclude
`
`that Qualtrics has demonstrated a reasonable likelihood it will prevail in showing
`
`obviousness of challenged claims 1, 2, 5, 8, 10, 11, 14, 17-19, 22, 25-27, 30, and
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`33 of the ’805 patent.
`
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`For the foregoing reasons, it is
`
`V. ORDER
`
`ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of
`
`challenged claims 1, 2, 5, 8, 10, 11, 14, 17-19, 22, 25-27, 30, and 33 of the ’805
`
`patent is hereby instituted on the asserted ground of obviousness over
`
`CustomerSat, Medinets, and the HTML Spec;
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`
`§ 42.4, inter partes review of the ’805 patent shall commence on the entry date of
`
`this Order, and notice is hereby given of the institution of a trial; and
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`FURTHER ORDERED that all other grounds presented in Qualtrics’s
`
`Petition are denied, and no ground other than that specifically listed above is
`
`authorized for inter partes review of the ’805 patent.
`
`
`
`
`
`PETITIONER:
`
`Robert Steinberg
`Neil A. Rubin
`LATHAM & WATKINS LLP
`bob.steinberg@lw.com
`neil.rubin@lw.com
`
`
`
`PATENT OWNER:
`
`Christopher W. Kennerly
`Timothy P. Cremen
`PAUL HASTINGS LLP
`chriskennerly@paulhastings.com
`timothycremen@paulhastings.com
`
`
`
`
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`12
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