Qualtrics, LLCv.OpinionLab, Inc.

Patent Trial and Appeal Board

Jul 30, 2015

11458625 (P.T.A.B. Jul. 30, 2015)

Trials@uspto.gov Paper 45
571-272-7822 Entered: July 30, 2015

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.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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I. INTRODUCTION
Qualtrics, LLC, filed a Petition (“Pet.”) requesting 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”). After considering the Petition, we
instituted an inter partes review of all the challenged claims on the ground
of unpatentability under 35 U.S.C. § 103. After institution, OpinionLab,
Inc., the owner of the ’805 patent, filed a Patent Owner Response (“PO
Resp.”), to which Qualtrics filed a Reply (“Reply”). We entertained oral
argument from both parties.
1
We have jurisdiction under 35 U.S.C. § 6(c).
For the reasons that follow, we determine that Qualtrics has not proven, by
preponderant evidence, that any of the challenged claims are unpatentable.
II. BACKGROUND
A. The ’805 Patent
2

The ’805 patent is directed to a system and method for soliciting and
reporting feedback from a user of a commercial website. Ex. 1001, 1:15–19.
Typical websites measure a user’s reaction to the website as a whole. Id. at
1:35–56. 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 5:25–36,
11:59–66. The tool appears as a “viewable icon” on each web page and
solicits the user’s subjective reaction to the particular web page being
displayed. Id. at 5:37–50, 11:66–12:6, Fig. 2. When the user clicks on the
icon, a rating scale and/or a comment box appears within the user’s browser

1
A transcript (“Tr.”) has been entered into the record. Paper 44.
2
The ’805 patent is the subject of concurrent district court actions,
OpinionLab, Inc. v. Qualtrics Labs, Inc., No. 1:13-cv-01574 (N.D. Ill.), and
OpinionLab, Inc. v. iPerceptions Inc., No. 1:12-cv-05662 (N.D. Ill.). Pet. 2.
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window. Id. at 5:65–6:21, 12:40–14:10, Figs. 3–6. The rating scale and
comment box allow the user to provide subjective reactions to various
aspects of the particular web page while remaining at the web page itself.
Id. at 14:11–18; 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 reaction in a database for subsequent reporting to a website owner.
Id. at 2:6–18. The website owner can generate a report for analyzing and
identifying user reactions and feedback related to particular web pages. Id.
at 15:27–21:54, Figs. 8A, 8B, 9. The report allows the website owner to
assess the success of each web page in the eyes of the user community. Id.
at 13:49–52.
B. The Challenged Claims
Of the challenged claims, claims 1, 10, 18, and 26 are independent.
Claim 1 is representative and recites:
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
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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. 1001, 25:40–26:3 (emphasis added).
C. The Instituted Grounds of Unpatentability
In the Preliminary Proceeding,
3
we instituted trial on only one of the
three grounds proposed by Qualtrics, in particular, determining Qualtrics had
a “reasonable likelihood” of proving the challenged claims unpatentable as
obvious over the combined teachings of CustomerSat,
4
Medinets,
5
and
HTML Spec.
6
Dec. to Inst. 12. Having instituted trial under the “reasonable
likelihood” standard of 35 U.S.C. § 314(a), we decide now whether

3
A “Preliminary Proceeding,” as defined by our rules, “begins with the
filing of a petition for instituting a trial and ends with a written decision as to
whether a trial will be instituted.” 37 C.F.R. § 42.2.
4
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) (Ex.
1003).
5
DAVID MEDINETS, PERL5 BY EXAMPLE: THE EASIEST WAY TO LEARN HOW
TO PROGRAM, Que Corp., 1–66 (1996) (Ex. 1004).
6
World Wide Web Consortium (W3C), HTML 4.0 Specification, Dave
Raggett et al. (eds.), 1–366 (Apr. 24, 1998) (Ex. 1014).
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Qualtrics has proven unpatentability of the challenged claims by a
“preponderance of the evidence,” as required by 35 U.S.C. § 316(e).
III. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable construction in light of the specification of the
patent in which they appear. 37 C.F.R. § 42.100(b). Under this standard,
claim terms generally are given their ordinary and customary meaning, as
understood by one of ordinary skill in the art in the context of the patent’s
entire written disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
(Fed. Cir. 2007). However, a “claim term will not receive its ordinary
meaning if the patentee acted as his own lexicographer and clearly set forth a
definition of the disputed claim term in either the specification or
prosecution history.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
1366 (Fed. Cir. 2002). Here, although Qualtrics advances a construction of
several claim terms of the ’805 patent (Pet. 6–14), OpinionLab does not
believe that any specific definition is necessary (PO Resp. 4–5 n. 4). We
conclude that the claim terms do not require an express construction in order
to analyze the challenged claims relative to the asserted prior art.
B. The Ground of Obviousness
Our analysis centers on a single limitation of independent claims 1,
10, 18 and 26, one that is common to all of the claims, namely, “page-
specific user feedback . . . having been provided by a user while the user
remained at the particular web page.” Qualtrics relies primarily on
CustomerSat’s disclosure of “Pop!Up questionnaires” for teaching this
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limitation.
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Pet. 22–23; Reply 1–3. According to Qualtrics, the pop-up
questionnaire, or survey, can be displayed “immediately” upon the user
clicking on a survey button, and can be viewed “on the particular web page
from which it was launched, without requiring the user to navigate to a
different page.” Id. at 23 (citing Ex. 1003, 7); see also Reply 1–3 (arguing
that CustomerSat “says that a user can be taken . . . to the ‘Pop!Up’
questionnaire immediately”).
In response, OpinionLab counters that, although CustomerSat’s pop-
up questionnaire, or survey, may be displayed immediately after the user
clicks on the survey button, it nevertheless “is provided on an entirely
separate web page.” PO Resp. 19. That CustomerSat discloses the survey
button and resulting survey as pop-ups, OpinionLab argues, does not mean
that they both pop-up on the same web page. Id. at 18. In other words,
according to OpinionLab, CustomerSat’s survey button “is only an invitation
—there is no teaching or suggestion that this ‘pop-up’ invitation contains the
survey itself.” Id. (citing Ex. 2002 ¶¶ 41–49).
At the outset, we note that nowhere does CustomerSat describe or
depict a pop-up questionnaire on the same web page as the pop-up survey
invitation. See, e.g., Ex. 1003, 4, 7, 23. According to CustomerSat, if a user
wishes to provide feedback, the user can click on a survey button “at any
time to go to the survey, or can be taken to the survey immediately.” Id. at 7
(emphases added). That description suggests that the survey itself is in a

7
In the Petition, Qualtrics also references CustomerSat’s disclosure of a
“Feedback” icon as satisfying certain claim limitations. Pet. 16–22. At oral
argument, Qualtrics clarified that the “Feedback” icon is “just a link to
another page” or “a link to a separate page . . . [t]hat is not the Pop!Up
questionnaire.” Tr. 9–10.
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location different from the survey button. Indeed, the “Feedback and
Membership” form depicted in CustomerSat stands alone, by itself, without
any display of the web page from which the feedback form was launched,
i.e., when the user clicked on the survey button so as to provide feedback.
See, e.g, Ex. 1003, 4 (depicting the “Feedback and Membership” form).
Thus, we are not persuaded that CustomerSat’s simple disclosure of the
questionnaire as a “Pop!Up” amounts to sufficient evidence that it is
provided on the same web page as the survey button.
Moreover, the testimony of the parties’ declarants buttresses 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. For
instance, we credit the testimony of OpinionLab’s declarant, Dr. Michael
Shamos, that the underlying source code for CustomerSat’s feedback form
refers to a web page located at “www.customersat.com/cssurvey.htm,” while
the source code for the survey button, or invitation, indicates a web page
located at “www.customersat.com/cgi-bin/popupadmin.” Ex. 2002 ¶ 47
(citing Ex. 1003, 67). Qualtrics’s declarant, Mr. John Chisholm, likewise
only describes the “popupadmin” code as controlling the survey button,
without ever ascribing that code to the survey itself. Ex. 2004, 105:10–
107:19. Thus, although CustomerSat’s feedback questionnaire may be the
target of the survey button, or invitation, it nonetheless “appears on a
completely separate webpage from the web page [] which contains [the]
pop-up invitation.” Ex. 2002 ¶ 47 (declaration of Dr. Shamos).
8

8
As further support, Qualtrics points to a depiction of a feedback form
appearing within the same screen, and overlying, a particular web page. Pet.
23. As depicted, however, the feedback form is on a different web page than
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Qualtrics faults OpinionLab for reading too much into CustomerSat’s
disclosure, arguing that “the cited disclosure says nothing about how the
resulting survey is displayed.” Reply 3 (citing Ex. 1003, 7, and Ex. 1027
¶¶ 14–17). Qualtrics misses the mark, however, because the very crux of the
claimed invention is directed at how the user feedback is provided, i.e.,
while the user remains at the particular web page. As such, Qualtrics’s
admission that CustomerSat does not teach how the survey is displayed—
i.e., whether it is on the same page or a different page—hurts, rather than
helps, their case.
Qualtrics also argues that “the unrefuted testimony of Mr.
Chisholm is that Pop!Up questionnaires could be—and, in fact, were—
displayed in a pop-up window.” Reply 3 (citing Ex. 1027 ¶¶ 18–22). We
disagree. OpinionLab’s declarant, Dr. Shamos, refutes expressly, and
credibly, the testimony of Mr. Chisholm, explaining multiple times that,
although the survey questionnaire “could be” displayed in a pop-up window,
“there’s no suggestion [in CustomerSat] that the questionnaire is showing up
in this—popup window.” Ex. 1028, 160:24–161:20; see also id. at 162:9–11
(“there’s no hint . . .”). And, more succinctly, in response to questions about
whether clicking on CustomerSat’s survey button would turn “the survey
invitation into a survey question,” and “could it work that way?,” Dr.
Shamos responded: “You mean is it physically possible that you could
mangle the website in that manner? Yes, you certainly could, if you wanted
to. There’s no—certainly no hint or suggestion here that it’s done that

the underlying web page, as evidenced by the different URLs associated
with each. See Ex. 1005 ¶ 183.

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way.” Id. at 164:23–165:20 (emphasis added). That testimony persuades us
that CustomerSat neither teaches providing the survey questionnaire, i.e.,
feedback form, on the same web page as the survey button, nor would it
have suggested as much to a skilled artisan.
Alternatively, Qualtrics relies on Medinets as teaching a “user
feedback form” (Ex. 1004, Fig. 21.3) that can be filled out while the user
remains at the particular web page from which a “submit button” (id., Fig.
21.4) was clicked to summon the feedback form. Pet. 38–39. According to
Qualtrics, Medinets teaches that the submit button and feedback form “are
both generated using HTML forms,” and, from that simple teaching,
surmises that they “could be on the same particular web page.” Id. at 38. In
support, Qualtrics proffers the testimony of its declarant, Mr. Chisholm, who
likewise speculates that Medinets’s submit button and feedback form “could
be” on the same particular web page, or the button “could be” set to open the
feedback form in a new browser window that would allow the user to remain
at the web page. Id. at 38–39 (citing Ex. 1005, ¶¶ 184–187).
That the feedback form of Medinets “could be” modified to remain on
the same web page as the submit button does not mean that a skilled artisan
would have understood Medinets as, in fact, teaching or suggesting such a
capability. In fact, when Medinets speaks of the “user feedback form” and
the “submit button,” we do not discern any teaching or suggestion of them
appearing on the same page. See, e.g., Ex. 1004, 60, 62. Indeed, Medinets
seems to indicate the opposite, stating that “a user feedback form appears
that automatically knows which page the user was on when the button was
pressed.” Id. at 60 (emphasis added). That the feedback form stores the
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location of the page on which the button was pressed suggests that users are
taken to a different page, not that they remain on the same page.
Moreover, Qualtrics’s own declarant conceded that the “HTTP
addresses,” or “URLs,” for Medinets’s feedback form (Ex. 1004, Fig. 21.3)
and submit button (id., Fig. 21.4) “are different,” and “I don’t think there’s
anything that discloses the two pages are the same.” Ex. 2004, 41:17–43:23.
As such, we are not persuaded that Medinets’s feedback form is a pop-up
that appears on the same page as the submit button, but rather is a different
web page. OpinionLab’s declarant, Dr. Shamos, likewise corroborates that
Medinets’s feedback form is a “separate email form which replaces the web
page” having the submit button. Ex. 2002 ¶ 68. Thus, the record reflects
that both parties’ declarants agree that Medinets fails to teach or suggest a
feedback form that appears on the same web page as the submit button that
launches the feedback form.
Turning now to the third reference of the combination on which we
instituted trial, the HTML Spec, Qualtrics argues that it teaches the use of
“HTML frames,” which purportedly allow a user to provide feedback while
remaining at the particular web page. Pet. 44 (citing Ex. 1014, 193–205).
In making this argument, however, Qualtrics does not rely solely on the
HTML Spec, but points back to the feedback form in Medinets as being
“predicated on the use of HTML.” Id. at 44–45. As discussed above, we are
not persuaded by Qualtrics’s argument with respect to Medinets, nor are we
persuaded that the HTML Spec itself suffices to cure the deficiencies with
Medinets. Although the HTML Spec may describe, generally, the
advantages of “HTML frames,” nowhere does that description, as relied
upon by Qualtrics, teach the use of HTML frames for creating a feedback
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form for a website. See Ex. 1014, 193–205. Even Qualtrics’s own declarant
conceded that it does not mention using HTML frames “to create a survey to
get feedback about a website.” See Ex. 2004, 59:9–21. As such, Qualtrics’s
argument with respect to the HTML Spec is no better, more likely less
availing, than its arguments with respect to CustomerSat and Medinets.
And, to the extent that Qualtrics may rely on the knowledge of a
skilled artisan to fill in the gaps found to exist in the teaching of the HTML
Spec, we are not persuaded. See Pet. 44–45; Reply 4. In particular,
Qualtrics points to the testimony of OpinionLab’s declarant, Dr. Shamos,
that, “If your question is could one have implemented the invention of the
OpinionLab patent using HTML 4, the answer is yes.” Reply 4 (citing Ex.
1028, 434:20–22) (emphasis added). But that response speaks to the use of
HTML, in general, as a possible tool for implementing the claimed
invention; it was not about a skilled artisan’s understanding of the HTML
Spec itself. As shown by testimony that followed immediately from that
statement, Dr. Shamos explained, quite aptly, that, “If your question is
would one be motivated by reading the HTML 4 manuals to make the
inventions of the OpinionLab patents, no.” Id. at 434:22–24 (emphasis
added). And, in reasoning that a skilled artisan would not have looked to the
HTML Spec for purposes of placing the feedback form in a popup window,
he stated, “there’s nothing whatsoever to do with collecting feedback or
survey information here.” Id. at 435:1–25. Qualtrics does not offer any
rebuttal to that testimony, nor could it, because its own declarant testified
similarly, as discussed above. See Ex. 2004, 59:9–21.
Thus, after considering the totality of the evidence presented by
Qualtrics and OpinionLab, we determine that the preponderance weighs in
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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. The remaining claims challenged in the
Petition, claims 2, 5, 8, 11, 14, 17, 19, 22, 25, 27, 30, and 33, depend,
directly or indirectly, from claims 1, 10, 18, and 26, and thus, include the
limitation that we determined was lacking from CustomerSat, Medinets, and
HTML Spec, as discussed above. Accordingly, we determine that Qualtrics
has not demonstrated by preponderant evidence that dependent claims 2, 5,
8, 11, 14, 17, 19, 22, 25, 27, 30, and 33 are unpatentable over the
combination of CustomerSat, Medinets, and HTML Spec.
C. Qualtrics’s Motion to Exclude Evidence
Qualtrics moves to exclude the opinions of OpinionLab’s declarant,
Dr. Shamos, for two reasons. Mot. 1 (Paper 36). First, Qualtrics seeks to
exclude Dr. Shamos’s opinions because he “applied the wrong legal standard
in determining the level of ordinary skill.” Id. at 2. According to Qualtrics,
Dr. Shamos “considered only the ’805 Patent and failed to assess the prior
art in the field” in opining on non-obviousness. Id. But the only support
offered by Qualtrics is its mischaracterization of Dr. Shamos’s deposition
testimony that he “deemed the prior art ‘irrelevant.’” Id. at 3. We are not
persuaded.
Our review of Dr. Shamos’s testimony reveals that he considered the
patent specification of the ’805 patent in terms of the “field of the
invention,” the “level of education and background [] needed to understand
the specification,” and “what one would need to know” in order to
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understand not only the claimed invention but also “the prior art that was
referenced in the petitions.” Ex. 1028, 70:1–19. That he reviewed more
than simply the ’805 patent, in opining on the level of skill in the art, is
likewise confirmed by his declaration, which attests that he “considered the
three references” relied on in the Petition, “along with all of its Exhibits”
and the “prosecution histories” of patents related to the ’805 patent. Ex.
2002 ¶¶ 18, 20.
Moreover, as he further attests, Dr. Shamos opined on the level of
skill in the art based on his “education, experience, and training in academia
and industry.” Id. ¶ 31. Because, as a matter of necessity, the knowledge
that Dr. Shamos gained in the course of his career, which includes
significant experience in the field of “eCommerce” and “public opinion
polling” (Ex. 2002 ¶¶ 4–11, 13), would have weighed in his assessment of
the level of skill in the art, we are not persuaded by Qualtrics’s contention
that his opinion was based solely on the ’805 patent. As such, we deny
Qualtrics’s motion to exclude the declaration and deposition testimony of
Dr. Shamos with respect to his opinions regarding non-obviousness of the
claimed invention.
Qualtrics also seeks to exclude Dr. Shamos’s opinions on secondary
considerations because they “go beyond his qualifications” and “fail to show
the required nexus.” Mot. 1. As there was no need for us to reach evidence
of secondary considerations, Qualtrics’ motion to exclude on that issue is
denied as moot.
IV. CONCLUSION
Qualtrics has not proven by preponderant evidence that claims 1, 2, 5,
8, 10, 11, 14, 17–19, 22, 25–27, 30, and 33 are unpatentable under 35 U.S.C.
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§ 103 as obvious over CustomerSat, Medinets, and HTML Spec. This is a
Final Written Decision of the Board under 35 U.S.C. § 318(a).
V. ORDER
Accordingly, it is hereby:
ORDERED that claims 1, 2, 5, 8, 10, 11, 14, 17–19, 22, 25–27, 30,
and 33 of the ’805 patent have not been proven to be unpatentable by a
preponderance of the evidence;
FURTHER ORDERED that Qualtrics’s Motion to Exclude is denied;
and
FURTHER ORDERED that any party seeking judicial review of this
Final Written Decision must comply with the notice and service
requirements of 37 C.F.R. § 90.2.

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PETITIONERS:

Robert Steinberg
Neil A. Rubin
Jonathan M. Jackson
Philip Wang
LATHAM & WATKINS LLP
bob.steinberg@lw.com
neil.rubin@lw.com
jonathan.jackson@lw.com
philip.wang@lw.com

For PATENT OWNER:

Christopher W. Kennerly
Timothy P. Cremen
Naveen Modi
PAUL HASTINGS LLP
chriskennerly@paulhastings.com
timothycremen@paulhastings.com
naveenmodi@paulhastings.com