Qualtrics, LLCv.OpinionLab, Inc.

Patent Trial and Appeal Board

Jun 30, 2014

09385256 (P.T.A.B. Jun. 30, 2014)

Trials@uspto.gov Paper 14
571-272-7822 Entered: June 30, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

QUALTRICS, LLC
Petitioner

v.

OPINIONLAB, INC.
Patent Owner
____________

Case IPR2014-00314
Patent 6,421,724 B1
____________

Before RAMA G. ELLURU, JEREMY M. PLENZLER, GEORGIANNA W.
BRADEN, and CARL M. DEFRANCO, Administrative Patent Judges.

DEFRANCO, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
Petitioner, Qualtrics, LLC, filed a petition requesting an inter partes review
of claims 1, 2, 4-6, 8, and 9 of U.S. Patent No. 6,421,724 B1 (“the ’724 patent”).1
Paper 1 (“Pet.”). The patent owner, OpinionLab, Inc., filed a preliminary response.
Paper 13 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which
provides that an inter partes review may not be instituted “unless . . . there is a
reasonable likelihood that the petitioner would prevail with respect to at least 1 of
the claims challenged in the petition.”
After considering the petition and preliminary response, we determine that
Qualtrics has not established a reasonable likelihood of prevailing on challenged
claims 1, 2, 4-6, 8, and 9 of the ’724 patent. Accordingly, we deny the petition.
II. BACKGROUND
A. ’724 Patent2
The ’724 patent is directed to a “web site response measurement tool” for
collecting user opinion of a web site. Ex. 1001, 1:6-9. Typical commercial
websites provide feedback tools that measure user opinion about the website as a
whole. Id. at 1:43-58. In contrast, the website response measurement tool of the
’724 patent captures user feedback data “on a page-by-page basis,” which allows
the feedback data to be compared across web pages and web sites throughout the
world wide web. Id. at 1:58-61. As described, the web site measurement tool
includes a “first icon” in a predetermined location on a web page. Id. at 4:10-13,
Fig. 2. Using a mouse pointer, a user moves the mouse pointer over the first icon,

1 Qualtrics Labs, Inc. is also listed as a Real Party-in-Interest. Pet. 2.
2 Qualtrics indicates that the ’724 patent is the subject of concurrent
litigation in the U.S. District Court for the Northern District of Illinois, namely,
OpinionLab, Inc. v. Qualtrics Labs, Inc., 1:13-cv-01574; and OpinionLab, Inc. v.
iPerceptions Inc., 1:12-cv-05662. Pet. 2.
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which in turn, causes a “second icon” to become viewable on the same webpage.
Id. at 4:17-19, Figs. 3, 4. This second icon appears as a “five-point scale,” with
rating levels ranging from positive to negative. Id. The user can rate his/her
reaction to a particular web page by moving the mouse pointer over the desired
rating and clicking the mouse button. Id. at 4:19-22. The user’s selection is then
stored in a database for subsequent reporting to the website owner. Id. at 4:25-39,
Fig. 6.
B. Illustrative Claim
Of the challenged claims, claims 1, 4, 5, 8, and 9 are independent. Claim 1
is illustrative of the claimed subject matter and recites the following.
1. A system for measuring subjective user reaction concerning
a particular web page of a website, comprising:
a first icon viewable on the particular web page independent
of input from a user subsequent to the user accessing the particular
web page, the first icon soliciting a subjective user reaction to the
particular web page as a whole from the user independent of input
from the user subsequent to the user accessing the particular web
page, the first icon operable to receive user input indicating a desire
to provide a subjective user reaction to the particular web page as a
whole, the user input causing a second icon to become viewable
on the particular web page, the second icon comprising a plurality of
multi-level rating scales for rating the particular web page, each multi-
level rating scale being associated with a particular characteristic of
the particular web page including at least one positive rating,
a neutral rating, and at least one negative rating; and
software associated with the second icon and operable to
receive the subjective user reaction to the particular web page as a
whole for reporting to a website owner.

Ex. 1001, 6:22-42 (emphasis added). Like claim 1, independent claims 4, 5, 8, and
9 require that user input received at the first icon “caus[es] a second icon to
become viewable on the particular webpage.” Id. at 7:1-8:64.
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C. Evidence of Record
Qualtrics relies upon the following prior art references as its basis for
challenging claims 1, 2, 4-6, 8, and 9 of the ’724 patent.3

D. Asserted Grounds of Unpatentability
Qualtrics asserts the following grounds in challenging the patentability of
claims 1, 2, 4-6, 8, and 9 of the ’724 patent. Pet. 3.
Statutory Ground Basis Challenged Claims
§ 102 CustomerSat 1, 2, 4-6, 8, and 9
§ 103 CustomerSat and Medinets 1, 2, 4-6, 8, and 9

III. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms are given their broadest reasonable
interpretation in light of the specification in which they appear and the
understanding of others skilled in the relevant art. See 37 C.F.R. § 42.100(b).

3 Qualtrics also proffers the Declaration of John Chisholm, who founded the
online survey research company that purportedly published the CustomerSat
reference. Ex. 1005 ¶¶ 13, 27.
References Patents/Printed Publications Date Exhibit
CustomerSat “Customer Satisfaction Measurement,
Surveys and Market Research by
CustomerSat.com, The Internet Survey
Experts,” (retrieved Nov. 21,
2013 from Internet Archive, Wayback
Machine), 1-76.
May 26, 1998 1003
Medinets David Medinets, “The Easiest way to
learn how to program!,” PERL5 by
Example, Que Corp., 1-66.
1996 1004
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Applying that standard, we interpret the claim terms of the ’724 patent according
to their ordinary and customary meaning in the context of the patent’s written
disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
We have considered the claim terms that the parties identify for
interpretation and note that Opinion Lab does not dispute the constructions
proposed by Qualtrics. See Pet. 6-17, Prelim. Resp. 15-18. For purposes of this
decision, we determine that no particular claim term requires an express
construction at this time, aside from its ordinary and customary meaning in light of
the ’724 patent’s specification.
B. Asserted Grounds
1. Anticipation by CustomerSat
Qualtrics challenges claims 1, 2, 4-6, 8, and 9 on the basis of anticipation by
CustomerSat under 35 U.S.C. § 102. Pet. 18- 35. Each of challenged independent
claims 1, 4, 5, 8, and 9 requires “a first icon viewable on the particular web page”
with user input received at the first icon “causing a second icon to become
viewable on the particular webpage.” Qualtrics asserts that CustomerSat teaches
the claimed first icon in “at least two ways,” namely: (1) a “Feedback” icon
displayed along the border of each web page, or (2) a “Pop!Up” icon appearing on
the web page and inviting the user to take a survey. Pet. 19-20 (citing Ex. 1003 at
3, 7). According to Qualtrics, by clicking on either the “Feedback” icon or the
“Pop!Up” icon, the user in CustomerSat is taken immediately to a web site
satisfaction survey that includes a “rating scale” (i.e., “Web Site Satisfaction
Gauge”), which Qualtrics equates to the claimed “second icon.” Id. at 27-28
(citing Ex. 1003 at 4). Based on that reading, Qualtrics contends that CustomerSat
satisfies the causality limitation of the independent claims because CustomerSat’s
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first icon (i.e., the “Feedback” or “Pop!Up” icons) causes the user to be taken to a
second icon (i.e., the rating scale). Id. at 28-29.
Qualtrics’s analysis, however, overlooks the claim language that the first
icon causes the second icon “to become viewable on the particular web page.” In
other words, as claimed, the second icon must appear on the same web page as the
first icon. That both icons appear on the same page is made clear by the claim
language itself, which speaks consistently to the same “particular web page”
throughout the claim. For instance, each of the independent claims describes the
user as “accessing the particular web page,” using a first icon “viewable on the
particular web page” to provide “reaction to the particular web page as a whole,”
causing a second icon “to become viewable on the particular web page,” and using
the second icon for “rating the particular webpage.” Nowhere do any of the
challenged claims reference another web page—instead, they each maintain that
the second icon “become viewable” on “the particular web page” that the first icon
is “viewable.”
Further, consistent with the plain language of the claims, the ’724 patent
disclosure specifies that the second icon appear in the same web page or browser
window as the first icon. As described,
[a] user accesses a web page 32 residing on the web site server
16 . . . using an Internet browser 34. Typically, only a portion of the
web page 32 is viewable in the browser 34 window at a time. . . .
[T]he user reaction feedback mechanism 24 appears as an icon
36 [i.e., the claimed “first icon”] in a predetermined location relative
to the browser window border 38 on the viewable portion of the web
page 32. . . .
As the user moves the mouse pointer 40 over the [first] icon 36,
the icon 36 changes into a fivc-point scale 41 [i.e., the claimed
“second icon”].

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Ex. 1001, 4:4-18. In other words, merely hovering the mouse over the first icon
enables the user to launch the second icon, or rating scale, in the same browser
window in which the first icon originally appeared. Compare Ex. 1001, Fig. 2
(depicting first icon 36 in browser window 34) with id., Figs. 3, 4 (showing second
icons 41, 47 in place of first icon 36 in same browser window 34). Qualtrics does
not point to any embodiment in the ’724 patent in which the first icon takes the
user to a browser window other than that containing web page 32. Thus, in order
to meet the language of the independent claims, CustomerSat must disclose that the
first icon causes the second icon to appear on the same web page as the first icon.
Despite Qualtrics’s assertion, we are not persuaded that CustomerSat
anticipates the causal limitation of the challenged claims. In particular, the first
example from CustomerSat relied upon by Qualtrics describes the “Feedback” link
(i.e., the first icon) as taking the user to a “Feedback and Membership” page,
which is separate and distinct from the web page containing the “Feedback” link
originally clicked by the user. Compare Ex. 1003 at 3 (indicating a web page URL
of ’190826 for the “Feedback” icon) with id. at 4 (indicating webpage URL of
’191632 for “Feedback and Membership” rating scale icon). Similarly, the second
example from CustomerSat relied upon by Qualtrics indicates that, when the user
clicks on the “Pop!Up” survey button, the user is taken to a separate web page to
complete the survey (again, the “Feedback and Membership” page). Id. at 7
(describing CustomerSat’s “Pop!UpTM technology”). Thus, in both examples of
CustomerSat, by clicking on the first icon, the user is taken to a new browser
window/web page for accessing the rating scale, as opposed to the claimed
invention in which the user remains in the same browser window/web page as the
first icon for accessing the second icon, or rating scale.
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Because, in CustomerSat, input at the first icon causes the user to be taken to
a feedback/rating scale icon on a different web page than the location of the first
icon, we conclude on the current record that Qualtrics is unlikely to prevail in
showing that CustomerSat anticipates independent claims 1, 4, 5, 8, and 9, each of
which requires that the first and second icons be viewable on the same “particular
web page.” Furthermore, Qualtrics is unlikely to prevail in showing anticipation of
challenged claims 2 and 6, as they depend from claims 1 and 5, respectively.
2. Obviousness Based On CustomerSat and Medinets
Qualtrics also argues that claims 1, 2, 4-6, 8, and 9 would have been obvious
over CustomerSat in view of Medinets under 35 U.S.C. § 103. Pet. 35-46. We are
not persuaded that Qualtrics explains sufficiently how this additional ground cures
the deficiencies with CustomerSat by teaching that the second icon is viewable on
the same web page as the first icon. As described by Medinets, the user clicks on a
first icon in the form of a “Send a comment to the webmaster” button, which in
turn summons a user feedback form, i.e., “Web Page Comment Form.” Ex. 1004
at 60-62. According to Qualtrics, the feedback form taught by Medinets includes a
rating scale that amounts to a second icon. Pet. 41-42. Qualtrics, however,
overlooks the importance of Medinets’s disclosure that the feedback form
“automatically knows which page the user was on when the [first icon] button was
pressed.” Ex. 1004 at 60. That function of keeping track of “which page the user
was on” indicates that the user is taken to a different destination or web page than
the page on which the first icon originally appears. Indeed, Medinets provides
instruction on how to create a “small HTML form” (first icon) at the end of every
web page in order to take the user to a designated web page containing the
feedback form (second icon), that is different from the web page containing the
“HTML form” button. Id. at 60-61. As such, we agree with OpinionLab that,
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rather than the first and second icons appearing in the same browser window as
required by the claimed invention, the second icon in Medinets appears in a
“separate . . . full browser window” that is different from the location of the first
icon. See Prelim. Resp. 34.
Further, we are not persuaded by Qualtrics’s argument that Medinets’s
teaching of “more than one form per HTML document” permits the first and
second icons to be viewable on the same web page. See Pet. 42 (citing Ex. 1004 at
53). Although Medinets could be read as describing multiple HTML forms, or
icons, on the same web page, Qualtrics does not point to any causal relationship
between such icons, i.e., that one form enables another form to appear within the
same HTML document. At most, based on the current record, Medinets teaches
only that two icons, unrelated to each other, could appear on the same web page.
Thus, even assuming a skilled artisan would have been led to combine the
teachings of CustomerSat and Medinets, the resultant combination would not have
taught the causality limitation of the challenged independent claims, each of which
requires that user input at the first icon cause the second icon to be viewable on the
same particular web page. As such, Qualtrics is unlikely to prevail in showing
that CustomerSat and Medinets would have rendered obvious the subject matter of
challenged independent claims 1, 4, 5, 8, and 9, or dependent claims 2 and 6.
IV. CONCLUSION
We are not persuaded that Qualtrics has demonstrated a reasonable
likelihood that at least one of the challenged claims of the ’724 patent is
unpatentable on the grounds asserted in the petition. Accordingly, we deny the
petition and do not institute an inter partes review of the ’724 patent.
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V. ORDER
In consideration of the foregoing, it is ORDERED that the petition is denied
and no trial is instituted.

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