Focusing on the Claims, the PTAB Denies CBM Review of a Market Research Patent
By Joseph Herndon --
On April 13, 2016, the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) issued a decision denying institution of a covered business method (CBM) patent review of U.S. Patent No. 8,041,805. This decision favors patent owners in that the PTAB focused on what the claims recited when determining if the claims were directed to some financial product or service. While this is the standard to follow as recited by the AIA statute, the PTAB has in the past repeatedly instituted CBM review of patents that include claims with no financial aspects whatsoever (see Motorola Mobility, LLC, v. Intellectual Ventures I, LLC (PTAB 2016), and Square, Inc. v. Protegrity Corp. (PTAB 2016).
OpinionLab, Inc. is the owner of the '805 patent, and Qualtrics, LLC filed a Petition for CBM review of all 33 claims of the '805 patent. In a previous inter partes review (IPR) proceeding, Qualtrics challenged many of the same claims of the '805 patent as it did in the CBM review, only on different grounds. In the IPR, the PTAB determined that Qualtrics had failed to prove, by a preponderance of the evidence, that the claims of the '805 patent were unpatentable under 35 U.S.C. § 103. In seeking CBM review, Qualtrics challenged the claims of the '805 patent under 35 U.S.C. § 101 as being directed to a patent-ineligible abstract idea.
The '805 patent is the subject of two district court actions: OpinionLab, Inc. v. Qualtrics Labs, Inc., 1:13-cv-01574 (N.D. Ill.), and OpinionLab, Inc. v. iPerceptions Inc., 1:12-cv-05662 (N.D. Ill.), and thus, the CBM petition may be considered.
The '805 Patent
The '805 patent is directed to a system and method for soliciting "page-specific" feedback from website users. User feedback is solicited on a page-specific basis by incorporating a "user-selectable element," or "viewable icon," into each web page of the website. The icon incorporated in each web page solicits the user's subjective reaction to various aspects of the particular web page being viewed by the user. When the user rolls over or clicks on the icon, a rating scale and/or question box appears within the user's browser window. The rating scale and/or question box appears within the same browser window on which the user is viewing the particular web page itself. Software associated with the icon operates to collect and store the user's reactions in a database for subsequent reporting to an interested party. Claim 1 is illustrative of the claimed invention:
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 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.
As the petitioner, Qualtrics bears the burden of demonstrating that the '805 patent is a CBM patent. The AIA defines a CBM patent as "a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions." AIA § 18(d)(1).
The determination of whether a patent is eligible for CBM review focuses on "what the patent claims." Office Patent Trial Practice Guide, 77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012) (response to comment 8). A patent need have only one claim directed to a CBM to be eligible for review.
First, Qualtrics argued that the claimed invention is directed to a financial product or service because the specification states that the claimed invention may be used in connection with websites that conduct "commercial transactions." But, the PTAB was strict on the relevant inquiry being on the claims and whether they are directed to a financial product or service. Here, the claims are devoid of any terms that could be reasonably argued as rooted in the financial sector or limited to a monetary transaction. Instead, the claims recite a software capability of general utility that crosses many sectors, commercial and non-commercial alike.
The PTAB simplified the claims as reciting a "user-selectable element," i.e., an icon, that solicits and receives feedback from users without requiring them to navigate between webpages, i.e., "while the user remain[s] at the particular webpage" and "regardless of user scrolling." The PTAB concluded that the claimed invention is nothing more than a website tool for gathering information -- a quick and easy way to solicit contemporaneous reactions from website users, and soliciting feedback from website users is hardly the exclusive domain of the financial sector.
The PTAB noted that the specification contemplates both commercial and non-commercial applications for the claimed website tool, and as such, the PTAB did not characterize the claimed invention as limited to "commercial" applications when both the claims and the specification indicate a more general utility.
Qualtrics also argued that the claimed invention is limited to a financial product or service because "collecting user feedback is primarily used to improve the effectiveness of websites, including their marketing, interface usability, and customer communications functions." But the PTAB stated that the use of consumer feedback to improve the capabilities of a website does not necessarily make that use financial in nature, and that the statute authorizing review of CBM patents was not meant for "technologies common in business environments across sectors and that have no particular relation to the financial services sector, such as computers, communications networks, and business software."
Qualtrics further argued that the specification's mention of using the claimed invention as a measure of the website's value suggests it is financial in nature. The PTAB shut down this argument, and stated that this potential use is purely exemplary, and that, both the specification and the claims actually speak in broader terms that include not only valuing the website in terms of "clicks," but also collecting information for purposes of "polling, surveying, product development research, market research, [and] usability testing."
Over and over again, the PTAB maintained focus on the claims, which simply recite that user feedback is collected "for reporting to an interested party," without any further restriction. In that regard, the PTAB did not find any claim language that gives rise to a fee or other movement of money.
The PTAB noted that the fact that the specification may describe the website tool as capable of being used for commercial purposes does not mean that the claims are limited to such applications.
The PTAB summarized Qualtrics' position as being that any patent claiming something that might have potential application to a financial product or service would be eligible for CBM patent review, regardless of its general utility and application outside of finance. The PTAB then noted that this position is not consistent with the statutory language, which requires a focus on what is recited by the claims.
The PTAB thus concluded that Qualtrics failed to demonstrate that the '805 patent is a covered business method patent as defined by § 18(d)(1) of the AIA, and thus, the Petition for CBM review was denied and no trial will be instituted. Because the PTAB found that that '805 patent did not claim a financial product or service, the PTAB did not consider the exception of whether the patent covered a technological invention.
This decision follows proper application of the AIA statute and evaluation of the patent claims. But this decision is far from the norm, as other PTAB judges easily may have found the patent to be eligible for CBM review. Hopefully, this decision starts a trend of enforcing the statutory language for CBM institutions so that there is less randomness as to which patents are subject to CBM review.
Qualtrics, LLC v. Opinionlab, Inc. (Case CBM2016-00003) (PTAB 2016)
Before Rama G. Elluru, Jeremy M. Plenzler, and Carl M. DeFranco, Administrative Patent Judges
Decision by Carl M. DeFranco