Qualtrics, LLCv.OpinionLab, Inc.

Patent Trial and Appeal Board

Feb 3, 2016

09385256 (P.T.A.B. Feb. 3, 2016)

Trials@uspto.gov Paper 8
571-272-7822 Entered: February 3, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

QUALTRICS, LLC,
Petitioner,

v.

OPINIONLAB, INC.,
Patent Owner.
____________

Case CBM2015-00164
Patent 6,421,724 B1
____________

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

DEFRANCO, Administrative Patent Judge.

DECISION
Denying Institution of Covered Business Method Patent Review
37 C.F.R. § 42.208
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Patent 6,421,724 B1

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I. INTRODUCTION
OpinionLab, Inc. is the owner of U.S. Patent No. 6,421,724 B1 (“the ’724
patent”). Qualtrics, LLC filed a Petition (“Pet.”) for covered business method
(“CBM”) review of claims 1–9 of the ’724 patent.1 OpinionLab, in turn, filed a
Preliminary Response (“Prelim. Resp.”) in opposition to the Petition.
We have jurisdiction under 35 U.S.C. § 324(a). After considering the
Petition and Preliminary Response, we conclude that Qualtrics fails to demonstrate
that the ’724 patent is a “covered business method patent” as defined by § 18(d)(1)
of the Leahy–Smith America Invents Act, Pub. L. No. 112–29, § 6, 125 Stat. 284,
299–305 (2011) (“AIA”). We, therefore, deny the Petition.
II. BACKGROUND
A. Related Proceedings
The ’724 patent was challenged previously in a petition seeking inter partes
review. Specifically, in IPR2014-00314, Qualtrics challenged claims 1, 2, 4–6, 8,
and 9 as unpatentable under 35 U.S.C. §§ 102 and 103. We denied institution,
determining that Qualtrics had not established a reasonable likelihood of prevailing
in proving the challenged claims unpatentable over the asserted prior art.
IPR2014-00314, Paper 14 (PTAB June 30, 2014). The ’724 patent is also the
subject of two district court actions, namely, 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.). Pet. 2.
B. The ’724 Patent
The ’724 patent is directed to a “web site response measurement tool” for
collecting feedback and measuring opinion of users of the website. Ex. 1001, 1:6–

1 Qualtrics Labs, Inc. is also listed as a real party-in-interest. Pet. 2.
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9. Many 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 feedback data “on a page-by-page basis,” which
allows the feedback data to be compared across the various webpages of the site.
Id. at 1:58–61. As described, the website measurement tool includes a “first icon”
in a predetermined location on a particular webpage. Id. at 4:10–13, Fig. 2. A user
moves a mouse pointer over the first icon, which in turn, causes a “second icon” to
become viewable on the same webpage as the first icon. 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. While remaining on the particular webpage, the user can
rate his/her reaction to the webpage 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 analysis and reporting to the website owner.
Id. at 4:25–39, Fig. 6.
C. The Challenged Claims
Of the challenged claims, claims 1, 3–5, and 7–9 are independent. Claims 2
and 6 depend from independent claims 1 and 5, respectively. Common to the
independent claims is the recitation of “a first icon viewable on [a] particular web
page” that is capable of “causing a second icon to become viewable on the
particular web page.” Claim 1 is illustrative of the independent claims, describing
the first and second icons as follows:
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
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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 (emphases added).

D. Asserted Grounds of Unpatentability
Qualtrics asserts that claims 1–9 are unpatentable under 35 U.S.C. § 101 as
directed to a patent-ineligible abstract idea. Pet. 36–54.
III. ANALYSIS
A transitional proceeding under section 18 of the AIA may be instituted only
for a patent that is a covered business method (“CBM”) patent. AIA § 18(a)(1)(e).
As the petitioner, Qualtrics bears the burden of demonstrating that the ’724 patent
is a CBM patent. See 37 C.F.R. § 304(a). 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) (emphasis added); 37 C.F.R.
§ 42.301(a). The determination of whether a patent is eligible for CBM patent
review focuses on “what the patent claims.” Office Patent Trial Practice Guide,
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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. Id.
Qualtrics cites claim 1 and makes several arguments in support of its
contention that the ’724 patent is a CBM patent. Pet. 20–32. First, Qualtrics
argues that the “user response tool (i.e., survey)” of claim 1 is broad enough to
cover 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.” Id. at 20–21; see also id. at 23
(“a business website is used for marketing and customer communications” for
improving a business’s products and services). Even if true, however, the use of
feedback to improve the marketing, usability, and communication of a website
does not make that use financial in nature.
The statute authorizing review of CBM patents was not meant to be applied
“to 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.” 157 Cong. Rec. S5441 (Sept.
8, 2011) (statement of Sen. Leahy)) (emphasis omitted). Here, the claims are
devoid of any terms that reasonably could be argued as having any particular
relation to a financial product or service. Nor does Qualtrics propose a claim
construction that is financial in nature. See Pet. 13–17. Rather, the claims speak in
terms that apply generally to soliciting feedback from website visitors across a
variety of sectors. Put simply, the claims recite a first icon, which solicits the user
to take a survey, and a second icon, which presents the user with the survey. These
interacting, dual icons are nothing more than an information-gathering tool—a
quick and easy way for a website visitor to provide their opinion about a particular
webpage.
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Soliciting feedback for improving the quality of a product or service is
hardly the exclusive domain of the financial sector. Instead, it spans across many
sectors that include not only business (.com) websites, but also educational (.edu),
government (.gov), and non-profit (.org) websites, many of which have no
financial bent. See Ex. 1003 ¶¶ 29–60 (describing the “well-worn principle” of
soliciting feedback on internet websites, including “.gov” and “.edu” domains).
Indeed, Qualtrics itself recognizes that “[s]urveys have played a central role in
business for decades,” and, in particular, “[t]he solicitation of customer satisfaction
feedback in the form of one or more ratings conducted as part of a survey was
well-known in the art.” Pet. 18 (citing Ex. 1003 ¶¶ 29–60). Given the breadth of
survey technology in the world of opinion-polling, we are not persuaded that the
claims, on their face, recite any particular term that ties them to a financial product
or service, as required for CBM eligibility under § 18(d)(1) of the AIA. More
aptly, the claimed survey tool is a technology that crosses the gamut of many
business environments, with no particular relation to the financial services sector.
Nor does Qualtrics point to any language in the specification of the ’724
patent that limits the scope of the challenged claims to a financial product or
service. Qualtrics argues that the specification’s discussion of using the survey
tool for marketing and valuation of a website suggests that the claimed invention is
of a financial nature. Pet. 22–29 (citing Ex. 1001, 1:23–42). Qualtrics overlooks,
however, that those potential uses are purely exemplary, and that the specification
actually speaks in broader terms of “business partners, prospects and many others,”
including “[e]mployees . . . looking for guidance and support information.” Ex.
1001, 1:26–30. In fact, when describing the preferred embodiment, the
specification explains that the website owner can “tailor their page revisions to
appeal to a certain segment of users.” Id. at 5:24–25. Thus, far from being limited
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to one segment of the business world, the specification suggests that the survey
tool is amenable to any one of a broad spectrum of websites wishing to obtain
feedback from their visitors.
We also are not persuaded by Qualtrics’ argument that the specification’s
disclosure of charging a fee for reporting survey results to the website owner
moves the claimed invention into the realm of a financial product or service. Pet.
29–32. First and foremost, the claims say nothing about charging a fee for the
survey report—they merely require “software . . . for reporting to the website
owner.” There is no mention of a fee. Moreover, the specification makes clear
that “[i]n a preferred embodiment,” the software is configured to provide the report
“for free.” Ex. 1001, 6:7–10. Thus, contrary to what Qualtrics argues, neither the
claims nor the specification reduce the claimed survey tool to a monetary
transaction.
In sum, we reject Qualtrics’ narrow reading of the specification and claims.
The fact that the specification may describe the survey tool as capable of being
used for marketing and valuation purposes does not mean that the challenged
claims are limited to such uses. As claimed, the survey tool is concerned, quite
simply, with soliciting feedback from the users of a website and how that
solicitation is accomplished, i.e., by means of interacting, dual icons. Again, the
focus of our inquiry is on the claims of the ’724 patent and whether they describe a
method of performing data processing or other operations used in the practice,
administration, or management of a financial product or service. See AIA
§ 18(d)(1). They do not. The claims are of general utility, describing simply a
website survey tool, without any particular connection to a financial product or
service.
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Qualtrics’ position, in essence, would mean 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. We are not persuaded that Qualtrics’ position is
consistent with the statutory language, which requires us to focus on what is
recited by the challenged claims.
IV. CONCLUSION
Based on the present record and particular facts of this proceeding, we
determine that the information presented in the Petition does not establish that the
’724 patent qualifies as a “covered business method patent” under § 18(d)(1) of the
AIA. Therefore, we do not institute a covered business method patent review on
any of the asserted grounds as to any of the challenged claims.
V. ORDER
In consideration of the foregoing, it is ORDERED that the Petition is denied
and no trial is instituted.

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PETITIONER:

Robert Steinberg
Neil A. Rubin
LATHAM & WATKINS LLP
bob.steinberg@lw.com
neil.rubin@lw.com

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