Denying Institution of Inter Partes Review IPR2014-00314

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Takeaway: The Board may deny institution when a petitioner overlooks language distinguishing the challenged claims from its prior art references.

In its Decision, the Board denied institution of inter partes review of claims 1, 2, 4-6, 8, and 9 of the ’724 Patent because Petitioner was unlikely to prevail in its assertion that its prior art references could reasonably be construed to anticipate the challenged claims. The ’724 Patent concerns a website tool for receiving user feedback.

Petitioner relied on prior art reference CustomerSat, which concerns a different customer feedback tool for websites. The ’724 Patent, however, entails a feedback feature capable of receiving input from any page within a website without requiring the user to click through to a separate feedback page. According to the challenged claims, after a user indicates a willingness to provide feedback by submitting a generic rating for the website, a second icon appears “on [that] particular webpage” soliciting more detailed feedback. CustomerSat, on the other hand, requires users to access a separate feedback page before submitting detailed input.

In light of the same-page rating functionality claimed in the ’724 Patent but not disclosed in CustomerSat, the Board concluded that Petitioner was unlikely to prevail in its contention that CustomerSat anticipated the challenged claims.

Petitioner also contended that the challenged claims were obvious over CustomerSat in view of prior art reference Medinets. Medinets, like the challenged claims, describes a feedback form containing more than one icon—one soliciting a generic rating, and another enabling more detailed input. Unlike the challenged claims, however, the Medinets feedback fields become available only after a user clicks a link from an initial page that directs the user to a feedback page.

The Board disagreed with Petitioner that Medinets supplied additional teachings that, combined with CustomerSat, rendered the challenged claims obvious. The Board noted that Medinets does not provide the same-page feedback functionality that the ’724 Patent describes. Moreover, because Medinets displays both the generic and detailed feedback forms simultaneously, the Board reasoned that it does not anticipate the ’724 Patent’s functionality, which initially displays only the generic field and solicits detailed feedback only after the user submits generic input. Accordingly, the Board concluded that, even if a skilled artisan would have been led to combine the teachings of CustomerSat and Medinets, the combination would not result in a feedback tool similar to the one described in the challenged claims.

Qualtrics, LLC v. OpinionLab, Inc., IPR2014-00314
Paper 14: Decision Denying Institution of Inter Partes Review
Dated: June 30, 2014
Patent 6,421,724
Before: Rama G. Elluru, Jeremy M. Plenzler, Georgianna W. Braden, and Carl M. DeFranco
Written by: DeFranco
Related Proceedings: OpinionLab, Inc. v. Qualtrics Labs, Inc., 13-01574 (N.D. Ill. 2013); and OpinionLab, Inc. v.iPerceptions Inc., 12-05662 (N.D. Ill. 2012)