Docket No. 2016-2727, -2729
IPR2015-00657, -00660, -00662, -00666
LOURIE, WALLACH, STOLL
February 22, 2018
Brief summary: Board decision that At Home’s claims related to web page banner ads would not have been obvious affirmed.
Summary: Google appealed two final written decisions (FWDs) regarding four IPRs finding the challenged claims of At Home’s US 6,286,045 and US 6,014,698 (CIP of ‘045 based on “substantially the same specification”) directed a method of monitoring and controlling information delivered over a computer network invalid for not unpatentable for obviousness. The methods address problems related to “problems for internet advertisers” that occur when web pages are stored in a user computer’s cache which allows for faster loading of that page on that computer but does not inform advertisers that their banner ad appearing on the page was viewed (advertisers “rely on maintaining an accurate count of the number of times their banners are requested, usually for calculating payments”). At Home’s “‘045 and ‘698 patents purport to” solve that problem “by adding a non-blockable banner request before checking the cache for stored banners.” Google argued for obviousness based on combinations of prior art references but “relied solely on U.S. Patent No. 5,933,811 (‘Angles’) as disclosing the non-blockable limitation”, thus rendering the determination of “whether Angles disclosed the non-blockable limitation dipositive”. The Board concluded that “[w]hile Angles discloses an advertisement request for a CGI script”, which Google argued would be understood by a person of ordinary skill in the art to “also disclose a non-blockable request”, the reference “is silent on any details regarding whether this request in non-blockable.” The Board “reviewed a 1996 textbook on CGI programming” and considered At Home’s expert witness testimony “that a person of ordinary skill in the art ‘would not have assumed automatically that Angles’s advertisement request is non-blockable”, and “found that Angles was ‘inconclusive’ about whether its advertisement was a non-blockable request.” And while “[t]he Board found that evidence of secondary considerations was weak,” it “found that At Home showed ‘persuasive’ evidence of nonobviousness.” The FC panel explained that it reviews Board legal determinations de novo, and the factual findings underlying those determinations for substantial evidence” (Belden, FC 2015; Consol. Ed., US 1938 (“substantial evidence” is that which “a reasonable mind might accept” as supportive)). Google argued that “a ‘request’” is “a genus consisting of two species: blockable requests and non-blockable requests” and “because Angles discloses a CGI Request, which can only be blockable or non-blockable, Angles must disclose a non-blockable request by virtue of disclosing a generic CGI request.” The FC panel wrote that that “argument, while a good try, ultimately misses the mark” since “[t]he genus-species analysis is not applicable here” (“Silence is not a genus. The issue here is whether there is any disclosure of a non-blockable request at all.”) The FC panel agreed with At Home that the Board’s determination “that a person of ordinary skill would not have understood Angles to disclose a non-blockable request was supported by substantial evidence” (e.g., based on a textbook and At Home’s expert testimony, “the Board found Angles ‘inconclusive’”).