Google LLC v. at Home Bondholders' Liquid.

NOTE: This disposition is nonprecedential.

United States Court of Appeals

for the Federal Circuit

______________________

GOOGLE LLC,

Appellant

v.

AT HOME BONDHOLDERS' LIQUIDATING TRUST,

Appellee

______________________

2016-2727, 2016-2729

______________________

Appeals from the United States Patent and Trade-

mark Office, Patent Trial and Appeal Board in Nos.

IPR2015-00657, IPR2015-00660, IPR2015-00662,

IPR2015-00666.

______________________

Decided: February 22, 2018

______________________

DARYL JOSEFFER, King & Spalding LLP, Washington,

DC, argued for appellant. Also represented by

CHRISTOPHER ROBERT HEALY, JOSHUA NATHANIEL

MITCHELL; MATTHIAS A. KAMBER, Keker, Van Nest &

Peters LLP, San Francisco, CA.

GARLAND STEPHENS, Weil, Gotshal & Manges LLP,

Houston, TX, argued for appellee. Also represented by

2 GOOGLE LLC v. AT HOME BONDHOLDERS' LIQUID.

JUSTIN LILE CONSTANT, AUDREY LYNN MANESS; JARED

BOBROW, Redwood Shores, CA.

______________________

Before LOURIE, WALLACH, and STOLL, Circuit Judges.

LOURIE, Circuit Judge.

Google LLC (“Google”) appeals from two final written

decisions of the United States Patent and Trademark

Office Patent Trial and Appeal Board (“the Board”) result-

ing from four inter partes review (“IPR”) proceedings

concluding that claims 49–53, 55–59, 61–67, and 69–73 of

U.S. Patent 6,286,045 (“’045 patent”) and claims 1–3, 5–7,

9, 11–20, 22, 24–31, 34–39, 41–47, and 49 of U.S. Patent

6,014,698 (“’698 patent”) are not unpatentable as obvious.

See Google Inc. v. At Home Bondholders’ Liquidating Tr.,

Nos. IPR2015-00657, IPR2015-00660, 2016 WL 5104863,

slip op. at 61 (P.T.A.B. Aug. 10, 2016) (“’045 Decision”);

Google Inc. v. At Home Bondholders’ Liquidating Tr., Nos.

IPR2015-00662, IPR2015-00666, 2016 WL 8969204, at

*24 (P.T.A.B. Aug. 10, 2016) (“’698 Decision”). Because

the Board did not err in its decisions, we affirm.

BACKGROUND

At Home Bondholders’ Liquidating Trust (“At Home”)

owns the ’045 and ’698 patents directed to a method of

monitoring and controlling information delivered over a

computer network. See, e.g., ’045 patent Abstract. The

’698 patent is a continuation-in-part of the ’045 patent

and shares substantially the same specification. 1

1 The only substantive difference between the pa-

tent specifications are two paragraphs that were added to

the ’698 patent. See ’698 patent col. 19 ll. 24–57. The

added material does not implicate any issues in this

appeal; therefore, for the purposes of this opinion, cita-

GOOGLE LLC v. AT HOME BONDHOLDERS' LIQUID. 3

According to the patents, rapid advancements in in-

ternet technology and “visually pleasing” graphics have

increased the use of advertising and other promotional

materials displayed with web pages. See ’045 patent col. 2

ll. 38–41. Typically, when a user clicks on a Uniform

Resource Locator (“URL”), that action triggers the user’s

terminal to send a request over the network to retrieve

the web page associated with the URL. See id. col. 1 ll.

61–67. The web page may include, inter alia, “a number

of graphic images or elements, often referred to as ban-

ners.” See id. col. 2 ll. 9–12. Those “banners” are com-

monly used in internet advertising. See id. col. 2 l. 38–col.

3 l. 6. The requested web page with its banners are often

stored or “cached” on the user’s terminal, or on an inter-

mediary server like a proxy server, for a specified period

of time. See id. col. 6 ll. 36–39. That way, if the user

requests the same page within that time period, the web

page and the banners “can be loaded directly from the

terminal’s memory.” See id. col. 6 ll. 39–49. The cache

therefore blocks the request from passing through to the

network. See id. col. 6 l. 36–col. 7 l. 2.

While caching reduces the load on the network and al-

lows for faster loading speeds, it creates problems for

internet advertisers, who rely on maintaining an accurate

count of the number of times their banners are requested,

usually for calculating payments. See id. col 7 ll. 2–7; see

also id. col. 13 ll. 2–27. While one could simply stop

caching all requests, that would eliminate the efficiencies

of caching, making this solution “highly impractical and

undesirable.” See id. col. 13 l. 28–col. 14 l. 10. The ’045

and ’698 patents purport to resolve those competing

objectives by adding a non-blockable banner request

tions will be to the ’045 patent. Similarly, because both of

the Board’s decisions conduct substantially similar anal-

yses, citations in this opinion will be to the ’045 Decision.

4 GOOGLE LLC v. AT HOME BONDHOLDERS' LIQUID.

before checking the cache for stored banners. See id. col.

14 l. 50–col. 15 l. 3.

Independent claim 49 is illustrative and reads in part:

49. A method for enabling distribution of a ban-

ner over a computer network to a device . . . con-

nected to the computer network via an

intermediary server, comprising:

causing a first banner request signal to be

transmitted from the device . . . , wherein

said first banner request signal includes

information intended to make said first

banner request signal not blockable by the

device or the intermediary server as a re-

sult of a storage in the device or the inter-

mediary server of said requested banner

prior to the generation of said first banner

signal by the device; [the “non-blockable

limitation”]

sending a banner location signal . . . to the

device . . . ; and

determining if said requested banner is

stored on the device and, if . . . not . . . ,

then causing a second banner request sig-

nal to be transmitted . . . .

Id. col. 30 ll. 37–51 (emphases added).

According to the claim, the first non-blockable banner

request will always pass through to the network, i.e., the

cache will not “block” the request, regardless whether the

banner being requested has already been stored in the

cache. See id. col. 14 l. 57–col. 15 l. 3. The patents dis-

close multiple ways to configure the non-blockable request

so that it will not be blocked by the cache. See id. col. 17 l.

22–col. 18 l. 61. One such way is to have the URL address

include the strings “cgi-bin” and “?,” which are strings

GOOGLE LLC v. AT HOME BONDHOLDERS' LIQUID. 5

“conventionally used” to generate dynamic responses,

making it “unsuitable for caching.” See id. col. 18 ll. 48–

61. The method then proceeds as a conventional banner

request would by checking the cache for the stored ban-

ner, and, if not previously stored in the cache, sending a

second banner request for the banner. See id. col. 15 l.

48–col. 16 l. 22. The patents therefore achieve the goal of

accurate counting while preserving the performance gains

of caching. See id. col. 14 ll. 33–45.

Google petitioned for a series of IPRs arguing that

certain claims of the ’045 and ’698 patents would have

been obvious at the time their inventions were made. The

Board instituted review as to claims 49–53, 55–59, 61–67,

and 69–73 of the ’045 patent and claims 1–3, 5–7, 9, 11–

20, 22, 24–31, 34–39, 41–47, and 49 of the ’698 patent

(collectively, the “instituted claims”). The independent

instituted claims all recite a similar non-blockable limita-

tion. Compare id. col. 30 ll. 46–51 (claim 49), with id. col.

31 ll. 23–26 (claim 59), and id. col. 31 ll. 55–59 (claim 64),

and id. col. 32 ll. 27–31 (claim 72), and ’698 patent col. 28

ll. 17–23 (claim 1), and id. col. 29 ll. 15–20 (claim 17), and

id. col. 30 ll. 6–10 (claim 30), and id. col. 30 ll. 53–57

(claim 39), and id. col. 31 ll. 25–30 (claim 44). Because

Google relied solely on U.S. Patent 5,933,811 (“Angles”) as

disclosing the non-blockable limitation, the Board noted

that determining whether Angles disclosed the non-

blockable limitation would be dispositive of the obvious-

ness inquiry as to all the cited prior art combinations. See

’045 Decision, slip op. at 18.

Angles describes “a system and method for delivering

customized electronic advertisements,” Angles Abstract,

and discloses an advertisement request that “references”

a Common Gateway Interface (“CGI”) script used to

generate dynamic responses, see id. col. 12 l. 67–col. 13 l.

19. In its Patent Owner Response, At Home argued that

the mere mention of requesting CGI scripts was insuffi-

cient for disclosure of a non-blockable request, because

6 GOOGLE LLC v. AT HOME BONDHOLDERS' LIQUID.

not all requests that reference a CGI script are non-

blockable. Google replied that because requests for CGI

scripts are non-blockable by default due to its dynamic

nature, a person of ordinary skill in the art would under-

stand that disclosing a request to execute a CGI script

would also disclose a non-blockable request.

The Board determined that Angles did not teach the

non-blockable limitation. See ’045 Decision, slip op. at 27.

It found that the “essential problem with Angles is its

lack of disclosure.” Id. at 25. While Angles discloses an

advertisement request for a CGI script, Angles is silent on

any details regarding whether this request is non-

blockable. See id. at 21–23. And “[w]hether such a re-

quest is non-blockable depends on the particular syntax

used for the request,” such as the strings “cgi-bin” and “?,”

which Angles also does not disclose. Id. at 21–22.

The Board also reviewed a 1996 textbook on CGI pro-

gramming (“1996 textbook”), see J.A. 1521–30, and a 1995

World Wide Web Consortium (“W3C”) publication, see J.A.

1566–70, which disclosed requests for CGI scripts that

were blockable by cache. See ’045 Decision, slip op. at 23–

25. Dr. Kevin C. Almeroth, At Home’s expert, testified

that those documents represent how a person of ordinary

skill would understand CGI requests, and support the

position that a person of ordinary skill in the art “would

not have assumed automatically that Angles’s advertise-

ment request is non-blockable.” See id. The Board credit-

ed Dr. Almeroth’s testimony, and, as a result, found that

Angles was “inconclusive” about whether its advertise-

ment request was a non-blockable request. See id. The

Board therefore found that a person of ordinary skill in

the art would not have understood Angles to disclose the

non-blockable limitation. See id. at 29–30.

The Board next considered At Home’s evidence of sec-

ondary considerations of nonobviousness: long felt but

unsolved need, industry praise, and widespread adoption

GOOGLE LLC v. AT HOME BONDHOLDERS' LIQUID. 7

by the industry. See id. at 44–59. The Board found that

evidence of secondary considerations was weak, but found

that At Home showed “persuasive” evidence of nonobvi-

ousness. See id. at 59–60.

Based on those findings, the Board concluded that

Google had not met its burden to prove by a preponder-

ance of the evidence that the instituted claims are un-

patentable as obvious. Id. at 61. Google timely appealed

to this court. We have jurisdiction pursuant to 28 U.S.C.

§ 1295(a)(4)(A).

DISCUSSION

We review the Board’s legal determinations de novo,

and the Board’s factual findings underlying those deter-

minations for substantial evidence. Belden Inc. v. Berk-

Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). A finding

is supported by substantial evidence if a reasonable mind

might accept the evidence to support the finding. Consol.

Edison Co. v. NLRB, 305 U.S. 197, 229 (1938). Obvious-

ness is a question of law based on underlying factual

findings, including “the scope and content of the prior art,

differences between the prior art and the claims at issue,

the level of ordinary skill in the pertinent art, and any

objective indicia of non-obviousness.” Randall Mfg. v.

Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) (citing KSR Int’l

Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)).

We first address the disclosure of Angles, which is key

to this appeal. Google argues that the Board erred in

determining that Angles did not disclose a non-blockable

request by failing to assess it from the perspective of a

person of ordinary skill in the art. As support for its

position, Google contends that requests for CGI scripts

are non-blockable by default. And because Angles uses a

standard web server, a person of ordinary skill in the art

would have had no reason to consider that Angles referred

to anything other than standard CGI requests, which are

“typically” non-blockable. Appellant’s Br. 31.

8 GOOGLE LLC v. AT HOME BONDHOLDERS' LIQUID.

At Home responds that substantial evidence supports

the Board’s finding that Angles does not disclose a non-

blockable request. Specifically, At Home argues that the

Board found persuasive the 1996 textbook, the 1995 W3C

publication, and Dr. Almeroth’s testimony, all of which

confirm that requests to CGI scripts can be blockable, and

are therefore not necessarily non-blockable. Based on this

evidence, At Home contends that the Board correctly

determined that Angles was at best inconclusive, and a

person of ordinary skill in the art would not have auto-

matically assumed that the mere mention of a CGI re-

quest would also be a disclosure of a non-blockable

request.

We agree with At Home that the Board’s determina-

tion that a person of ordinary skill would not have under-

stood Angles to disclose a non-blockable request was

supported by substantial evidence. The Board found

persuasive the 1996 textbook and 1995 W3C publication,

which disclosed CGI requests that were blockable. See

’045 Decision, slip op. at 23–25. The Board also credited

Dr. Almeroth’s testimony, which stated that the 1996

textbook and 1995 W3C publication represent how a

person of ordinary skill would have understood CGI

requests. See id. Based on that evidence, the Board

found that a person of ordinary skill would not assume

that Angles disclosed a non-blockable request. See id.

Without more, such as specifics regarding the advertise-

ment request’s functionality or syntax, the Board found

Angles “inconclusive.” Id. at 21–23.

We see no error in the Board’s analysis of the cited

references or its decision to credit Dr. Almeroth’s testimo-

ny. We therefore conclude that the Board’s finding that

Angles does not disclose the non-blockable limitation was

supported by substantial evidence. Because all the inde-

pendent instituted claims recite a non-blockable limita-

tion and were argued together, see id. at 30, the Board did

not err in concluding that none of the instituted claims

GOOGLE LLC v. AT HOME BONDHOLDERS' LIQUID. 9

would have been obvious over the cited prior art combina-

tions.

At oral argument, Google characterized a “request” as

a genus consisting of two species: blockable requests and

non-blockable requests. See Oral Argument at 3:31–4:17,

Google LLC v. At Home Bondholders’ Liquidating Tr.,

Nos. 16-2727, 16-2729 (Fed. Cir. Jan. 8, 2018),

http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20

16-2727.mp3. According to Google, because Angles dis-

closes 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. See id.

That argument, while a good try, ultimately misses the

mark. The 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. As dis-

cussed above, the Board properly determined that there

was not. See ’045 Decision, slip op. at 20–30.

At Home also argues that secondary considerations

support the Board’s conclusion of nonobviousness. Google

argues that the Board found “nearly every piece of evi-

dence . . . was of limited or no value,” Appellant’s Br. 38,

and thus there could not have been substantial evidence

to support the Board’s nonobviousness decision. Because

we have agreed with the Board that the principal refer-

ence itself does not lead to a conclusion of obviousness, we

need not evaluate those arguments relating to secondary

considerations.

We have considered the remaining arguments, but

find them unpersuasive.

CONCLUSION

For the foregoing reasons, we affirm the decisions of

the Board.

AFFIRMED