A Google Opponent Actually Wins an IPR Battle with the Tech Giant

On February 22, 2018, the U.S. Court of Appeals for the Federal Circuit issued a non-precedential decision in Google, LLC v. At Home Bondholders’ Liquidating Trust (2016-2727, 2016-2729). In its decision, the Federal Circuit affirmed two inter partes review (IPR) decisions and found for Google’s opponent, At Home Bondholders’ Liquidating Trust.

The Federal Circuit panel consisted of Judges Lourie, Wallach, and Stoll. Judge Lourie authored the panel’s opinion.

The patents at issue were U.S. Patent No. 6,286,045 and U.S. Patent No. 6,014,698, both of which deal with technology involving caching Internet advertising banners locally at a device for quicker loading of a webpage the second time the page is requested. Prior art systems for doing so were problematic because the cache would block the subsequent webpage request from being transmitted over a network, thus preventing advertisers from maintaining an accurate count of the number of times their banners had been displayed. This in turn resulted in advertisers not being able to adequately calculate payments for advertising.

To maintain the benefits of caching while still addressing advertiser concerns, the At Home patents improve existing technology by sending a “non-blockable” banner request over a network even if the banner has already been stored in the device’s cache, thereby allowing advertisers to keep an accurate count of how many times their banners have been displayed. According to the patents, one way to configure a non-blockable banner request is to have the URL address include the strings “cgi-bin” and “?,” which are strings “conventionally used” to generate dynamic responses, making it “unsuitable for caching.” The patented technology then proceeds as a conventional banner request would by checking the cache for the stored banner, and, if not previously stored in the cache, sending a second request for the banner.

Google petitioned for a series of IPRs, arguing that certain claims of At Home’s patents would have been obvious at the time their inventions were made. The Patent Trials and Appeal Board (“Board”) instituted review on many claims of both patents, with all of the independent claims for which the IPRs were instituted reciting the non-blockable subject matter. Because Google relied solely on U.S. Patent No. 5,933,811 to Angles as disclosing the non-blockable limitation, the Board noted that determining whether Angles disclosed the non-blockable limitation would be dispositive of the obviousness inquiry as to all the cited prior art combinations.

According to the Federal Circuit’s opinion, Angles describes “a system and method for delivering customized electronic advertisements and discloses an advertisement request that ‘references’ a Common Gateway Interface (‘CGI’) script used to generate dynamic responses.”

At Home argued before the Board that the mere mention of requesting CGI scripts was insufficient for disclosure of a non-blockable request because 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 their dynamic nature, the skilled artisan would understand that disclosing a request to execute a CGI script would also disclose a non-blockable request.

Ultimately, the Board determined that Angles does not teach the non-blockable subject matter. It reasoned that Angles does not disclose any details on whether its advertisement request for a CGI script is in fact non-blockable. The Board also indicated that “[w]hether such a request is non-blockable depends on the particular syntax used for the request”, noting that the strings “cgi-bin” and “?,” are not disclosed in Angles.

The Board also reviewed a 1996 textbook and a 1995 publication indicating that CGI scripts can in fact be blockable, as well as testimony from At Home’s expert regarding those materials. The Board credited the expert’s testimony and found that Angles was “inconclusive” regarding whether its request was a non-blockable request. The Board therefore found that the skilled artisan would not have understood Angles to disclose the non-blockable subject matter.

In reviewing the Board’s determinations, the Federal Circuit panel first observed that Angles was “key” to the appeal. The panel’s opinion then noted that substantial evidence supported the Board’s finding that the skilled artisan would not have understood Angles to disclose a non-blockable request. In doing so, the Federal Circuit noted that the Board found the 1996 textbook, the 1995 publication, and the testimony of At Home’s expert on those materials to be persuasive in establishing that the skilled artisan would not assume that Angles disclosed a non-blockable request. This was because Angles’s CGI scripts might actually be blockable, as the evidence itself indicated. Since the Federal Circuit saw no error in the Board’s analysis, it affirmed both IPR decisions.

The last page of the Federal Circuit’s analysis is of particular note. The Federal Circuit indicated that “[a]t oral argument, Google characterized a ‘request’ as a genus consisting of two species: blockable requests and non-blockable requests…According to Google, 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…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 discussed above, the Board properly determined that there was not [emphasis added].”

The italicized portion above is a bit of a non-sequitur, given that Google’s alleged genus was a CGI request generally and CGI requests were in fact disclosed. It was non-blockable requests in particular that were not disclosed. Perhaps the Federal Circuit meant “silence is not a species” instead. But notwithstanding, it’s still a heartening to see a decision that does not rest on a non-teaching.