NOTE: This disposition is nonprecedential.

 

United States Court of Appeals 

for the Federal Circuit ______________________ 

JAMES L. DRIESSEN,

Appellant

v.

BEST BUY CO., INC., TARGET CORPORATION, 

WALMART, INC.,

Appellees

______________________ 

2022-1907

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2021-

00198.

______________________ 

Decided: March 9, 2023

______________________ 

JAMES L. DRIESSEN, Fairfax, VA, pro se.

 J. CHRISTOPHER CARRAWAY, Klarquist Sparkman, LLP, 

Portland, OR, for appellees. Also represented by SARAH 

ELISABETH JELSEMA, ANDREW M. MASON. 

______________________ 

Before LOURIE, REYNA, and CHEN, Circuit Judges.

Case: 22-1907 Document: 28 Page: 1 Filed: 03/09/2023
2 DRIESSEN v. BEST BUY CO., INC. 

PER CURIAM.

James Driessen appeals a Final Written Decision by

the Patent Trial and Appeal Board (Board) in an inter 

partes review proceeding involving U.S. Patent 

No. 10,304,052 (’052 patent). The Board determined that 

claims 1–20 of the ’052 patent are unpatentable under 35 

U.S.C. § 103(a). Because Mr. Driessen forfeited the claim 

construction arguments he now raises on appeal and does 

not challenge the Board’s unpatentability determination

independent of his forfeited arguments, we affirm. 

BACKGROUND

Mr. Driessen owns the ’052 patent, which is generally 

directed to a “retail point of sale for the Internet.” ’052 patent col. 4 ll. 21−22. The ’052 patent describes a card sold 

as a retail item in an in-person transaction. Id. at col. 4 

ll. 59–60, col. 5 ll. 3−5. The card “provides a method of controlling web access” that allows the purchaser to access 

content or merchandise at “the website or specific web 

page(s) intended by the seller.” Id. at col. 4 ll. 62–65, col. 5 

ll. 3–15.

Independent claims 1, 14, and 19 each include a “preselection” limitation that is the focus of this appeal. For 

example, claim 1 recites: 

1. A payment system for a preselected and itemized physical Internet merchandise product or a 

preselected and itemized particular content serialized downloadable media material object product, 

comprising:

a retail point of sale establishment; and

a physical access CARD for sale in said retail point of sale establishment wherein or 

whereon the physical access CARD is contained URL information providing the internee [sic] address of a prepaid Internet 

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DRIESSEN v. BEST BUY CO., INC. 3

transaction location for obtaining or accessing a preselected and itemized physical Internet merchandise product or a preselected 

and itemized particular content serialized 

downloadable media material object product, wherein preselection and itemization of 

the preselected and itemized physical Internet merchandise product or the preselected 

and itemized particular content serialized 

downloadable media material object product is assessed before purchase of the physical access CARD, wherein purchase of the 

physical access CARD provides ownership 

of the preselected and itemized physical Internet merchandise product or the preselected and itemized particular content 

serialized downloadable media material 

object product. 

’052 patent, claim 1 (emphasis added). 

Best Buy Co., Inc., Target Corporation, and Walmart, 

Inc. (collectively, Appellees) filed a petition for inter partes

review, alleging that claims 1−20 would have been obvious 

over NetPack, alone or in combination with Boyle.1 

1 Boyle is a published PCT application titled “A System and Method for Providing E-Commerce Access to an 

Internet Website.” PCT Publication No. WO 00/17796, 

code (54). Appellees and the Board relied on Boyle as a 

secondary reference to NetPack for dependent claim 4 but

relied only on NetPack for all other claims. Best Buy Co. v. 

Driessen, No. IPR2021-00198, 2021 WL 8086576, at *4–17 

(P.T.A.B. Apr. 15, 2021). Mr. Driessen does not dispute 

that Boyle discloses the features of dependent claim 4 or 

that a skilled artisan would have been motivated to combine NetPack and Boyle.

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4 DRIESSEN v. BEST BUY CO., INC. 

NetPack is an excerpt from the website of a company and 

describes cards that allow “software manufacture[r]s[ or]

some book publishers[’s] [products or services], or other Internet products or services[,] to be represented and purchased in a retail store environment and then later down 

loaded from the Internet.” See J.A. 751–58. NetPack discloses an exemplary card representing “Chat Pack,” 

J.A. 751, which is software that “offers a linear communication language[] and file transfer ability,” J.A. 797. 

Appellees’ petition did not seek construction of any 

claim terms, J.A. 143, but Mr. Driessen’s Preliminary Patent Owner Response argued that NetPack failed to disclose the “preselection” limitation because NetPack only 

disclosed purchaser-side selection, J.A. 1185. Accordingly, 

the Board’s Institution Decision specifically instructed the 

parties to brief the meaning of “preselected.” J.A. 1670. 

Mr. Driessen’s Patent Owner Response (POR) again argued that the “preselection” limitation should be construed 

as preselection by a seller prior to sale, rather than selection by a purchaser at the time of sale. J.A. 2298–2300. 

Appellees’ Reply disagreed but also argued that NetPack’s

Chat Pack card satisfied Mr. Driessen’s seller-side construction of the “preselection” limitation. J.A. 2359–64, 

2368–71. At oral argument, Mr. Driessen seemed to argue, 

for the first time, that the ’052 patent claims are directed 

to non-fungible tokens (NFTs). See, e.g., J.A. 2491.

In its Final Written Decision, the Board determined 

that claims 1–20 were unpatentable under 35 U.S.C. 

§ 103(a). Best Buy Co. v. Driessen, No. IPR2021-00198, 

2021 WL 8086576, at *19 (P.T.A.B. Apr. 15, 2021). In doing so, the Board declined to “resolve whether preselection 

is limited to seller side preselection only” because the 

Board found that NetPack disclosed seller-side preselection. Id. at *4, *7–9, *13–17.

Mr. Driessen timely appealed, arguing that the Board 

erred by (1) not construing the claims as being directed to 

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DRIESSEN v. BEST BUY CO., INC. 5

a non-fungible token (NFT), and (2) not construing the 

“preselection” limitation. Appellant’s Br. 10–11, 34–39. 

We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

DISCUSSION

We review the ultimate question of the proper construction of a patent claim de novo, with any underlying 

fact findings reviewed for substantial evidence. Dionex 

Softron GmbH v. Agilent Techs., Inc., 56 F.4th 1353, 1358 

(Fed. Cir. 2023). However, “[t]he Board is required to construe ‘only those terms . . . that are in controversy, and only 

to the extent necessary to resolve the controversy.’” 

Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. 

Cir. 2019) (alteration in original) (quoting Vivid Techs.,

Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 

1999)). 

A 

Mr. Driessen principally argues that the Board should 

have construed the ’052 patent claims as being “directed to 

a form of an NFT,” and therefore the Board’s unpatentability determination should be reversed because neither NetPack nor Boyle disclose NFTs. Appellant’s Br. 4–5, 10, 34–

39. We disagree. The Board is not required to consider 

new, untimely arguments that a patent owner presents for 

the first time during oral argument, and we review such a 

refusal for abuse of discretion. See Dell Inc. v. Acceleron, 

LLC, 884 F.3d 1364, 1369–70 (Fed. Cir. 2018) (explaining 

that “[u]nless [the Board] cho[oses] to exercise its waiver 

authority under 37 C.F.R. § 42.5(b), the Board [i]s obligated to dismiss . . . untimely argument[s] . . . raised for 

the first time during oral argument”). 

The Patent Office’s guidelines provide that “[n]o new 

evidence or arguments may be presented at the oral argument.” Id. at 1369 (citing Office Patent Trial Practice 

Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012)). Moreover, the Board’s Institution Decision warned that “any 

Case: 22-1907 Document: 28 Page: 5 Filed: 03/09/2023
6 DRIESSEN v. BEST BUY CO., INC. 

arguments not raised in the [patent owner’s] response may 

be deemed waived,” J.A. 1691, and the Board expressly 

warned Mr. Driessen that his oral argument “is supposed 

to be limited to what was in [his POR] brief,” see J.A. 2496. 

Mr. Driessen admits that “the words ‘non-fungible token’ 

did not appear in [his POR] . . . or Surreply” and that he 

discussed “for the first time . . . the nature of an NFT with 

the Board during oral argument.” Appellant’s Br. 35–36

(emphasis added). Because Mr. Driessen did not timely 

raise his NFT-based claim construction argument to the 

Board, the argument was forfeited, and the Board did not 

abuse its discretion in refusing to consider this argument. 

We need not address the argument’s merits on appeal.

Even if we were to reach the argument’s merits, we disagree with Mr. Driessen’s NFT-based construction. Mr. 

Driessen refers this court to a publication from the U.S. 

Department of Treasury explaining that “NFTs are digital 

units, or tokens, on an underlying blockchain that represent ownership of images, videos, audio files, and other 

forms of media or ownership of physical or digital property.” See Study of the Facilitation of Money Laundering 

and Terror Finance Through the Trade in Works of Art, 

U.S. Dep’t of the Treasury 25 (Feb. 2022), https://

home.treasury.gov/system/files/136/Treasury_Study_WoA. 

pdf (emphasis added) (cited by Appellant’s Br. 4 n.3). The 

’052 patent’s specification, however, is silent regarding 

blockchain technology or non-fungible tokens. The patent

instead only mentions tokens in a disclaimer, stating that 

“[t]his invention is not an Internet cash token system used 

as an anonymous means to get money to spend on the Internet.” ’052 patent col. 3 ll. 47–49 (emphasis added). Accordingly, construing the ’052 patent claims, which lack 

any reference to NFTs, as directed to NFTs would expand 

the scope of the claims well beyond anything described in 

the claims or specification. See Nystrom v. TREX Co., 424 

F.3d 1136, 1145 (Fed. Cir. 2005) (“[I]n the absence of something in the written description and/or prosecution history 

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DRIESSEN v. BEST BUY CO., INC. 7

to provide explicit or implicit notice to the public—i.e., 

those of ordinary skill in the art—that the inventor intended a disputed term to cover more than the ordinary 

and customary meaning revealed by the context of the intrinsic record, it is improper to read the term to encompass 

a broader definition simply because it may be found in a 

dictionary, treatise, or other extrinsic source.” (citing Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005)).

B 

Mr. Driessen also argues that the Board erred by not 

construing the “preselection” limitation even though the 

parties offered competing constructions therefor. Appellant’s Br. 38. We disagree. 

The only claim construction dispute that Mr. Driessen

raised in his POR and Surreply was whether the “preselection” limitation should be “directed to both who preselects 

and when preselected—rather than just when selection 

takes place” such that “[e]ntity specific preselection should 

be part of the claim construction analysis.” J.A. 2298–99

(second emphasis added); see also J.A. 2285–86 (arguing 

that NetPack’s “purchaser/end-user orchestrated selection

. . . should not be confused with the seller side preselection 

. . . disclosed and claimed in the [’]052 patent” (underlining 

added)); J.A. 2386–87 (arguing that the ’052 patent claims 

are limited “to only internet items for sale with seller-side 

preselection” (emphasis added)). Mr. Driessen did not argue to the Board, as he does now on appeal, that “preselection” should also be construed based on what is 

preselected—i.e., a seller preselecting a discrete, non-fungible instance of a product.2 See Appellant’s Br. 14–16, 38. 

2 Even if Mr. Driessen asserted during oral argument before the Board that NetPack only disclosed preselection of a “‘[t]ype’ of product offered by a seller” rather 

than a discrete product offering, see, e.g., Appellant’s Br. 13 

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8 DRIESSEN v. BEST BUY CO., INC. 

Accordingly, this argument is forfeited.3 See Conoco, Inc. 

v. Energy & Env’t Int’l, L.C., 460 F.3d 1349, 1358–59 (Fed. 

Cir. 2006) (“[A] party may not introduce new claim construction arguments on appeal or alter the scope of the 

claim construction positions it took below.” (citing Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 

1346–47 (Fed. Cir. 2001)). 

CONCLUSION

We have considered Mr. Driessen’s remaining arguments and find them unpersuasive. Because Mr. Driessen 

does not challenge the correctness of the Board’s Final 

Written Decision independent of his forfeited arguments, 

we affirm the Board’s determination that claims 1–20 are

unpatentable. 

AFFIRMED

COSTS

Costs to Appellees. 

n.14, that argument was untimely for being raised at oral 

argument to the Board in the first instance. See Dell, 884 

F.3d at 1369–70.

3 The Board’s Final Written Decision relied on Mr. 

Driessen’s entity-focused construction for the “preselection” limitation. See e.g., Best Buy, 2021 WL 8086576, 

at *8. 

Case: 22-1907 Document: 28 Page: 8 Filed: 03/09/2023