NOTE: This disposition is nonprecedential.

 

United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE: EXPRESS MOBILE, INC.,

Appellant

______________________ 

2023-1076

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 90/014,615.

______________________ 

Decided: May 29, 2024

______________________ 

DAVID ALBERTI, Kramer Alberti Lim & Tonkovich LLP, 

Burlingame, CA, argued for appellant. Also represented by 

JAMES BARABAS, ROBERT KRAMER, SAL LIM; KENNETH J.

WEATHERWAX, Lowenstein & Weatherwax LLP, Santa 

Monica, CA.

 PETER JOHN SAWERT, Office of the Solicitor, United 

States Patent and Trademark Office, Alexandria, VA, argued for appellee Katherine K. Vidal. Also represented by 

AMY J. NELSON, FARHEENA YASMEEN RASHEED, KEVIN 

RICHARDS. 

______________________ 

Before LOURIE, PROST, and STARK, Circuit Judges.

STARK, Circuit Judge. 

Case: 23-1076 Document: 41 Page: 1 Filed: 05/29/2024
2 IN RE: EXPRESS MOBILE, INC. 

Express Mobile, Inc. (“Express Mobile”), owner of nowexpired U.S. Patent No. 6,546,397 (“’397 patent”), appeals 

an ex parte reexamination decision by the Patent Trial and 

Appeal Board (“Board”), sustaining an examiner’s rejection 

of claim 1 for obviousness. Express Mobile concedes the 

Board’s stated construction of “substantially contemporaneous” is correct but asserts on appeal that the Board erred 

in its application of this construction. We conclude that 

Express Mobile’s issue actually constitutes a disagreement 

with certain factual findings, all of which are supported by 

substantial evidence. Accordingly, we affirm.

I 

A 

The ’397 patent, entitled “Browser Based Web Site 

Generation Tool and Run Time Engine,” relates to “designing and building a web page” using “a browser based build 

engine.” ’397 Patent Abstract. The patent has a filing date 

of December 2, 1999 and expired before the ex parte reexamination at issue in this appeal.

Claim 1, the only claim involved in this appeal, recites:

A method to allow users to produce Internet 

websites on and for computers having a browser 

and a virtual machine capable of generating displays, said method comprising: 

(a) presenting a viewable menu having a 

user selectable panel of settings describing 

elements on a website, said panel of settings being presented through a browser on 

a computer adapted to accept one or more 

of said selectable settings in said panel as 

inputs therefrom, and where at least one of 

said user selectable settings in said panel 

corresponds to commands to said virtual 

machine; 

Case: 23-1076 Document: 41 Page: 2 Filed: 05/29/2024
IN RE: EXPRESS MOBILE, INC. 3

(b) generating a display in accordance with 

one or more user selected settings substantially contemporaneously with the selection 

thereof, 

(c) storing information representative of 

said one or more user selected settings in a 

database; 

(d) generating a website at least in part by 

retrieving said information representative 

of said one or more user selected settings 

stored in said database; and 

(e) building one or more web pages to generate said website from at least a portion of 

said database and at least one run time file, 

where said at least one run time file utilizes 

information stored in said database to generate virtual machine commands for the 

display of at least a portion of said one or 

more web pages. 

’397 patent cl. 1 (emphasis added). The patent discloses 

that, in one embodiment, “[a] browser based build engine 

is provided that includes a browser based interface.” Id. at 

2:33-34. This browser-based interface provides a 

“WYSIWYG (what you see is what you get)” process for 

building a web page, by which “the web designer [can] 

work[] directly on and with the final web page.” Id. at 2:34-

37.

Case: 23-1076 Document: 41 Page: 3 Filed: 05/29/2024
4 IN RE: EXPRESS MOBILE, INC. 

Figure 37, reproduced below, shows an example of a 

browser-based “user interface presented by the build tool,” 

including “panel 400,” through which a user can change 

various attributes of the displayed interface objects (e.g., 

textbox, image). Id. at Fig. 37, 10:19-21. 

In this exemplary embodiment, a user can select an interface object (e.g., textbox or image) shown within the build 

frame 500 and change an attribute (e.g., size) using the associated panel object (e.g., by selecting an item in a dropdown list) within panel 400. See id. at 10:27-53. Any 

change made to the interface object “become[s] the current 

setting with the result immediately processed by the build 

engine 352 and displayed in the build frame.” Id. at 10:45-

46. The patent explains that conventional tools were not 

browser-based, and thus they could “offer only a crude preview capability of what a real web page will look like.” Id. 

at 1:25-31.

Case: 23-1076 Document: 41 Page: 4 Filed: 05/29/2024
IN RE: EXPRESS MOBILE, INC. 5

B 

VDM ’3161 is prior art to the ’397 patent and discloses 

techniques for “allow[ing] a user to create a ‘diary.’” VDM 

’316 at 2:2-11. In VDM ’316, a “diary owner can edit existing diary content and layout by entering an edit mode.” Id. 

at 2:57-60. 

Figure 4(a), reproduced above, illustrates “exemplary 

diary page 400 [that] is being viewed with browser 110,” 

where “diary applet 112 has popped up a diary navigator 

bar window 402.” Id. at 9:28-30. “The diary owner can 

change properties of a content object on a diary page.” Id.

at 12:24-25. One method of VDM ’316 “enables embodiments such as a diary to display and manipulate contents 

within an HTML document and, at the same time, uses the 

browser as a vehicle to handle the actual display and diary 

owner input.” Id. at 13:3-7.

C 

On November 25, 2020, a third party petitioned the 

U.S. Patent and Trademark Office (“Patent Office”) for ex 

parte reexamination of claims 1-6, 8-15, 17, 19, 20, 23-25, 

35, and 37 of the ’397 patent. The Patent Office granted 

the petition and ultimately issued a final office action 

1 U.S. Patent No. 6,415,316.

Case: 23-1076 Document: 41 Page: 5 Filed: 05/29/2024
6 IN RE: EXPRESS MOBILE, INC. 

confirming the patentability of claims 2-6, 8-15, 17, 19-20, 

23-25, 35, and 37 but rejecting claim 1 as obvious based on 

a combination of VDM ’316 and VDM ’362.2 There are no 

disputes before us relating to VDM ’362.

Pertinent to this appeal, the examiner stated that 

VDM ’316 “allows the contents [of the diary] to be edited 

and at the same time uses the browser as a vehicle to handle the actual display and diary owner input of the setting.” 

J.A. 61 (emphasis in original). Thus, the examiner concluded, VDM ’316 discloses limitation (b) of claim 1: “generating a display in accordance with one or more user 

selected settings substantially contemporaneously with 

the selection thereof.” Id.

Express Mobile appealed the examiner’s rejection of 

claim 1 to the Board. The Board sustained the rejection. 

Noting that the ’397 patent was involved in multiple lawsuits, the Board adopted the construction that had been 

adopted in the Eastern District of Texas: “happening at the 

same period of time from a human perspective.” See J.A. 9 

(quoting J.A. 1812). Based on this construction, the Board 

agreed with the examiner that VDM ’316 disclosed limitation (b) of claim 1. In doing so, the Board expressly rejected 

Express Mobile’s contentions that (i) the display is only updated after activating an accept button, (ii) the display is 

only updated “eventually,” and (iii) sometimes no display is 

updated even when it should be. See J.A. 20-28. The Board 

added that its decision would remain the same even if it 

construed the disputed term to mean “occurring immediately after,” the construction it was given in separate litigation in the Northern District of California. See J.A. 9 

(quoting J.A. 1826).

2 U.S. Patent No. 6,289,362.

Case: 23-1076 Document: 41 Page: 6 Filed: 05/29/2024
IN RE: EXPRESS MOBILE, INC. 7

Express Mobile timely appealed the decision of the 

Board. We have jurisdiction under 28 U.S.C. 

§ 1295(a)(4)(A). 

II

“We review the Board’s ultimate claim construction in 

a reexamination de novo.” In re CSB-Sys. Int’l, Inc., 832 

F.3d 1335, 1340 (Fed. Cir. 2016) (citing Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 329-33 (2015)). 

When “a reexamination involves claims of an expired patent, . . . the [Patent Office] applies the claim construction 

principles outlined by this court in Phillips v. AWH 

Corp., 415 F.3d 1303 (Fed. Cir. 2005).” In re Rambus, Inc., 

753 F.3d 1253, 1256 (Fed. Cir. 2014). The Board’s subsidiary factual findings underlying obviousness are reviewed 

for substantial evidence, and any subsidiary factual findings underlying claim construction are reviewed for clear 

error. See In re Applied Materials, Inc., 692 F.3d 1289, 

1294 (Fed. Cir. 2012); see also Network-1 Techs., Inc. v. 

Hewlett-Packard Co., 981 F.3d 1015, 1022 (Fed. Cir. 2020). 

What the prior art teaches is a question of fact. See In re 

Berg, 320 F.3d 1310, 1312 (Fed. Cir. 2003). 

III

The issue on appeal involves the claim term “substantially contemporaneously,” which appears in element (b) of 

claim 1 of the ’397 patent. Without objection from Express 

Mobile, the Board adopted a construction Express Mobile 

had proposed and a district court had adopted: “happening 

at the same period of time from a human perspective.” J.A. 

8-9 (“Appellant asks that we adopt the prior district court’s 

constructions for two terms: ‘setting’ and ‘substantially 

contemporaneously.’ . . . [W]e adopt the [prior] court’s construction.”). 

Express Mobile argues that the Board did not really 

apply this correct construction when it evaluated the prior 

Case: 23-1076 Document: 41 Page: 7 Filed: 05/29/2024
8 IN RE: EXPRESS MOBILE, INC. 

art. Specifically, in Express Mobile’s view, VDM ’316 discloses that a user’s selection will not be reflected in a display until after an additional input from the user, such as 

clicking an “accept” button. This results in some perceptible delay, to a human being, between making a change to 

a setting and the display then showing that change. By 

nonetheless finding that VDM ’316 disclosed the “substantially contemporaneously” limitation, the Board, according 

to Express Mobile, effectively construed the claim term to 

mean “occurring an unclear time afterwards, including after an additional user interaction (e.g., clicking an accept 

button).” Opening Br. at 27.

We agree with the Board’s construction and disagree 

with Express Mobile that the Board failed to apply it.

A 

We reach the same claim construction conclusion as the 

Board, the Eastern District of Texas, and Express Mobile. 

That is, the correct construction of “substantially contemporaneously” as used in the ’397 patent is “happening at 

the same period of time from a human perspective.”

The ’397 patent repeatedly explains that any change 

made by the user is “immediately” displayed. See ’397 patent at 10:37-41 (“Interactive fields 460 . . . can also be directly changed by the user by typing into the field, with the 

result immediately . . . displayed in the build frame 500.”); 

id. at 10:44-47 (“The user can click on an item in the selection list, which will become the current setting with the result immediately . . . displayed in the build frame.”); id at 

10:49-52 (“One or more settings can be changed through a 

pop-up window, with the results immediately . . . displayed 

in the build frame 500.”). The patent further teaches that 

immediateness is measured from a human’s perspective, 

not a computer’s. See id. at 23:21-24 (“A polling loop is defined in the panel’s (panel 400) JavaScript that creates a 

near continuous, at least from a human perception point of 

Case: 23-1076 Document: 41 Page: 8 Filed: 05/29/2024
IN RE: EXPRESS MOBILE, INC. 9

view, dynamic real time link, in order to monitor events occurring inside the build engine.”) (emphasis added).

Thus, based on the intrinsic evidence, the correct construction of “substantially contemporaneously” in the ’397 

patent is “happening at the same period of time from a human perspective.” See generally Seabed Geosolutions (US) 

Inc. v. Magseis FF LLC, 8 F.4th 1285, 1287 (Fed. Cir. 2021) 

(“[W]e still ‘give[] primacy’ to intrinsic evidence . . . .”).

B 

Contrary to Express Mobile’s insistence, the Board appropriately applied the correct construction of “substantially contemporaneously.” Express Mobile’s contention is 

based on its own interpretation of VDM ’316 as requiring 

additional user input before, after a perceptible delay, a 

user’s selection is reflected in the user’s display. This was 

not, however, the Board’s reading of the prior art reference 

– and “[w]hat the prior art discloses . . . [is a] fact question[] that we review for substantial evidence.” Intel Corp. 

v. PACT XPP Schweiz AG, 61 F.4th 1373, 1378 (Fed. Cir. 

2023). The Board’s understanding of the disclosures of 

VDM ’316 is supported by substantial evidence.

Specifically, the Board relied on Figure 4(l) and the disclosure in VDM ’316 that “‘[t]he method of FIG. 4(l) enables 

embodiments such as a diary to display and manipulate 

contents within an HTML document and, at the same time, 

uses the browser as a vehicle to handle the actual display 

and diary owner input.’” J.A. 22 (quoting VDM ’316 at 

13:3-7).

Express Mobile counters by both challenging the

Board’s reading of these portions of VDM ’316 and by pointing to different portions of it. Even assuming, without deciding, that the record contains substantial evidence that 

could, in theory, have supported Express Mobile’s interpretation of the reference, the only issue before us is whether 

Case: 23-1076 Document: 41 Page: 9 Filed: 05/29/2024
10 IN RE: EXPRESS MOBILE, INC. 

substantial evidence supports the Board’s reading. See 

Consolo v. Fed. Mar. Comm’n, 383 U.S. 607, 620 (1966)

(“[T]he possibility of drawing two inconsistent conclusions

from the evidence does not prevent an administrative 

agency’s finding from being supported by substantial evidence.”). It does, for the reasons explained above and below. Nonetheless, we briefly address Express Mobile’s 

counterarguments.

Express Mobile contends that VDM ’316 does not use 

“at the same time” in the literal sense. Instead, Express 

Mobile would have us read “at the same time” as having no 

temporal significance and merely meaning “as well as” or 

“in addition to.” But there is nothing unreasonable, or unsupported, in the Board’s conclusion that a person of ordinary skill would understand “at the same time” to mean, 

literally, two things happening “at the same time.”

In support of its contention, Express Mobile points to a 

statement in VDM ’316 that the diary page is “eventually

regenerate[d],” VDM ’316, 13:22-25 (emphasis added), insisting that “eventually” is opposite of “immediately.” 

However, as the Board explained, this part of the reference

may not be relating to the human perspective, and “[t]o be 

sure, from the computer’s perspective, there will be some 

delay in VDM ’316 after a button is selected while the applet regenerates the HTML and sends the regenerated 

HTML to the browser.” J.A. 25. The Board was free to 

reach this conclusion notwithstanding the contrary expert 

testimony offered by Express Mobile, which the Board

deemed conclusory and void of “any substantive analysis of 

the actual amount of time it would take to regenerate an 

HTML file and send that file to a browser.” J.A. 25.3 As 

3 At oral argument, counsel for Express Mobile asserted that the Board failed even to consider the opinions 

Case: 23-1076 Document: 41 Page: 10 Filed: 05/29/2024
IN RE: EXPRESS MOBILE, INC. 11

we have previously held, the Board is not required to accept 

even ostensibly unrebutted expert testimony. See TQ 

Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1359 (Fed. 

Cir. 2019) (“This court’s opinions have repeatedly recognized that conclusory expert testimony is inadequate to 

support an obviousness determination on substantial evidence review.”); Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 

1014, 1022 (Fed. Cir. 2017) (“Moreover, the Board was not 

required to credit [a party’s] expert evidence simply because [the party] offered it.”). The Board also made a factual finding, supported by substantial evidence, that 

clicking on an “accept” button is not the only way for the 

display in VDM ’316 to be regenerated. 

In a similar vein, Express Mobile argues that VDM ’316 

only updates the display “‘periodically’ or at a ‘user’s instruction’” and that “these time frames for updating are not 

‘substantially contemporaneously.’” Opening Br. at 33 

(quoting VDM ’316, 9:14-16). But this disclosure pertains 

to updates made to the diary server, not to the user’s display. See VDM ’316, 9:14-16 (“In step 310 diary applet 112 

sends changes (if any) for the user’s diary to the diary server 

(periodically or at user’s instruction).”) (emphasis added). 

of its expert, Mr. Weadock. See Opening Br. at 34, 44. 

There is no basis for reaching such a conclusion. To the 

contrary, we have every reason to presume, as we generally 

do, that the Board considered the evidence before it, particularly given the numerous references to, and analysis of, 

Mr. Weadock’s opinion throughout the Board’s written decision. See e.g., Yeda Rsch. v. Mylan Pharms. Inc., 906 F.3d 

1031, 1046 (Fed. Cir. 2018) (“As we have said numerous 

times, failure to explicitly discuss every fleeting reference 

or minor argument does not alone establish that the Board 

did not consider it.”); see also J.A. 20, 22-26, 28-29 (discussing Mr. Weadock’s opinion).

Case: 23-1076 Document: 41 Page: 11 Filed: 05/29/2024
12 IN RE: EXPRESS MOBILE, INC. 

Thus, this disclosure is irrelevant and does not undermine 

the Board’s finding. 

Moreover, Express Mobile makes much of the following 

sentence appearing in one of the figures in VDM ’316: “Finally, a new (updated) page is generated and displayed.” 

VDM ’316 at Figure 4(l) see also Opening Br. at 52. However, in context, the Board was free to read “finally” as 

“merely refer[ring] to being the last of the bullet points” 

and “no way impl[ying] that the time required to generate 

and display the ‘new (updated) page’ is so long that it would 

not be substantially contemporaneous from a human user’s 

perspective.” J.A. 28. 

The Board also rejected an Express Mobile argument 

to the effect that “nothing will happen to the display” in 

VDM ’316 after a diary owner changes a privacy level unless a user enters a password and clicks “OK.” See J.A. 29-

30. The Board’s rejection of this understanding of VDM 

’316 is supported by the fact that, as the Board noted, nothing in VDM ’316 requires “(A) entry of the password after 

selecting the privacy level rather than before or (B) re-entering the password if it had already been entered for a previous change.” J.A. 30 (internal emphasis omitted). As the 

Board observed, VDM ’316 is silent as to “whether clicking 

OK button 457 is required to regenerate the display.” J.A. 

30. All of this constitutes substantial evidence support for 

the Board’s understanding of the prior art reference.

Finally, Express Mobile faults the Board for failing to 

appreciate that VDM ’316 discloses that if a diary owner 

makes a change to the privacy setting for a content object, 

she may observe no visible change to the diary page. This 

is irrelevant. The challenged claims of Express Mobile’s 

patent do not require a display change on every occasion a 

user makes a selection. Instead, they only require that 

when a user selection requires a display change that the

ensuing display change occur “substantially 

Case: 23-1076 Document: 41 Page: 12 Filed: 05/29/2024
IN RE: EXPRESS MOBILE, INC. 13

contemporaneously” with the user selection. See J.A. 29 

(“[N]either the user’s perception nor a change in the resulting image is recited in the claim.”). In both the ’397 patent 

and VDM ’316, when a user selection does not require a 

corresponding visual change, it is not necessary for the display to change nevertheless. 

In the end, the Board had before it a factual dispute 

over what was disclosed by a prior art reference. In making 

the required findings of fact, the Board considered and expressly rejected Express Mobile’s narrow reading of VDM 

’316. It addressed the specific arguments and evidence (including expert testimony) proffered by Express Mobile and 

found, reasonably, that Express Mobile “fail[ed] to provide 

sufficient evidence that [any] delay,” such as the time a 

button is selected and the time after the applet regenerates 

the HTML and sends it to the browser, “will be significant 

or noticeable from the human user’s perspective.” J.A. 25 

(internal emphasis omitted); see also J.A. 22 (Board holding Express Mobile’s “assertions that the accept button 

must be selected in order to see any change in the display 

is therefore contradicted by the record”). We have been 

provided no meritorious basis to disturb these findings, 

each of which is supported by the substantial evidence. 

IV

We have considered Express Mobile’s remaining arguments but find them unpersuasive. Thus, we affirm the

Board’s decision to sustain the examiner’s rejection of 

claim 1 of the ’397 patent as being obvious.

AFFIRMED

Case: 23-1076 Document: 41 Page: 13 Filed: 05/29/2024