N OTE : This disposition is nonprecedential.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 Trad emark Office, Patent Trial and Appeal Board in No s
. IPR2015

- 00657, IPR2015

- 00660, IPR2015

- 00662, IPR2015

- 00666.

______________________ Decided: February 22, 2018

______________________ D ARYL J OSEFFER , King & Spalding LLP, Washington, DC, argued for appellant. Also represented by C HRISTOPHER R OBERT H EALY , J OSHUA N ATHANIEL M ITCHELL ; M ATTHIAS A. K AMBER , Keker, Van Nest & Peters LLP, San Francisco, CA.
G ARLAND S TEPHENS , Weil, Gotshal & Manges LLP, Houston, TX, argued for appellee. Also represented byGOOGLE LLC v. AT HOME BONDHOLDERS ' LIQUID

. 2

J USTIN L ILE C ONSTANT , A UDREY L YNN M ANESS ; J ARED B OBROW , Redwood Shores, CA.

______________________ Before L OURIE , W ALLACH , and S TOLL , Circuit Judges. L OURIE , 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”) resul ting 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 pa tent”) are not unpatentable as obviou s. See Google Inc. v. At Home Bondholders’ Liquidat ing Tr. , No s
. IPR 2015

- 00657, IPR 2015

- 00660, 2016 WL 5104863, slip op. at 61 (P.T.A.B. Aug. 10, 2016) (“ ’045 Decision ”); Google Inc. v. At Home Bondholders’ Liqui dating Tr. , No s
. IPR 2015

- 00662, IPR 2015

- 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

. B ACKGROUND 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 p atent Abstract. The ’698 patent is a continuation

- in

- part of the ’045 patent and share s substantially the same specification

. 1

1 The only substantive difference between the p atent specifications are two paragraphs that were added to the ’698 patent. S ee ’698 patent col. 19 ll . 24

– 57 . The added material does not implicate any issues in this appeal; therefore, for the purposes of t his opinion, cit a-GOOGLE LLC v. AT HOME BONDHOLDERS ' LIQUID

. 3

According to the patents, rapid ad vancements in i nternet 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 associ ated with the URL. See i d. col. 1 ll. 61

– 67. The web page may include , inter alia , “a number of graphic images or elements, often referred to as ba nners.” See i d. col. 2 ll. 9 –12 . Th o se “banners” are co mmonly 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 inte rmediary server like a proxy server, for a specified period of time

. See id. col. 6 ll. 36

– 39. That way, if the user
re quests the same page within that time period, the web page and the banners “ can be loaded dire ctly 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 a llows 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 payment s
. See id. col 7 ll. 2

– 7; see also id. col. 13 ll. 2

– 27

. While one could si mply 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 pur port to re solve tho se competing objectives by a dding a non - blockable banner request

tions will be to the ’045 patent. Similarly, because both of the Board’s decisions conduct substantially similar ana lys e s, citations in this opinion will be to the ’045 Decision

.GOOGLE LLC v. AT HOME BONDHOLDERS ' LIQUID

. 4

before checking the cache for stored banners

. See id. col. 14 l. 50

– col. 15 l. 3. I ndependent claim 49 is illustrative and reads in part : 49. A method for enabling distribution of a ba nner over a computer network to a device

. . . co nnected 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 info rm ation intended to make said first banner r e quest signal not blockable by the device or the intermediary server as a r esult of a storage in the device or the inte rmediary 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 si gnal to be transmi tted

. . . . Id. col. 30 ll. 37

– 51 (emphases added)

. According to the claim, t he 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 di sclose 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 th e URL address include the strings “cgi

- bin” and “ ? ,” which are stringsGOOGLE LLC v. AT HOME BONDHOLDERS ' LIQUID

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“ 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 ba nner , 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 IPR s 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”)

. T he independent instituted claims all recite a similar non - blockable limit ation. 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 p atent col. 28 ll. 17

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

– 20 (claim 17), an d 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, t he Board noted that determining whether Angles disclosed the non

blockable limitation would be dispositive of the obviou sness inquiry as to all the cited prior art combinations

. See ’045 Decision , slip op. at 18

. Angles describes “ a system and method for delivering
cus tomized electronic advertisements,” Angles Abstract, and discloses an advertisement request that “references”
a Common Gateway Interface (“ CGI ”) script used to generate dynamic responses , s ee id. col. 12 l. 67

– col. 13 l. 19

. In its Patent Owner Response, A t Home argued that the mere mention of requesting CGI scripts was in sufficient for disclosure of a non

- blockable request, becauseGOOGLE LLC v. AT HOME BONDHOLDERS ' LIQUID

. 6

not all requests that reference a CGI script are non blockable

. Google replied that b ecause requests for CGI scripts are non - blockable by default due to its dynamic nature , a person of ordinary skill in the art would unde rstand that disclosing a request to execute a CGI script would also dis close 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 disclose s an advertisement request for a CGI script, Angles is silent on any details regarding whether this request is non

blockable

. See i d. at 2 1– 23

. And “[w]hether such a r equest 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

. T he Board also reviewed a 1996 textbook on CGI pr ogram ming (“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 Dec ision , slip op. at 23

– 25

. Dr. Kevin C. Almeroth , At Home ’s expert, testified that th o se documents represent how a person of ordinary skill would understand CGI requests , and sup port the position that a person of ordinary skill in the art “ would not have assumed automatically that Angles’s advertis ement request is non -blockable.” See i d. The Board credi ted Dr. Almeroth’s testimony , and , as a result, found that Angles was “inconclusive” about whether its advertis ement request was a non - blockable request. See i d. T he Board therefore found that a per son of ordinary skill in the art would not have under stoo d Angles to disclose the
non - blockable limitation. See i d. at 2 9– 30

. The Board next considered At Home ’s evidence of se condary considerations of nonobviousness : l ong felt but unsolved need, industry praise, and widespread adoptionGOOGLE LLC v. AT HOME BONDHOLDERS ' LIQUID

. 7

by the industry

. See i d. at 44

– 59. The Board found that evidence of secondary considerations was weak, but found that At Home showed “persuasive” evidence of nonobv iousness. See i d. at 59

– 60. Based on tho se findings, t he Board concluded that Google had not met its burden to prove by a preponde rance of the evidence that the instituted claims are u npatentable as obvious. I d. at 61. Google timely appealed to this cour t . We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A). D ISCUSSION We review the Board’s legal determinations de novo , and the Board’s factual findings underlying those dete rminations 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). Obviou sness is a question of law based on underlyin g factual findings, including “the scope and content of the prior art, difference s 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 dis clos e 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 . A nd because Angles uses a standard w eb 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.GOOGLE LLC v. AT HOME BONDHOLDERS ' LIQUID

. 8

A t Home responds that substantial evidence supports the Board’s finding that Angles does not disclose a non blockable request

. Specifically, At Home argue s that the Board found persuasive the 1996 textbook , the 1995 W3C publication, and Dr. Al m eroth’s testimony, all of which
c onfirm that requests to CGI scripts can be blockable , and are therefore not necessarily non - blockable. Based on this evidence , A t 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 aut omatically assume d that the mere mention of a CGI r equest would also be a disclosure of a non - blockable request. We agree with A t Home that the Board’s determin ation that a person of ordinary skill wo uld not have unde rstoo d Angles to disclose a non - blockable request was supported by substantial evidence

. The Board found persuasive the 19 96 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 understoo d CGI requests. See i d. Based on that evidence , t he Board found that a person of ordinary skill would not assume that Angles disclose d a non - blockable request

. See i d. Without more, such as specifics regarding the advertis ement 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 testim ony. We therefore conclude that the Board’s finding that Angles does not disclo se the non - blockable limitation was supported by substantial evidence. Because all the ind ependent instituted claims recite a non - blockable limit ation and were argued together, s ee id. at 30, the Board did not err in concluding that none of the instituted claimsGOOGLE LLC v. AT HOME BONDHOLDERS ' LIQUID

. 9

would have been obvious over the cited prior art combin ations. At oral argument, Google characterized a “ re quest ” as
a genus consisting of two species: blockable requests and
non - blockable requests

. See Oral Argument at 3:3 1– 4:1 7 , 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, b ecause Angles di scloses a CGI request, which can only be blockable or non blocka ble, Angles must disclose a non - blockable request by v irtue of disclosing a generic CGI request. See id. T hat argument , while a good try, ultimately misses the mark. The genus

- species analysis is not applicable here

. Silence is not a genus. T he issue here is whether there is any disclosure of a non

- blockable request at all

. As di scussed above, t he 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 ev idence . . . was of limited or no value , ” Appel lant ’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 p rincipal refe rence 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 the m unpersuasive. C ONCLUSION For the foregoing reasons, we affirm the decisions of the Board

. AFFIRMED