Federal Circuit disposition — 23-1076

N OTE: This disposition is nonprecedential.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
______________________
D AVID ALBERTI, Kramer Alberti Lim & Tonkovich LLP,
Burlingame, CA, argued for appellant. Also represented by
J AMES BARABAS , R OBERT K RAMER , SAL L IM ; K ENNETH J.
WEATHERWAX , Lowenstein & Weatherwax LLP, Santa
Monica, CA.
P ETER J OHN SAWERT , Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, ar-
gued for appellee Katherine K. Vidal. Also represented by
AMY J. N ELSON, F ARHEENA YASMEEN R ASHEED, K EVIN
RICHARDS .
______________________
Before L OURIE, P ROST , and STARK, Circuit Judges.
STARK, Circuit Judge.
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IN RE: EXPRESS MOBILE, INC. 2
Express Mobile, Inc. (“Express Mobile”), owner of now-
expired 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 contempora-
neous” 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 “design-
ing 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 reex-
amination 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 dis-
plays, said method comprising:
(a) presenting a viewable menu having a
user selectable panel of settings describing
elements on a website, said panel of set-
tings 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;
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IN RE: EXPRESS MOBILE, INC. 3
(b) generating a display in accordance with
one or more user selected settings substan-
tially 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 gen-
erate 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 gen-
erate 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.
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IN RE: EXPRESS MOBILE, INC. 4
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 inter-
face object (e.g., textbox or image) shown within the build
frame 500 and change an attribute (e.g., size) using the as-
sociated panel object (e.g., by selecting an item in a drop-
down 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 pre-
view capability of what a real web page will look like.” Id.
at 1:25-31.
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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 exist-
ing 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 embodi-
ments 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.
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IN RE: EXPRESS MOBILE, INC. 6
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 han-
dle the actual display and diary owner input of the setting.”
J.A. 61 (emphasis in original). Thus, the examiner con-
cluded, VDM ’316 discloses limitation (b) of claim 1: “gen-
erating 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 law-
suits, 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 limita-
tion (b) of claim 1. In doing so, the Board expressly rejected
Express Mobile’s contentions that (i) the display is only up-
dated 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 immedi-
ately after,” the construction it was given in separate liti-
gation in the Northern District of California. See J.A. 9
(quoting J.A. 1826).
2 U.S. Patent No. 6,289,362.
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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 Pharmaceuti-
cals USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 329-33 (2015)).
When “a reexamination involves claims of an expired pa-
tent, . . . 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 subsidi-
ary factual findings underlying obviousness are reviewed
for substantial evidence, and any subsidiary factual find-
ings 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 “substan-
tially 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 con-
struction.”).
Express Mobile argues that the Board did not really
apply this correct construction when it evaluated the prior
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IN RE: EXPRESS MOBILE, INC. 8
art. Specifically, in Express Mobile’s view, VDM ’316 dis-
closes that a user’s selection will not be reflected in a dis-
play until after an additional input from the user, such as
clicking an “accept” button. This results in some percepti-
ble 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 “substan-
tially contemporaneously” limitation, the Board, according
to Express Mobile, effectively construed the claim term to
mean “occurring an unclear time afterwards, including af-
ter 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 contem-
poraneously” 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 pa-
tent at 10:37-41 (“Interactive fields 460 . . . can also be di-
rectly 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 selec-
tion list, which will become the current setting with the re-
sult 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 de-
fined in the panel’s (panel 400) JavaScript that creates a
near continuous, at least from a human perception point of
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IN RE: EXPRESS MOBILE, INC. 9
view, dynamic real time link, in order to monitor events oc-
curring inside the build engine.”) (emphasis added).
Thus, based on the intrinsic evidence, the correct con-
struction of “substantially contemporaneously” in the ’397
patent is “happening at the same period of time from a hu-
man 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 ap-
propriately applied the correct construction of “substan-
tially 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 ques-
tion[] 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 dis-
closure 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 point-
ing to different portions of it. Even assuming, without de-
ciding, that the record contains substantial evidence that
could, in theory, have supported Express Mobile’s interpre-
tation of the reference, the only issue before us is whether
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IN RE: EXPRESS MOBILE, INC. 10
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 evi-
dence.”). It does, for the reasons explained above and be-
low. 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 un-
supported, in the Board’s conclusion that a person of ordi-
nary 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), in-
sisting 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 ap-
plet 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 as-
serted that the Board failed even to consider the opinions
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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 recog-
nized that conclusory expert testimony is inadequate to
support an obviousness determination on substantial evi-
dence 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 be-
cause [the party] offered it.”). The Board also made a fac-
tual 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 in-
struction’” 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 dis-
play. 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, partic-
ularly given the numerous references to, and analysis of,
Mr. Weadock’s opinion throughout the Board’s written de-
cision. 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 (discuss-
ing Mr. Weadock’s opinion).
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IN RE: EXPRESS MOBILE, INC. 12
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: “Fi-
nally, a new (updated) page is generated and displayed.”
VDM ’316 at Figure 4(l) see also Opening Br. at 52. How-
ever, 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 un-
less 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, noth-
ing in VDM ’316 requires “(A) entry of the password after
selecting the privacy level rather than before or (B) re-en-
tering the password if it had already been entered for a pre-
vious 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
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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 result-
ing 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 dis-
play 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 ex-
pressly rejected Express Mobile’s narrow reading of VDM
’316. It addressed the specific arguments and evidence (in-
cluding 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 hold-
ing 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 argu-
ments 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
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