Federal Circuit Vacates PTAB Finding That Expert Testimony on Step Sequencing Was Conclusory

The Federal Circuit vacated a PTAB decision finding claims of U.S. Patent No. 8,784,113 unpatentable as obvious. The PTAB had dismissed expert testimony as conclusory. The Federal Circuit held that the dismissal was not supported by substantial evidence. The expert testimony relied on professional judgment and common sense to explain a simple design choice. The patent concerns an open and interactive e-learning system and method with platform-independent content publishing and student access. Claim 1 requires a licensing and reporting server to verify a user license and, if valid, provide a location designator such as a URL to a proxy for accessing a content player. The parties agreed the steps occur in sequence, with license verification before providing the location designator.

"The Federal Circuit held that the Board's finding that Dr. Almeroth's testimony was conclusory is not supported by substantial evidence. In the opinion, Judge Stoll found that the PTAB improperly dismissed expert testimony as conclusory when the expert relied on professional judgment and common sense to explain a simple design choice."

"The '113 patent describes a process in which content is readily publishable by a teacher and readily accessible by a student via platform-independent means, thereby producing a nearly universal e-learning marketplace. The disputed limitation in claim 1 requires a licensing and reporting server to verify a user license and, if valid, provide a location designator, such as a URL, to a proxy for accessing the content player."

"Go1 and OpenSesame agreed that this limitation sets forth two steps in sequence, requiring license verification to occur before providing the location designator. In the IPR petition, Go1 asserted that the claims were obvious over U.S. Patent Application Publication No. 2007/0111180, known as Sperle, in combination with U.S. Patent Application Publication No. 2004/0015703, known as Madison."

"Madison describes a system in which a web server generates a cryptographic ticket and sends a redirector file to an end user before any access verification occurs. Thus, Madison discloses first providing the location designator and then verifying the license, which is t"

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