Driessen v. Best Buy Co., Inc. ( 2023 )

Case: 22-1907 Document: 28 Page: 1 Filed: 03/09/2023
NOTE: This disposition is nonprecedential.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: 2 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 pa-
tent 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 con-
trolling 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 “pre-
selection” limitation that is the focus of this appeal. For
example, claim 1 recites:
1. A payment system for a preselected and item-
ized physical Internet merchandise product or a
preselected and itemized particular content serial-
ized downloadable media material object product,
comprising:
a retail point of sale establishment; and
a physical access CARD for sale in said re-
tail point of sale establishment wherein or
whereon the physical access CARD is con-
tained URL information providing the in-
ternee [sic] address of a prepaid Internet
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DRIESSEN v. BEST BUY CO., INC. 3
transaction location for obtaining or access-
ing a preselected and itemized physical In-
ternet merchandise product or a preselected
and itemized particular content serialized
downloadable media material object prod-
uct, wherein preselection and itemization of
the preselected and itemized physical Inter-
net merchandise product or the preselected
and itemized particular content serialized
downloadable media material object prod-
uct is assessed before purchase of the physi-
cal access CARD, wherein purchase of the
physical access CARD provides ownership
of the preselected and itemized physical In-
ternet merchandise product or the prese-
lected 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 Sys-
tem 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 com-
bine 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 In-
ternet products or services[,] to be represented and pur-
chased in a retail store environment and then later down
loaded from the Internet.” See J.A. 751–58. NetPack dis-
closes an exemplary card representing “Chat Pack,”
J.A. 751, which is software that “offers a linear communi-
cation 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 Pa-
tent Owner Response argued that NetPack failed to dis-
close 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 ar-
gued that the “preselection” limitation should be construed
as preselection by a seller prior to sale, rather than selec-
tion 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 con-
struction 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 do-
ing so, the Board declined to “resolve whether preselection
is limited to seller side preselection only” because the
Board found that NetPack disclosed seller-side preselec-
tion. 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 con-
struction 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 con-
strue ‘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 unpatentabil-
ity determination should be reversed because neither Net-
Pack 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 obli-
gated 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 argu-
ment.” Id. at 1369 (citing Office Patent Trial Practice
Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012)). More-
over, the Board’s Institution Decision warned that “any
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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 dis-
agree 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 repre-
sent ownership of images, videos, audio files, and other
forms of media or ownership of physical or digital prop-
erty.” 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 In-
ternet.” ’052 patent col. 3 ll. 47–49 (emphasis added). Ac-
cordingly, 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 some-
thing 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 in-
tended a disputed term to cover more than the ordinary
and customary meaning revealed by the context of the in-
trinsic 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 Phil-
lips 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. Appel-
lant’s Br. 38. We disagree.
The only claim construction dispute that Mr. Driessen
raised in his POR and Surreply was whether the “preselec-
tion” 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 ar-
gue to the Board, as he does now on appeal, that “preselec-
tion” should also be construed based on what is
preselected—i.e., a seller preselecting a discrete, non-fun-
gible instance of a product. 2 See Appellant’s Br. 14–16, 38.
2 Even if Mr. Driessen asserted during oral argu-
ment before the Board that NetPack only disclosed prese-
lection of a “‘[t]ype’ of product offered by a seller” rather
than a discrete product offering, see, e.g., Appellant’s Br. 13
Case: 22-1907 Document: 28 Page: 8 Filed: 03/09/2023
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 con-
struction arguments on appeal or alter the scope of the
claim construction positions it took below.” (citing Interac-
tive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323,
1346–47 (Fed. Cir. 2001)).
CONCLUSION
We have considered Mr. Driessen’s remaining argu-
ments 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 “preselec-
tion” limitation. See e.g., Best Buy, 2021 WL 8086576,
at *8.