Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Driessen v. Best Buy Co., No. 2022-1907 (Fed. Cir. Mar. 9, 2023), affirming the Patent Trial and Appeal Board’s decision in an Inter Partes Review (“IPR”).
James Driessen is the owner of U.S. Patent No. 10,304,052 (“the ’052 Patent”), which is directed to a “retail point of sale for the Internet” and describes the sale of a card that enables the purchaser to access content or merchandise at a website or specific web page(s) intended by the seller. The ’052 Patent has three independent claims that each include a “pre-selection” limitation.
Driessen asserted the ’052 Patent against Best Buy Co., Inc., Target Corporation, and Walmart, Inc. (“Appellees”), and Appellees subsequently filed an IPR petition alleging that claims 1-20 of the ’052 Patent are obvious in view of two prior art references—namely, a PCT application (“Boyle”) and a website excerpt (“NetPack”). During the IPR, Driessen’s argued that NetPack did not disclose the “preselection limitation” because it only disclosed “purchaser-side selection,” and the Board permitted briefing on the meaning of “preselected.” During oral arguments, Driessen argued for the first time that the claims of the ’052 Patent are directed to non-fungible tokens (“NFTs”).
The Board ultimately held that claims 1-20 were unpatentable under 35 U.S.C. § 103(a). Specifically, the Board found that the NetPack reference disclosed both seller-side and purchaser-side preselection and declined to determine whether “preselected” was limited to seller side preselection. The Board did not consider Driessen’s NFT argument. Driessen appealed, arguing that the Board erred by 1) not construing the claims of the ’052 Patent as being directed to NFTs, and 2) not construing the “preselection” limitation.
The Federal Circuit affirmed. On the first issue, the Court found that the Board did not abuse its discretion in refusing to consider the NFT argument because it was untimely and was, therefore, forfeited. The Court further held that, even if considered, such an interpretation would expand the scope of the claims beyond the specification, which was silent regarding blockchain technology or NFTs. On the second issue, the Court found that Driessen’s arguments to the Board about the “preselection” limitation were directed to “who” does the preselection and “when” the preselection occurs. In contrast, Driessen’s appeal arguments focused on “what” is preselected. The Court found this new argument forfeited as untimely.