       NOTE: This disposition is nonprecedential.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 Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2015-00657,     IPR2015-00660,     IPR2015-00662,
IPR2015-00666.
               ______________________

              Decided: February 22, 2018
               ______________________

   DARYL JOSEFFER, King & Spalding LLP, Washington,
DC, argued for appellant.      Also represented by
CHRISTOPHER ROBERT HEALY, JOSHUA NATHANIEL
MITCHELL; MATTHIAS A. KAMBER, Keker, Van Nest &
Peters LLP, San Francisco, CA.

   GARLAND STEPHENS, Weil, Gotshal & Manges LLP,
Houston, TX, argued for appellee. Also represented by
2              GOOGLE LLC   v. AT HOME BONDHOLDERS' LIQUID.



JUSTIN LILE CONSTANT, AUDREY LYNN MANESS; JARED
BOBROW, Redwood Shores, CA.
              ______________________

    Before LOURIE, WALLACH, and STOLL, Circuit Judges.
LOURIE, 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”) result-
ing 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 patent”) are not unpatentable as obvious.
See Google Inc. v. At Home Bondholders’ Liquidating Tr.,
Nos. IPR2015-00657, IPR2015-00660, 2016 WL 5104863,
slip op. at 61 (P.T.A.B. Aug. 10, 2016) (“’045 Decision”);
Google Inc. v. At Home Bondholders’ Liquidating Tr., Nos.
IPR2015-00662, IPR2015-00666, 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.
                      BACKGROUND
    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 patent Abstract. The
’698 patent is a continuation-in-part of the ’045 patent
and shares substantially the same specification. 1



     1  The only substantive difference between the pa-
tent specifications are two paragraphs that were added to
the ’698 patent. See ’698 patent col. 19 ll. 24–57. The
added material does not implicate any issues in this
appeal; therefore, for the purposes of this opinion, cita-
GOOGLE LLC   v. AT HOME BONDHOLDERS' LIQUID.               3



     According to the patents, rapid advancements in in-
ternet 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 associated with the URL. See id. col. 1 ll.
61–67. The web page may include, inter alia, “a number
of graphic images or elements, often referred to as ban-
ners.” See id. col. 2 ll. 9–12. Those “banners” are com-
monly 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 inter-
mediary server like a proxy server, for a specified period
of time. See id. col. 6 ll. 36–39. That way, if the user
requests the same page within that time period, the web
page and the banners “can be loaded directly 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 al-
lows 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 payments. See id. col 7 ll. 2–7; see
also id. col. 13 ll. 2–27. While one could simply 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 purport to resolve those competing
objectives by adding a non-blockable banner request



tions will be to the ’045 patent. Similarly, because both of
the Board’s decisions conduct substantially similar anal-
yses, citations in this opinion will be to the ’045 Decision.
4               GOOGLE LLC   v. AT HOME BONDHOLDERS' LIQUID.



before checking the cache for stored banners. See id. col.
14 l. 50–col. 15 l. 3.
    Independent claim 49 is illustrative and reads in part:
    49. A method for enabling distribution of a ban-
    ner over a computer network to a device . . . con-
    nected 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
        information intended to make said first
        banner request signal not blockable by the
        device or the intermediary server as a re-
        sult of a storage in the device or the inter-
        mediary 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 sig-
        nal to be transmitted . . . .
Id. col. 30 ll. 37–51 (emphases added).
    According to the claim, the 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 dis-
close 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 the URL address
include the strings “cgi-bin” and “?,” which are strings
GOOGLE LLC   v. AT HOME BONDHOLDERS' LIQUID.                5



“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 ban-
ner, 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 IPRs 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”). The independent
instituted claims all recite a similar non-blockable limita-
tion. 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 patent col. 28
ll. 17–23 (claim 1), and id. col. 29 ll. 15–20 (claim 17), and
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, the Board noted
that determining whether Angles disclosed the non-
blockable limitation would be dispositive of the obvious-
ness inquiry as to all the cited prior art combinations. See
’045 Decision, slip op. at 18.
    Angles describes “a system and method for delivering
customized electronic advertisements,” Angles Abstract,
and discloses an advertisement request that “references”
a Common Gateway Interface (“CGI”) script used to
generate dynamic responses, see id. col. 12 l. 67–col. 13 l.
19. In its Patent Owner Response, At Home argued that
the mere mention of requesting CGI scripts was insuffi-
cient for disclosure of a non-blockable request, because
6              GOOGLE LLC   v. AT HOME BONDHOLDERS' LIQUID.



not all requests that reference a CGI script are non-
blockable. Google replied that because requests for CGI
scripts are non-blockable by default due to its dynamic
nature, a person of ordinary skill in the art would under-
stand that disclosing a request to execute a CGI script
would also disclose 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 discloses an
advertisement request for a CGI script, Angles is silent on
any details regarding whether this request is non-
blockable. See id. at 21–23. And “[w]hether such a re-
quest 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.
    The Board also reviewed a 1996 textbook on CGI pro-
gramming (“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 Decision, slip op. at 23–
25. Dr. Kevin C. Almeroth, At Home’s expert, testified
that those documents represent how a person of ordinary
skill would understand CGI requests, and support the
position that a person of ordinary skill in the art “would
not have assumed automatically that Angles’s advertise-
ment request is non-blockable.” See id. The Board credit-
ed Dr. Almeroth’s testimony, and, as a result, found that
Angles was “inconclusive” about whether its advertise-
ment request was a non-blockable request. See id. The
Board therefore found that a person of ordinary skill in
the art would not have understood Angles to disclose the
non-blockable limitation. See id. at 29–30.
   The Board next considered At Home’s evidence of sec-
ondary considerations of nonobviousness: long felt but
unsolved need, industry praise, and widespread adoption
GOOGLE LLC   v. AT HOME BONDHOLDERS' LIQUID.              7



by the industry. See id. at 44–59. The Board found that
evidence of secondary considerations was weak, but found
that At Home showed “persuasive” evidence of nonobvi-
ousness. See id. at 59–60.
    Based on those findings, the Board concluded that
Google had not met its burden to prove by a preponder-
ance of the evidence that the instituted claims are un-
patentable as obvious. Id. at 61. Google timely appealed
to this court. We have jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(4)(A).
                        DISCUSSION
    We review the Board’s legal determinations de novo,
and the Board’s factual findings underlying those deter-
minations 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). Obvious-
ness is a question of law based on underlying factual
findings, including “the scope and content of the prior art,
differences 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 disclose 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. And because Angles uses a
standard web 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.
8              GOOGLE LLC   v. AT HOME BONDHOLDERS' LIQUID.



    At Home responds that substantial evidence supports
the Board’s finding that Angles does not disclose a non-
blockable request. Specifically, At Home argues that the
Board found persuasive the 1996 textbook, the 1995 W3C
publication, and Dr. Almeroth’s testimony, all of which
confirm that requests to CGI scripts can be blockable, and
are therefore not necessarily non-blockable. Based on this
evidence, At 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 auto-
matically assumed that the mere mention of a CGI re-
quest would also be a disclosure of a non-blockable
request.
    We agree with At Home that the Board’s determina-
tion that a person of ordinary skill would not have under-
stood Angles to disclose a non-blockable request was
supported by substantial evidence. The Board found
persuasive the 1996 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 understood CGI
requests. See id. Based on that evidence, the Board
found that a person of ordinary skill would not assume
that Angles disclosed a non-blockable request. See id.
Without more, such as specifics regarding the advertise-
ment 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 testimo-
ny. We therefore conclude that the Board’s finding that
Angles does not disclose the non-blockable limitation was
supported by substantial evidence. Because all the inde-
pendent instituted claims recite a non-blockable limita-
tion and were argued together, see id. at 30, the Board did
not err in concluding that none of the instituted claims
GOOGLE LLC   v. AT HOME BONDHOLDERS' LIQUID.              9



would have been obvious over the cited prior art combina-
tions.
    At oral argument, Google characterized a “request” as
a genus consisting of two species: blockable requests and
non-blockable requests. See Oral Argument at 3:31–4:17,
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, because Angles dis-
closes a CGI request, which can only be blockable or non-
blockable, Angles must disclose a non-blockable request
by virtue of disclosing a generic CGI request. See id.
That argument, while a good try, ultimately misses the
mark. The genus-species analysis is not applicable here.
Silence is not a genus. The issue here is whether there is
any disclosure of a non-blockable request at all. As dis-
cussed above, the 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 evi-
dence . . . was of limited or no value,” Appellant’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 principal refer-
ence 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 them unpersuasive.
                        CONCLUSION
    For the foregoing reasons, we affirm the decisions of
the Board.
                       AFFIRMED
