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NOTE: This disposition is nonprecedential.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.

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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 Case: 22-1907 Document: 28 Page: 3 Filed: 03/09/2023

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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

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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 Case: 22-1907 Document: 28 Page: 5 Filed: 03/09/2023

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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 Case: 22-1907 Document: 28 Page: 6 Filed: 03/09/2023

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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 Case: 22-1907 Document: 28 Page: 7 Filed: 03/09/2023

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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.

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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.