Go1 Pty, Ltd. v. OpenSesame — Federal Circuit Vacates PTAB Decision, Finds Board Wrongly Dismissed Obviousness Expert Testimony

Background

OpenSesame owns U.S. Patent No. 8,784,113, titled “Open and Interactive E-Learning System and Method.” The patent claims an e-learning delivery system with a licensing/reporting server that verifies a user’s license to access content and then provides a URL for accessing the content player. Go1 filed an inter partes review (IPR) challenging the patent’s claims as obvious under 35 U.S.C. § 103 based on a combination of two prior art references: Sperle (a learning management system) and Madison (a streaming content access control system).

The core dispute centered on a single claim limitation: the order in which two steps occur. Claim 1 requires the system to first verify the license validity and then provide a location designator (URL) for accessing content. Madison, one of the prior art references, disclosed these same two steps but in the opposite order — first sending a redirector file (URL) to the user and then verifying access. Go1’s expert, Dr. Kevin Almeroth, testified that a person of ordinary skill would have viewed the order of these steps as a simple, obvious design choice.

The PTAB found that Go1 failed to prove the claims were unpatentable, concluding that Dr. Almeroth’s testimony was “unsupported and conclusory” and could not “fill in gaps in the prior art references.” Go1 appealed.

Related: OpenSesame v. GO1 — Court Adopts Topological Network Architecture in E-Learning Patent Claim Construction (earlier ruling in this litigation).

The Court’s Holding

The Federal Circuit vacated and remanded, holding that the Board’s finding that Dr. Almeroth’s testimony was conclusory was not supported by substantial evidence.

Judge Stoll’s opinion emphasized that KSR International Co. v. Teleflex Inc. requires considering the “ordinary creativity” of a skilled artisan, not just what prior art references expressly teach. Here, the relevant design choice was binary and “finite”: either verify the license first and then send the URL, or send the URL first and then verify. The Board failed to consider that “such a simple design choice may be within the ‘ordinary creativity’ and ‘technical grasp’ of a skilled artisan.”

The court found that Dr. Almeroth’s testimony was not conclusory — it was grounded in his understanding of how a skilled artisan would approach the sequencing issue. Because the technology was straightforward and OpenSesame never put in evidence that a skilled artisan would not have known to verify a license before providing access, the Board erred in requiring a specific prior art reference teaching the claimed sequence.

Key Takeaways

• Reordering steps can be obvious. When there are only two possible orderings of steps and both are functionally predictable, the Board cannot require explicit prior art teaching the claimed sequence. KSR’s “ordinary creativity” standard applies.
• Expert testimony on design choices need not cite a specific reference. An expert may rely on the judgment, creativity, and common sense of a skilled artisan, particularly when the technology is easily understandable. The absence of a separate reference teaching the exact claimed arrangement does not automatically render testimony “conclusory.”
• Context matters for the level of explanation required. Under the Federal Circuit’s precedent, “the amount of explanation needed” for an obviousness analysis “necessarily depends on context.” Simpler technologies require less detailed expert support.

Why It Matters

This decision reinforces the Federal Circuit’s post-KSR jurisprudence discouraging a rigid, reference-by-reference approach to obviousness. Patent challengers in IPR proceedings can rely on expert testimony that a simple design variation — like reordering two steps — would have been within a skilled artisan’s ordinary creativity, without needing to find a prior art reference that expressly teaches the exact claimed arrangement. For patent owners, the case is a reminder that claims whose novelty rests primarily on the sequence of well-known steps may face heightened vulnerability to obviousness challenges.