American Express Company et al.
`v.
`Metasearch Systems, LLC
`Case No. CBM2014-00001
`U.S. Patent No. 8,326,924
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`Trial Hearing
`Petitioner’s Demonstrative Exhibits
`Petitioner’s Dem. Ex. 1051
`December 5, 2014
`CBM2014-00001
`
`
`
`v.
`Metasearch Systems, LLC
`Case No. CBM2014-00001
`U.S. Patent No. 8,326,924
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`Trial Hearing
`Petitioner’s Demonstrative Exhibits
`Petitioner’s Dem. Ex. 1051
`December 5, 2014
`CBM2014-00001
`
`
`
`
`CHALLENGED CLAIMS
`
`CHALLENGED CLAIMS
`
`
`
`
`Claim 2: Requires Metasearch …
`
`
`
`
`
`
`
`. . .
`
`. . .
`
`3
`
`
`
`Claim 2: + Return Ad …
`
`Claim 2: + Return Ad
`
`(e) causing at least one advertisement as sociated with the at
`
`lea st one item that may be ordered. to be displayed. in the 1'€SpOflSB;
`
`4
`
`
`
`Claim 2: + Process Order
`
`Claim 2: + Process Order
`
`(g) receiving another Hypertext Transier Protocol request
`from the client device for placing, an order for the at least
`one item;
`
`(11) processing the order.
`
`5
`
`
`
`No Claim Requires …
`
` searching a website or e-commerce site
` Ex. 1041 (Dr. Carbonell) 81:13-83:18 (see Pet’r Reply, p. 2, ln. 14)
` searching heterogeneous hosts
` Ex. 1041 at 83:20-25 (see Pet’r Reply, p. 2, ln. 19)
` structured or semi-structured search query
` Ex. 1041 at 75:8-19 (see Pet’r Reply, p. 3, ln. 7)
` reformatting search query or search results
` Ex. 1041 at 77:6-15, 90:10-91:9 (see Pet’r Reply, p. 7, ln. 1)
` receiving structured results
` Ex. 1041 at 90:10-15 (see Pet’r Reply, p. 8, ln. 4)
` a purchase
` Ex. 1041 at 87:7-23 (see Pet’r Reply, p. 3, ln. 13)
`
`6
`
`
`
`No Claim Requires A Particular Machine
`
`Each claim step uses conventional functions:
` Receiving and sending requests for information
`(steps (a), (b), (g))
` Processing such requests
`(steps (b), (h))
` Receiving and sending responses to such requests
`(steps (c)-(f))
`
`
`See Pet’r Reply, p. 5, ln. 4
`
`7
`
`
`
`No Claim Requires A Particular Machine
`
`Ex. 2001 (USP 6,789,073) 98:7-27 (see Pet’r Reply, p. 2, ln. 11)
`
`8
`
`
`
`No Claim Requires A Particular Machine
`
`Ex. 1041 (Dr. Carbonell) 94:4-16 (see Pet’r Reply, p. 5, ln. 4)
`
`9
`
`
`
`No Claim Requires A Particular Source Of Ad
`
`Ex. 1041 (Dr. Carbonell) 93:3-11 (see Pet’r Reply, p. 13, ln. 1)
`
`10
`
`
`
`SECTION 101
`
`SECTION 101
`
`
`
`
`Sec. 101: Ultramercial – Abstract Idea
`
`This ordered combination of steps recites an abstraction—
`an idea, having no particular concrete or tangible form. The
`process of receiving copyrighted media, selecting an ad,
`offering the media in exchange for watching the selected ad,
`displaying the ad, allowing the consumer access to the media,
`and receiving payment from the sponsor of the ad all describe
`an abstract idea, devoid of a concrete or tangible application.
`Although certain additional limitations, such as consulting
`an activity log, add a degree of particularity, the concept
`embodied by the majority of the limitations describes only the
`abstract idea of showing an advertisement before delivering
`free content.
`
`Ultramercial, Inc. v. Hulu, LLC, 2014 WL 5904902, at *4 (Fed. Cir. Nov. 14, 2014)
`
`12
`
`
`
`Sec. 101: Ultramercial – Abstract Idea
`
` We do not agree
`with Ultramercial that the addition of merely novel or non-
`routine components to the claimed idea necessarily turns an
`abstraction into something concrete. In any event, any novelty
`in implementation of the idea is a factor to be considered only
`in the second step of the Alice analysis.
`
`Ultramercial, Inc. v. Hulu, LLC, 2014 WL 5904902, at *4 (Fed. Cir. Nov. 14, 2014)
`
`13
`
`
`
`Sec. 101: Ultramercial – Inventive Concept
`
` The majority of those steps comprise the
`abstract concept of offering media content in exchange for
`viewing an advertisement. Adding routine additional steps
`such as updating an activity log, requiring a request from
`the consumer to view the ad, restrictions on public access,
`and use of the Internet does not transform an otherwise
`abstract idea into patent-eligible subject matter.
`
`Ultramercial, Inc. v. Hulu, LLC, 2014 WL 5904902, at *5 (Fed. Cir. Nov. 14, 2014)
`
`14
`
`
`
`Sec. 101: Ultramercial –
`Particular Machine
`
`The claims of the ’545 patent, however, are not tied to
`any particular novel machine or apparatus, only a general
`purpose computer. As we have previously held, the Internet
`is not sufficient to save the patent under the machine prong
`of the machine-or-transformation test. CyberSource, 654
`F.3d at 1370. It is a ubiquitous information-transmitting
`medium, not a novel machine.
`
`Ultramercial, Inc. v. Hulu, LLC, 2014 WL 5904902, at *6 (Fed. Cir. Nov. 14, 2014)
`
`15
`
`
`
`Sec. 101: Ultramercial –
`Particular Transformation
`
`The claims of the ’545 patent also fail to satisfy the
`transformation prong of the machine-or-transformation test.
`The method as claimed refers to a transaction involving the
`grant of permission and viewing of an advertisement by
`the consumer, the grant of access by the content provider,
`and the exchange of money between the sponsor and the
`content provider. These manipulations of “public or private
`legal obligations or relationships, business risks, or other
`such abstractions cannot meet the test because they are not
`physical objects or substances, and they are not representative
`of physical objects or substances.” Bilski, 545 F.3d at 963.
`
`Ultramercial, Inc. v. Hulu, LLC, 2014 WL 5904902, at *6 (Fed. Cir. Nov. 14, 2014)
`
`16
`
`
`
`SECTION 103
`
`SECTION 103
`
`
`
`
`Sec. 103: Knowledge Broker + Ad
`
`Knowledge Broker (Exs. 1006, 1007):
` Metasearch
` Process Order re Searched Item
`
`Mamma.com (Ex. 1005):
` Return Ad re Searched Item
` Metasearch
`
`See Petition, pp. 73-78; see Pet’r Reply, pp. 11-13
`
`18
`
`
`
`Sec. 103: Knowledge Broker + Ad
`
`Knowledge Broker
` Metasearch
` Process Order re
`Searched Item
` Return Ad re
`Searched Item
`
`1. Knowledge Broker
`searches Search Engines.
`Search Engines often
`returned Ad re searched
`item.
`2. Knowledge Broker
`recommends use for
`Bargain Finding. Natural
`to present Ad at point of
`comparison shopping.
`
`See Petition, pp. 73-78; see Pet’r Reply, pp. 11-14
`
`
`19
`
`
`
`Sec. 103: Obvious To Return Ad
`With Metasearch Results
`
`Ex. 1007 (Knowledge Broker), p. 11, Fig. 4 (see Pet’r Reply, p. 12, ln. 5)
`
`20
`
`
`
`Sec. 103: Obvious To Return Ad
`With Metasearch Results
`
`Ex. 1008 (Dr. Etzioni), pp. 6, 8 (see Pet’r Reply, p. 13, ln. 7)
`
`21
`
`
`
`Sec. 103: Obvious To Return Ad
`With Metasearch Results
`
`Key Word Purchase
`We now have the capability to return your banner with
`keywords and phrases. With this type of advertising, your
`banner will be shown only when one of the word(s) you select
`are chosen by the end user. This allows a highly targeted
`placement of your banners. The cost for key word searches is
`$60 CPM and there is a minimum purchase of 10,000 banners
`(i.e: $600). This purchase may be divided among multiple words
`(maximum of 25 words per campaign) and two banners (You can
`always change these banners as often as you like during your
`campaign).
`
`Ex. 1005 (Mamma.com), p. 8 (see Petition, p. 8, top of page)
`
`22
`
`
`
`Sec. 103: Obvious To Return Ad
`At Point Of Comparison Shopping
`
`For the practical purpose of knowledge management on the
`Web, the main advantages of using constraints can be
`summarized as follows: . . . .
`There is a large variety and number of multiagent applications
`for knowledge management on the Web where these
`capabilities can be exploited: among others, bargain finding,
`dynamic assemblage of virtual catalogs, data warehousing from
`backend repositories, agent-based document construction and
`customization can all be supported through this paradigm.
`In this paper, we describe a case from the domain of network
`publication systems (NPS), . . . .
`
`Ex. 1006 (Knowledge Broker), p. 2 (see Pet’r Reply, p. 13, ln. 13)
`
`23
`
`
`
`Sec. 103: Knowledge Broker = Metasearch
`
`Ex. 1006 (Knowledge Broker), p. 8
`(see Pet’r Reply, pp. 8-9)
`
`24
`
`
`
`Sec. 103: Knowledge Broker = Metasearch
`
`Connecting an external server to the system is done
`by analyzing its search interface, then writing a
`wrapper for it. This wrapper receives the description
`of the constraints corresponding to the query,
`translates them into the query-string required by the
`search script, verifies that the indicated fields are
`accepted by the server and provides default values for
`required fields not specified by the user. It then
`queries the server and receives the results in html-
`format. Finally it parses the results and translates
`them into the constraint format accepted by the CBKB
`system.
`
`Ex. 1007 (Knowledge Broker), p. 12 (see Pet’r Reply, p. 9, ln. 20)
`
`25
`
`
`
`Sec. 103: Knowledge Broker = Metasearch
`
`Ex. 1041 (Dr. Carbonell) 56:7-15 (see Pet’r Reply, p. 10, ln. 14)
`
`26
`
`
`
`Sec. 103: Knowledge Broker = Metasearch
`
`Ex. 1041 (Dr. Carbonell) 45:20-46:12 (see Pet’r Reply, p. 9, ln. 18)
`
`27
`
`
`
`MOTION TO AMEND
`
`MOTION TO AMEND
`
`
`
`
`Sec. 101: No Novel Or Particular Machine
`
`Ex. 2001 (USP 6,789,073) 98:36-42 (see Pet’r Opp’n, p. 9, ln. 11)
`
`29
`
`
`
`Sec. 101: No Particular Machine
`
`Ex. 1041 (Dr. Carbonell) 98:4-13 (see Pet’r Opp’n, p. 9, ln. 14)
`
`30
`
`
`
`Sec. 101: No Particular Machine
`
`Ex. 2026 (Dr. Carbonell), p. 6 (see Pet’r Opp’n, p. 8, ln. 1)
`
`31
`
`
`
`Sec. 112/2: Imprecise, Subjective And Unclear
`
`Ex. 2018 (Substitute Claim 13) (see Pet’r Opp’n, pp. 1-3)
`
`32
`
`
`
`Sec. 112/1: No Description Of
`Claimed Combination
`
`Ex. 1001 (USP 8,326,924), pp. 126, 130, Figs. 46A, 46E (see Pet’r Opp’n, pp. 3-4)
`
`33
`
`
`
`Sec. 112/1: No Description Of
`Claimed Combination
`
`Ex. 1001 (USP 8,326,924), pp. 126-130, Figs. 46A-46E (see Pet’r Opp’n, pp. 3-4)
`
`34
`
`
`
`Sec. 103: Claims 13-14 Preclude Caching
`
`Ex. 2018 (Substitute Claim 13) (see Pet’r Opp’n, pp. 13-14)
`
`35
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
