UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`
`GOOGLE INC.,
`
`Petitioner
`
`v.
`
`AT HOME BONDHOLDERS’ LIQUIDATING TRUST,
`
`Patent Owner.
`
`______________________
`
`
`Case CBM2016-00036
`
`U.S. Patent No. 6,286,045
`
`______________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`PURSUANT TO 37 C.F.R. § 42.10(b)
`
`
`
`

`
`Patent Owner’s Preliminary Response
`CBM2016-00036 (U.S. Patent No. 6,286,045)
`
`Table of Contents
`
`The claims of the 045 Patent are not directed to “the
`practice, administration, or management of a financial
`
`Even if the claims were limited to advertising,
`
`B.
`
`
`
`
`V.
`
`The disclosed applications to the advertising industry in
`the specification do not make the claims subject to
`
`Introduction ...................................................................................................... 1
`I.
`The 045 Patent ................................................................................................. 4
`II.
`III. The 045 Patent is not eligible for review under Section 18 of the AIA .......... 9
`A.
`The 045 Patent is not a Covered Business Method Patent .................. 10
`1.
`product or service” .................................................................... 10
`2.
`CBMR ....................................................................................... 16
`3.
`advertising is not a financial product or service ....................... 22
`The 045 Patent is directed to a “technological invention” .................. 22
`1.
`and unobvious technological features ....................................... 23
`2.
`technical solution ...................................................................... 28
`IV. The claims of the 045 Patent are patent-eligible under Section 101 ............. 31
`The 045 Patent is not directed to an “abstract idea” ........................... 33
`A.
`B.
`ensures the claims are more than an abstract idea itself ..................... 41
`The claims of the 045 Patent are not invalid under Section 112 ................... 43
`
`Considered as a whole, the 045 Patent claims recite novel
`
`The 045 Patent solves a technical problem using a
`
`The claims of the 045 Patent recite an inventive concept that
`
`–i–
`
`

`
`Patent Owner’s Preliminary Response
`CBM2016-00036 (U.S. Patent No. 6,286,045)
`
`
`A.
`B.
`
`The PTAB already considered indefiniteness when it largely
`rejected Google’s Inter Partes Review Petition on this same
`
`patent last year ..................................................................................... 43
`subjective” ........................................................................................... 45
`1.
`and similar phrases to be valid and not indefinite .................... 45
`2.
`Engineering Task Force ............................................................ 48
`3.
`certainty, the scope of the invention ......................................... 49
`4.
`during the prosecution of the 045 Patent .................................. 50
`C.
`The “best suited” language is not “impermissibly subjective” ........... 52
`VI. Conclusion ..................................................................................................... 55
`
`The “intended to” language in the claims is not “impermissibly
`
`Courts and the Patent Office have found “intended to”
`
`Google’s own expert has used “intended to prevent
`caching” in a technical proposal to the Internet
`
`The “intended to” language describes, with reasonable
`
`The examiner approved the “intended to” language
`
`–ii–
`
`

`
`
`
`Patent Owner’s Preliminary Response
`CBM2016-00036 (U.S. Patent No. 6,286,045)
`
`Table of Exhibits
`
`AHBLT-(Exhibit #)
`
`Description
`
`2001
`
`2002
`
`Declaration of Kevin C. Almeroth
`
`Curriculum Vitae of Professor Kevin C. Almeroth
`
`
`
`–iii–
`
`

`
`Patent Owner’s Preliminary Response
`CBM2016-00036 (U.S. Patent No. 6,286,045)
`
`
`Table of Authorities
`
` Page(s)
`
`Federal Cases
`
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`134 S. Ct. 2347 (2014) ............................................................................passim
`
`Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
`133 S. Ct. 2107 (2013) ................................................................................... 32
`
`Bilski v. Kappos,
`561 U.S. 593 (2010)................................................................................. 32, 34
`
`BioSig Instruments, Inc. v. Nautilus, Inc.,
`783 F.3d 1374 (Fed. Cir. 2015) ............................................................... 46, 49
`
`BMC Software, Inc. v. ServiceNow, Inc.,
`No. 14-903, 2015 WL 4776970 (E.D. Tex. Aug. 13, 2015) ......................... 54
`
`Caron v. QuicKutz, Inc.,
`No. 09-02600, 2012 WL 5053232 (D. Ariz. Oct. 16, 2012) ......................... 47
`
`DDR Holdings, LLC v. Hotels.com, L.P.,
`773 F.3d 1245 (Fed. Cir. 2014) ..............................................................passim
`
`Diamond v. Diehr,
`450 U.S. 175 (1981)....................................................................................... 34
`
`Enfish LLC v. Microsoft Corp.,
`No. 2015-1244, slip op. (Fed. Cir. May 12, 2016) .................................passim
`
`KSR Int'l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007)....................................................................................... 23
`
`Mayo Collaborative. Servs. v. Prometheus Labs., Inc.,
`132 S. Ct. 1289 (2012) ................................................................................... 32
`
`Mowry v. Whitney,
`81 U.S. 620 (1871) ................................................................................... 46, 54
`
`–iv–
`
`

`
`Patent Owner’s Preliminary Response
`CBM2016-00036 (U.S. Patent No. 6,286,045)
`
`
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`134 S. Ct. 2120 (2014) ................................................................. 45, 46, 47, 52
`
`Rhine v. Casio, Inc.,
`183 F.3d 1342 (Fed Cir. 1999) ...................................................................... 52
`
`Senju Pharmaceutical Co., Ltd. v. Lupin Ltd.,
`No. 14-667, 2015 WL 7302138 (D.N.J. Nov. 18, 2015) ............................... 54
`
`SourceOne Global Partners, LLC v. KGK Synergize, Inc.,
`No. 08-7403, 2010 WL 2232944 (N.D. Ill. June 3, 2010) ............................ 47
`
`Stambler v. Atmos Energy Corp.,
`No. 10-594, 2012 WL 3779446 (E.D. Tex. Aug. 30, 2012) ......................... 47
`
`PTAB Cases
`
`Agilisys v. Ameranth,
`CBM2014-00014, Paper No. 19 (Mar. 26, 1014).......................................... 42
`
`Apple Inc., v. ContentGuard Holdings, Inc.,
`CBM2015-00046, Paper No. 12 (PTAB June 3, 2015) ........................... 25, 27
`
`Bloomberg L.P. v. Quest Licensing Corp.,
`CBM2014-00205, Paper No. 16 (PTAB Apr. 7, 2015) ................. 9, 22, 26, 27
`
`Epsilon Data Mgmt., LLC v. RPost Comm’ns Ltd.,
`CBM2014-00017, Paper No. 21 (PTAB Apr. 22, 2014) ................... 25, 26, 27
`
`Google Inc. v. Simpleair, Inc.,
`CBM2014-00170, Paper No. 13 (PTAB Jan. 22, 2015) ................................ 35
`
`Google Inc. v. Unwired Planet, LLC,
`CBM2014-00004, Paper No. 8 (PTAB Apr. 8, 2014) ................................... 17
`
`J.P. Morgan Chase & Co. v. Intellectual Ventures II LLC,
`CBM2014-00160, Paper No. 11 (PTAB Jan. 29, 2015) .........................passim
`
`Motorola Mobility, LLC v. Intellectual Ventures I, LLC,
`CBM2014-00084, Paper No. 18 (PTAB Aug. 6, 2014) .......................... 26, 27
`
`–v–
`
`

`
`Patent Owner’s Preliminary Response
`CBM2016-00036 (U.S. Patent No. 6,286,045)
`
`
`NRT Tech. Corp. v. Everi Payments, Inc.
`CBM2015-0167, Paper No. 14 (PTAB Jan. 22, 2016) .................................. 40
`
`Par Pharm., Inc. v. Jazz Pharm., Inc.,
`CBM2014-00149, Paper No. 12 (PTAB Jan. 13, 2015) .......................... 20, 21
`
`PNC Bank NA and Suntrust Bank v. Parus Holdings, Inc.,
`CBM2015-00109, Paper No. 10 (PTAB Nov. 9, 2015) .................... 11, 15, 34
`
`Qualtrics, LLC v. OpinionLab, Inc.,
`CBM2016-00003, Paper No. 9 (PTAB Apr. 13, 2016) ..........................passim
`
`Roxane Labs. Inc. v. Jazz Pharm., Inc.,
`CBM2014-00161, Paper No. 16 (PTAB Feb. 9, 2015) ................................. 11
`
`SEGA of Am., Inc. v. Uniloc USA, Inc.,
`CBM2014-00183, Paper No. 11 (PTAB Mar. 10, 2015) ........................ 14, 16
`
`ServiceNow, Inc. v. BMC Software, Inc.,
`CBM2015-00107, Paper No. 12 (PTAB Sept. 11, 2015) .................. 19, 20, 21
`
`ServiceNow, Inc. v. Hewlett-Packard, Co.,
`CBM2015-00108, Paper No. 10 (PTAB Oct. 7, 2015) ............... 13, 15, 20, 21
`
`TD Ameritrade Holding Corp. v. Trading Techs. Int’l, Inc.,
`CBM2014-00136, Paper No. 19 (PTAB Dec. 2, 2014) ................................ 35
`
`Federal Statutes
`
`35 U.S.C. § 101 .................................................................................................passim
`
`35 U.S.C. § 112 ............................................................................................ 43, 52, 55
`
`35 U.S.C. § 315(d) ..................................................................................................... 2
`
`35 U.S.C. § 323 .......................................................................................................... 1
`
`35 U.S.C. § 324(a) ................................................................................................... 31
`
`AIA § 18(a)(1)(D) ...................................................................................................... 2
`
`AIA § 18(d)(1) ................................................................................................. 2, 9, 11
`
`–vi–
`
`

`
`Regulations
`
`Patent Owner’s Preliminary Response
`CBM2016-00036 (U.S. Patent No. 6,286,045)
`
`
`37 C.F.R. § 42.107(b) ................................................................................................ 1
`
`37 C.F.R. § 42.301(a) ....................................................................................... 2, 9, 22
`
`37 C.F.R. § 42.301(b) .......................................................................................passim
`
`37 C.F.R. § 42.304(b)(4) .......................................................................................... 34
`
`Other Authorities
`
`157 Cong. Rec. S5441 (daily ed. Sept. 8, 2011) ...................................................... 17
`
`MPEP § 2 173.05(b)................................................................................................. 44
`
`
`
`–vii–
`
`

`
`
`I.
`
`INTRODUCTION
`
`Patent Owner’s Preliminary Response
`CBM2016-00036 (U.S. Patent No. 6,286,045)
`
`Pursuant to 35 U.S.C. § 323, Patent Owner At Home Bondholders’
`
`Liquidating Trust submits this Preliminary Response to Petitioner Google, Inc.’s
`
`Petition for Covered Business Method Review of U.S. Patent No. 6,286,045 (the
`
`“045 Patent”).1
`
`This is not the first time Petitioner has challenged the 045 Patent before the
`
`Board. In February 2015, Petitioner filed three Petitions for Inter Partes Review
`
`(“Petitions for IPR”) of the 045 Patent based on alleged prior art. IPR2015-00657,
`
`658, 660. For claims 1-12, 14-31, 33-44, 47, 48, 75, 77, and 78 (47 of the 69
`
`challenged claims), the Board declined to institute Inter Partes Review, concluding
`
`that Petitioner failed to show a reasonable likelihood that the claims were
`
`unpatentable. Petitioner does not explain why it did not file its Covered Business
`
`Method Review (“CBMR”) Petition at the same time that it filed its Petitions for
`
`IPR fifteen months ago, or at any point since, when the Petitions for IPR
`
`themselves were filed nearly a full year after Patent Owner filed suit on the 045
`
`
`
` 1
`
` This paper is filed within three months of the Notice of Filing Date Accorded to
`
`Petition (Paper No. 2) and is timely under 35 U.S.C. § 323 and 37 C.F.R.
`
`§ 42.107(b).
`
`–i–
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`

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`Patent Owner’s Preliminary Response
`CBM2016-00036 (U.S. Patent No. 6,286,045)
`
`Patent in district court.2 These types of delayed, serial challenges to the same
`
`patent were not contemplated by the AIA and should not be countenanced.3
`
`Turning to the substance of the Petition, the claims of the 045 Patent are not
`
`eligible for CBMR. The 045 Patent claims do not contain any limitations related to
`
`the “practice, administration, or management of a financial product or service.”
`
`AIA § 18(d)(1); see also 37 C.F.R. § 42.301(a). Rather, the claims are of general
`
`technical utility. The Petition should be denied on this basis alone.
`
`Moreover, even if the claims of the 045 Patent were eligible for CBMR—
`
`which they are not—Petitioner’s claim that the 045 Patent claims are not directed
`
`
`
` 2
`
` The district court suit was filed on February 19, 2014. Williamson v. Google.
`
`Inc., Case No. 1:14-cv-00216 (D. Del.) (transferred to N.D. Cal.). The Petitions
`
`for IPR were filed on February 2, 2015. IPR2014-00657, 658, 660. The present
`
`Petition for CBM was filed on February 16, 2016.
`
`3 For example, 35 U.S.C. § 315(d) and AIA § 18(a)(1)(D) prohibit, where a final
`
`decision has issued, serial challenges by a Petitioner where the ground could have
`
`been raised in the IPR or CBMR, respectively. Here, there is no reason Petitioner
`
`could not have originally presented all of its challenges simultaneously.
`
`Petitioner’s strategy of delay should not be rewarded.
`
`–2–
`
`

`
`Patent Owner’s Preliminary Response
`CBM2016-00036 (U.S. Patent No. 6,286,045)
`
`to patent-eligible subject matter under 35 U.S.C. § 101 is wrong. The 045 Patent is
`
`directed to a specific technological solution (modifying the conventional way that
`
`computers retrieve a banner by using two requests, including a cacheable request
`
`and a non-cachable request) to technological problems in caching computer
`
`networks that do not have any pre-Internet “real-world” analogue. Specifically, the
`
`invention ensures that requests are always received by a server, without giving up
`
`the benefits of caching, as was required by previous approaches. The Federal
`
`Circuit has confirmed that such inventions, “which are directed to an improvement
`
`to computer functionality,” are patent-eligible. Enfish LLC v. Microsoft Corp., No.
`
`2015-1244, slip op. at 11 (Fed. Cir. May 12, 2016); see also DDR Holdings, LLC
`
`v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014); Section IV, below.
`
`Petitioner also argues that the terms “intended to” and “best suited” are
`
`impermissibly subjective, and therefore render the challenged claims indefinite.
`
`However, in the previous IPR proceedings, the PTAB was able to determine, with
`
`reasonably certainty, the scope of the claims containing the terms “best suited” and
`
`“intended to.” This is in keeping with precedent: these terms regularly appear in
`
`other patents and have been confirmed to be proper limitations of claim scope by
`
`courts and the Patent Office.
`
`–3–
`
`

`
`Patent Owner’s Preliminary Response
`CBM2016-00036 (U.S. Patent No. 6,286,045)
`
`Because the claims of the 045 Patent are not eligible for CBMR in the first
`
`instance, and in any event are patent-eligible under Section 101 and sufficiently
`
`definite, the Petition should be denied.
`
`II. THE 045 PATENT
`
`The 045 Patent was filed May 19, 1997, by MatchLogic, Inc. and describes
`
`and claims a new way to serve banners for display in conjunction with web pages.
`
`Web pages and associated banners were frequently cached by web browsers and by
`
`intermediate caching devices such as proxy servers, so that if a web page or banner
`
`was requested again, the request would be satisfied from the cache without
`
`reconnecting to the servers from which the web page or banner was originally
`
`served. This reduced the load on the network and the time needed to display the
`
`web page.
`
`Unfortunately, caching also prevented servers from receiving subsequent
`
`requests, interfering with accurate counting of the number of times banners were
`
`displayed and with targeting of appropriate banners to specific users:
`
`The current state of the art is such that the counts of
`banner displays are largely inaccurate, banners are not
`targetable to large segments of the population using
`caching proxy servers, and suffers when the performance
`gains provided by proxy servers are not taken into
`account in prior art methods of counting banner displays
`. . . .
`
`–4–
`
`

`
`GOOG 1001 at 6:10-15.
`
`Patent Owner’s Preliminary Response
`CBM2016-00036 (U.S. Patent No. 6,286,045)
`
`
`The 045 Patent explains that techniques were available to prevent caching,
`
`but preventing caching caused other significant problems:
`
`One solution to the problem is to prevent banner
`information from being stored or cached on either the
`user’s terminal or the proxy server to which the user’s
`terminal is attached . . . . For example, the HTTP and
`HTML protocols allow banners to be tagged or indicated
`as being uncacheable . . . . [This solution] creates a
`significant problem, however, that creates even more
`significant consequences. . . .
`
`First, the speed at which the information is displayed on
`the user’s terminal will be reduced since the information
`will always have to be transmitted or served to the user’s
`terminal for display on the user’s terminal each time the
`user requests the information. . . .
`
`A second and more serious problem created by having to
`serve the information displayed on the user’s terminal
`each time the information is requested is that the amount
`of data traffic on the computer network will significantly
`increase, and can even bring the flow of information to a
`virtual stop . . .
`
`A third problem created with the prior art method 72 is
`that the step 100 eliminates any possibility of targeting
`
`–5–
`
`

`
`Patent Owner’s Preliminary Response
`CBM2016-00036 (U.S. Patent No. 6,286,045)
`
`
`specific information to be displayed with specific Web
`pages.
`
`GOOG 1001 at 13:28-14:22.
`
`The invention disclosed and claimed in the 045 Patent solves the problem of
`
`servers not receiving requests in a caching network, enabling accurate counting
`
`and targeting of banner displays while avoiding the unacceptable performance
`
`problems created by requiring the banner information to be retransmitted across the
`
`network each time the banner is displayed on a user’s terminal. GOOG 1001 at
`
`14:33-39. The invention also enables improved reliability and speed in banner
`
`serving by selecting the server to serve the banner at the time the banner is
`
`requested. GOOG 1001 at 4:29-49; see also AHBLT-2001 at ¶ 2 (Declaration of
`
`Kevin Almeroth).
`
`The invention uses a first request signal containing information that is
`
`intended to prevent the signal from being blocked by a caching device. See
`
`AHBLT-2001 at ¶ 3 (Almeroth Decl.). Instead of responding to the first request
`
`signal with a banner, the server that receives the first request signal responds with a
`
`signal indicating the location of the banner, which may be on a different server.
`
`The user’s computer then requests the banner in response to the location signal.
`
`For example, Claim 20 recites:
`
`–6–
`
`

`
`Patent Owner’s Preliminary Response
`CBM2016-00036 (U.S. Patent No. 6,286,045)
`
`
`20. A method for distributing a banner over a computer
`network to a device when the banner is referenced or
`linked to in a document served to the device, wherein the
`banner is stored in one or more servers, comprising:
`
`receiving a first banner request signal from a device at a
`first server requesting that a banner be served to the
`device, wherein said first banner request signal includes
`information intended to prevent said first banner request
`signal from being blocked from reaching said first server
`by the device despite previous caching of said specified
`banner in the device;
`
`sending a banner location signal from said first server to
`the device, wherein said banner location signal includes
`location information for a specified banner stored on a
`second server; and
`
`receiving a second banner request signal from the device
`at said second server requesting that the second server
`serve said specified banner to the device.
`
`GOOG 1001 at claim 20.
`
`The first request signal should always be received by the server, because it
`
`includes information that is intended to prevent blocking by a cache. The server
`
`that receives the first request signal has the opportunity to select and count the
`
`–7–
`
`

`
`Patent Owner’s Preliminary Response
`CBM2016-00036 (U.S. Patent No. 6,286,045)
`
`banner for display and may select a different server to originate the banner. The
`
`second request signal may be satisfied from a cache.
`
`The first request signal and the location signal contain very little information
`
`compared to a typical banner. These signals thus impose a negligible burden on
`
`the network compared to transmitting the banner from the originating ad server to
`
`the requesting device:
`
`[T]he initial banner request signal and the banner
`location signal are both extremely small, often
`comprising no more than a single packet or one-hundred
`to two-hundred bytes. Therefore, the overhead created
`by the additional banner signal during the step 112 and
`the banner location signal during step 114 is negligible.
`More importantly, since the method 110 still allows the
`web pages and the banner information to be cached or
`stored in the terminals and proxy servers, there is no
`unnecessary retransmission of the web pages or banners
`from the computer or web sites or the information or ad
`servers to the terminals which would significantly
`increase the data traffic and overhead on the computer
`network 30.
`
`GOOG 1001 at 20:24-36. The invention thus solves the problem of servers not
`
`receiving requests in a caching network, without giving up the benefits of caching.
`
`Id. at 15:30-65.
`
`–8–
`
`

`
`Patent Owner’s Preliminary Response
`CBM2016-00036 (U.S. Patent No. 6,286,045)
`
`
`III. THE 045 PATENT IS NOT ELIGIBLE FOR REVIEW UNDER
`SECTION 18 OF THE AIA
`
`To be eligible for CBMR under § 18 of the AIA, a patent must be: (i) a
`
`“covered business method patent;” and (ii) not directed to a “technological
`
`invention.” Qualtrics, LLC v. OpinionLab, Inc., CBM2016-00003, Paper No. 9 at
`
`4 (PTAB Apr. 13, 2016). It is Petitioner’s burden to prove that both elements are
`
`established, that is, the test is conjunctive, not disjunctive. See 37 C.F.R.
`
`§ 42.301(a); see also Bloomberg L.P. v. Quest Licensing Corp., CBM2014-00205,
`
`Paper No. 16 at 7-11 (PTAB Apr. 7, 2015). Petitioner has failed to meet its burden
`
`for both elements.
`
`Regarding the first element, a patent can only be a “covered business method
`
`patent” if it “claims a method or corresponding apparatus for performing data
`
`processing or other operations used in the practice, administration, or management
`
`of a financial product or service . . . .” AIA § 18(d)(1) (emphasis added); see also
`
`37 C.F.R. § 42.301(a). Here, Petitioner has failed to point to any language in the
`
`claims relating to the practice, administration, or management of a financial
`
`product or service. This is because there is no such language—the challenged
`
`claims of the 045 Patent are technical and of “general utility” and have no
`
`particular relationship to any financial product or service.
`
`Regarding the second element, a patent is directed to a “technological
`
`invention” if “the claimed subject matter as a whole recites a technological feature
`
`–9–
`
`

`
`Patent Owner’s Preliminary Response
`CBM2016-00036 (U.S. Patent No. 6,286,045)
`
`that is novel and unobvious over the prior art; and solves a technical problem using
`
`a technical solution.” 37 C.F.R. § 42.301(b). Here, Petitioner fails to analyze the
`
`claims as a whole as required by 37 C.F.R. § 42.301(b)—Petitioner instead focuses
`
`on the some of their individual elements (such as terminals, computer networks
`
`and servers) and alleges that such elements were well-known. Petition at 26-29.
`
`Such an approach is improper. Moreover, the Board has already found that
`
`Petitioner failed to raise even a reasonable likelihood that more than two-thirds of
`
`the challenged claims are obvious. IPR2015-00657, IPR2015-00658, IPR2015-
`
`00660. The rest are currently awaiting a decision. Petitioner’s position that the
`
`technical features of those claims are not novel and are obvious is thus wholly
`
`without merit and contradicts the Board’s prior decisions on that very issue.
`
`It is Petitioner’s burden to prove that the 045 Patent is a “covered business
`
`method patent” and that it is not directed to a “technological invention.” Petitioner
`
`has failed to meet its burden as to both requirements for CBMR under § 18 of the
`
`AIA. The Board should therefore deny institution.
`
`A. The 045 Patent is not a Covered Business Method Patent
`
`1.
`
`The claims of the 045 Patent are not directed to “the
`practice, administration, or management of a financial
`product or service”
`
`The 045 Patent is not a CBM Patent because it does not “claim[] a method or
`
`corresponding apparatus for performing data processing or other operations used in
`
`–10–
`
`

`
`Patent Owner’s Preliminary Response
`CBM2016-00036 (U.S. Patent No. 6,286,045)
`
`the practice, administration, or management of a financial product or service . . . .”
`
`AIA § 18(d)(1) (emphasis added). As Board decisions demonstrate, the proper
`
`focus of the CBM Patent inquiry should be on the patent claims. See, e.g.,
`
`Qualtrics, Paper No. 9 at 5 (“The determination of whether a patent is eligible for
`
`CBM review focuses on ‘what the patent claims.’”); Roxane Labs. Inc. v. Jazz
`
`Pharm., Inc., CBM2014-00161, Paper No. 16 at 10 (PTAB Feb. 9, 2015) (“In
`
`making [the] determination [of whether a patent is a CBM Patent], our focus is
`
`firmly on the claims.”); PNC Bank NA and Suntrust Bank v. Parus Holdings, Inc.,
`
`CBM2015-00109, Paper No. 10 at 15 (PTAB Nov. 9, 2015) (“whether the [] patent
`
`is directed to a covered business method is based on what the patent claims”).
`
`Here, the challenged claims do not contain any elements directed to “the practice,
`
`administration, or management of financial product or service.”
`
`The challenged claims make no mention of any financial product or service.
`
`Nor is there any reasonable claim construction under which these claims could be
`
`interpreted to be directed to the practice, administration or management of such a
`
`product or service. Further, Petitioner has not offered a claim construction that
`
`mentions a financial product or service (or even advertising) in any of its three
`
`Petitions for IPR or the present Petition.
`
`Petitioner argues that the claims explicitly recite advertising, Pet. at 17, but
`
`even casual inspection reveals that they do not. Petitioner’s argument is apparently
`
`–11–
`
`

`
`Patent Owner’s Preliminary Response
`CBM2016-00036 (U.S. Patent No. 6,286,045)
`
`based on equating “banner” with “advertisement.” This argument directly
`
`contradicts the parties’ agreed construction of “banner,” which was adopted by the
`
`Board in the pending IPR proceedings. The parties agreed,4 and the Board found,
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`that “banner” means “information displayed in conjunction with a web page.”
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`IPR2015-00657, Paper No. 14 at 7.
`
`Petitioner also mistakenly conflates the financial concept of accounting with
`
`the non-financial concept of counting displays (as claimed). See Pet. at 22.
`
`Indeed, Petitioner argues that “the claims of the ’045 patent specifically recite the
`
`use of and accounting of advertising, which is inherently financial in nature.” Id.
`
`(emphasis added). But the terms “accounting” and “advertising” do not appear in
`
`any of the claims. Instead, the claim to which Petitioner refers recites “counting at
`
`
`
` 4
`
` The parties disagreed on whether additional explanations should be included in
`
`the definition. IPR2015-00657, Paper No. 14 at 6. Neither of the explanations
`
`relates to advertising or any financial product or service. Petitioner argued that the
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`“information displayed in conjunction with a web page” “is not part of the same
`
`file as the web page” whereas Patent Owner argued that the information displayed
`
`“can exist separately from the web page or which can be used in conjunction with
`
`many web pages.” Id.
`
`–12–
`
`

`
`Patent Owner’s Preliminary Response
`CBM2016-00036 (U.S. Patent No. 6,286,045)
`
`least one display of said specified banner on the device.” Pet. at 20-21. Counting
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`displays is not accounting, and information displayed in conjunction with a web
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`page is not necessarily advertising. For example, the image of the “uspto” logo in
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`the upper left corner of the USPTO home page at http://www.uspto.gov is a
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`banner, but not an advertisement. AHBLT-2001 at ¶¶ 4, 5 (Almeroth Decl.).
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`Additionally, accurately counting displays of banners is only one of several
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`benefits of the invention. As discussed above in Section II, by solving the problem
`
`of servers not receiving requests in a caching network, the invention also allows
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`targeting of banner displays (for example, custom banners for a user or
`
`geographical region) without the performance issues created by requiring the
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`banner information to be repeatedly transmitted across a network every time the
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`banner is displayed. GOOG 1001 at 14:33-39. Further, the invention of the 045
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`patent can also improve the reliability and speed of a network by selecting a server
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`to serve the banner at the time the banner is requested. GOOG 1001 at 4:29-49.
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`This lack of any nexus between the challenged claims and a “financial
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`product or service” is fatal to Petitioner’s attempt to institute CBMR. See, e.g.,
`
`ServiceNow, Inc. v. Hewlett-Packard, Co., CBM2015-00108, Paper No. 10 at 15-
`
`16 (PTAB Oct. 7, 2015) (“Hewlett-Packard”) (denying institution where “the
`
`claimed system could be used in a financial product or service” but the claims
`
`lacked “any finance-related limitations”); J.P. Morgan Chase & Co. v. Intellectual
`
`–13–
`
`

`
`Patent Owner’s Preliminary Response
`CBM2016-00036 (U.S. Patent No. 6,286,045)
`
`Ventures II LLC, CBM2014-00160, Paper No. 11 at 11-12 (PTAB Jan. 29, 2015)
`
`(denying institution where claims had “general utility not limited or specific to any
`
`application”); SEGA of Am., Inc. v. Uniloc USA, Inc., CBM2014-00183, Paper No.
`
`11 at 11 (PTAB Mar. 10, 2015) (denying institution where claims had “no
`
`particular relationship to a financial product or service”).
`
`Rather than being directed to a financial product or service, the challenged
`
`claims are of “general utility,” i.e., they recite a particular novel technique for
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`ensuring that banner requests are received by the server in a caching network,
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`while avoiding the problems created by requiring the banner information to be
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`retransmitted across the network each time the banner is requested by a user’s
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`terminal. While the 045 Patent specification notes that the invention can be used in
`
`advertising, it goes on explain other uses for the technology:
`
`While the method 110 of the present invention has been
`discussed
`in detail primarily with
`the counting,
`monitoring, and targeting of advertising or other content
`over computer networks, the method 110 can also be
`used for the counting, monitoring, or targeting of
`content. . . . In addition, the method 110 can easily be
`implement
`[sic]
`to monitor
`levels of
`content
`sophistication, content language, content type, content
`levels of summarization, etc. when different content
`options are selectable by a user or terminal.
`
`–14–
`
`

`
`Patent Owner’s Preliminary Response
`CBM2016-00036 (U.S. Patent No. 6,286,045)
`
`GOOG 1001 at 27:1-11. The specification also describes use of the invention with
`
`multiple servers to improve the speed and reliability of the network:
`
`In a second embodiment of the method 110 of the present
`invention, multiple information servers storing the banner
`information used in conjunction with the displays of web
`pages on user terminals are connected to the computer
`network. Using mirror information servers allows for
`banners to be distributed faster to user terminals and
`increases the reliability of the method 110.
`
`GOOG 1001 at 20:37-43. Petitioner cannot credibly claim that all of these uses
`
`fall within the spectrum of “financial products and services.”
`
`When claims are of “general utility” with no tie to a specific financial
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`product or service, the Board has routinely denied institution. See, e.g., Qualtrics,
`
`Paper No. 9 at 5 (finding that a patent claiming a website tool for gathe