Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 12
`Entered: August 22, 2016
`
`
`
`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
`Patent 6,286,045 B1
`
`
`Before KARL D. EASTHOM, JUSTIN T. ARBES, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 12
`Entered: August 22, 2016
`
`
`
`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
`Patent 6,286,045 B1
`
`
`Before KARL D. EASTHOM, JUSTIN T. ARBES, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`CBM2016-00036
`Patent 6,286,045 B1
`
`I.
`
`INTRODUCTION
`
`Petitioner Google Inc. filed a Petition (Paper 2, “Pet.”) requesting
`
`covered business method patent review of claims 1–12, 1431, 3344,
`
`4753, 5559, 6167, 6973, 75, 77, and 78 of U.S. Patent No. 6,286,045
`
`B1 (Ex. 1001, “the ’045 patent”). Patent Owner At Home Bondholders’
`
`Liquidating Trust filed a Preliminary Response (Paper 8, “Prelim. Resp.”).
`
`Pursuant to our authorization, Petitioner also filed a Reply (Paper 10), and
`
`Patent Owner filed a Sur-Reply (Paper 11).
`
`We may not institute a CBM patent review “unless the Director
`
`determines that the information presented in the petition . . . , if such
`
`information is not rebutted, would demonstrate that it is more likely than not
`
`that at least 1 of the claims challenged in the petition is unpatentable.”
`
`35 U.S.C. § 324(a); see also 37 C.F.R. §§ 42.4(a), 42.208. Because we
`
`determine that the ’045 patent is not a covered business method patent, we
`
`deny the Petition.
`
`A. Related Matters
`
`Petitioner identifies that the patent-at-issue is the subject matter of a
`
`district court case filed in the U.S. District Court for the District of Delaware
`
`(Case No. 1:14-cv-00216), and transferred to the U.S. District Court for the
`
`Northern District of California (Case No. 3:15-cv-00966). Pet. 5.
`
`Additionally, Petitioner identifies Case IPR2015-00657 (consolidated with
`
`IPR2015-00660) as a proceeding concerning the patent-at-issue. Id. Case
`
`IPR2015-00662 (consolidated with IPR2015-00666) is also a related
`
`proceeding, involving a related patent. Id.
`
`2
`
`
`
`CBM2016-00036
`Patent 6,286,045 B1
`
`B. Petitioner’s Standing
`
`Petitioner represents that it has been sued for infringement. Id. at 6.
`
`Second, Petitioner represents that it is not estopped from challenging the
`
`claims on the grounds identified in the Petition. Id.
`
`I. The ’045 Patent (Ex. 1001)
`
`The ’045 patent is directed to a system for storing information on a
`
`computer network and allowing the information to be accessed by terminals
`
`connected to the computer network, either directly, or through an
`
`intermediary device such as a local or proxy server. Ex. 1001, Abstract.
`
`The system includes computers or web sites that store pages, which may
`
`include references to banners to be displayed in conjunction with the web
`
`pages on the terminal. Id. The ’045 patent also discloses a method that
`
`“solves the initial problem of how to create accurate counts of banner
`
`information displays on user terminals while avoiding the problems created
`
`by requiring the banner information to be retransmitted across the computer
`
`network each time the banner information is requested by a user or a user’s
`
`terminal.” Id. at 14:3340. In one embodiment, the ’045 patent describes
`
`the use of an initial banner request signal that is a general content Uniform
`
`Resource Locator (“URL”) address generated by the terminal, where the
`
`URL address does not specify which banner is to be displayed. Id. at
`
`17:2226. The recipient of the initial banner request signal selects which
`
`banner is to be displayed on the terminal, and returns a specific content URL
`
`address to the terminal, using a “Status HTTP 302 Redirect signal,”
`
`indicating the address of the selected banner. Id. at 17:2636. Therefore,
`
`even though the banner may be cached or stored on the user’s terminal or on
`
`a proxy server, the response to the general content URL address signal is not
`
`3
`
`
`
`CBM2016-00036
`Patent 6,286,045 B1
`
`cached, preventing the initial banner request signal from being blocked by
`
`either the terminal or the proxy server. Id. at 17:4250.
`
`C. Illustrative Claim
`
`Claims 1, 20, 34, 43, 49, 59, 64, 72, and 75 are independent claims.
`
`Claim 1, reproduced below, is illustrative of the subject matter at issue.
`
`1. A method for storing information on a primary
`server and one or more secondary servers and on
`computer sites connected to a computer network, wherein
`information delivered over the computer network to a
`terminal or a group of terminals may contain references
`to other information to be delivered to the terminal,
`comprising:
`serving a first portion of information to a terminal,
`wherein said first portion of information contains a
`reference to a second portion of information;
`causing a first request signal to be transmitted from
`the terminal to a primary server requesting a location
`address for said second portion of information from
`which said second portion of information can be served
`to the terminal, wherein said first request signal includes
`information intended to prevent said first request signal
`from being blocked from reaching said primary server by
`either the terminal or any intermediary device located
`topologically between the terminal and the primary server
`as a result of previous caching of said first portion of
`information or said second portion of information in the
`terminal or said intermediary device;
`sending a location signal from the primary server
`to the terminal providing said location address of said
`second portion of information;
`causing a second request signal to be transmitted
`from the terminal containing said location address of said
`second portion of information and requesting said second
`portion of information be served to the terminal; and
`serving said second portion of information to the
`terminal.
`
`4
`
`
`
`CBM2016-00036
`Patent 6,286,045 B1
`
`D. Covered Business Method Patent
`
`A CBM patent is defined as “a patent that 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, except that the term does not include patents for technological
`
`inventions.” Leahy-Smith America Invents Act § 18(d)(1), Pub. L. No.
`
`112-29, 125 Stat. 284 (2011) (“AIA”). The definition of a CBM patent,
`
`therefore, contemplates two distinct aspects: (1) the financial product or
`
`service inquiry; and (2) the technological invention exception. Patent Owner
`
`disputes both aspects, and urges that we find neither one satisfied by the
`
`’045 patent. Prelim. Resp. 1031. Because it is dispositive, we focus our
`
`analysis below on the arguments presented with regards to whether the ’045
`
`patent is for a technological invention, and need not decide whether the
`
`financial product or service prong is met.
`
`To determine whether a patent is for a technological invention, we
`
`consider “whether the claimed subject matter as a whole”: (1) “recites a
`
`technological feature that is novel and unobvious over the prior art;” and
`
`(2) “solves a technical problem using a technical solution.” 37 C.F.R.
`
`§ 42.301(b). In order to fall under the technological invention exception,
`
`both of the above considerations must be satisfied.
`
`1. Novel and Unobvious
`
`Petitioner asserts that the claimed subject matter does not contain any
`
`novel or unobvious technological features. Pet. 2331. In particular,
`
`Petitioner proffers five arguments in support of its assertion. First, Petitioner
`
`argues that the claimed technology was known and that the functions of the
`
`technological features were also known. Id. at 2325. Petitioner relies on
`
`5
`
`
`
`CBM2016-00036
`Patent 6,286,045 B1
`
`testimony from Dr. Henry Houh to state that “advertisement counting
`
`accuracy was already a widely known issue at the time of filing, and the
`
`proposed solution described by the ’045 patent was also already well
`
`known.” Id. at 25 (citing Ex. 1003 ¶¶ 3132).
`
`We are not persuaded by Petitioner’s first argument. The allegation
`
`that it was known not to cache as a solution to inaccurate counting of
`
`Internet advertisements does not address the full scope of the claims. The
`
`claims are not directed solely to technology that enables accurate counting.
`
`Rather, the Specification states that
`
`the present invention solves the initial problem of how to
`create accurate counts of banner information displays on
`user terminals while avoiding the problems created by
`requiring the banner information to be retransmitted
`across the computer network each time the banner
`information is requested by a user or a user’s terminal.
`
`Ex. 1001, 14:3339. That is, the claims address two problems: (1) an initial
`
`banner request signal that is intended to prevent blocking, and thus, enables
`
`accurate counts; and (2) the transmission of banners that can be cached, to
`
`avoid the problems caused by retransmitting. Therefore, merely pointing out
`
`that the claimed functions and recited technology were independently known
`
`in the art does not show that the solution addressing both problems was not
`
`novel or unobvious.
`
`
`
`Petitioner then states that the claimed functions were known to be
`
`used together, but we find this statement unpersuasive because it is not
`
`factually supported in the Petition. See Pet. 26 (“Not only were these actions
`
`individually known, but it was also already known to use them together.”).
`
`Petitioner relies solely on Dr. Houh’s Declaration to support this statement.
`
`Ex. 1003 ¶¶ 4552. The Petition, however, does not explain with any
`
`6
`
`
`
`CBM2016-00036
`Patent 6,286,045 B1
`
`particularity how the art on which Dr. Houh relies shows that the claimed
`
`functions as a whole were not novel and unobvious at the time of the
`
`invention. The Petition is conclusory on this point, and the Declaration
`
`lacks explanation sufficient to discern whether Dr. Houh’s assertions are
`
`correct.
`
`
`
`We discuss now our findings regarding the assertions Dr. Houh makes
`
`in paragraphs 45 to 52 of his declaration. Dr. Houh first relies on a “tool”
`
`called “PageMeter,” but he does not explain whether PageMeter performs
`
`the recited functions or utilizes the recited signals. See Ex. 1003 ¶ 46. Next,
`
`Dr. Houh makes statements regarding HTTP 1.01 that are conclusory and
`
`lack sufficient support. See id. ¶ 47. Specifically, Dr. Houh states that it
`
`was known to respond to a cache-busting signal with a redirect signal. Id.
`
`But he relies on a draft of the HTTP protocol (version 1.0) that describes
`
`redirection, with no disclosure of its use in response to a “cache-busting”
`
`signal, as asserted. See id.
`
`Dr. Houh also relies on the use of a dynamically generated URL
`
`address (as evidence of an “unblockable” signal) together with a disclosure
`
`from the patent-at-issue to inform his opinion and to assert that “dynamic
`
`URLs were known to prevent a terminal or proxy server from blocking the
`
`transmission to the originating server.” Id. ¶ 49 (relying on Ex. 1011, which
`
`is U.S. Patent No. 5,751,956, issued to Kirsch on May 12, 1998 (“Kirsch”)).
`
`We find that such reliance on the patent-at-issue to fill in the gaps of alleged
`
`prior art is improper hindsight. Furthermore, the portion cited from the
`
`
`1 T. Berners-Lee et al., HYPTERTEXT TRANSFER PROTOCOL – HTTP/1.0,
`HTTP Working Group INTERNET-DRAFT, Feb. 19, 1996 (Ex. 1013,
`“HTTP1.0”).
`
`7
`
`
`
`CBM2016-00036
`Patent 6,286,045 B1
`
`patent-at-issue (Ex. 1001, 18:3642) does not state what Dr. Houh proffers.
`
`The ’045 patent describes incorporating in URL addresses variable
`
`components (e.g., a time/date stamp) that are different every time the initial
`
`banner signal is generated. Id. There is no discussion in the patent-at-issue
`
`of “dynamic URLs.” Nor does Dr. Houh explain why the manner in which
`
`the URL address is generated (e.g., dynamically) has any equivalence to a
`
`URL address with information and a format that causes the address to be
`
`different or unique every time.
`
`Finally, Dr. Houh’s reliance on the HTTP 1.1 draft2 is unpersuasive.
`
`Ex. 1003 ¶ 5052. A HEAD command, as explained by Dr. Houh, does not
`
`meet the limitation that the “first request signal,” recited in claim 1, must
`
`request the location address of the banner. At best, the HEAD request is
`
`used to request header information to determine whether the cached object
`
`has changed. Id. ¶ 51. Even if the HEAD request could be used for
`
`counting, about which the HTTP 1.1 draft is silent, the HEAD request has
`
`not been shown to be one that requests the location of a banner as required
`
`by the independent claims of the ’045 patent. Therefore, we are not
`
`persuaded that the evidence Dr. Houh has relied upon reasonably supports
`
`the assertions made in support of Petitioner’s contention. Moreover, as
`
`explained above, the basic deficiency in Petitioner’s and Dr. Houh’s analysis
`
`is a failure to account for the full scope of the claims.
`
`
`
`The second and third arguments proffered by Petitioner also are
`
`unpersuasive because they focus on individual features of the claims, rather
`
`
`2 R. Fielding et al., HTTP WORKING GROUP INTERNET DRAFT HYPTERTEXT
`TRANSFER PROTOCOL – HTTP/1.1, HTTP Working Group INTERNET-
`DRAFT, May 2, 1996 (Ex. 1014, “the HTTP 1.1 draft”).
`
`8
`
`
`
`CBM2016-00036
`Patent 6,286,045 B1
`
`than on the claims as a whole. For example, Petitioner argues that the “idea
`
`of using ‘cache busting’ to get accurate hit counts for an ad server . . . was
`
`already widely known.” Pet. 26. In particular, Petitioner points out that
`
`using Common Gateway Interface (CGI), or “non-cacheable,” URL
`
`addresses was known in the art. Id. at 27. These arguments are
`
`unpersuasive as they are not reasonably directed to the full scope of the
`
`claims, none of which is limited to “cache busting.” As for the third
`
`argument, Petitioner asserts that “the use of redirect or location signals” was
`
`known. Pet. 27. Petitioner relies on the same testimony from Dr. Houh
`
`addressed above. Id. (citing Ex. 1003 ¶¶ 4752). We have found the cited
`
`testimony not reasonably supported and conclusory, as stated above.
`
`Furthermore, we have determined that the features recited in the claims of
`
`the ’045 patent solve two problems at the same time, and addressing the role
`
`of a redirect signal in Kirsch, without showing how the alleged “dynamic
`
`URL” is equivalent to a first request signal as claimed is insufficient to show
`
`lack of novelty or obviousness based on Kirsch and other prior art.
`
`
`
`Petitioner’s fourth argument is that the Board, at the time of
`
`Petitioner’s filing of the instant Petition, had instituted an inter partes review
`
`of the ’045 patent (Case IPR2015-00657). Pet. 2829. Petitioner reasons
`
`that our decision whether to institute trial in the inter partes review informs
`
`us here, i.e., that the claims lack novelty in view of the prior art asserted in
`
`that inter partes review. Id. We are not persuaded. Our previous
`
`determination was only that Petitioner had established a reasonable
`
`likelihood of prevailing on its asserted grounds. Further, as Patent Owner
`
`notes, we did not institute trial for 47 of the 69 claims included in the
`
`petitions for inter partes review concerning the ’045 patent. Prelim. Resp.
`
`9
`
`
`
`CBM2016-00036
`Patent 6,286,045 B1
`
`24. We also have issued a Final Written Decision with respect to claims
`
`4953, 5559, 6167, and 69–73 of the ’045 patent, concluding that
`
`Petitioner had not shown the challenged claims to be unpatentable, by a
`
`preponderance of the evidence, based on much of the same prior art that
`
`Petitioner raises in the instant Petition. Google Inc. v. At Home
`
`Bondholders’ Liquidating Trust, Case IPR2015-00657 (PTAB Aug. 10,
`
`2016) (Paper 42) (addressing also claims in consolidated Case IPR2015-
`
`00660). Thus, even if the other institution decisions were applicable to our
`
`determination in this proceeding of whether the technological invention
`
`exception applies, they are not persuasive on that issue given all of the facts.
`
`
`
`Finally, Petitioner’s fifth argument focuses on pointing out that the
`
`Specification of the ’045 patent confirms that the claims recite the use of
`
`conventional or generic computer devices and features. Pet. 2930. We are
`
`not persuaded by this argument. Regardless of whether a generic computer
`
`terminal or other computer technology could perform the recited functions, it
`
`is the combination of the method steps here that solves the two problems
`
`identified above and is alleged to be novel and nonobvious. Patent Owner’s
`
`arguments are persuasive in that regard. See Prelim. Resp. 2527
`
`(“Petitioner provides no explanation as to how the technical feature of, for
`
`example, utilizing the combination of a first request signal with information
`
`intended to prevent it from being blocked and a second request signal that
`
`can be satisfied from a cache was known or obvious.”).
`
`
`
`Having reviewed the arguments and evidence presented by the parties
`
`regarding the novel-and-nonobvious prong of the analysis, we are not
`
`persuaded by Petitioner’s arguments that the claimed subject matter as a
`
`10
`
`
`
`CBM2016-00036
`Patent 6,286,045 B1
`
`whole does not recite a technological feature that is novel and unobvious
`
`over the prior art.
`
`2. Technical Problem Using a Technical Solution
`
`We proceed to analyze whether the ’045 patent claims are directed to
`
`a technical problem using a technical solution. For the reasons explained
`
`below, we are not persuaded by Petitioner’s arguments.
`
`Petitioner proffers two arguments: (1) the problem of how much to
`
`charge advertisers is not technical; and (2) the solution is not technical
`
`because the claimed signals are not guaranteed to be counted and that
`
`information transmitted over the Internet does not “change the technology in
`
`any way.” Pet. 3235. Patent Owner counters that Petitioner’s statement of
`
`the problem ignores the claim language, which is not directed to how much
`
`to charge for advertising. Prelim Resp. 28. Additionally, Patent Owner
`
`argues that the ’045 patent addresses the “technical problems that arise when
`
`requests for banners on a caching network are blocked by caches, while
`
`avoiding problems created by requiring the banner information to be
`
`retransmitted across the network each time the banner is requested by a
`
`user’s terminal.” Id. at 29 (citing Ex. 1001, 14:3339). According to Patent
`
`Owner, the solution to these technical problems is rooted in the realm of
`
`computer networks. Id. at 2930.
`
`We agree with Patent Owner that Petitioner has misidentified the
`
`problem addressed by the claims. We also agree with Patent Owner that the
`
`problem is technical in nature as the claims are directed to the use of specific
`
`signals, with identified functions that are acted upon by network components
`
`(browser in terminal, servers, and intermediary devices or proxy servers) to
`
`satisfy a technical demand on computer networks—the use of caching while
`
`11
`
`
`
`CBM2016-00036
`Patent 6,286,045 B1
`
`also enabling reliability of receiving signals that otherwise would be blocked
`
`with the use of caching.
`
`Finally, we also agree with Patent Owner that the claims provide a
`
`technical solution to a technical problem. Claim 1 recites that the “first
`
`request signal” includes “information intended to prevent said first request
`
`signal from being blocked from reaching said primary server by either the
`
`terminal or any intermediary device . . . as a result of previous caching.”
`
`Claim 1 also recites “sending a location signal from the primary server to the
`
`terminal providing said location address,” causing a “second request signal”
`
`to be transmitted from the terminal “containing said location address,” and
`
`“serving” the second portion of information. These steps, together, are
`
`directed to signals implemented in a computer network for the purpose of
`
`solving the two technical problems discussed above, which are rooted in
`
`computer technology. See Ex. 1001, 14:3339. Even if these are
`
`implemented in known computer devices and using known protocols, the
`
`claimed processes are technical solutions to technical problems because
`
`providing a system that achieves the advantages of caching while at the
`
`same time ensuring reliable receipt of signals over the Internet is a problem
`
`unique to the technology implemented in the Internet’s computing
`
`environment.
`
`Accordingly, the ’045 patent claims solve a technical problem using a
`
`technical solution.
`
`We have considered all the arguments presented regarding whether
`
`the claimed invention solves a technical problem using a technical solution,
`
`and whether the claimed subject matter recites a technological feature that is
`
`novel and unobvious over the prior art. For the reasons discussed above, we
`
`12
`
`
`
`CBM2016-00036
`Patent 6,286,045 B1
`
`are not persuaded that the information presented in the Petition establishes
`
`that the ’045 patent is eligible for the transitional covered business method
`
`patent review program.
`
`
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that the ’045 patent is not a
`
`covered business method patent.
`
`
`
`In consideration of the foregoing, it is hereby
`
`IV. ORDER
`
`ORDERED that pursuant to 35 U.S.C. § 324(a), a covered business
`
`method patent review is not instituted as to any claim of the ’045 patent.
`
`
`
`
`
`
`
`
`
`13
`
`
`
`CBM2016-00036
`Patent 6,286,045 B1
`
`PETITIONER:
`
`Michelle Holoubek
`Michael Messinger
`Sterne, Kessler, Goldstein & Fox
`mhoubek-PTAB@skgf.com
`mikem-PTAB@skgf.com
`
`PATENT OWNER:
`
`Garland Stephens
`Justin Constant
`Weil, Gotshal & Manges LLP
`garland.stephens@weil.com
`justin.constant@weil.com
`
`
`14
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