`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`GOOGLE INC.,
`MATCH.COM LLC, and PEOPLE MEDIA, INC.
`Petitioner
`
`v.
`
`B.E. TECHNOLOGY, L.L.C.
`Patent Owner
`___________
`
`Case IPR2014-000381
`Patent 6,628,314
`___________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`PATENT OWNER’S REPONSE TO PETITION
`(37 C.F.R. § 42.120)
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`1 Case IPR2014-00699 has been joined with this proceeding.
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`Page
`
`
`
`I.
`
`II.
`
`RELIEF REQUESTED .................................................................................. 1
`
`SUMMARY OF B.E.’S ARGUMENT .......................................................... 1
`
`III. TECHNOLOGY BACKGROUND AND THE INVENTOR’S
`SOLUTION .................................................................................................... 1
`
`IV. GOVERNING LEGAL STANDARDS ......................................................... 3
`
`A. Anticipation .......................................................................................... 3
`
`B. Obviousness .......................................................................................... 4
`
`V.
`
`SUMMARY OF THE INSTITUTION DECISION ....................................... 5
`
`VI. LOGAN DOES NOT DISCLOSE THE “UNIQUE IDENTIFIER” OF
`CLAIM 11 OF THE ’314 PATENT ............................................................... 6
`
`A. Google’s Erroneous Claim Construction And Its Reliance On
`The Logan “AccountNo.” .................................................................... 6
`
`B.
`
`C.
`
`D.
`
`The Board’s Similar Reliance On The Logan AccountNo ................ 10
`
`The Logan “AccountNo” Refers To The “Subscriber,” Not The
`Subscriber’s Computer ....................................................................... 12
`
`The Logan AccountNo Does Not Uniquely Identify
`“Information Sent . . . From The Computer.” .................................... 12
`
`VII. LOGAN DOES NOT DISCLOSE “PROVIDING A UNIQUE
`IDENTIFIER TO THE COMPUTER.” ....................................................... 15
`
`A.
`
`B.
`
`Petitioner’s “Inherency” Argument Is Unsound ................................ 16
`
`The Board’s Claim Construction Is Erroneous .................................. 18
`
`
`
`
`
`‐i‐
`
`
`
`
`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`VIII. LOGAN DOES NOT DISCLOSE THE “SELECTION OF
`ADVERTISING CONTENT FOR TRANSFER TO THE
`COMPUTER IN ACCORDANCE WITH THE DEMOGRAPHIC
`INFORMATION . . . .” ................................................................................ 21
`
`IX. THE COMBINATION OF LOGAN AND ROBINSON IS NOT
`SUFFICIENT TO INVALIDATE CLAIM 15 ............................................. 35
`
`X. GOOGLE HAS FAILED TO SUBMIT ADMISSIBLE EXPERT
`TESTIMONY ............................................................................................... 37
`
`XI. THE ADOPTION OF THE “BROADEST REASONABLE
`CONSTRUCTION” RULE EXCEEDED THE PTO’S RULE
`MAKING AUTHORITY ............................................................................. 37
`
`XII. CONCLUSION ............................................................................................. 39
`
`
`
`
`
`
`
`‐ii‐
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`
`Federal Cases
`Advanced Display Sys., Inc. v. Kent State University,
`212 F.3d 1272 (Fed. Cir. 2000) ............................................................................ 3
`
`Page
`
`ATD Corp. v. Lydall, Inc.,
`159 F.3d 534 (Fed. Cir. 1998) .......................................................................... 3, 4
`
`CFMT, Inc. v. YieldUp Int’l Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) ...................................................................... 5, 35
`
`Cooper Techs. Co. v. Dudas,
`536 F.3d 1330 (Fed. Cir. 2008) .......................................................................... 37
`
`Lacavera v. Dudas,
`441 F.3d 1380 (Fed. Cir. 2006) .......................................................................... 37
`
`Markman v. Westview Instruments, Inc.,
`517 U.S. 370 (1996) .............................................................................................. 6
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (2005) (en banc) ........................................................................... 6
`
`Richardson v. Suzuki Motor Co.,
`868 F.2d 1226 (Fed. Cir. 1989) ...................................................................... 4, 25
`
`Tafas v. Doll,
`559 F.3d 134 (Fed. Cir. 2009), vacated and reh'g en banc granted, 328 F.
`App’x 658 (Fed. Cir. 2009) ................................................................................ 38
`
`Federal Statutes
`
`U.S.C. § 101 ............................................................................................................. 38
`
`28 U.S.C. § 1746 ...................................................................................................... 36
`
`35 U.S.C. 2(b)(2)(A) ................................................................................................ 37
`
`35 U.S.C. § 2(b)(2) ................................................................................................... 37
`
`35 U.S.C. § 103 .................................................................................................... 5, 35
`
`- iii -
`
`
`
`TABLE OF AUTHORITIES
`(continued)
`
`Page
`
`
`35 U.S.C. §§ 311-319 ................................................................................................ 1
`
`35 U.S.C. § 316, B.E. ................................................................................................. 1
`
`35 U.S.C. § 316(e) ..................................................................................................... 1
`
`35 U.S.C. §§ 326 and 316 ........................................................................................ 37
`
`Regulations
`
`37 C.F.R. 42.100(b) ................................................................................................. 36
`
`37 C.F.R. § 1.68 ....................................................................................................... 36
`
`37 C.F.R. § 42.53 ..................................................................................................... 36
`
`37 C.F.R. § 42.100(b) ................................................................................................ 6
`
`37 C.F.R. § 42.120 ..................................................................................................... 1
`
`77 Fed. Reg. 48,756, 48,776 (Aug. 14, 2012) ........................................................... 6
`
`Other Authorities
`
`Garmin Int’l, Inc. v. Patent of Cuozzo Speed Techs. LLC,
`Case No. IPR2012-00001, slip op. (P.T.A.B. Jan. 9, 2013) ................................. 5
`
`H.R. Rep. No. 112-98, pt. 1, at 46-47 ...................................................................... 38
`
`
`
`iv
`
`
`
`
`
`LIST OF EXHIBITS
`
`
`
`Declaration of N. Goldstein
`
`Curriculum Vitae – N. Goldstein
`
`Deposition Transcript of S. Gray, Vols. 1 and 2
`
`
`
`2001
`
`2002
`
`2003
`
`- v -
`
`
`
`
`
`Patent Owner B.E. Technology, L.L.C. (hereafter “B.E.”) respectfully
`
`submits this Patent Owner Response to petitioner Google Inc.’s (“Google”)
`
`Petition for Inter Partes Review. This filing is timely under 35 U.S.C. §§ 311-319
`
`and 37 C.F.R. § 42.120.
`
`Google contends that Claims 11-13, 18, and 20 of U.S. Patent No. 6,628,314
`
`(Ex. 1001) (“’314 patent”) are anticipated by U.S. Patent No. 5,721,827 (Ex. 1002)
`
`(“Logan”), and that Claim 15 of the ’314 patent would have been obvious over
`
`Logan and U.S. Patent No. 5,918,014 (Ex. 1003) (“Robinson”). Under 35 U.S.C. §
`
`316(e), Google had the burden of proving its unpatentability contentions by a
`
`preponderance of the evidence. Google failed to carry its burden.
`
`I.
`
`RELIEF REQUESTED.
`
`Pursuant to 35 U.S.C. § 316, B.E. respectfully requests that the Board
`
`determine that Claims 11-13, 15, 18, and 20 of the’314 patent are patentable in
`
`view of Logan and Robinson.
`
`II. TECHNOLOGY BACKGROUND AND THE INVENTOR’S
`SOLUTION.
`The ’314 patent claims a method and apparatus of providing
`
`demographically-targeted advertising to a computer user. Ex. 1001, Abstract, Col.
`
`22:41-42 (“A method and apparatus for providing an automatically upgradeable
`
`software application that includes targeted advertising based upon demographics
`
`and user interaction with the computer.”). The patent recognized that the Internet
`
`- 1 -
`
`
`
`
`
`presents a vast new advertising medium with “significant advantages for
`
`advertisers,” including that advertising can be targeted “demographically or
`
`reactively.” Id. Col. 1:44-50.
`
`But acquiring information from potential consumers so that advertising
`
`could be specially targeted presented problems. “[S]tudies have shown that while
`
`people are concerned about privacy issues, and, in particular, do not wish to
`
`provide specific information that identifies them (such as their name, address, or
`
`Social Security number), they generally do not mind providing demographic
`
`information, nor do they mind monitoring of their computer usage as long as their
`
`usage is not associated with any specific information that could be used to identify
`
`them.” Ex. 1001, Col. 2:41-48. There also were limits to the type of usage
`
`information that could be collected. See id. Col. 3:11-14 (“One of the
`
`disadvantages of prior art systems that acquire data regarding an end-user’s
`
`computer usage is that they are generally limited to gathering information
`
`concerning only certain limited uses of the computer.”); id. Col. 3:20-22 (“By
`
`limiting the reported data in this manner, it is difficult to develop accurate profiles
`
`for the individual users that are useful in targeting advertising.”). The ’314 patent
`
`claims an improvement over these prior art methods by providing an anonymous
`
`system that permits targeting of advertising based upon collected demographic
`
`information and interaction with the computer.
`
`2
`
`
`
`
`
`III. GOVERNING LEGAL STANDARDS.
`
`A. Anticipation.
`
`“A patent is invalid for anticipation when the same device or method, having
`
`all of the elements and limitations contained in the claims, is described in a single
`
`prior reference.” ATD Corp. v. Lydall, Inc., 159 F.3d 534, 545 (Fed. Cir. 1998)
`
`(citing Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989) and
`
`Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 894 (Fed. Cir. 1884)).
`
`“[I]nvalidity by anticipation requires that the four corners of a single, prior art
`
`document describe every element of the claimed invention, either expressly or
`
`inherently, such that a person of ordinary skill in the art could practice the
`
`invention without undue experimentation.” Advanced Display Sys., Inc. v. Kent
`
`State University, 212 F.3d 1272, 1282 (Fed. Cir. 2000) (citing Atlas Powder Co. v.
`
`Ireco Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999)); id., 212 F.3d at 1283
`
`(“Anticipation, put simply, requires that every element of the claimed invention
`
`was previously ‘described in a single reference.’”) (quoting Scripps Clinic &
`
`Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991).
`
`To meet its burden on anticipation, Google must establish that Logan
`
`discloses all of the elements of Claims 11, 13, 18, and 20 of the ’314 patent, and
`
`that Logan “describe[s] the patented subject matter with sufficient clarity and detail
`
`to establish that the subject matter existed and that its existence was recognized by
`
`3
`
`
`
`
`
`persons of ordinary skill in the field of the invention.” ATD, 159 F.3d at 545.
`
`“The identical invention must be shown in as complete detail as is contained in the
`
`. . . claim.” Richardson, 868 F.2d at 1236. As explained below, Google’s reliance
`
`on erroneous claim constructions results in a failure to establish that Logan
`
`discloses “all of the elements and limitations” of the challenged claims. Google
`
`also fails to meet its burden because it fails to show that Logan describes the
`
`claimed subject matter “with sufficient clarity and detail,” and the vague
`
`arguments and citations in the petition do not explain where or how the claimed
`
`invention is described in Logan “in as complete detail as is contained in” the
`
`challenged claims.
`
`B. Obviousness.
`
`Acknowledging that Logan does not disclose the “cookie” element of Claim
`
`15 of the ’314 patent, Google asserts that dependent Claim 15 is invalid for
`
`obviousness over Logan and Robinson. Claim 15 claims “[t]he method of claim
`
`11, wherein said providing a unique identifier step further comprises storing a
`
`cookie on the computer.” Ex. 1001, Col. 23:17-19. Robinson aside, Google’s
`
`obviousness argument fails because Logan does not teach all of the other elements
`
`of Claim 11, and the combination of Logan and Robinson therefore cannot suffice
`
`to establish that Claim 15 would have been obvious. If a single element of a claim
`
`is absent from a combination, the claim cannot be considered obvious, even when
`
`4
`
`
`
`
`
`the evidence properly establishes a motivation to make the combination. See
`
`CFMT, Inc. v. YieldUp Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)
`
`(“Obviousness requires a suggestion of all limitations in a claim”) (citing In re
`
`Royka, 490 F.2d 981, 985 (CCPA 1974)); Garmin Int’l, Inc. v. Patent of Cuozzo
`
`Speed Techs. LLC, Case No. IPR2012-00001, slip op. at 15 (P.T.A.B. Jan. 9, 2013)
`
`(denying inter partes review request under 35 U.S.C. § 103 where prior art
`
`combination did not disclose all claim limitations).
`
`IV. SUMMARY OF THE INSTITUTION DECISION.
`
`Google’s petition asserted that Claims 11-13, 18, and 20 of the ’314 patent
`
`are unpatentable over Logan as anticipated and obvious, that Claims 11-13, 15, 18,
`
`and 20 are obvious over Robinson and “Patent Owner Admitted Prior Art” and
`
`over Logan and Robinson. Paper 9 at 7. B.E. elected not to file a preliminary
`
`response. The Board instituted an inter partes review based on the asserted
`
`anticipation of Claims 11-13, 18, and 20 by Logan and obviousness of Claim 15
`
`over Logan and Robinson. Id. at 18. No other grounds were authorized for inter
`
`partes review.
`
`V. LOGAN DOES NOT DISCLOSE THE “UNIQUE IDENTIFIER” OF
`CLAIM 11 OF THE ’314 PATENT.
`
`Claim 11 of the ’314 patent contains several references to a “unique
`
`identifier.” E.g., Ex. 1001, Col. 22:59-62 (“providing a unique identifier to the
`
`computer, wherein said identifier uniquely identifies information sent over said
`
`5
`
`
`
`
`
`computer network from the computer to said server”). Without citing or discussing
`
`Claim 11 or addressing the claim context in which the term appears, Google asserts
`
`that “the unique identifier is described as specific to the user,” Petition at 6, and
`
`argues that “unique identifier” is properly construed in this proceeding to mean
`
`“information that uniquely identifies a user.” Id. By incompletely citing the
`
`specification and completely ignoring the actual claim language in which the term
`
`appears, Google arrives at an erroneous construction of “unique identifier.” As a
`
`result, Google’s attempt to demonstrate that Logan discloses the “unique
`
`identifier” of Claim 11 of the ’314 patent fails.
`
`A. Google’s Erroneous Claim Construction And Its Reliance On The
`Logan “AccountNo.”
`
`The claim terms in question – for example, “providing a unique identifier to
`
`the computer, wherein the unique identifier uniquely identifies information sent
`
`over said computer network from the computer to said server” – make no mention
`
`of a “user” with reference to the “unique identifier.” Ex. 1001, Col. 22:59-62.
`
`Despite this, Google argues that “the unique identifier is described as specific to
`
`the user,” Petition at 6, and contends that “the broadest reasonable construction of
`
`‘unique identifier’ in view of the specification is ‘information that uniquely
`
`identifies a user.’” Id.2 Google’s expert Stephen Gray similarly asserts that “a
`
`
`2 Google relies on “the broadest reasonable construction” of various claim terms,
`see 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`
`6
`
`
`
`
`
`reasonable construction of this term is an [sic] ‘information that uniquely identifies
`
`a user,’” citing Col 17:29-38 of the ’314 patent. He offers no further explanation
`
`for his conclusion. Neither Google nor Mr. Gray addressed the construction of
`
`“unique identifier” in the context of the actual claim limitations in which it
`
`appears.
`
`Google cites the passage from Column 17 of the ’314 patent cited by Mr.
`
`Gray, focusing in particular on lines 29-31, where it is stated that “[t]he user ID
`
`that is stored along with the demographic data is used to anonymously identify the
`
`user for the purpose of demographically targeting advertising to that user.” Ex.
`
`1001, Col. 17:29-31. Google fails, however, to take note of the immediately
`
`succeeding sentence, which states that “[t]his can be accomplished by assigning
`
`the user ID to the particular copy of the client software application downloaded by
`
`the user.” Id. Col. 17:31-34. If the user ID is assigned to software downloaded by
`
`the user, it will not “uniquely identify the user.” If it is assigned to the software,
`
`the ID will not “uniquely” identify the user because it will also “identify” others
`
`who may use the user’s computer and software.
`
`
`48,776 (Aug. 14, 2012), rather than a construction based on the established rules
`that govern claim construction in infringement proceedings in district court. See
`generally Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996); Phillips v.
`AWH Corp., 415 F.3d 1303 (2005) (en banc). As explained below, B.E. contends
`that the Office exceeded its rulemaking authority by adopting the broadest
`reasonable construction standard. B.E. contends that all claim language must be
`construed as it would be construed in court.
`
`7
`
`
`
`
`
`Column 17 also contains a disclosure of an alternative approach by which
`
`“the user ID can be included in a cookie placed by server 22 on the user’s
`
`computer 18 and this cookie can be accessed by server 22 each time computer
`
`usage information is sent to server 22 so that the ID can be associated with the
`
`computer usage information.” Id. Col.17:34-38. The storing of a cookie would,
`
`like assigning the user ID to the software, not “uniquely” identify the user. See Ex.
`
`2001 (Goldstein Decl.) ¶ 21-22. The Board noted in its institution decision that
`
`“[t]he Specification clearly illustrates that a cookie can be provided to the user’s
`
`computer in the alternative,” Paper 9 at 8, and the specification similarly discloses
`
`an alternative of assigning the user ID “to the particular copy of the client software
`
`application downloaded by the user,” not only assigning a user ID to the user.
`
`The use of an identifier that is not specific to a user is also illustrated in the
`
`discussion of Figure 9 in Column 18 of the ’314 patent. There, after a login (user
`
`identification) is used to establish a new account, the client software application,
`
`not the user who has employed a login, “receives an assigned ID from the server.”
`
`Ex. 1001, Col. 18:1-20.
`
`The Column 17 disclosure also explains that in the illustrated embodiment,
`
`“the user ID is associated with a user login that is required each time the client
`
`software application is executed.” Id. Col.17:38-41. “By having the user login to
`
`the application, it can identify which demographics are associated with this
`
`8
`
`
`
`
`
`particular user.” Id. Col. 17:41-43.
`
`These alternatives show that the idea of a “unique identifier” discussed in
`
`the specification is not limited to “information that uniquely identifies a user.”
`
`Anonymous identification of a user can be accomplished, the ’314 patent explains
`
`“by assigning the user ID to the particular copy of the client software application
`
`downloaded by the user,” id. at Col. 17:31-34, albeit at the risk of some level of
`
`imprecision. (If the user ID is assigned to software, imprecision in targeting is
`
`possible because the software might be used by multiple users.) As a tradeoff for
`
`the possible imprecision, potentially greater privacy protection might be available
`
`to a user who would not be the specific subject of the unique identifier. Regardless
`
`of whether the user ID is assigned to the user, assigned to the software, included in
`
`a cookie, or associated with a user login, the user ID disclosed in the ’314 patent
`
`can fulfill the targeting purpose of the patent.
`
`Relying on its claim construction, Google argues that “Logan’s AccountNo
`
`corresponds to the claimed ‘unique identifier’ because it is information that
`
`uniquely identifies a user.” Petition at 22. Mr. Gray asserted that “Logan’s
`
`AccountNo corresponds to the claimed ‘unique identifier’ since the AccountNo is
`
`used to identify the subscriber and associate it with at least his or her usage log.”
`
`Ex. 1004 (Gray Declaration) at ¶ 112.3 The claim charts provided by Google,
`
`
`3 The “Gray Declaration” is not actually a declaration. Mr. Gray did not sign his
`
`9
`
`
`
`
`
`Petition at 22-23, and Mr. Gray, Ex. 1004 at 50, confirm that Google relies on
`
`nothing other than the AccountNo to satisfy the “unique identifier” requirement.
`
`B.
`
`The Board’s Similar Reliance On The Logan AccountNo.
`
`In its institution decision, the Board concluded “that the term ‘unique
`
`identifier’ encompasses any unique information that can be used to identify a
`
`user.” Paper 9 at 8. The Board noted that “server 22 assigns a unique ID to a user
`
`and stores this ID in user/demographics database 46.” Id. at 8. It also mentioned
`
`the passage in the specification explaining that a user ID can be assigned, not to the
`
`user, but to the “particular copy of the client software application downloaded by
`
`the user,” id., and the alternative technique by which “the user ID can be included
`
`in a cookie placed by server 22 on the user’s computer 18 and this cookie can be
`
`accessed by server 22 each time computer usage information is sent to server 22 so
`
`that the ID can be associated with the computer usage information.” Id., see Ex.
`
`1001 at Col. 17:31-38. The additional disclosure cited by the Board shows the
`
`unique identifier of Claim 11 is not limited to an identifier that identifies a user.
`
`Like Mr. Gray, the Board recognized that the Logan AccountNo identifies a
`
`subscriber, but nonetheless found the AccountNo to correspond to the unique
`
`identifier of Claim 11. When it considered the relationship between Logan and
`
`Claim 11 of the ’314 patent, the Board portrayed the unique identifier as “broadly
`
`statement under oath or under penalty of perjury, and it is therefore not admissible
`under --------.
`
`10
`
`
`
`
`
`claimed,” but it did not address the fact that the unique identifier as claimed must
`
`“uniquely identif[y] information sent . . . from the computer,” Ex. 1001, Col.
`
`22:59-62, a significant narrowing of the term that excludes various items of
`
`information that might be used to identify a user, uniquely or otherwise. Paper 9 at
`
`13. Nor did the Board explain how the Logan AccountNo “uniquely identifies
`
`information sent over said computer network from the computer to said server.”
`
`The Board simply concluded that “unique identifier includes Logan’s AccountNo
`
`because it is provided to identify a subscriber uniquely, where this value is
`
`maintained on the client computer and uploaded to the server.” Id. at 13. That is
`
`plainly not enough to make the AccountNo a unique identifier as claimed in Claim
`
`11, as explained in more detail below.
`
`The specification is not restrictive, and there is nothing in the language of
`
`Claim 11 pointing directly to the user as the subject of the unique identifier.
`
`Indeed, by specifying that the identifier must “uniquely” identify information sent
`
`from the computer, the claim language tends to point away from identification of
`
`the user. Not all “unique information that can be used to identify a user” can
`
`uniquely identify information sent from the computer, and “any unique information
`
`that can be used to identify a user” is not a proper construction of the “unique
`
`identifier” of the ’314 patent.
`
`11
`
`
`
`
`
`C. The Logan “AccountNo” Refers To The “Subscriber,” Not The
`Subscriber’s Computer.
`
`Claim 11 refers to “providing a unique identifier to the computer, wherein
`
`said identifier uniquely identifies information sent over said computer network
`
`from the computer to said server.” Exhibit 1001 at Col. 22, lines 59-62 (emphasis
`
`added). As Mr. Gray admitted in his deposition, the Logan AccountNo refers to
`
`the subscriber, not the subscriber’s computer. See id. As an identifier of the user,
`
`the AccountNo is a questionable candidate for the Claim 11 unique identifier
`
`because there is no reason to believe it might uniquely identify information sent
`
`from the computer. As expected, the Logan AccountNo does not “uniquely
`
`identify information sent from the computer.”
`
`D. The Logan AccountNo Does Not Uniquely Identify “Information
`Sent . . . From The Computer.”
`
`Throughout Claim 11, the terms “computer” and “user” are used to refer to
`
`distinct entities. The preamble of the claim refers to the invention as “[a] method
`
`of providing demographically-targeted advertising to a computer user . . . .”
`
`Exhibit 1001 at Col. 22:43-44. In the “permitting” limitation, it is a “computer
`
`user” who is permitted, and the “acquiring” limitation refers to the acquisition of
`
`information about the “user,” who also provides information. Id. In the first
`
`“providing” limitation, the “user” is provided download access to software that is
`
`transferred to the “computer” in response to a request by the “user.” Id.
`
`12
`
`
`
`
`
`In the second “providing” limitation, the one in which the “unique
`
`identifier” first appears, the unique identifier is provided to the “computer,” and it
`
`“uniquely identifies information sent . . . from the computer.” Id. Advertising
`
`content is selected for transfer to the “computer,” and “computer” usage
`
`information is periodically acquired from the “computer.” Id., Col. 22:65–23:5. In
`
`each case, there is a clear distinction between the “computer” and the “user.”
`
`There is therefore no doubt that the unique identifier must uniquely identify
`
`information “sent . . . from the computer,” not information “sent . . . from the
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`user.”
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`It is difficult to see how a unique identifier of a user could uniquely identify
`
`information “sent from the computer.” In the abstract, a unique identifier of a user
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`has nothing to do with the computer. It may identify various things associated with
`
`a user, but it does not have anything to do with the computer, or what might be sent
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`from the computer. Nothing in Logan supports the idea that the Logan AccountNo
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`can “uniquely identify information sent . . . from the computer . . . .”
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`Consider a situation in which Users A, B, and C are identified by
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`AccountNos 1, 2, and 3. The AccountNos uniquely identify the respective users (if
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`they are not assigned to other users), but they do not “uniquely” identify
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`information sent from the computer, by the respective users or otherwise. By their
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`nature, these AccountNos refer to matters pertaining to the users, not the computer.
`
`13
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`
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`Even if it is assumed that AccountNo 1 identifies information sent from the
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`computer in some way, it does not do so “uniquely.” If AccountNo 1 identifies
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`information sent from the computer, so, too, do AccountNos 2 and 3. There is
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`nothing “unique” about any identification by AccountNo 1 of information sent
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`from the computer.
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`Considered from the perspective of User A, AccountNo 1 also fails the
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`“uniquely” test. Logan discloses a variety of ways in which “player 103” can be
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`implemented. The potential player embodiments include, at least, laptop, desktop,
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`and mobile versions. See Exhibit 1004, Col. 6:10-43. Nothing in Logan limits a
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`subscriber (the subject of the AccountNo) to a single device, and nothing in Logan
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`requires the use of a different AcountNo for each device. Mr. Gray could not point
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`to any such limitation in Logan. See Ex.2003 at 205:1-25. Indeed, Logan is not
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`consistent with the use of multiple AccountNos because the AccountNo is the
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`identifier used to bill the subscriber and to make sure that the subscriber’s
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`preferences are used in the delivery of program information. See id.
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`Because a subscriber can employ multiple players, the Logan AccountNo
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`cannot “uniquely” identify information sent from any “player.” Claim 11 requires
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`that a unique identifier uniquely identify information “sent from the computer.”
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`Because the Logan AccountNo cannot do that, it does not satisfy the unique
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`identifier limitation of Claim 11. For this reason alone, Google’s reliance on
`
`14
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`Logan to invalidate Claim 11 and dependent Claims 12, 13, 15, 18, and 20 must be
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`rejected.
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`VI. LOGAN DOES NOT DISCLOSE “PROVIDING A UNIQUE
`IDENTIFIER TO THE COMPUTER.”
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`The limitation in which the “unique identifier” makes its first appearance
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`begins with a requirement of “providing a unique identifier to the computer.” In
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`the specification of the ’314 patent, it is explained that this term refers to
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`“receiv[ing] an assigned ID from the server.” Ex. 1001 at Col. 18:13. Google was
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`not able to point to any explicit disclosure of such receipt in Logan, and its
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`conclusory “inherency” argument has no merit. The Board also did not identify
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`any such receipt, instead relying on an erroneous and awkward construction of
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`“providing” and “providing a unique identifier to the computer.”
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`A.
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`Petitioner’s “Inherency” Argument Is Unsound.
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`The petition does not refer to anything in the Logan patent alleged explicitly
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`to disclose the receipt of an assigned ID by the player from the server, or to satisfy
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`the “providing a unique identifier to the computer” limitation under any other
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`theory. Instead, Google alleges only that “[s]ince the Usage Log Table includes
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`the AccountNo and is uploaded to the server 101 from the player 103 on the user’s
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`computer, the user’s computer must necessarily have been provided with the
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`AccountNo prior to this upload step.” Petition at 21 (emphasis added). Mr. Gray
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`similarly argues that “one skilled in the art would recognize that the server
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`15
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`
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`necessarily provided this AccountNo to the computer prior to the upload process
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`(e.g., during the initial download process at Step 207).” Ex. 1004 (Gray
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`Declaration) ¶ 111. Google’s position is therefore limited to a contention that
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`Logan “necessarily” discloses receipt by the player of the AccountNo from the
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`server.
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`This inherency argument has no merit. There simply isn’t any reason why
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`the AccountNo would have to be provided by the server to the computer. The
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`AccountNo could be assigned in various ways that do not involve either
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`transmission from the server or receipt by the player from the server, and neither
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`Mr. Gray nor Google has made an attempt to explain their “inherency” conclusions
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`in any way.
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`As B.E. expert Neal Goldstein explains, there is no reason why the
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`AccountNo would necessarily have to be sent by the server. Various alternatives
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`existed at the time, and some were common or expected. For example, there is
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`nothing in Logan suggesting a reason why the AccountNo could not be sent to a
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`subscriber by “snail mail,” entered by the subscriber, and placed into use. Ex.
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`2001(Goldstein Declaration) ¶ 21. In that event, the server would not send or
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`provide the AccountNo. The AccountNo also could have been physically
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`delivered to the subscriber by means of a floppy disk or othe
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