`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`GOOGLE INC.,
`MATCH.COM LLC, and PEOPLE MEDIA, INC.
`Petitioner
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`v.
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`B.E. TECHNOLOGY, LLC
`Patent Owner
`____________
`
`Case IPR2014-000381
`Patent 6,628,314 B1
`____________
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`
`
`PETITIONER GOOGLE INC.’S OPPOSITION TO PATENT OWNER’S
`MOTION TO AMEND
`(INTER PARTES REVIEW OF U.S. PATENT NO. 6,628,314 B1)
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`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and LYNNE E.
`PETTIGREW, Administrative Patent Judges.
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`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`1 Case IPR2014-00699 has been joined with this proceeding.
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`Petitioner’s Opposition
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`TABLE OF CONTENTS
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`Page
`TABLE OF AUTHORITIES .................................................................................... ii
`I.
`Introduction ...................................................................................................... 1
`II.
`BE Tech’s Proposed Substitute Claims are not Supported and
`Unpatentable under 35 U.S.C. § 112 ............................................................... 1
`A.
`BE Tech Does Not Set Forth Adequate Support in its Motion ............. 1
`B.
`BE Tech’s Proposed Amendment Lacks Written Description
`Support .................................................................................................. 3
`BE Tech’s Proposed Amendment Raises Additional
`Patentability Issues ................................................................................ 5
`III. BE Tech’s Proposed Claims are Not Patentable Over the Prior Art ............... 7
`A.
`Teachings of Logan ............................................................................... 7
`B. Additional Teachings of the Prior Art ................................................... 8
`1.
`Ferguson ...................................................................................... 9
`2.
`Lazarus ...................................................................................... 11
`3.
`Fleming ..................................................................................... 12
`IV. Conclusion ..................................................................................................... 15
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`C.
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`TABLE OF AUTHORITIES
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`CASES
`Idle Free Systems, Inc. v. Bergstrom, Inc.,
`IPR2012-00026, Paper 26 (June 11, 2013) ........................................................... 1
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`Page(s)
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`Interactive Gift Express, Inc. v. Compuserve Inc.,
`256 F.3d 1323 (Fed. Cir.2001) ............................................................................. 2
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`Nichia Corp. v. Emcore Corp.,
`IPR2012-00005, Paper 7 (June 3, 2013) ........................................................... 1, 3
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`Toyota Motor Corp. v. American Vehicular Sciences LLC,
`IPR2013-00419, Paper 32 (March 7, 2014)...................................................... 2, 3
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`STATUTES, RULES AND REGULATIONS
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`35 U.S.C. § 102 .............................................................................................. 9, 11, 12
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`35 U.S.C. § 103 .......................................................................................................... 9
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`35 U.S.C. § 112 .......................................................................................................... 6
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`37 C.F.R. § 42.20 ....................................................................................................... 1
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`M.P.E.P. § 2172.01 .................................................................................................... 6
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`M.P.E.P. § 2143 ....................................................................................................... 14
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`ii
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`Petitioner’s Opposition
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`I.
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`Introduction
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`Patent Owner BE Tech, as the moving party, bears the burden to establish
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`that it is entitled to the relief request in its Motion to Amend. 37 C.F.R. § 42.20(c).
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`BE Tech’s motion should be denied because it fails to adequately provide support
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`in the original disclosure and explain “why a person of ordinary skill in the art
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`would have recognized that the inventor possessed the claimed subject matter as a
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`whole” for the proposed substitute claim. Nichia Corp. v. Emcore Corp., IPR2012-
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`00005, Paper 7 at 4 (June 3, 2013).
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`Further, BE Tech’s motion should be denied because it fails to “come
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`forward with technical facts and reasoning about those [added] feature(s),
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`including construction of new claim terms, sufficient to persuade the Board that the
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`proposed substitute claim is patentable over the prior art of record, and over the
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`prior art not of record but known to the patent owner.” Idle Free Systems, Inc. v.
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`Bergstrom, Inc., IPR2012-00026, Paper 26 at 7 (June 11, 2013).
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`Finally, BE Tech’s proposed claims should be denied because they not
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`enabled and indefinite.
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`II. BE Tech’s Proposed Substitute Claims are not Supported and
`Unpatentable under 35 U.S.C. § 112
`A. BE Tech Does Not Set Forth Adequate Support in its Motion
`In its motion, BE Tech asserts that the following underlined elements of
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`claim 23 were added:
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`wherein the computer usage information comprises information about
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`the user’s interactions with said computer software displaying advertising
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`content and at least one other program,…
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`selecting advertising content for transfer to the computer in
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`accordance with real-time and other computer usage information and
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`demographic information associated with said unique identifier.
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`Motion to Amend at 6 (underline in original). BE Tech fails to mention an
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`additional change in the claim – the modified “selecting advertising content…”
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`step and the original “transferring said advertising content…” step have been
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`moved to the end of the claim. It thus appears that BE Tech is attempting to
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`introduce a requirement that the steps be performed in a specific order. See
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`Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342-43 (Fed.
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`Cir.2001).
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` BE Tech does not provide adequate support for its proposed claim changes
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`including the new order of the recited steps. Rather, its sole support for the
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`amendments consists of 16 string cites to various parts of the ’705 application
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`(which led to the ’314 Patent). Contrary to the Board’s requirements, BE Tech thus
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`does not provide “written description support for the entire combination
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`claimed,” (Toyota Motor Corp. v. American Vehicular Sciences LLC, IPR2013-
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`00419, Paper 32 at 5(March 7, 2014)) (emphasis added). Nor does it explain why a
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`person of ordinary skill in the art would have recognized the inventor had
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`possession of the entire combination. Nichia Corp., Paper 7 at 4. Further, BE Tech
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`also does not provide a proposed claim construction for the newly added “real-time
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`and other computer usage information” feature. Toyota at 5. Both of these terms
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`should have been reasonably anticipated as subject to dispute because they at least
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`implicate indefiniteness issues as will be discussed in Section II.C below. See id. at
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`5.
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`B.
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`BE Tech’s Proposed Amendment Lacks Written Description
`Support
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`Not only has BE Tech failed to meet its burden by providing adequate
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`support and explanation for its proposed claim changes, the ’705 application
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`substantively fails to provide written description support. Proposed claim 23
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`requires selecting advertising content in accordance with “real-time and other
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`computer usage information and demographic information associated with said
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`unique identifier[.]” (Emphasis added). As such, all three pieces of information are
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`required to be used together to select advertising content.
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`In contrast, the ’705 application describes a “two-tiered approach” of
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`targeted advertising wherein the “first tier is the initial selection of banners to be
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`downloaded to the user based upon the user’s demographic information.” Ex.
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`2004, p. 29, ll. 2-4.2 The second tier is the “reactive targeting of advertisements
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`based upon user interaction with the computer.” Id. at p. 29, ll. 4-5. This “reactive
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`targeting” is handled in “real time”3 so that the “client software application 10 can
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`detect [the topic of interaction] … and can display an advertisement that is relevant
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`to this topic[.]” Id. at p. 29, ll. 14-18.
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`Two embodiments for real time reactive targeting are envisioned in the ’705
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`application. First, Internet addresses can be stored in the banner storage 30 at the
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`client computer and accessed by the client software application. Id. at p. 29, ll. 22-
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`23. Second, real time actions of the user can be “sent to ADM server 22 …,with
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`the server using the data to select and download an appropriate advertisement.” Id.
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`at p. 29, ll. 23-28. In either embodiment of real time reactive advertising targeting,
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`advertising content selected for transfer to the computer is not based on the
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`claimed “computer usage information.” This so-called “computer usage
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`information” is not “real time” information, but rather information “stored on the
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`end user’s computer 18 in user data storage 34,” (id. at p. 14, ll. 20-22), and from
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`2 For the purpose of this Opposition, Exhibit page numbers are used.
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`3 While the term “real time” is used in the ’705 application, “real time” is vague
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`and indefinite because it has multiple and conflicting meanings to one of ordinary
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`skill in the art.
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`4
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`time to time reported back to the server. Id. at p. 29, ll. 5-7. While the “computer
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`usage information” is associated with the user’s demographic information (by
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`ways of the unique ID) for profiling purposes (id. at p. 29, ll. 7-9), the real time
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`information as described in the ’705 application is separately used to target
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`advertising and is not associated with any other information at the server.
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`For at least the above reasons, there is no written description support in the
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`’705 application for the modified limitation of “selecting advertising content for
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`transfer to the computer in accordance with real-time and other computer usage
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`information and demographic information associated with said unique
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`identifier,” as required by proposed claim 23 (emphasis added).
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`C. BE Tech’s Proposed Amendment Raises Additional Patentability
`Issues
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`Petitioner respectfully notes additional patentability issues associated with
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`BE Tech’s proposed substitutions. The following non-exhaustive list serves as an
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`example:
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`Substitute claim 23 omits matter disclosed to be essential to the invention as
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`described in the specification. For example, substitute claim 23 fails to disclose
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`how the “real-time” information is collected or delivered or otherwise manipulated
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`to be used in “selecting advertising content….” While “computer usage
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`information” is claimed to be recorded by the computer software and periodically
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`acquired from the computer, the claim does not recite how the “real-time”
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`information is collected and acquired. Accordingly, claim 23 fails under 35 U.S.C.
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`§ 112, first paragraph, as not enabling. See M.P.E.P. § 2172.01. For similar reasons
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`of failing to interrelate essential elements, substitute claim 23 including the term
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`“real-time” information also fails under 35 U.S.C. § 112, second paragraph, for
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`failing to point out and distinctly claim the invention. See id.
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`The proposed “real-time” information is indefinite under 35 U.S.C. § 112,
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`second paragraph, because it is unclear what “real-time” means. Neither the claim
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`nor the specification clearly conveys to a person of ordinary skill in the art the
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`scope of the claim. For example, the term “real-time” is unclear because it could be
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`information that is transmitted instantaneously with no delay or transmitted after
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`some delay within a time constraint or at the next time information packets are
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`sent. See, e.g., Gray Decl., Ex. 1021at ¶¶ 36-38. Additionally, it is also unclear
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`whether this “real-time” information refers to user-specific or general computer
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`information, or whether this information refers to information originating from the
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`user computer or is found at the server itself.
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`The proposed “other computer usage information” is similarly indefinite
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`under 35 U.S.C. § 112, second paragraph, because it is unclear what this “other
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`computer usage information” is. Again, the claim and the specification do not
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`sufficiently convey to a person of ordinary skill in the art if this “other computer
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`usage information” is specific to a user or general information attributed to any
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`user. It is also unclear where this “other computer usage information” is coming
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`from. Finally, while there is antecedent basis of “computer usage information”
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`found in proposed claim 23, there is none for “other computer usage information.”
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`III. BE Tech’s Proposed Claims are Not Patentable Over the Prior Art
`A.
`Teachings of Logan
`As discussed in the Petition and testified to previously by Stephen Gray,
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`Logan discloses using demographic information associated with a unique identifier
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`to select advertising. Paper 1 at 23-24; Gray Decl, pp. 51-52; Gray testimony
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`350:11-22. For example, Logan describes using a matching algorithm that
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`“compare[s] the characteristics of the subscriber with the makeup of the target
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`audience defined by the fields of the Advertisement record” to determine which of
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`the advertisements are inserted into the Schedule Table 307 (see Ex. 1002 at 25:15-
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`25) which is then downloaded to the player 103. Id. at 16:65-17:1.
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`Logan also discloses that the selection process utilizes computer usage
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`information including user’s interaction with the software program. For example,
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`Logan’s “usage log,” which includes information about the identification, start
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`time, volume, and playing speed of the program segments played by the user, is
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`used in a subscriber’s TopChoices and ChoiceCounts records. Id. at 21:30-43. In
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`turn, these TopChoices and ChoiceCounts records are used in the InterestMatch
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`function (id. at 24:33-49) which is then used to determine what advertisements are
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`of interest to a user. Id. at 24:51-25:14; see also id. at Fig. 4, element 342; 27:53-
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`62; claim 19. Accordingly, Logan discloses the newly claimed usage information
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`as “information about [a] user’s interactions with said computer software
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`displaying advertising content” and “selecting advertising content for transfer to
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`the computer in accordance with … other computer usage information4 and
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`demographic information associated with said unique identifier[.]” See, e.g., Ex.
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`1021 at ¶¶ 12-15.
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`B.
`Additional Teachings of the Prior Art
`Logan does not explicitly disclose that its “usage log” contains “user’s
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`interactions with … at least one other program,” or selecting advertising content in
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`accordance with “real-time” information as recited by proposed claim 23. But
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`these features were well known during time of the mid 1990s.
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`For example, the three prior art references discussed below, by themselves
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`or in combination, teach that it was common at the time of the ’314 Patent
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`application to: (1) record computer usage information comprising various types of
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`user interactions including interactions with different programs; (2) track a user’s
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`real-time computer activities; and (3) use computer usage information and/or real-
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`time information to select more relevant advertising content. Accordingly, it would
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`4 To the extent this “other computer usage information” is even understandable.
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`have been obvious to a person of ordinary skill in the art to combine these
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`references with Logan, and thus proposed new claim 23 is invalid under 35 U.S.C.
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`§ 103. See, e.g., Ex. 1021at ¶¶ 18, 24, 30, 35.
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`Ferguson
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`1.
`Ferguson (US Pub No. 2002/0178232 A1) was filed on December 10, 1997,
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`and qualifies as prior art under 35 U.S.C. § 102(e). Ferguson discloses a targeted
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`advertising system that monitors a user’s interactions with the computer. See Ex.
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`1022 at Abstract. For example, Figure 5, reproduced below, illustrates the flow
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`diagram of Ferguson’s invention.
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`Ferguson discloses that the Invention Engine 400 monitors a user’s
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`interaction with the computer including activities on the Invention Interface 404
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`and HTTP requests issued from the browser 62. See id. at [0124]. These events are
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`stored in log files containing additional information such a date and time stamps,
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`and activated links. See id. These log files are “periodically sent to the Invention
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`Web Server 302 which analyzes the data and provides statistics to various
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`authorized groups (such as the content providers that host the pages) via its
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`interface, and uses the data for targeting advertising.” Id. at [0125].
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`Ferguson also discloses that its invention can be extended to include
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`additional features such as “full online updating capabilities so that the most recent
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`version of the product is automatically available to users[,]”“ad targeting systems
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`that deliver advertising according to users’ real time surfing patterns or habits,”
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`and “[a]utomatic logging, storage, and uploading of Page-In-View data, wherein
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`the URL of the page on display when an ad is clicked upon is periodically reported
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`back to the Invention Web Server.” Id. at [0206] (emphasis added).
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`Accordingly, it would have been obvious to one of ordinary skill in the art to
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`incorporate the features of usage information including interactions with other
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`programs and real-time feedback as suggested by Ferguson into Logan for the
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`purpose of selecting advertising content for a user that is more relevant to the
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`user’s immediate interests, demographics, and past activities. One would be
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`motivated to make the combination as Logan and Ferguson are both concerned
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`with identifying more relevant targeted advertising, and by combining the
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`approaches of both references, even more pertinent advertisements could be
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`identified. See, e.g., Logan at 25:15-25; Ferguson at ¶¶ [0123]-[0125]; Ex. 1021at
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`¶¶ 19-24.
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`2.
`Lazarus
`Lazarus (U.S. Patent No. 6,134,532) was filed on November 14, 1997, and
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`qualifies as prior art under 35 U.S.C. § 102(e). Lazarus discloses a system for
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`selecting and presenting advertisements based on historical computer usage
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`information as well as real-time information. As noted by Lazarus, due to the
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`“interactive nature of the Internet and electronic commerce[, a]dvertisers need to
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`be able to identify users of specific interests, track those interests over time ... and
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`need to track user interests and behavior in a real-time manner.” Ex. 1023, 4:40-47.
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`As shown in Fig. 2, reproduced in part below, Lazarus discloses that a “real-
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`time ad server (RTAS) module 214 is the engine which observers the user
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`behavior, and based on upon that behavior, selects the appropriate ad to present to
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`the user computer 219[.]” Id. at 9:39-42.
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`After receiving real-time user behavior data, RTAS module 214 sends the data (in
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`the form of user behavior vector) to the Profile Vector Update Server (PVUS)
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`module 224 for updating of the user profile vector. See id. at 18:36-41; see also id.
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`at 18:23-19:15. The “updated user profile vector is then used as the basis for
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`selecting relevant ads to display to the user [wherein] [r]elevance is determined by
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`closeness of the user profile vector to entity vectors stored in the ad vector
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`database.” Id. at 26:18-21. Accordingly, Lazarus teaches using real-time and
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`historical user activity to select relevant advertising. See also id. at 9:28-31.
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`3.
`Fleming
`Fleming (U.S. Patent No. 6,230,204) was filed on December 19, 1997, and
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`qualifies a prior art under 35 U.S.C. § 102(e). Fleming discloses an advertising
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`system that monitors several types of computer usage information. For example,
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`the user computer 160 includes a downloaded Monitor Component 166 which
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`monitors user interactions with the computer. See, e.g., Ex. 1024, 5:11-18; Fig. 1,
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`reproduced in part.
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`Monitor Component 166 monitors all documents including external
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`documents (e.g., webpages) and local documents that are accessed and interacted
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`with by the user of the client computer 160. See id. at 5:11-18; 10:23-30. The
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`documents may include advertising content. Id. at 3:6-12. Fleming also discloses
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`that “[t]hose skilled in the art will appreciate that a variety of types of usage
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`information can be collected (e.g., viewing text or executing embedded programs),
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`that the interactions of a user can be monitored and recorded in a variety of ways
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`(e.g., monitor all input from computer system input devices), and that the
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`monitored information could be forwarded at a variety of times.” Id. at 10:61-67.
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`Finally, Fleming notes that the forwarded computer usage information can be
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`analyzed to determine the rating or effectiveness of the computer resources or
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`documents. See, e.g., id. at 4:1-4; 8:5-26; Abstract.
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`Accordingly, it would have been obvious to one of ordinary skill in the art to
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`incorporate the features of monitoring real-time information as suggested by
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`Lazarus into the system of Logan for the purpose of providing a system that is
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`sensitive to changing user behavior in an interactive environment such as the
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`Internet. See Lazarus at 4:39-47. Because both Logan and Lazarus are directed to
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`the technical field of delivering targeted advertisement (see, e.g., Ex. 1002, 1:7-10,
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`5:31-36, 25:4-25; Ex. 1023 at 9:39-42), one of ordinary skill in the art would
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`recognize that adding real-time information of Lazarus into the system of Logan
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`would improve the effectiveness of the targeted ads of Logan and would encourage
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`subscribers of Logan’s system to interact with more ads. See, e.g., Ex. 1021at ¶¶
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`25-30.
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`It would have been further obvious to incorporate the features of monitoring
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`various types of programs and various types of usage information as suggested by
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`Fleming into the system of Lazarus and Logan for the purpose of determining the
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`effectiveness of certain advertisements. See, e.g., Fleming at 4:1-4; Ex. 1021at ¶¶
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`31-35. Like Lazarus and Logan, Fleming is also directed to better targeting ads to
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`users. See Ex. 1024 at 4:1-4; 8:5-26; Abstract. Thus, one of ordinary skill in the art
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`would recognize that adding the ability of monitoring various types of program, as
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`disclosed in Fleming, into the system of Lazarus and Logan would improve the
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`ability to match ads to users based on the activities of the users on the various
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`programs. In addition, one of ordinary skill in the art would recognize, that an
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`improved mechanism of delivering targeted ads would encourage potential
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`advertisers to subscribe to the system of Lazarus and Logan, as improved by
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`Fleming. See, e.g., Ex. 1021at ¶¶ 12-15, 25-35.
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`One would be further motivated to combine Logan, Lazarus, and Fleming
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`because it would have been “obvious to try.” See M.P.E.P. § 2143(I)(E) . For
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`example, Lazarus discloses a known method of refining the user profile based on
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`real-time tracking related to Internet advertising (Ex. 1023, 4:40-47). Fleming
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`discloses a known method for refining determining the effectiveness of advertising
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`content related to Internet advertising. See Ex. 1024 at 4:1-4. Because Logan
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`selects advertising content to present to a user by comparing user profile with
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`advertising content (see Ex. 1002 at Fig. 4, 342; 27:53-62), it would have been
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`“obvious to try” the known methods taught by Lazarus and Fleming in Logan to
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`improve the accuracy of the comparison between the user profile and the
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`advertising content to determine more relevant targeted advertising.
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`IV. Conclusion
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`For at least the above reasons, the Board should deny or dismiss BE Tech’s
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`Motion to Amend.
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`Dated: September 10, 2014
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`Respectfully submitted,
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`By: /Clinton H. Brannon/
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`Clinton H. Brannon
`
`Reg. No. 57,887
`
`MAYER BROWN LLP
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`1999 K Street, NW
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`Washington, DC 20006
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`
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`Counsel for Google Inc.
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`15
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`Petitioner’s Opposition
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`Cases IPR2013-00038
`Patent 6,628,314 B1
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`UPDATED EXHIBIT LIST
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`1009
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`1010
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`1011
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`1012
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`Exhibit # Reference Name
`1001
`U.S. Patent No. 6,628,314 to Hoyle
`1002
`U.S. Patent No. 5,721,827 to Logan
`1003
`U.S. Patent No. 5,918,014 to Robinson
`1004
`Declaration of Stephen Gray
`1005
`Prosecution History of U.S. Patent No. 6,628,314
`1006
`Prosecution History of U.S. Patent No. 6,141,010
`1007
`Webster’s II New College Dictionary (1995)
`1008
`Barry M. Leiner et al., Brief History of the Internet, Internet Society
`(Oct. 15, 2012),
`http://www.internetsociety.org/sites/default/files/Brief_History_of_th
`e_Internet.pdf
`“Hypertext Markup Language,” Network Working Group Request
`for Comments 1866, November 1995
`September 2012 Web Server Survey, Netcraft.com,
`http://news.netcraft.com/archives/2012/09/10/september-2012-web-
`server-survey.html (last visited Sep. 28, 2013)
`“The Common Gateway Interface (CGI) Version 1.1,” Network
`Working Group Request for Comments 3875, October 2004
`Application Server Product Vendors, Service-Architecture.com,
`http://www.service-
`architecture.com/products/application_servers.html (last visited Sep.
`28, 2013)
`“HTTP State Management Mechanism,” Network Working Group
`Request for Comments 2109, February 1997
`“HTTP State Management Mechanism,” Network Working Group
`Request for Comments 6265, April 2011
`“Specification of Internet Transmission Control Program,” Network
`Working Group Request for Comments 675, December 1974
`Netscape Homepage, Netscape.com,
`http://web.archive.org/web/19961219074448/http://www7.netscape.c
`om/ (last visited Oct. 4, 2013)
`Download Netscape Communicator or Netscape Navigator Software,
`Netscape.com,
`http://web.archive.org/web/19961230200703/http://www.netscape.co
`m/comprod/mirror/client_download.html (last visited Oct. 8, 2013)
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`1013
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`1014
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`1015
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`1016
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`1017
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`1
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`
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`Cases IPR2013-00038
`Patent 6,628,314 B1
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`Supplemental Declaration of Stephen Gray
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`U.S. Patent Application No. 2002/0178232 to Ferguson
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`Petitioner’s Opposition
`
`
`Exhibit # Reference Name
`1018
`U.S. Patent No. 5,347,632 to Filepp
`1019
`Stephen Gray Curriculum Vitae
`1020
`Deposition Transcript of Neil Goldstein
`(NEW)
`1021
`(NEW)
`1022
`(NEW)
`1023
`(NEW)
`1024
`(NEW)
`1025
`(NEW)
`
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`U.S. Patent No. 6,134,532 to Lazarus
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`U.S. Patent No. 6,230,204 to Fleming
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`The IEEE Standard Dictionary of Electrical and Electronics Terms,
`selected pages, (6th ed. 1996)
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`2
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`Petitioner’s Opposition
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`Cases IPR2013-00038
`Patent 6,628,314 B1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e), I, Clinton Brannon, hereby certify that a
`
`copy of the foregoing PETITIONER GOOGLE INC.’S OPPOSITION TO
`
`PATENT OWNER’S MOTION TO AMEND has been served via electronic
`
`mail transmission on the Attorney of Record for related inter partes review
`
`petitions of U.S. Patent No. 6,628,314 (Nos. IPR2014-00038) at the following
`
`address:
`
`
`
`
`
`Jason S. Angell
`Robert E. Freitas
`Daniel J. Weinberg
`Jessica N. Leal
`FREITAS ANGELL & WEINBERG LLP
`350 Marine Parkway, Suite 200
`Redwood Shores, CA 94065
`jangell@fawlaw.com
`rfreitas@fawlaw.com
`dweinberg@fawlaw.com
`jleal@fawlaw.com
`
`Dated: September 10, 2014
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`By: /Clinton H. Brannon/
`
`Clinton H. Brannon
`
`Reg. No. 57,887
`
`Counsel for Petitioner
`
`
`
`1
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