`
`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 B1
`___________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
`PATENT OWNER’S CONTINGENT MOTION TO AMEND
`(37 C.F.R. § 42.121)
`
`
`
`
`
`1 Case IPR2014-00699 has been joined with this proceeding.
`
`
`
`
`
`I.
`
`THE PROPOSED SUBSTITUTE CLAIMS ARE SUPPORTED AND
`PATENTABLE UNDER 35 U.S.C. § 112.
`A. No Order Of Steps Is Added.
`
`Google wrongly suggests that the placement of unmodified original claim
`
`language in a different place means that Patent Owner “is attempting to introduce a
`
`requirement that the steps be performed in a specific order.” (Paper 28 at 2).
`
`B.
`
`The Proposed Substitute Claims Are Supported.
`
`Google’s attempt to restrict the disclosure of the ’705 application has no
`
`merit. In multiple places, the application refers to the use of “other computer
`
`usage information,” or to both “real-time computer usage information” and “other
`
`computer usage information” in a manner sufficient to advise one of ordinary skill
`
`in the art that the applicant was in possession of an invention including the use of
`
`“other computer usage information.” For example, the Abstract of the ’705
`
`application, after stating that “demographic information on the user is . . . used for
`
`determining what banner advertising will be sent to the user,” (Exhibit 2004 at 1)
`
`explains that “[t]he software application further targets the advertisements in
`
`response to normal user interaction, or use, of the computer. (Id.). “Computer
`
`usage information” is defined in the ’705 application as “[d]ata concerning a
`
`person’s use of the computer, including such things as what programs they run,
`
`what information resources they access, what time of day or days of the week they
`
`use the computer, and so forth.” (Id. at 6). The disclosed “normal user interaction,
`
`- 2
`
`
`
`
`
`or use, of the computer” would be understood by one of ordinary skill as including
`
`“computer usage information” as it is defined.
`
`Later in the abstract, there is mention of “a set of data that is used by the
`
`software application in determining when a particular banner is to be displayed.”
`
`(Id. at 1). The data include “the specification of certain programs that the user may
`
`have so that, when the user runs the program (such as a spreadsheet program), an
`
`advertisement will be displayed that is relevant to the program (such as an
`
`advertisement for a stock brokerage).” (Id.). “This,” it is said “provides two-
`
`tiered, real-time targeting of advertising – both demographically and reactively,”
`
`but the “real-time reactive” targeting is not disclosed to the exclusion of other
`
`targeting employing “computer usage information.”
`
`The ’705 application explained that “[p]eriodically, computer usage
`
`information is sent to ADM server 22 for use in profiling the end user and better
`
`targeting future advertising to the end user.” (Id. at 14). As Google points out,
`
`(Paper 28 at 4), the computer usage information is “stored on the end user’s
`
`computer 18 in user data storage 34,” (Id.), but Google ignores the preceding
`
`sentence specifying that the computer usage information is also “sent to ADM
`
`server 22 for use in profiling the end user and better targeting future advertising to
`
`the end user.” (Ex. 2004 at 14).
`
`-3-
`
`
`
`
`
`C. Google’s Assertion Of “Additional Patentability Issues” Lacks
`Merit.
`
`Google suggests that “real-time” is indefinite, claiming that “it could be
`
`information that is transmitted instantaneously with no delay or transmitted after
`
`some delay within a time constraint or at the next time information packets are
`
`sent.” (Paper 28 at 6). Rather than address the intrinsic record, Google resorts to
`
`dictionary definitions in an attempt to cast doubt on the meaning of real-time.
`
`Throughout the ’705 application, real-time is used in a manner referring to what is
`
`occurring while the user is engaged in a given activity. The alternatives discussed
`
`by Mr. Gray are not relevant to the meaning disclosed by the intrinsic record. “In
`
`general,” the application states, “banners are displayed either in response to some
`
`user action (input) or, in the absence of user input, are displayed periodically at
`
`time intervals. The client software application monitors the user’s inputs to the
`
`computer and, when possible, targets the banner advertising displayed so that it
`
`relates to the [sic] what the user is doing.” (Ex. 2004 at 26). Later, it is explained
`
`that “[a]s will be appreciated by those skilled in the art, the reactive targeting
`
`provided by client software application 10 is handled in real time, rather than
`
`simply as a part of building a set of advertisements for later display to the user.
`
`This permits the display of advertising that is relevant to what the user is doing at
`
`any particular time.” (Id. at 29 (emphasis added)). A person having ordinary skill
`
`would not ignore the disclosure of the ’705 application in favor of dictionary
`
`-4-
`
`
`
`
`
`definitions that are neither necessary nor important to an understanding of the
`
`disclosure.
`
`II. THE PROPOSED SUBSTITUTE CLAIMS ARE PATENTABLE
`OVER THE PRIOR ART.
`
`Google turns to the Ferguson (Ex. 1022), Lazarus (Ex. 1023), and Fleming
`
`(Ex. 1024) patents in an attempt to cure the deficiencies in Logan. Ferguson also
`
`does not disclose that computer usage information includes information concerning
`
`the user’s interactions with at least one other program, and Ferguson does not
`
`disclose selecting advertising content in accordance with real-time computer usage
`
`information. Lazarus fails entirely to make mention of monitoring a user’s
`
`interactions with any program other than the engine providing an advertisement to
`
`the user. Fleming simply monitors a user’s interactions with a particular resource
`
`(e.g. an advertisement) downloaded from a webpage. (Ex. 1024 at 4:36-51).
`
`III. CONCLUSION.
`For the foregoing reasons and those set forth in its Contingent Motion to
`
`Amend, Patent Owner B.E. Technology, L.L.C. respectfully requests that the
`
`Board grant its Contingent Motion to Amend in the event original Claim 11 is
`
`found not to be patentable
`
`Date: October 10, 2014
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/Jason S. Angell
`Jason S. Angell
`
`
`
`
`
`-5-
`
`
`
`
`
`
`
`
`Reg. No. 51408
`Counsel for Patent Owner
`
`
`
`-6-
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`It is certified that a copy of the foregoing has been served on Petitioner as
`
`provided in 37 C.F.R. § 42.6(e) via electronic mail transmission addressed to the
`
`persons at the address below:
`
`Clinton H. Brannon
`Brian A. Rosenthal
`MAYER BROWN, LLP
`cbrannon@mayerbrown.com
`brosenthal@mayerbrown.com
`WDC-Client-IPR-Filings@mayerbrown.com
`
`Sanjay Murthy (Reg. No. 45,976)
`Kacy Dicke (Reg. No. 67,392)
`K&L Gates LLP
`sanjay.murthy@klgates.com
`kacy.dicke@klgates.com
`
`
`
`Date: October 10, 2014
`
`
`
`
`
`
`
`
`
`By: /s/Jason S. Angell
`Jason S. Angell
`Reg. No. 51408
`Counsel for Patent Owner
`
`
`
`-7-
`
`
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