Trials@uspto.gov
`571-272-7822
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`
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`Paper No. 42
`Entered: February 5, 2015
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`RECORD OF ORAL HEARING
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`- - - - - -
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`- - - - - -
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`MICROSOFT CORPORATION
`
`Petitioner
`
`vs.
`
`B.E. TECHNOLOGY, LLC
`
`Patent Owner
`
`- - - - - -
`
`Case No. IPR2014-00039
`
`Patent 6,628,314
`
`Application No. 09/699705
`
`Technology Center 2100
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`- - - - - -
`
`Oral Hearing Held: Wednesday, December 10, 2014
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and LYNNE E.
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`PETTIGREW, Administrative Patent Judges.
`
`
`
`The above-entitled matter came on for hearing on Wednesday, December
`
`10, 2014 at the U.S. Patent and Trademark Office, 600 Dulany Street,
`
`Alexandria, Virginia at 3:00 p.m. in Courtroom A.
`
`
`571-272-7822
`
`
`
`
`Paper No. 42
`Entered: February 5, 2015
`
`RECORD OF ORAL HEARING
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`- - - - - -
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`- - - - - -
`
`MICROSOFT CORPORATION
`
`Petitioner
`
`vs.
`
`B.E. TECHNOLOGY, LLC
`
`Patent Owner
`
`- - - - - -
`
`Case No. IPR2014-00039
`
`Patent 6,628,314
`
`Application No. 09/699705
`
`Technology Center 2100
`
`- - - - - -
`
`Oral Hearing Held: Wednesday, December 10, 2014
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and LYNNE E.
`
`PETTIGREW, Administrative Patent Judges.
`
`
`
`The above-entitled matter came on for hearing on Wednesday, December
`
`10, 2014 at the U.S. Patent and Trademark Office, 600 Dulany Street,
`
`Alexandria, Virginia at 3:00 p.m. in Courtroom A.
`
`
`
`Case No. IPR2014-00039
`Patent 6,628,314
`
`
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`APPEARANCES:
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`ON BEHALF OF THE PETITIONER:
`
`JEFFREY P. KUSHAN, ESQ.
`
`
`SCOTT M. BORDER, ESQ.
`
`
`Sidley Austin LLP
`
`
`1501 K Street, N.W.
`
`
`Washington, D.C. 20005
`
`
`202-738-8914
`
`
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`
`
`
`
`
`
`
`ROBERT E. FREITAS, ESQ.
`DANIEL J. WEINBERG, ESQ.
`DANA M. ZOTTOLA, ESQ.
`Freitas Angell & Weinberg LLP
`350 Marine Parkway, Suite 200
`Redwood Shores, California 94065
`650-593-6300
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`
`
`
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`Case No. IPR2014-00039
`Patent 6,628,314
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`P R O C E E D I N G S
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` (3:00 p. m. )
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`JUDGE M EDLEY: Ple ase be seate d. Good
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`afternoon. This i s the third and fin al session of hear ings
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`involving Patent Owne r B . E. Tech nology's U.S . Pat ent
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`6,628,314, the '31 4 patent. This is the session involving IPR
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`2014-00039 between Petitioner Mi crosoft and Paten t Owner ,
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`BE.
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`IPR 2014 -00738 has been joined with the 39 IPR .
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`The Petitioner in that case, a gain, was given the opportunity to
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`attend today but not to participate b y presenting arg u ments.
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`As we have alr ea d y explained this morning in the ea rlier
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`session this afternoon, today's he a ring with the diff erent
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`sessions will result in a single tran script to be uploaded in
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`each case .
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`And during this morning's session, we su mmarized
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`our conference ca ll that we had wit h the parties yest erda y.
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`And an yone inter ested in that are d irected to the t ran script,
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`which will be fort hco ming.
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`So at this ti me we woul d like counsel who will
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`present for the Pe titioner to identify the mselves beginning
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`with Petitioner.
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`MR. KUS HAN: Good afternoon, Your Honor,
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`Jeffre y Kushan fr o m Sidle y for Mi crosoft. With me is Mr .
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`Border f ro m Sidl e y. We 're also jo ined b y M r. Lytle fr o m
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`Microsoft.
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`Case No. IPR2014-00039
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`MR. FR EI TAS: Robert Freitas for the Pat ent
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`Owne r. Also with me is Daniel Weinberg and Dana Zottola.
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`JUDGE M EDLEY: Thank you . Fo r the Nove mber
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`14th order, e ach part y will have a total of 45 minutes to
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`present your argu ments. Petitioner , you will present first.
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`With respect to c hallenged clai ms and grounds for
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`which the Boa rd i nstituted trial, Pa tent Owner, you c an
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`respond to the presentation and present your motion to a mend.
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`Petitioner, you ca n reserve rebuttal ti me to respond
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`to Patent Owner 's presentation. An d then finall y, as we all
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`know, P atent Owner, you c an res er ve so me ti me to p resent
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`argu ments with r e spect to your motion to a mend.
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`So, Petitioner, yo u ma y begin. Wo uld you like to
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`reserve rebuttal time?
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`MR. KUS HAN: Yes, Your Honor, thank you. I
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`would like to rese rve 25 minutes fo r rebuttal ti me .
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`JUDGE M EDLEY: Oka y. Thank you. You ma y
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`proceed.
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`MR. KUS HAN: So as you have he ard now in two
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`series of pr esentations, there a re a nu mber o f grounds that the
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`petitioners ha ve collectively put fo rward . We'r e goi ng to be
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`addressing in our petition the grounds that are based on a
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`referenc e c alled Gu yot.
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`And if you can pu t up slide 14.
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`In our proceedings, there ar e three grounds that
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`were identified, c lai ms 11 to 14, 1 6 to 1 9 we re found
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`Case No. IPR2014-00039
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`anticipated b y Gu yot. Clai m 15 wa s found obvious based on
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`Gu yot in view of Robinson. And c lai ms 20 to 22 we re found
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`obvious based on Gu yot and RFC 1 635, which is the
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`anonymous FTP t echnique.
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`I want to f ra me the discussions a bit because th e
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`Patent Owner has essentiall y groun ded the dispute ar ound
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`clai ms 11 to 19 t hrough the lens of clai m 11 . The y haven't
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`presented an y distinct argu ments r egarding the clai m 15 and
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`the grounds that are based on that . The y have addres sed the
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`obviousness ques tion of 20 to 22.
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`For the dispute ar ound clai m 11 , th e Patent Owner
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`essentially identified three potential distinctions from the
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`Gu yot refe rence . And the first of t hose relates to th e word
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`de mographic info r mation. When you instituted trial, you
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`found t wo instances of de mographi c infor mation that are being
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`collected in the s che me of Gu yot.
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`And what I want t o do is, first of al l, keep the
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`focus, which is f a irl y na rrow. And this hopefully makes it
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`easier for the dis cussion today and also for the r ecor d.
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`Their argu ments are basicall y that there is these
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`two events which collect de mogr aphic infor mation in the
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`Gu yot sche me, the first ti me when it is created , whe n the
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`personal profile i n the Gu yot sche me is c reated, it i s in
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`response to a que stion. The se con d event is when t he personal
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`file is updated during the course of use of the Gu yot sche me .
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`Case No. IPR2014-00039
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`Wh at the y did in the first response or the first t ype
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`of de mog raphic i nfor mation is the y pointed out that the y
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`believed that doesn't show collecti on of de mograp hic
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`infor mation in r e sponse to the questionnaire that is put to the
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`user. This is bef ore the - - in the i nitial creation of the
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`personal profile.
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`The second criter ia, the second instance that was
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`found was this up dating point. An d that doesn't see m to b e
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`addressed mu ch b y the m in the rec ord.
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`Wh at I would like to do -- go to sli de 8, please .
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`This is the clai m language, and it i s fairl y
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`straightforward. "Acquiring de mo graphic infor mation about
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`the user, said de mographic infor mation including infor mati on
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`specificall y provi ded to the user in response to a req uest for
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`said de mographic infor mation."
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`Now, you found d e mographic infor mation to be
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`collected, char act eristic infor mation about a user that does not
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`identify the user . And we believe t hat is corr e ct. Th ere is no
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`dispute about that construction.
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`If you go to slide 9, please.
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`In the Gu yot sche me , I mentioned that there is this
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`personal front fil e that is c reated a nd maintained b y the server.
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`That at the first i nstance that is cr eated b y a ques tionnaire
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`being put to the user. The user res ponds to that questionnaire,
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`and then the pers onal profile is cr e ated.
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`And Dr. Houh, who is our expert i n the proceeding,
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`had explained that the personal pro file that gets c rea ted in this
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`manner , that tech niq ue is the sa me technique that is shown in
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`the '314 patent. That questionnaire is put to the user and that
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`is used to create t he de mogr aphic i nfor mation based profile.
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`In the course of t he proceedings there has been
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`so me question about what that pro cess looks like. And so Dr.
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`Houh, when he took on his explanation, explained this
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`description in Guyot is conve ying to hi m, this is this
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`conventional technique that a user gets put to with a
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`questionnaire, the y respond to that, and that's so meth ing which
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`is ver y well -known in the art .
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`One thing to appr eciate about the r ecord of
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`evidence, his exp lanation hasn't been reall y even tes ted b y
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`Patent Owner . S o in his deposition the y didn't ask hi m
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`questions about it. The y didn't test his views about what that
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`process was .
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`There is no contr ar y evidence in th e record
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`showing that that technique as it is described in the Gu yot
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`referenc e to a per son of skill is conve ying de mograp hic
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`infor mation.
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`Now, if you go to slide 13, bec ause this issue ca me
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`up during the cour se of the proceed ing, Dr . Houh pro vided
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`supplemental decl aration. And the y did not depose Dr . Houh
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`and test an y of hi s further opinions. So this is evidence
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`undisputed in the record that the infor mation co ming in b y the
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`Case No. IPR2014-00039
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`questionnaire wil l include at leas t so me de mogr aphic
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`infor mation. And, again , that mak e s sense in the Gu yot
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`sche me because it is building the personal profile, which is
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`used to select adv ertising using that infor mation, tha t personal
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`profile.
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`Now, another thing that is i mportant to appr eciate
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`in the sche me of Gu yot, this perso nal profile gets u pdated over
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`ti me , and it is up dated b y a mong other things the we b
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`browsing history of the user on the co mpute r.
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`That is i mportant because it is undisputed in the
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`record that the web browsing hist or y is also de mogr aphic
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`infor mation. So t his is also infor mation co ming in a nd
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`updating that personal profile, which is used to sele ct the ads
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`and send the m to the user.
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`If you go to slide 15, I asked Dr . or Mr . Goldstein,
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`who was P atent Owner's expert at h is deposition, whether web
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`browsing histories collected in the manner described in Gu yot
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`would be de mogr aphic infor mation. And as you ca n see in the
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`highlighted portion of his deposition, he a cknowledged that in
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`the t ype of - - this t ype of web browsi ng history cou ld and, in
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`fact, would be an exa mple of de mo graphic infor mation
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`according to the Board's construct ion.
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`So rec all that this de mogr aphic inf or mation is
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`co ming in and updating that personal profile, which is used to
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`route and select t he advert ising.
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`Case No. IPR2014-00039
`Patent 6,628,314
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`Now, that t echnique, and it is i mportant to also -- I
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`keep going back to the record , be ca use I think the r e cord here
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`is relativel y undisputed. The pers onal profile is used in the
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`Gu yot sche me to select and route a nd target ads. Th ere is no
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`dispute about that.
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`The cha racteristic s of the infor mati on being
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`collected and put into that personal profile is undisputedly
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`de mographic info r mation. So ther e is r eall y no disputed
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`evidence supporting the Board's co nstruction that the process
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`shown in Gu yot i s collecting and using de mographic
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`infor mation ac cor ding to the clai ms .
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`And if you go to slide 10, so this i s your finding in
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`the Institution decision. And we b elieve fro m the r e cord
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`relating to the de mographic infor mation that there is no
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`question, t here is more than substantial evidence to support
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`that finding that you made , and it should be sustained.
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`Now, one issue that we think the y have argued in
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`their repl y to our position and based on the reco rd, i t is
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`essentially an a rgu ment that it is n ot i nherent to the process of
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`the Gu yot method that the questionnaire will collect and
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`collect this de mo graphic infor mation.
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`I think that the y misunderstand our position. What
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`we provided was evidence showing that the Gu yot re ference
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`taught a method, convey ing through inference and d escription
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`a procedure that i s known to a pers on of skill. And as we have
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`Case No. IPR2014-00039
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`de monstrated, tha t view, that evide nce about what the Gu yot
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`referenc e is desc r ibing to the person of skill is undisputed.
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`So we're working on the r ecord of evidence we
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`have created and what that de mons trates is that that
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`questionnaire tec hnique and the subsequent updating technique
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`is both putting the de mographic in for mation into the personal
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`profile, which is ad mittedl y being used to select the ads.
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`So let's go to slide 16, please .
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`So the second dis tinction that the Patent Owner has
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`identified relates to this step of -- t hat we have highlighted in
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`the slide is transf erring a cop y of s aid software to th e
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`co mputer in respo nse to a do wnload request f ro m the user.
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`Now, again , the y are aided b y the r ecord here
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`because there is t wo diffe rent even ts that we re ident ified in
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`your Institution decision that constitute a transfer , that meet
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`this step of transf erring the softwar e.
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`The first one that you identif ied was -- and you can
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`go to slide 17 -- so this is your firs t finding of the st ep, and
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`this is correct. You cite to a passa ge of the patent t hat said
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`colu mn 1, line 58 to 60. Again, thi s evidence wasn't addressed
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`b y the m in their r epl y. So this is u ndi sputed. This i s a f act
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`that you can rel y on and maintain.
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`The second instan ce, if you go to sl ide 20, the
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`second instance that is involved with transferring so ftware to
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`me et that ele ment of the clai m is a n updating process found in
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`Gu yot and also fo und in their own patent.
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`Case No. IPR2014-00039
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`And in that updating process, there is a connection
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`sequence that occ urs. The user ma kes a manual connection.
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`And in response t o that, one of the things that happens in
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`response to that is deliver y of an u pdated version of the
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`soft ware .
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`And, again, you c ited to that recor d that we have
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`identified in our petition, and that was found to be s ufficient
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`to meet that ele ment of the clai m.
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`Go to slide 24.
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`This process is -- this is a co mpon ent. This is a
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`depiction of the process, of the upd ating process in Gu yot.
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`And what it de mo nstrates is that up at step S -530, a manual
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`connection is started. This is the u ser sa ying I want to
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`connect to the ser ver again. And t hat triggers a sequence of
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`operations, a nu mber of dif ferent o peration s at the s erver.
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`One of the m is ca lled this Locsoft routine.
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`And Locsoft is illustrated in figure 7, wher e it is a
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`sequence which c hecks the status of the version of t he
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`software that is b eing used to co mmunicate . And i f it is below
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`the current versio n , then it triggers a sequence wher e it
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`delivers an URL t o the user to download the updated cop y of
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`the software . Th at is what is bein g described litera lly in the
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`Gu yot sche me.
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`And again we put this to Dr. Houh, our expert , and
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`he said: Wh at thi s is sho wing is a downloader reque st for
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`software because an UR L specifies a location, and th e re mote
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`server that you us e to ret rieve data . And I want to gi ve you
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`just a couple cite s.
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`If you look at Ex hibit 1028 at 20 to 26, Dr . Houh is
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`giving you an overview o f this proc edure. That's followed in
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`how URL handling works. And, in fact , this also is undisputed
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`because when we walked through this with their exp ert, this
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`sequencing of events in the Gu yot s che me, their expe rt agreed
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`that that's an a cc urate descripti on of what is happening.
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`And I want to give you Exhibit 1027. That's Dr.
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`Houh's deposition transcript at 203, line 8 to 204. And then in
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`Exhibit 2015, that is Mr . Goldstein's deposition transcript,
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`page 95, line 4 to page 96, line 1.
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`So if you go to 2 1, please .
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`So we a ctuall y tri ed to figure out what the
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`difference , where the diffe rence of opinion was abo ut the
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`downloading process described in Gu yot relative to the clai ms .
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`And it boils down to this: The Pate nt Owner maintains that
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`when the user ma kes the manual co nnection, the y ha ve to have
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`the mental state o f knowledge that the y a re going to be
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`downloading updated softwar e wh en the y click that button.
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`That's not a paten table -- that is no t so mething you
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`give patentable weight to. That's a menta l state of t he user
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`that is being identified.
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`And we wanted to make sure this was what their
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`position was, so we explored this with their expert . And I
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`asked Mr. Goldstein at his deposition: So that's the difference
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`Case No. IPR2014-00039
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`between the Gu yo t sche me and the tec hniques shown in the
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`clai ms? And he c onfir med . His te sti mon y was -- I asked
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`hi m: "So that tur ns on so me what o f the intent of the user
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`making the reque st? " And he said: " Yes , that's corr ect." And
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`that's at Exhibit 2015, page 56, line 19 to page 57, l i ne 2.
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`That's where we have the discourse of what that distinction is
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`between Gu yot's method for updating and the clai me d method,
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`the mental state o f the user .
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`Mental state of the user, we have g ot precedent
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`that shows that the mental state of the user, if that's the only
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`distinction, that's not enough to be, you know, save the m fro m
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`anticipation. An d wh y? Be cause it is the exact sa me sequence
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`of operations that the co mputer is perfor ming.
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`There is a connec tion request. The re a re actions
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`following t hat connection request. And ther e is a re sponse
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`fro m the user 's computer to the ser ver for the softwa re. And
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`that response is a cted on and the s oftware is deliver ed.
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`So what the user might have believ ed doesn't
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`change that set of operations. The other thing to appreciate is
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`that their argu me nt was basicall y p redicated on the b elief that
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`the user will not ever know what happens when the y click that
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`manual connection button. And it might be t rue for the first
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`ti me the y use thei r softwa re, what happens w hen yo u click
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`manual connect, but I think ever y ti me after that, the y will
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`know, the y will h ave even the ment al state that the y said is
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`needed for unders tanding that when the y click that manual
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`Case No. IPR2014-00039
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`connection, one of the processes that happens will b e a
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`downlo ading of updated software .
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`And can you go t o slide 23?
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`I just wanted to p ut up their own patent. This is
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`the '314 patent. The y use a ver y a nalogous process of
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`updating the software . And you c an see in figure 8 that's the
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`depiction of the sequence th at happens when ther e is an
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`update.
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`JUDGE DESHPANDE: Wh en you suggested the
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`subsequent times the user connects, the y will -- the y will know
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`that the y are requ esting a download request for the software ,
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`where is that in h ere?
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`MR. KUS HAN: So we addresse d t hat in Dr.
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`Houh's declaratio n. First of all, we addressed it in the repl y
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`brief at about page 9 of our r epl y brief. We have ex plained
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`that. And in the r epl y brief we have also identified t he
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`testi mon y of Dr . Houh that would support that.
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`So, I me an , it is s o me what of a co mmon sense
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`point too. We we re tr ying to r eact to this argu ment the y wer e
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`advancing. And i t would make sense that that menta l state
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`would update bec ause you get an URL in the Gu yot s che me.
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`There is an UR L t hat is delivered. And t hat is going to be the
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`triggering event for deliver y of the softwar e.
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`So we believe the second distinction the y have
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`identified -- and t his is the second one out of three - - is no
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`real distinction at all. So let's go t o slide 25.
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`So the third distinct ion relates to t he unique
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`identifier step. And in the course o f the pre ceding ar gu ments,
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`you have he ard a fair a mount of discussion about this ele ment
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`of the clai m.
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`The relationship of this step to Guyot is slightl y
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`different f ro m what you have seen wit h the ea rlier
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`proceedings. An d the Board found there we re a cou ple
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`different things that are shown in Gu yot, showing t his use of
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`deliver y of a unique identifier.
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`If you would go to slide 26.
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`You point to a pa ssage in Gu yot where an
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`identification info r mation for ea ch subscriber is con ve yed as
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`part of this co mmunication process between the user and the
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`server. And that, we believe, is a ver y correct finding that
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`supports the conclusion. That's me eting the ele ment of the
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`step, that step of the unique i dentifier being provided.
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`If you go to slide 27, this is their p osition relating
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`to the unique identifier, r elating to Gu yot . And some of this
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`you have he ard b efore. This is the argu ment that th ere is a
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`h ypothetical scenario of i mple ment ing the Gu yot s che me
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`where a use r's computer might be used b y another user. So
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`there might be multiple accounts on the user's co mp uter.
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`And this is, this i s the distinction the y focused on
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`to sa y that that sc enario doesn't me et the require men ts of that
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`unique identifi er step. What the y didn't address wa s actuall y
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`shown in Gu yot .
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`Case No. IPR2014-00039
`Patent 6,628,314
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`Gu yot doesn't show a multiple user co mpute r.
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`The y show a user with a co mputer interacting with t he server .
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`So, again , I want to focus you on the evidentiar y rec ord, which
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`is one-sided in t his issue. Ther e is no response to th e
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`evidence that you have identified t hat we put for war d in our
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`petition showing that the unique identifier step is met b y the
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`description of wh at Gu yot actuall y does.
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`Now, this is -- and I want to just, b ecause we ar e
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`going third, I just want to point to the previous proceeding,
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`the previous hearing. I think Mr . R osenthal pointed
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`out -- made a re fe rence to clai m 16. You can look at that
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`clai m as well . Th at's a dependent c lai m fro m clai m 1 1.
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`And that is a ctuall y a ddressing this multi -user on a
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`single co mputer s cenario being covered b y that claim. And so
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`we look at this ar gu ment and se e th ere is no support legally or
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`evidentiarily to s upport their contention that it is not met.
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`Now if you would go to slide 25.
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`In their r epl y, the y also suggest that the sche me ,
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`this ele ment of u nique identifier, t here needs to be a nonymit y
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`of the user identification in that se quence.
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`That's not a clai m ele ment. Ther e i s no
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`require ment in th e clai m that the u ser identifier be i n an
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`anonymiz ed unique identifier. It just -- there is not hing in the
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`clai m that sa ys th at.
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`And that's an instance, we believe, which is
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`i mproper based o n the broadest re a sonable construction,
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`Case No. IPR2014-00039
`Patent 6,628,314
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`especiall y to read in one of several e mbodi ments the y have
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`described in their patent as an actu al clai m li mitatio n.
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`So fro m what we see in their repl y to our -- to the
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`Institution decision based on the r ecord of evidence and based
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`on our petition, none of these thre e distinctions actuall y exists
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`based on the evid ence before you.
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`So your conclusions have to be sust ained, the
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`clai ms 11 to 20 o r 11 to 19, based on this record of evidence,
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`are anticipated.
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`The last issue I want to touch on ver y briefl y is the
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`obviousness point. And if you go t o slide 32, this is
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`the -- again, the y focused their resp onse to clai m 20 or clai ms
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`20 to 22. And wh at the y are arguin g is that this step, this
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`clai m 20, is basic all y sa ying, acquire the de mogr aphic
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`infor mation befor e providing the software . It is just a
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`sequencing step.
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`And you found in your Institution decision -- slide
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`33 -- that pe rfor ming that set of op erations in that se quence
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`would have been an obvious variation fro m what is shown in
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`Gu yot be cause th at technique of as king a user for in for mation
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`before giving acc ess to a do wnload of a resource is a
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`well -known techn ique.
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`And we have cite d in support of that technique the
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`anonymous FTP t echnique, which was RFC 1635, which does
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`the exact sa me se quence wher e you go to an FTP cite , you a re
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`pro mpted to ente r in your e - mai l ad dress, and then i f you enter
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`Case No. IPR2014-00039
`Patent 6,628,314
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`that in, then you are given a ccesse s to the resources to
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`download.
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`And we said in our petition that's -- that te chnique
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`is si mpl y e mble matic of a well -known technique that has used
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`for decades in the co mpute r science fiel d. And we th ought
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`that was a suffici ent basis to de mo nstrate the clai ms would
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`have been obvious.
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`Now go to slide 3 4, please .
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`We supported tha t conclusion with testi mon y fro m
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`Dr . Houh. We ex plained how that technique works and would
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`be relativel y stra i ghtforward to i mple ment within the Gu yot
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`sche me . And what the y said in r esponse -- if we go to slide
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`35 -- to refute or respond to this obviousness contention, the
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`Patent Owner arg ued this co mbinat ion of the Gu yot sche me
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`with the anon ymo us FTP -t ype of t e chnique would make the
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`Gu yot sche me ino perable.
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`So we explored th at with their witn ess. And their
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`own witness confir med that that's not correct. In f a ct, if you
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`go to slide 36, so I asked their witn ess: If I wanted t o
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`i mple ment the Gu yot sche me using this anonymous F TP
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`process such as b y putting a link t o an F TP cite in that UR L
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`that gets delivered in the Gu yot sc he me , could I do that? And
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`their expert said: You know, that wouldn't require an y special
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`skills to create th at kind of link, n o, it wouldn 't.
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`Case No. IPR2014-00039
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`So the pre mise of their a rgu ment is that it is
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`inoperable when you co mbine Gu yot with RF C 1635, is refuted
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`b y the t esti mon y of their o wn witness at deposition.
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`I also want to poi nt out that our ar gu ment wasn't
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`li mited to making the - - using onl y th e anon ymous F TP
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`technique. Dr . Houh, when he put forward his views , said
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`that's a gener al te chnique. You ca n si mpl y pro mpt t he user for
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`infor mation befor e you give the m a ccess to the reque sted
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`resource.
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`And that was his testi mon y. And i f you look
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`at -- and that's -- we can see that at Exhibit 1003, pa ragraphs
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`365 through 68 and through 371 where he is describ ing that
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`technique and how it would be ada pted for use in the Gu yot
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`sche me .
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`So based on that record of evidence, we think it is
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`relativel y clear that it would have been obvious to adapt the
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`Gu yot sche me to have this pro mpti ng of the infor ma tion for
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`de mographic info r mation before th e y we re given acc ess to the
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`download request.
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`And so based on t he record of evid ence that we
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`have gone through, we t hink it is v er y clea r that ther e is more
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`than substantial evidence to support your Institution decision
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`that all these clai ms either a re anticipated b y Gu yot or are
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`rendered obvious b y Gu yot in view of RFC 1635.
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`I will reserve the balance of my ti me, unles s you
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`have an y questions.
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`JUDGE M EDLEY: No. You have 20 minutes left .
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`MR. KUS HAN: Oka y. Thank you .
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`JUDGE M EDLEY: How much ti me would you like
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`to reserve?
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`MR. FR EI TAS: Ten minutes plea se, Your Honor.
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`JUDGE M EDLEY: All right.
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`MR. FR EI TAS: The first thing I would like to
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`address me mbers of the Board is th e standard that is involved
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`here. The last thing counsel said was that the Institution
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`decision is supported b y substantial evidence. The q uestion to
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`be decided is whe ther Microsoft ha s ca rried its burden of proof
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`b y a preponderan ce of the evidenc e. And that is a d ifferent
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`question.
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`This is not an appellate revie w. An d as the Board
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`states in ever y Institution decision, there is not a fi nal
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`decision being made when trial is instituted.
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`The first point I would like to address involves the
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`question of Gu yot and de mographic infor mation. Th e parties
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`are in agree ment that Gu yot does not expressl y discl ose the
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`use of de mograph ic infor mation.
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`Counsel referr ed to the two things that had been
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`pointed to. One i nvolves the personal profile and th e other
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`involves the updating through the infor mation r egard ing what
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`the user has done on the Internet. With respect to the first
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`one, it is co mmon ground that there is no mention of
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`de mographic info r m ation in the pat ent. What it sa ys is that a
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`personal profile i s created b y use o f a questionnaire.
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`Now, the first poi nt that the y make about that is
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`that the questionnaire technique is used in the '314. But that's
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`not the point. What the y need to s how is the use of
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`de mographic info r mation in Gu yot.
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`And the f act that the questionnaire technique was
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`used in the '314 o r mentioned in the '314, that it was co mmon
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`or that questionnaires were used s pecificall y to gather
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`de mographic info r mation isn't suffi ci ent to car r y Mic rosoft's
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`burden of proof.
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`Wh at Microsoft h as to prove under the appropriate
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`standard is that that personal profile includes de mo graphic
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`infor mation.
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`There are three wa ys that can be done. Two wa ys.
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`It can be done ex plicitly or inhere n tly. The a rgu me nt that the y
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`are making se e ms to be a h yb rid. The y see m to find
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`de mographic info r mation si mpl y b ecause Dr . Houh sa ys so, but
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`that's not good enough. And what Dr . Houh sa ys is not
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`supported by Gu yot.
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`Wh at he said is t hat one of ordinar y skill re ading
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`about a personal profile, the use of a -- the cr eation of a
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`personal profile t hrough the use of a questionnaire would
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`recognize the de mographic infor mation could be involved.
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`Resorting to one of ordinar y skill is not proper,
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`when w
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