Trials@uspto.gov
`571-272-7822
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` Paper 13
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` Entered: April 9, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION
`Petitioner
`
`v.
`
`B.E. TECHNOLOGY, L.L.C.
`Patent Owner
`
`
`Case IPR2014-00039
`Patent 6,628,314 B1
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE,
`and LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
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`
`
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` Paper 13
`
`
` Entered: April 9, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION
`Petitioner
`
`v.
`
`B.E. TECHNOLOGY, L.L.C.
`Patent Owner
`
`
`Case IPR2014-00039
`Patent 6,628,314 B1
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE,
`and LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Case IPR2014-00039
`Patent 6,628,314 B1
`
`
`I.
`INTRODUCTION
`Microsoft Corporation (“Petitioner”) filed a Corrected Petition
`requesting an inter partes review of claims 11-22 of
`U.S. Patent No. 6,628,314 B1 (Ex. 1001, “the ’314 patent”). Paper 5
`(“Pet.”). B.E. Technology, L.L.C. (“Patent Owner”) did not file a
`Preliminary Response. We have jurisdiction under 35 U.S.C. § 314.
`The standard for instituting an inter partes review is set forth in
`35 U.S.C. § 314(a), which provides as follows:
`THRESHOLD — The Director may not authorize an inter
`partes review to be instituted unless the Director determines
`that the information presented in the petition filed under section
`311 and any response filed under section 313 shows that there
`is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`Upon consideration of the Petition, we determine that the information
`presented by Petitioner has established that there is a reasonable likelihood
`that Petitioner would prevail in showing the unpatentability of claims 11-22
`of the ’314 patent. Accordingly, we institute an inter partes review of these
`claims.
`
`A. Related Proceedings
`Petitioner indicates that the ’314 patent is the subject of litigation in
`B.E. Technology, L.L.C. v. Microsoft Corp., No 2:12-cv-02829-JPM (W.D.
`Ten.), where Petitioner was served on October 10, 2012. Pet. 4-5.
`Additionally, the ’314 patent is the subject of these inter partes
`reviews: IPR2014-00038, IPR2014-00052, and IPR2014-00053.
`In related proceeding IPR2014-00040, Petitioner also seeks review of
`U.S. Patent No. 6,771,290 B1. U.S. Patent No. 6,771,290 is also the subject
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`Patent 6,628,314 B1
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`of these inter partes reviews: IPR2014-00029, IPR2014-00031, IPR2014-
`00033, and IPR2014-00044.
`B. The ’314 Patent
`The ’314 patent relates to user interfaces that provide advertising
`obtained over a global computer network. Ex. 1001, col. 1, ll. 12-16. The
`’314 patent discloses a client software application that comprises a graphical
`user interface (GUI) program module and an advertising and data
`management (ADM) module. Id. at col. 6, ll. 64-67. The GUI comprises
`multiple regions, including a first region comprising a number of user
`selectable items and a second region comprising an information display
`region, such as banner advertisements. Id. at col. 4, ll. 24-37. Program
`modules associated with the GUI store statistical data regarding the display
`of the selected informational data, allowing the targeting of banner
`advertisements based upon the type of link selected by the user. Id. at col. 4,
`ll. 43-51. The system for selecting and providing advertisements is set forth
`in Figure 3 as follows:
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`3
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`Casee IPR2014--00039
`14 B1
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`Patennt 6,628,3
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`User/Demmographicss
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`s a block dFigure 33 illustrates
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`a system ddistributingg
`iagram of
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`adveertisementss over the IInternet. IdId. at col. 66, ll. 21-22.. ADM serrver 22 is
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`acceessible by cclient compputers 40 oover Internnet 20, wheere client coomputers
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`40 hhave the client softwaare applicattion installled. Id. at
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`col. 8, ll. 332-35.
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`ADMM server haas associatted with it Ad Databaase 44 and
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`Dataabase 46. IId. at col. 88, ll. 38-43
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`. Ad Dataabase 44 st
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`ores banneer
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`adveertising thaat is providded to cliennt computeers 40. Id.
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`formation
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`used in tarrgeting advvertising
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`Dataabase 46 stores demoographic in
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`downnloaded too individuaal client commputers 400. Id. at cool. 8, ll. 55
`-57.
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`When a user first aaccesses thhe client sooftware appplication foor the
`ubmits
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`purpposes of doownloadingg and installling the appplication,, the user s
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`ed to deterrmine whatt advertisinng is
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`demographic innformationn that is us
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`provvided to thee user. Id.
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`at col. 8, l
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`l. 57-62. TThe demoggraphic infformation iis
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`submmitted by thhe user by entering thhe informaation into aa form provvided to thhe
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`Patent 6,628,314 B1
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`user, and ADM server 22 checks the completeness of the form. Id. at col.
`16, l. 60 - col. 17, l. 2. ADM server 22 then assigns a unique ID to the user
`and stores the unique ID with the received user demographic information.
`Id. at col. 17, ll. 11-15. An initial set of advertisements is selected, and the
`client software application is downloaded to client computer 40 for
`installation. Id. at col. 17, ll. 17-23. The client software application
`monitors user interaction with the computer, whether with the client
`software application or with other applications, and later reports this
`information to the ADM server. Id. at col. 12, ll. 55-59; col. 13, ll. 1-2.
`Advertising banners are displayed in response to some user input or
`periodically at timed intervals. Id. at col. 14, ll. 40-43. Client software
`application targets the banner advertising displayed, based on the user’s
`inputs, so that it relates to what the user is doing. Id. at col. 14, ll. 43-46.
`C. Exemplary Claims
`Petitioner challenges claims 11-22 of the ’314 patent. Independent
`claim 11 and dependent claims 15 and 20 are illustrative of the claims at
`issue and follow:
`11. A method of providing demographically-targeted
`advertising to a computer user, comprising the steps of:
`providing a server that is accessible via a computer
`network,
`permitting a computer user to access said server via said
`computer network,
`acquiring demographic information about the user, said
`demographic information including information specifically
`provided by the user in response to a request for said
`demographic information,
`providing the user with download access to computer
`software that, when run on a computer, displays advertising
`content, records computer usage information concerning the
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`user’s utilization of the computer, and periodically requests
`additional advertising content,
`transferring a copy of said software to the computer in
`response to a download request by the user,
`providing a unique identifier to the computer, wherein
`said identifier uniquely identifies information sent over said
`computer network from the computer to said server,
`associating said unique identifier with demographic
`information in a database,
`selecting advertising content for transfer to the computer
`in accordance with the demographic information associated
`with said unique identifier;
`transferring said advertising content from said server to
`the computer for display by said program,
`periodically acquiring said unique identifier and said
`computer usage information recorded by said software from the
`computer via said computer network, and
`associating said computer usage information with said
`demographic information using said unique identifier.
`
`15. The method of claim 11, wherein said providing a unique
`identifier step further comprises storing a cookie on the
`computer.
`
`20. The method of claim 11, wherein said acquiring step
`further comprises requesting said demographic information in
`response to a request from the user to download said software
`and receiving said demographic information from the user prior
`to providing the user with access to said software.
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`D. The Alleged Grounds of Unpatentability
`The information presented in the Petition sets forth Petitioner’s
`contentions of unpatentability of claims 11-22 of the ’314 patent under 35
`U.S.C. §§ 102 and 103, as follows (see Pet. 6-7, 10-60):
`
`Reference(s)
`
`Shaw1
`Shaw and Robinson2
`Shaw and RFC 16353
`Guyot4
`Guyot and Robinson
`Guyot and RFC 1635
`Robinson
`Robinson
`Robinson and RFC 1635
`
`Basis
`
`§ 102(e)
`§ 103(a)
`§ 103(a)
`§ 102(e)
`§ 103(a)
`§ 103(a)
`§ 102(e)
`§ 103(a)
`§ 103(a)
`
`Claims
`Challenged
`11-14 and 16-19
`15
`20-22
`11-14 and 16-20
`15
`20-22
`11-19
`11, 16, and 17
`20-22
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`2012). Also, claim terms are given their ordinary and customary meaning,
`
`1 U.S. Patent No. 5,809,242 (Ex. 1005) (“Shaw”).
`2 U.S. Patent No. 5,918,014 (Ex. 1007) (“Robinson”).
`3 Deutsch et al., How to Use Anonymous FTP, IAFA Working Group, 1-13
`(May 1994) (Ex. 1022) (“RFC 1635”).
`4 U.S. Patent No. 6,119,098 (Ex. 1006) (“Guyot”).
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`as would be understood by one of ordinary skill in the art in the context of
`the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`(Fed. Cir. 2007).
`1. “demographic information”
`Petitioner proposes that the term “demographic information” means
`“information collected about end user characteristics that does not identify
`the end user.” Pet. 10 (citing Ex. 1003 ¶¶ 105-106). Petitioner points to the
`context of “demographic information” as used in the Specification to include
`time zone, locale, and client hardware. Id. (citing Ex. 1001, col. 3, ll. 8-11).
`Petitioner further argues that the Specification specifically describes
`“demographic information” to exclude information that identifies an end-
`user for privacy concerns. Id. (citing Ex. 1001, col. 2, ll. 40-48). We agree
`that Petitioner’s proposed definition for “demographic information” is both
`reasonable and consistent with its usage in the Specification. Accordingly,
`we construe “demographic information” to mean “collected characteristic
`information about a user that does not identify the user.”
`B. Claims 11-14 and 16-19 – Anticipated by Guyot
`Petitioner contends that claims 11-14 and 16-19 are unpatentable
`under 35 U.S.C. § 102(e) as anticipated by Guyot. Pet. 27-35. In support of
`this asserted ground of unpatentability, Petitioner provides detailed
`explanations as to how each claim limitation is disclosed by Guyot. In its
`explanations, Petitioner relies on a Declaration of Henry Houh (Ex. 1003).
`1. Guyot (Ex. 1006)
`Guyot discloses a system and method for targeting and distributing
`advertisements over a distributed information network, such as the Internet.
`Ex. 1006, col. 1, ll. 9-11. The distributed information network allows for
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`Patennt 6,628,3
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`inforrmation to be exchannged betweeen a serveer and multtiple subscrriber
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`systeems. Id. att col. 3, ll. 13-16; coll. 3, ll. 44-447. The addvertisemeent
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`targeeting systemm is set fo
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`rth in Figuure 1 as folllows:
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`proprietaryy
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`ple
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`Figure 1 depicts thhe system tto include sserver 2000 and multi
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`subsscriber systtems 300. Id. at col. 3, ll. 15-166. Informaation is excchanged
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`ion links
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`betwween serverr 200 and ssubscriber systems 3000 over coommunicat
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`400. Id. at col. 3, ll. 17-118. Each ssubscriber ssystem hass a unique
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`tifier. Id. aat col. 3, lll. 21-22. SServer 200
`iden
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`stores andd manages
`an
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`adveertisement database. Id. at col. 3, ll. 24-255. Subscriiber systemms 300
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`perioodically acccess server 200 to doownload addvertisemeents that arre
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`speccifically tarrgeted to a subscriberr based on
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`a subscribber’s personnal profile
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`storeed on serveer 200. Id. at col. 3, lll. 26-29.
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`Subscriberr systems 3300 then
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`displlay the targgeted adveertisementss. Id. at co
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`l. 3, ll. 29--30.
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`The advertisementt database sstores, for
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`each subsccriber, subbscriber
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`data,, which inccludes the subscriberr’s identificcation infoormation, thhe
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`subsscriber’s paassword, annd the subsscriber’s ppersonal proofile. Id. aat col. 3, ll
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`55-660. The subbscriber’s personal pprofile is obbtained by
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`having thee
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`subsscriber provvide answeers to a queestionnairee. Id. at cool. 3, ll. 600-65. The
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`subscriber’s personal profile is used to target specific advertisements to the
`subscriber. Id. at col. 3, ll. 60-61.
`The subscriber system includes a memory, which stores a client
`application, and a processor, which executes the client application. Id. at
`col. 3, ll. 30-36. The client application establishes a connection between the
`subscriber system and the server, and the client application uploads
`subscriber statistics to the server, and downloads, if necessary, the latest
`version of the client application software from the server. Id. at col. 5, ll.
`18-27. The subscriber statistics preferably include information related to the
`advertisements displayed on the subscriber’s system and information on the
`Internet sites that the subscriber has accessed over a predetermined period of
`time. Id. at col. 4, ll. 15-23. This information is utilized to define further the
`subscriber’s personal profile. Id.
`2. Analysis
`The evidence set forth by Petitioner indicates a reasonable likelihood
`that Petitioner will prevail in showing that claims 11-14 and 16-19 are
`unpatentable under 35 U.S.C. § 102(e) as anticipated by Guyot. Pet. 27-35.
`For example, independent claim 11 recites a method of providing
`demographically-targeted advertising to a computer user. Guyot discloses a
`system and method for “targeting and distributing advertisements over a
`distributed network, such as the Internet.” Ex. 1006, col. 1, ll. 9-11.
`
`Claim 11 further recites “providing a server that is accessible via a
`computer network” and “permitting a computer user to access said server via
`said computer network.” Guyot discloses that server 200 is connected to
`multiple subscriber systems 300 over a distributed information network,
`such as the Internet. Id. at col. 3, ll. 15-22; Fig. 1.
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`Claim 11 also recites “acquiring demographic information about the
`user, said demographic information including information specifically
`provided by the user in response to a request for said demographic
`information.” Guyot discloses that the server stores a subscriber’s personal
`profile, where the personal profile “is preferably obtained by having the
`subscriber provide answers to a questionnaire.” Id. at col. 3, ll. 51-65.
`Subscriber statistics, such as the advertisements distributed to the subscriber
`and the number of times each advertisement has been displayed to the
`subscriber, are used to further define the subscriber’s personal profile. Id. at
`col. 4, ll. 15-23.
`Claim 11 further recites “providing the user with download access to
`computer software that, when run on a computer, displays advertising
`content, records computer usage information concerning the user’s
`utilization of the computer, and periodically requests additional advertising
`content” and “transferring a copy of said software to the computer in
`response to a download request by the user.” Guyot discloses that a client
`application is provided to the subscriber’s computer. Id. at col. 1, ll. 58-60.
`The subscriber can manually request a connection to the server. Id. at col. 6,
`ll. 44-46. When connected to the server, the client application refreshes the
`queue of advertisements to display, and the client application is updated by
`downloading the latest version of the client application software. Id. at col.
`5, ll. 19-24. The client application periodically accesses the server to
`download targeted advertisements. Id. at col. 1, ll. 66 – col. 2, ll. 1. That is,
`an updated copy of the software is transferred to the subscriber’s computer
`upon a request from the subscriber. The client application displays
`advertisements on the subscriber’s computer. Id. at col. 3, ll. 39-42. The
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`client application further maintains subscriber statistics, such as information
`on Internet sites that the subscriber has accessed over a predetermined period
`of time. Id. at col. 4, ll. 18-21. This information is computer usage
`information because information as to which Internet sites the subscriber’s
`computer has accessed is expressly information as to how that computer has
`been used. Furthermore, Guyot describes that the client application
`monitors the activity of input devices to determine subscriber activity. Id. at
`col. 5, ll. 6-10.
`Claim 11 additionally recites “providing a unique identifier to the
`computer, wherein said identifier uniquely identifies information sent over
`said computer network from the computer to said server” and “associating
`said unique identifier with demographic information in a database.” Guyot
`further describes that each subscriber data includes identification
`information, password assigned to the subscriber, and a personal profile for
`the subscriber. Id. at col. 3, ll. 57-61. As discussed above, the personal
`profile information includes demographic information of the subscriber.
`Claim 11 also recites “selecting advertising content for transfer to the
`computer in accordance with the demographic information associated with
`said unique identifier” and “transferring said advertising content from said
`server to the computer for display by said program.” Guyot discloses the
`server manages the advertisements database and provides advertisements to
`the client application that are targeted to each individual subscriber, based
`on the personal profile provided by that subscriber. Id. at col. 1, ll. 60-65.
`Guyot further discloses the client application, when connected to the server,
`refreshes the queue of advertisements to display. Id. at col. 5, ll. 19-24.
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`Claim 11 lastly recites “periodically acquiring said unique identifier
`and said computer usage information recorded by said software from the
`computer via said computer network” and “associating said computer usage
`information with said demographic information using said unique
`identifier.” Guyot discloses that the client application periodically accesses
`the server and provides subscriber statistics, which include computer usage
`information as discussed above. Id. at col. 1, ll. 66-67; col. 5, ll. 19-24. The
`subscriber statistics are used to further define the subscriber’s personal
`profile, which includes the subscriber’s demographic information. Id. at col.
`3, ll. 57-65; col. 4, ll. 21-23. As such, the computer usage information is
`associated with the demographic information associated with each individual
`subscriber.
`3. Conclusion
`Petitioner has shown a reasonable likelihood that Petitioner will
`prevail in showing that claims 11-14 and 16-19 of the ’314 patent are
`anticipated by Guyot.
`C. Claim 15 – Obvious over Guyot and Robinson
`Petitioner contends that claim 15 is unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Guyot and Robinson. Pet. 36-37. In support of
`this asserted ground of unpatentability, Petitioner provides detailed
`explanations as to how each claim limitation is disclosed or suggested by a
`combination of Guyot and Robinson. In its explanations, Petitioner relies on
`the Declaration of Henry Houh.
`1. Robinson (Ex. 1007)
`Robinson discloses a system for the display of advertising to users of
`an interactive communications medium. Ex. 1007, col. 1, ll. 12-13. The
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`system tracks activities of a subject in an interactive communications
`medium, derives information from the activities, determines a community
`for the subject based on the derived information, and determines which
`advertisements to present to the subject based on the determined community.
`Id. at col. 3, l. 62 – col. 4, l. 6.
`Tracking data can be stored locally on a user’s local computer. Id. at
`col. 7, ll. 26-28. A cookie can be generated and stored on the user’s
`computer. Id. at col. 8, ll. 42-44. The cookie is the only way to associate
`information stored on the central server with that particular user. Id. The
`cookie contains the identifier of the user, and the user ID in the central
`database is updated with tracking information from the cookie. Id. at col.
`10, ll. 11-14.
`2. Analysis
`The evidence set forth by Petitioner indicates a reasonable likelihood
`that Petitioner will prevail in showing that claim 15 is unpatentable under
`35 U.S.C. § 103(a) as obvious over Guyot and Robinson. Pet. 36-37.
`Petitioner contends that claims 11-14 and 16-19 are anticipated by Guyot.
`Id. at 27-35. As discussed above, claim 11 recites the limitation “providing
`a unique identifier to the computer” and Guyot discloses a unique identifier
`associated to each subscriber subsystem and each subscriber has
`identification information, a password, and a personal profile. Ex. 1006, col.
`3, ll. 18-22; col. 3, ll. 57-61. Claim 15 depends from claim 11 and further
`recites that the limitation of “providing a unique identifier” comprises
`“storing a cookie on the computer.” Guyot, however, does not disclose
`“storing a cookie on the computer.” See Ex. 1003 ¶ 341.
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`Petitioner argues that Robinson discloses this limitation. Pet. 37.
`Petitioner contends that Robinson describes the use of “cookies to track user
`activity in the context of targeted advertising systems.” Id. (citing Ex. 1003
`¶ 345 (citing Ex. 1007, col. 2, ll. 49-53)). Indeed, Robinson discloses the
`use of a cookie mechanism that ensures that is the only way that information
`is associated to the user. Ex. 1007, col. 8, ll. 41-44.
`Petitioner further contends that a person with ordinary skill in the art
`would be motivated to combine Robinson’s disclosure of a cookie
`mechanism that stores a cookie locally on the user’s computer with Guyot
`for “uniquely identifying a user to enable targeted delivery of advertising.”
`Pet. 37. Petitioner’s expert, Dr. Houh, further states that the “use of
`‘cookies’ to track an Internet user’s activity at a server was well known.”
`Ex. 1003 ¶ 341. According to Dr. Houh, a person with ordinary skill in the
`art would have “immediately recognized the processes shown in Guyot
`could readily be implemented using the name/value or attribute/value format
`of cookies, as they are a natural fit.” Id. ¶ 344. Dr. Houh also states that the
`modification of Guyot to include the use of cookies, as disclosed by
`Robinson, would be routine to a person with ordinary skill in the art. Id. ¶
`348. In other words, Petitioner contends that a combination of the known
`element, i.e., the use of cookies, with methods for tracking a user’s activity
`would yield nothing more than predictable results.
`In light of these contentions, we are persuaded that Petitioner has
`shown a reasonable likelihood of prevailing in showing that claim 15 of the
`’314 patent is unpatentable as obvious over Guyot and Robinson.
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`
`3. Conclusion
`Petitioner has shown a reasonable likelihood that Petitioner will
`prevail in showing that claim 15 of the ’314 patent would have been obvious
`over Guyot and Robinson.
`D. Claims 20-22 – Obvious over Guyot and RFC1635
`Petitioner contends that claims 20-22 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Guyot and RFC. Pet. 37-42. In support
`of this asserted ground of unpatentability, Petitioner provides detailed
`explanations as to how each claim limitation is disclosed or suggested by a
`combination of Guyot and RFC. In its explanations, Petitioner relies on the
`Declaration of Henry Houh.
`1. RFC 1635 (Ex. 1022)
`RFC 1635 provides information about how to use the File Transfer
`Protocol (FTP). Ex. 1022, 1. RFC 1635 discloses that FTP is a protocol
`used on the Internet to transfer files from one computer (host) on the Internet
`to another. Id. A user of an FTP program must log in to both hosts using an
`account and password in order to transfer a file from one host to the other.
`Id.
`
`RFC 1635 further describes the use of anonymous FTP. Id. at 2. An
`archive site is a host that acts as a repository for a wealth of information,
`much like a conventional library. Id. The information stored on these
`Internet hosts is made available for external users to transfer to their local
`sites. Id. To provide general access, a special user account called
`“anonymous” is created for the archive site. Id. The user account
`“anonymous” has limited access rights to the archive host. Id. The
`
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`Case IPR2014-00039
`Patent 6,628,314 B1
`
`anonymous user account allows a user to log in using FTP, list the contents
`of a limited set of directories, and retrieve files from the archive site. Id.
`2. Analysis
`The evidence set forth by Petitioner indicates a reasonable likelihood
`that Petitioner will prevail in showing that claims 20-22 are unpatentable
`under 35 U.S.C. § 103(a) as obvious over Guyot and RFC . Pet. 37-42.
`For example, claim 20 depends from claim 11 and further recites that
`the limitation of “acquiring demographic information” comprises
`requesting said demographic information in response to a
`request from the user to download said software and receiving
`said demographic information from the user prior to providing
`the user with access to said software.
`As discussed above, Petitioner contends that claims 11-14 and 16-19
`are anticipated by Guyot. Pet. 27-35. Claim 11 recites the limitation
`“acquiring demographic information about the user, said demographic
`information including information specifically provided by the user in
`response to a request for said demographic information.” As discussed
`above, Guyot discloses that the server stores a subscriber’s personal profile,
`where the personal profile “is preferably obtained by having the subscriber
`provide answers to a questionnaire.” Id. at col. 3, ll. 51-65. Subscriber
`statistics, such as the advertisements distributed to the subscriber and the
`number of times each advertisement has been displayed to the subscriber,
`are used to define further the subscriber’s personal profile. Id. at col. 4, ll.
`15-23.
`Petitioner, however, acknowledges that Guyot does not disclose
`expressly that demographic information is received prior to providing the
`user with access to the software. Pet. 39 (see also Ex. 1003 ¶ 363).
`
`17
`
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`Case IPR2014-00039
`Patent 6,628,314 B1
`
`Petitioner argues that RFC 1635 discloses receiving demographic
`
`information prior to providing the user with access to software. Id. at 39-40.
`Petitioner argues that RFC 1635 discloses an anonymous file transfer
`protocol (FTP) process. Id. RFC 1635 discloses that a user is prompted for
`a password, and upon submitting a password, the user is granted access to
`transfer files from the FTP server. Ex. 1022, 2.
`Petitioner further contends that a person with ordinary skill in the art
`would have found it obvious to prompt the user for information prior to
`providing the user access to other information, as demonstrated by RFC
`1635, prior to providing the client application software of Guyot and such a
`modification would have been an obvious design choice. Pet. 39-40 (citing
`Ex. 1003 ¶ 369).
`In light of these contentions, we are persuaded that Petitioner has
`shown a reasonable likelihood of prevailing in showing that claim 20 of the
`’314 patent is unpatentable as obvious over Guyot and Robinson.
`3. Conclusion
`Petitioner has shown a reasonable likelihood that Petitioner will
`prevail in showing that claims 20-22 of the ’314 patent would have been
`obvious over Guyot and Robinson.
`E. Claims 11-22 – Remaining Grounds
`Petitioner contends that claims 11-14 and 16-19 are unpatentable
`under 35 U.S.C. § 102(e) as anticipated by Shaw. Pet. 10-20. Petitioner
`contends that claim 15 is unpatentable under 35 U.S.C. § 103(a) as obvious
`over Shaw and Robinson. Id. at 20-21. Petitioner contends that claims 20-
`22 are unpatentable under 35 U.S.C. § 103(a) as obvious over Shaw and
`RFC 1635. Id. at 21-27. Petitioner contends that claim 20 is unpatentable
`
`18
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`Case IPR2014-00039
`Patent 6,628,314 B1
`
`under 35 U.S.C. § 102(e) as anticipated by Guyot. Id. at 35-36. Petitioner
`contends that claims 11-19 are unpatentable under 35 U.S.C. § 102(e) as
`anticipated by Robinson. Id. at 42-52. Petitioner contends that claims 11,
`16, and 17 are unpatentable under 35 U.S.C. § 103(a) as obvious over
`Robinson. Id. at 52-56. Petitioner contends that claims 20-22 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Robinson and RFC
`1635. Id. at 56-60.
`However, having reviewed these grounds of unpatentability asserted
`by Petitioner, we exercise our discretion and determine that they are
`redundant to the ground of unpatentability on which we institute review for
`the same claims. See 37 C.F.R. § 42.108(a).
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the Petition establishes that there is a reasonable likelihood that
`Petitioner would prevail in establishing unpatentability of claims 11-22 of
`the ’314 patent.
`The Board has not made a final determination on the patentability of
`any challenged claims.
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`hereby instituted as to the following proposed grounds:
`1.
`Anticipation of claims 11-14 and 16-19 by Guyot; and
`2.
`Obviousness of claim 15 over Guyot and Robinson.
`3.
`Obviousness of claims 20-22 over Guyot and RFC 1635.
`
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`Case IPR2014-00039
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`
`FURTHER ORDERED that no other grounds raised in the Petition are
`authorized for inter partes review.
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(d) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`commences on the entry date of this decision; and
`FURTHER ORDERED that an initial conference call with the Board
`is scheduled for 3:00 PM, Eastern Time on May 6, 2014; the parties are
`directed to the Office Patent Trial Practice Guide5 for guidance in preparing
`for the initial conference call, and should come prepared to discuss any
`proposed changes to the Scheduling Order entered herewith and any motions
`the parties anticipate filing during the trial.
`
`
`5 Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765-66 (Aug.
`14, 2012).
`
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`Case IPR2014-00039
`Patent 6,628,314 B1
`
`For PETITIONER:
`Jeffrey P. Kushan
`Scott M. Border
`Sidley Austin LLP
`jkushan@sidley.com
`sborder@sidley.com
`
`
`
`For PATENT OWNER:
`Jason S. Angell
`Robert E. Freitas
`Freitas Tseng & Kaufman LLP
`jangell@ftklaw.com
`rfreitas@ftklaw.com
`
`
`21
`
`
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