Paper No. 34
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`
`
`MICROSOFT CORPORATION AND GOOGLE INC.
`Petitioner,
`
`v.
`
`B.E. TECHNOLOGY, LLC,
`Patent Owner
`_________________________
`
`Case IPR2014-00039
`Patent No. 6,628,314 B1
`________________________
`
`
`
`PETITIONER MICROSOFT’S OPPOSITION TO PATENT OWNER’S
`MOTION TO AMEND CLAIMS
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`MICROSOFT CORPORATION AND GOOGLE INC.
`Petitioner,
`
`v.
`
`B.E. TECHNOLOGY, LLC,
`Patent Owner
`_________________________
`
`Case IPR2014-00039
`Patent No. 6,628,314 B1
`________________________
`
`
`
`PETITIONER MICROSOFT’S OPPOSITION TO PATENT OWNER’S
`MOTION TO AMEND CLAIMS
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`I.
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`II.
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`TABLE OF CONTENTS
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`Introduction ......................................................................................................... 1
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`Patent Owner Fails To Provide Any Claim Constructions .......................... 1
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`III. The Proposed Substitute Claims Are Not Supported by the Written
`Description of the ’314 Patent ........................................................................... 3
`A.
`Patent Owner Fails to Meet Its Burden of Proof on Written
`Description Support for its New Claims ........................................... 3
`There is No Written Description Support for Patent Owner’s
`Amended Claims.................................................................................. 5
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`B.
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`IV. The Proposed Amended Claims Are Indefinite .............................................. 7
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`V.
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`The Amended Claims Remain Unpatentable Over Art ............................... 7
`A.
`Patent Owner Fails to Carry Its Burden of Proof ............................ 8
`B. Guyot Anticipates Proposed Amended Claims 23-34 ...................... 9
`C. Robinson Anticipates Proposed Amended Claims 23-34 .............. 11
`D.
`Proposed Amended Claims 23-34 Are Obvious Over Guyot ........ 12
`E.
`Patent Owner Addresses the Wrong Claim Language .................. 15
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`VI. Conclusion .......................................................................................................... 15
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`-ii-
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`I.
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`Introduction
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`Patent Owner bears the burden of proving its proposed substitute claims are
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`patentable. Nichia Corporation v. Emcore Corporation, Case IPR2012-00005,
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`Paper 27 at 2 (June 3, 2013); Int’l Flavors & Fragrances Inc. v. The United States
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`of America, IPR2013-00124, Paper 12 at 7 (May 20, 2014). Patent Owner must
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`establish three things. CBS Interactive v. Heferich Patent Licensing, IPR2013-
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`00033, Paper 122 at 51-58 (March 3, 2014). First, Patent Owner must “identify
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`how the proposed substitute claims are to be construed, especially when the
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`proposed substitute claims introduce new claim terms.” Id. at 51-52. Second,
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`Patent Owner “must identify clearly the written description support for each
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`proposed substitute claim.” Id. at 53 (citing § 42.121(b)). Third, “the patent owner
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`bears the burden of proof in demonstrating patentability of the proposed substitute
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`claims over the prior art in general” and a “mere conclusory statement that one or
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`more added claim features are not described in the cited prior art, or would not
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`have been suggested or rendered obvious by the prior art, is facially inadequate.”
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`Id. at 55. Patent Owner’s motion fails on each criteria.
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`II.
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`Patent Owner Fails To Provide Any Claim Constructions
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`Patent Owner’s amendment to claim 11 (new claim 23) adds significant
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`amounts of new claim language. First, Patent Owner adds language defining the
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`minimal elements of “computer usage information”: “wherein the computer usage
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`-1-
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`information comprises information about the user’s interactions with said
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`computer software displaying advertising content and at least one other program.”
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`Patent Owner then modifies the step of “selecting advertising content for transfer
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`to the computer” to specify this must be done “in accordance with real-time and
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`other computer usage information and demographic information associated with
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`said unique identifier.” Third, Patent Owner reorders the sequence of steps in the
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`claim. Motion at 2-3, 6. Finally, Patent Owner changes the dependence of original
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`claim 22 (new claim 34) from original dependent claim 22 to new independent
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`claim 23 (original claim 11). This last change improperly enlarges the scope of
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`claim 22 by omitting limitations present in the original claim by its dependence on
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`original dependent claim 22. 35 U.S.C. § 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii).
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`Remarkably, Patent Owner presents no constructions for any its new claim
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`language. See Motion at 6-13. Patent Owner’s refusal to do so conceals the
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`meaning of its amended claims. For example, Patent Owner’s new phrase “real-
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`time and other computer usage information” is not defined anywhere in the
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`specification, and is used in the claims in a manner inconsistent with its use in the
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`specification. See § III.B, infra. The term has no single, accepted meaning in the
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`art, rendering the boundaries and meaning of the claims indefinite and confusing
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`by inclusion of this term. See § IV, infra. The recitation of a second category of
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`“computer usage information” in the amended claim (i.e., “other” computer usage
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`information) simply adds to this confusion. For example, nothing in the ‘314 patent
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`suggests there are two classes of “computer usage information” or which type of
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`information falls within one or both of the categories. Ex. 1028 at ¶¶ 94-95. This
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`confusion is further compounded by the amorphous and inherently variable
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`definition of “computer usage information” in the specification. See § IV, infra.
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`Patent Owner makes no effort to reconcile the internal conflicts and
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`ambiguity of its amended claims, which render them incapable of analysis for
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`patentability. Patent Owner’s failure to even propose a claim construction severely
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`prejudices the Board, the Petitioner and the public, and prevents a fair evaluation of
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`the merits of its claim amendment. Toyota Motor Corp. v. American Vehicular
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`Sciences LLC, IPR2013-00419, Paper 32 at 5 (March 7, 2014). Patent Owner thus
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`plainly not met its burden, and its Motion to Amend should be denied.
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`III. The Proposed Substitute Claims Are Not Supported by the Written
`Description of the ’314 Patent
`A.
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`Patent Owner Fails to Meet Its Burden of Proof on Written
`Description Support for its New Claims
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`Patent Owner had the burden of establishing written description support for
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`the amended claims in the original disclosure of the patent. 37 C.F.R. § 42.20(c).
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`Patent Owner again ignores its burden, and makes no attempt to show how the
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`original disclosure supports the amended claims.
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`Whether there is written description support for a claimed invention requires
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`specific evidence that the written description reasonably conveys to a person of
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`ordinary skill that the inventors had possession of the claimed subject matter.
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`Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F. 3d 1336 (Fed. Cir. 2010).
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`Despite this, Patent Owner remarkably advances no evidence showing how any
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`portions of the ’314 disclosure establish possession of the processes defined by its
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`amended claims. For example, Mr. Goldstein, Patent Owner’s expert, offers no
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`opinion on what the written description of the ’314 patent would have conveyed to
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`a person skilled in the art. Indeed, Patent Owner makes no attempt to even
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`articulate “why a person of ordinary skill in the art would have recognized that the
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`inventor possessed the claimed subject matter as a whole.” Nichia Corp. v.
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`Emcore Corp., IPR2012-00005, Paper 7 at 4 (PTAB Jun. 3, 2013).
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`Instead, Patent Owner presents a single paragraph containing string of
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`citations to random passages of the ’705 application that issued as the ’314 patent
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`(i.e., U.S. Application 09/699,705)(Ex. 2005). Motion at 7. This is plainly
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`insufficient under the Board’s standards. Respironics, Inc. v. Zoll Medical Corp.,
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`IPR2013-00322, Paper 46 at 24 (PTAB Sep 17, 2014) (“[Patent Owner’s] string
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`citations amount to little more than an invitation to us (and to [Petitioner], and to
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`the public) to peruse the cited evidence and piece together a coherent argument for
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`them. This we will not do; it is the province of advocacy.”) See also Nichia, Paper
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`7 at 4. Patent Owner thus has failed to meet its burden of establishing written
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`description support for its amended claims.
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`B.
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`There is No Written Description Support for Patent Owner’s
`Amended Claims
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`Dr. Houh analyzed the written description of the ’705 application (Ex. 2005)
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`to determine if it establishes to a person skilled in the art possession of the subject
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`matter defined by amended claims 23-34. Ex. 1028 at ¶¶ 48-98. Dr. Houh
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`specifically focused on the passages listed by Patent Owner, but did not limit
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`himself to those passages. Id.
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`Dr. Houh concluded the written description of the ’705 application does not
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`establish possession of the subject matter of the amended claims. Ex. 1028 at ¶¶
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`94-98. For example, Dr. Houh explained the written description does not describe
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`two different categories of “computer usage information” (i.e., “real time” and
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`“other” computer usage information) or indicate which type of computer usage
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`information is in each category. Ex. 1028 at ¶¶ 94-95. Dr. Houh also analyzed the
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`’705 application to determine how it uses the term “real time.” Ex. 1028 at ¶¶ 96-
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`98. What he found was that virtually the entirety of the ’705 application uses the
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`term “real time” in a markedly different way than how the term is used in the
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`amended claims. Id. Specifically, Dr. Houh observed that term “real time” is used
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`repeatedly in the specification to refer to the process of selecting and delivering
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`ads. Ex. 1028 at ¶ 96. In other words, what is happening in “real time” is the
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`selection and delivery of ads. Id. By contrast, the claims use the term “real time”
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`to describe a type of action taken by a user on the computer (i.e., “real time
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`computer usage”). Id. Compounding this disconnect, Dr. Houh observed that the
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`processes described in the ’705 application that involve “real time” concepts do
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`not transfer computer usage information to a server to enable selection and
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`delivery of ads – these processes as described in the specification use computer
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`usage information locally on the user’s computer in conjunction with locally stored
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`data to retrieve and display locally stored ads. Ex. 1028 at ¶ 97. This, of course,
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`conflicts with the claims, which require “real time and other” computer usage
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`information to be sent to a server, which uses it to select ads. Id.
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`Indeed, the only instance where the written description departs from this
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`“locally implemented” design is one process that deviates materially from the
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`claimed process for a different reason – a process where only the transferred
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`computer usage information is used to select ads and deliver them back to the
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`user’s computer. Ex. 1028 at ¶ 98. This, too, is contrary to the amended claims,
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`which expressly require ads to be selected using “real time and other computer
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`usage information” and “demographic information associated with [the] unique
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`identifier.” Id. And, of course, Dr. Houh found no instance where two different
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`types of computer usage information are collected (i.e., “real time” and “other”),
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`sent to a server and used to “select advertising content for transfer to the
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`computer…” Id. Thus, nothing in the written description of the ’705 application
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`conveys to a person of ordinary skill possession of the subject matter of amended
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`claims 23-34. Ex. 1028 at ¶¶ 47-98.
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`IV. The Proposed Amended Claims Are Indefinite
`The proposed amended claims are indefinite. In particular, the proposed
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`claim term “real-time and other computer usage information” is confusing and
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`incapable of definition. Ex. 1028 at ¶¶ 99-100. This is because the underlying
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`term “computer usage information” is described in an indefinite, amorphous and
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`open-ended manner in the ’314 disclosure (i.e., “Data concerning a person’s use of
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`a computer, including such things as what programs they run, what information
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`resources they access, what time of day or days of the week they use the computer,
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`and so forth.”). Ex. 1001 at 3:38-41; Ex. 1028 at ¶¶ 99-100 . Moreover, because
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`the ’314 disclosure does not associate different types of “computer usage
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`information” with the “real time” or “other” categories of this information, it is
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`impossible to know from reading the disclosure which information is in either (or
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`both) categories. The phrase “real time and other computer usage information”
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`thus fails to inform a person of ordinary skill in the art of the scope of the claim
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`with reasonable certainty, and is indefinite under 35 U.S.C. § 112, second
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`paragraph. See, Nautilus, Inc. v. Biosig, Insts., Inc., 134 S. Ct. 2120, 2129–30
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`(2014).
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`V. The Amended Claims Remain Unpatentable Over Art
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`-7-
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`A.
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`Patent Owner Fails to Carry Its Burden of Proof
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`Patent Owner’s Motion should be denied because it fails to “come forward
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`with technical facts and reasoning about those [added] feature(s), including
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`construction of new claim terms, sufficient to persuade the Board that the proposed
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`substitute claim is patentable over the prior art of record, and over the prior art not
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`of record but known to the patent owner.” Idle Free Systems, Inc. v. Bergstrom,
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`Inc., IPR2012-00026, Paper 66 at 34 (PTAB Jan 7, 2014). Patent Owner’s analysis
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`makes no attempt to meet these requirements, and instead is limited to short
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`conclusory statements unsupported by any evidence or reasoning; Patent Owner
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`simply alleges that certain items of prior art do not show the newly phrased
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`limitations. Motion at 8-10. Patent Owner’s deficient analysis is plainly
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`insufficient under the Board’s standards. See CBS, Paper 122 at 56 (“[Patent
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`Owner] merely discusses how each prior art reference cited in the petition
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`individually does not disclose the features added in the substitute claim. [] Such a
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`patentability analysis is insufficient to demonstrate nonobviousness, because an
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`analysis of whether the subject matter of a claim would have been obvious ‘need
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`not seek out precise teachings direct to the specific subject matter of the challenged
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`claim, for a court can take account of the inferences and creative steps that a
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`person of ordinary skill in the art would employ.’”) The Board likewise has held a
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`“mere conclusory statement that one or more added claim features are not
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`described in the cited prior art, or would not have been suggested or rendered
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`obvious by the prior art, is facially inadequate.” Id. at 55. Because Patent Owner
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`has failed to carry its burden of proving the amended claims are patentable over the
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`prior art, its motion should be denied.
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`B. Guyot Anticipates Proposed Amended Claims 23-34
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`The Board properly determined that Guyot anticipates original claims 11-14
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`and 16-19 of the ’314 Patent. Decision at 8-13. The Board also properly concluded
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`that claim 15 is obvious based on Guyot in view of Robinson, Decision at 13-16,
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`and that claims 20-22 are obvious based on Guyot in view of RFC 1635. Decision
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`at 16-18. Amended claims 23-34 remain unpatentable over Guyot, which discloses
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`the elements added by the new language of those claims, and any possible
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`distinctions between the Guyot processes and those defined by the amended claims
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`would have been obvious to a person of ordinary skill in the art.
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`First, Guyot describes processes that use computer usage information that
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`“comprises information about the user’s interactions with said computer software
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`displaying advertising content and at least one other program.” Ex. 1028 at ¶ 110.
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`Specifically, Guyot explains that the “Subscriber Statistics” includes information
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`about “the number of times each advertisement has been effectively displayed”
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`(i.e., the user’s interactions with the computer software displaying advertising
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`content), as well as “information on Internet sites [accessed through a browser] that
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`the subscriber has accessed over a predetermined period of time” (i.e., user
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`interactions with another program). Ex. 1006 (Guyot) at 4:15-23, Ex. 1028 at ¶¶
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`105-110.
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`Second, Guyot shows processes where advertising content is selected by the
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`server “in accordance with real-time and other computer usage information.” Ex.
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`1028 at ¶¶ 111-118. Specifically, Guyot shows Subscriber Statistics include
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`information about what the user is doing (e.g., what Internet sites the user has
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`accessed in a predetermined period of time). Ex. 1006 (Guyot) at 4:15-23, Ex.
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`1028 at ¶¶ 111-113. Guyot explains this information must be kept current – it
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`states Subscriber Statistics will expire after a predetermined period of time, and
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`describes processes to prevent transmission or use of expired or stale Subscriber
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`Statistics. Ex. 1006 (Guyot) at 6:51-63, Ex. 1028 at ¶¶ 111-113. Guyot also
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`explains that the client application monitors the activity of the user in order to
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`“schedule the display of advertisements,” (Ex. 1006 (Guyot) at 5:6-11; Ex. 1028 at
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`¶¶ 115-117) and that Subscriber Statistics are the vehicle for updating the personal
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`profile to select ads for delivery to the user’s computer. Ex. 1028 at ¶ 114. Thus,
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`Guyot shows Subscriber Statistics comprise “real time” computer usage
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`information. Ex. 1028 at ¶¶ 111-118.
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`Finally, Patent Owner re-orders the steps of its process, but retains its
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`“open” claim language “comprising.” Motion at 2-3. Patent Owner again ignores
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`-10-
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`this amendment in its Motion. Regardless, Guyot also shows processes that
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`perform steps in the sequence of the amended claims – the client application first
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`provides subscriber statistics, and then the server periodically selects and transfers
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`to the client application a refreshed queue of advertisements. Ex. 1006 (Guyot) at
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`1:60-2:1, 5:19-24, Ex. 1028 at ¶ 114. Amended claims 23-34 are thus anticipated
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`by Guyot. See Ex. 1028 at ¶¶ 105-119.
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`C. Robinson Anticipates Proposed Amended Claims 23-34
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`In its Petition, Petitioner established that Robinson meets every element of
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`original claims 11-22, or renders them obvious. See Petition at 42-60. The Board
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`did not institute trial on grounds based on Robinson, finding those grounds
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`redundant. Decision at 18-19. Like its original claims, Patent Owner’s amended
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`claims, are anticipated by Robinson. Robinson, for example, discloses several
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`methods of tracking historical and real-time computer usage information related to
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`a user’s use of a web browser and a “Smart Ad Box,” sending that data to the
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`server, and using the data to select and return advertising content. Ex. 1028 at ¶¶
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`133-139. Robinson, for example, shows processes where a user may reject an
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`advertisement displayed in the Smart Ad Box, which is then immediately replaced
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`with a new advertisement delivered by the server targeted to the user. Ex. 1007
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`(Robinson) at 4:44-47, 5:4-9; Ex. 1028 at ¶¶ 140-144. Thus, Robinson anticipates
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`amended claims 23-34. Ex. 1028 at ¶¶ 130-144.
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`D.
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`Proposed Amended Claims 23-34 Are Obvious Over Guyot
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`Patent Owner’s amended claims would have been obvious over Guyot
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`considered alone or with other prior art. For example, Guyot itself teaches
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`monitoring the user’s activity on the computer, and using this information to
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`ensure the timely delivery of advertising relevant to the current actions of the
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`user. See Ex. 1006 (Guyot) at 5:6-11; Ex. 1028 at ¶¶ 122-124, 128. For example,
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`Guyot shows sending information about a user’s recent activity on Internet sites to
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`enable delivery of ads that are actually relevant to what the user is doing. Ex.
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`1006 (Guyot) at 4:15-23, 1:60-65; Ex. 1028 at ¶ 122-124, 128. Guyot also teaches
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`monitoring of user interactions with the computer (i.e., tracking the use of the
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`keyboard and mouse, use of different computer programs, etc.), and preventing
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`delivery of stale computer usage information to ensure the delivery of timely ads.
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`Ex. 1028 at ¶¶ 111-114, 122-124, 128. From this, a person of ordinary skill would
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`have immediately recognized that one could implement the Guyot scheme by
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`sending additional “real time” computer usage information in the Subscriber
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`Statistics to the server (e.g., keyboard/mouse activity), and/or increase the
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`frequency of sending the Subscriber Statistics to the server, to enable the server to
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`select and deliver ads that are both timely and relevant to the user’s current actions.
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`Id. at ¶ 122-124, 128. Such alterations of the Guyot scheme would have been
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`considered simple design or implementation options by one of ordinary skill at the
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`time of the ’314 patent. Id. at ¶¶ 119-129.
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`Independently, a person of ordinary skill would have been motivated to
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`combine the teachings of Guyot and Robinson given their closely analogous
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`schemes, purposes and objectives. Id. at ¶¶ 131,150. As explained in § B, Guyot
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`emphasizes the importance of delivering advertising content that is timely and
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`relevant to what the user is doing, and to do so using timely computer usage
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`information. See § B; Ex. 1028 at ¶¶ 122-124, 128, 151. Robinson specifically
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`teaches examples of using “real time” computer usage information to immediately
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`deliver new ads (e.g., a user’s action of dismissing an ad in the “smart ad box”
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`triggers display of a new ad). Ex. 1028 at ¶¶ 152. This functionality in Robinson
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`could easily be integrated into the ad display functionality shown in Guyot (e.g.,
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`Guyot shows its ad display window is also responsive to user interactions, as well
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`as capturing user interactions with that window). Id. at ¶¶ 152-154. Robinson,
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`thus, would have provided a specific motivation to alter the Guyot scheme to use
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`“real time” computer usage information to select and deliver ads to a user. Id.
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`Such a person could easily implement this functionality in the Guyot scheme by
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`including the additional “real time” computer usage data in the Subscriber
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`Statistics data that is sent to the server in the Guyot scheme. Id. at 145-154.
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`A person of skill also would have considered Guyot with Greer given the
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`closely analogous schemes, purposes and objectives in each. Ex. 1028 at ¶¶ 163-
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`164. Greer describes systems for dynamically targeting advertising using
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`demographic and computer usage information collected at a target computer and
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`transmitted to a content provider. Ex. 1031 (Greer) at ABSTRACT; see also Ex.
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`1029 (Greer) at ¶ 12; Ex. 1028 at ¶¶ 155-158. In Greer, “user profiles” are used in
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`conjunction with a “rule book” in order to determine which advertising content to
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`deliver to a user. Ex. 1028 at ¶¶ 156-157. Greer explains that user profiles may
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`“contain[] dynamic information on the corresponding target computer forwarded
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`by the agent. The information may include Web sites visited, amount of time spent
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`at a web site, software used, and hardware configuration of the target computer.”
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`Ex. 1029 (Greer) at ¶ 13; Ex. 1028 at ¶ 157. These are examples of “real time”
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`computer usage information. Ex. 1028 at ¶¶ 158-160. Greer thus teaches use of
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`“real time” computer usage information to enable “dynamic” advertising – the
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`display of ads directly relevant to what a user is currently doing on the computer.
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`Id. The “real time” information in Greer could easily be integrated in the Guyot
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`scheme – it could be included in the Subscriber Statistics used to update the user’s
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`personal profile in Guyot. Id. at 164-66. Thus, together, Guyot and Greer
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`specifically suggest adapting the Guyot scheme to include “real time” computer
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`usage information to enable “dynamic” advertising, and the resulting modified
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`Guyot process satisfies every element of amended claims 23-34. Id. at 162-166.
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`Guyot, in view of Robinson or Greer, thus renders the processes defined by
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`amended claims 23-34 obvious. Ex. 1028 at ¶¶ 145-154, 162-164.
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`E.
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`Patent Owner Addresses the Wrong Claim Language
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`Patent Owner asserts that “none of the references, alone or in combination,
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`teaches or suggests . . . ‘selecting advertising content for transfer to the computer
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`in accordance with real-time and other computer usage information and
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`demographic information associated with said unique identifier … wherein the
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`computer usage information comprises information about the user’s interactions
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`with said computer software displaying advertising content and at least one other
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`program.’” Motion at 13. Patent Owner’s observations can be disregarded because
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`they do not address the language of the amended claims. Instead, Patent Owner
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`addresses an artificial juxtaposition of its new claim language divorced from the
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`steps of the claimed process modified by these clauses. Critically, the “wherein”
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`clause no longer modifies the “selecting advertising” language, but instead
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`modifies the “providing the user” claim element. See Motion at 2-3. Mr.
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`Goldstein’s analysis suffers from the same deficiency. Ex. 2014 at ¶ 22.
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`VI. Conclusion
`As discussed above, Patent Owner has failed to satisfy its burden on its
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`contingent motion to amend its claim, and this motion should therefore be denied.
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`-15-
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`Dated: Sept 24, 2014
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`Respectfully Submitted,
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`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Registration No. 43,401
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`jkushan@sidley.com
`
`
`
`-16-
`
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`
`
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 24th day of August, 2014, a copy of the
`
`foregoing has been served in its entirety by e-mail on the following counsel of
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`record for Patent Owner:
`
`Jason S. Angell
`Robert E. Freitas
`Freitas Tseng & Kaufman LLP
`jangell@ftklaw.com
`rfreitas@ftklaw.com
`
`
`Dated:
`
`September 24, 2014
`
`Respectfully submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`jkushan@sidley.com
` Attorney for Petitioner
`
`
`
`-17-
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