Petition for Inter Partes Review of U.S. Patent No. 6,628,314
`
` Paper No. 1
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`MICROSOFT CORPORATION.
`Petitioner,
`
`v.
`
`B.E. TECHNOLOGY, LLC,
`Patent Owner
`
`Patent No. 6,628,314
`Issued: September 30, 2003
`Filed: October 30, 2000
`Inventor: Martin David Hoyle
`Title: COMPUTER INTERFACE METHOD AND APPARATUS WITH
`TARGETED ADVERTISING
`____________________
`
`Inter Partes Review No. IPR2014-0039
`__________________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,628,314
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW .............................................................................. 4
`A.
`Certification the ‘314 Patent May Be Contested by Petitioner ............ 4
`Fee for Inter Partes Review (§ 42.15(a)) ............................................. 4
`B.
`C. Mandatory Notices (37 CFR § 42.8(b)) ............................................... 4
`1.
`Real Party in Interest (§ 42.8(b)(1)) ........................................... 4
`2.
`Other Proceedings (§ 42.8(b)(2)) ............................................... 5
`3.
`Designation of Lead and Backup Counsel ................................. 5
`4.
`Service Information (§ 42.8(b)(4)) ............................................ 5
`Proof of Service (§§ 42.6(e) and 42.105(a)) ........................................ 6
`D.
`IDENTIFICATION OF CLAIMS BEING CHALLENGED
`(§ 42.104(B)) .................................................................................................. 6
`III. RELEVANT INFORMATION CONCERNING THE CONTESTED
`PATENT ......................................................................................................... 7
`A.
`Effective Filing Date and Prosecution History of the ’314
`Patent .................................................................................................... 7
`Person of Ordinary Skill in the Art ...................................................... 7
`B.
`Construction of Terms Used in the Claims .......................................... 8
`C.
`IV. PRECISE REASONS FOR RELIEF REQUESTED ................................... 10
`A.
`Claims 11-14, 16-19 Are Anticipated by U.S. Patent No.
`5,809,242 (Shaw) ............................................................................... 10
`1.
`Shaw Anticipates Claim 11 ...................................................... 11
`2.
`Shaw Anticipates Claim 12 ...................................................... 17
`3.
`Shaw Anticipates Claim 13 ...................................................... 17
`4.
`Shaw Anticipates Claim 14 ...................................................... 18
`5.
`Shaw Anticipates Claim 16 ...................................................... 18
`6.
`Shaw Anticipates Claim 17 ...................................................... 18
`7.
`Shaw Anticipates Claim 18 ...................................................... 19
`8.
`Shaw Anticipates Claim 19 ...................................................... 19
`
`i
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,628,314
`
`
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`J.
`
`K.
`
`Claim 15 Would Have Been Obvious Based on Shaw in view of
`Robinson ............................................................................................. 20
`Claim 20 Would Have Been Obvious Based on Shaw in View
`of, inter alia, Ex. 1022 (RFC 1635) ................................................... 21
`Claim 21 Would Have Been Obvious Based on Ex. 1005
`(Shaw) in View of, inter alia, Ex. 1022 (RFC 1635) ......................... 25
`Claim 22 Would Have Been Obvious Based on Shaw in View
`of, inter alia, Ex. 1022 (RFC 1635) ................................................... 26
`Claims 11-14, 16-19 Are Anticipated By Guyot ............................... 27
`1.
`Guyot Anticipates Claim 11..................................................... 27
`2.
`Guyot Anticipates Claim 12..................................................... 32
`3.
`Guyot Anticipates Claim 13..................................................... 33
`4.
`Guyot Anticipates Claim 14..................................................... 33
`5.
`Guyot Anticipates Claim 16..................................................... 33
`6.
`Guyot Anticipates Claim 17..................................................... 34
`7.
`Guyot Anticipates Claim 18..................................................... 34
`8.
`Guyot Anticipates Claim 19..................................................... 35
`9.
`Guyot Anticipates Claim 20..................................................... 35
`Claim 15 Would Have Been Obvious Based on Ex. 1006
`(Guyot) in View of Ex. 1007 (Robinson) ........................................... 36
`Claim 20 Would Have Been Obvious Based on Ex. 1006
`(Guyot) in View of Ex. 1022 (RFC 1635) ......................................... 37
`Claim 21 Would Have Been Obvious Based on Ex. 1006
`(Guyot) in View of Ex. 1022 (RFC 1635) ......................................... 40
`Claim 22 Would Have Been Obvious Based on Ex. 1006
`(Guyot) in View of Ex. 1022 (RFC 1635) ......................................... 41
`Claims 11-19 Are Anticipated by Ex. 1007 (Robinson) .................... 42
`1.
`Robinson Anticipates Claim 11 ............................................... 42
`2.
`Robinson Anticipates Claim 12 ............................................... 48
`3.
`Robinson Anticipates Claim 13 ............................................... 49
`4.
`Robinson Anticipates Claim 14 ............................................... 50
`
`ii
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,628,314
`
`L.
`
`N.
`
`O.
`
`
`Robinson Anticipates Claim 15 ............................................... 51
`5.
`Robinson Anticipates Claim 18 ............................................... 51
`6.
`Robinson Anticipates Claim 19 ............................................... 52
`7.
`Claim 11 Would Have Been Obvious Based on Ex. 1007
`(Robinson) .......................................................................................... 52
`M. Claims 16 and 17 Would Have Been Obvious Based on Ex.
`1007 (Robinson) in view of General Knowledge in the Field ........... 53
`1.
`Claim 16 Would Have Been Obvious ...................................... 53
`2.
`Claim 17 Would Have Been Obvious ...................................... 55
`Claim 20 Would Have Been Obvious Based on Ex. 1007
`(Robinson) in View of Ex. 1022 (RFC 1635) .................................... 56
`Claim 21 Would Have Been Obvious Based on Ex. 1007
`(Robinson) in View of Ex. 1022 (RFC 1635) .................................... 58
`Claim 22 Would Have Been Obvious Based on Ex. 1007
`(Robinson) in View of Ex. 1022 (RFC 1635) .................................... 59
`CONCLUSION ............................................................................................. 60
`
`
`P.
`
`V.
`
`Attachment A. Proof of Service of the Petition
`
`Attachment B. List of Evidence and Exhibits Relied Upon in Petition
`
`
`
`iii
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,628,314
`
`
`
`I.
`
`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW
`A. Certification the ‘314 Patent May Be Contested by Petitioner
`Petitioner certifies that U.S. Patent No. 6,628,314 (the ’314 patent) (Ex.
`
`1001) is eligible for inter partes review. Petitioner certifies that it is not barred or
`
`estopped from requesting inter partes review of the claims of the ’314 patent on
`
`the grounds identified in this Petition. Neither Petitioner, nor any party in privity
`
`with Petitioner, has filed a civil action challenging the validity of any claim of the
`
`’314 patent. The ’314 patent has not been the subject of a prior inter partes review
`
`by Petitioner or a privy of Petitioner.
`
`Petitioner also certifies this petition for inter partes review is filed within
`
`one year of the date of service of a complaint alleging infringement of the ’314
`
`patent. Petitioner was served with such a complaint on October 10, 2012, Ex.
`
`1017, which led to Civil Action No. 2:12-cv-02829-JPM in the Western District of
`
`Tennessee. Ex. 1016. This petition thus complies with 35 U.S.C. § 315(b).
`
`Fee for Inter Partes Review (§ 42.15(a))
`B.
`The Director is authorized to charge the fee specified by 37 CFR § 42.15(a)
`
`to Deposit Account No. 50-1597.
`
`C. Mandatory Notices (37 CFR § 42.8(b))
`Real Party in Interest (§ 42.8(b)(1))
`1.
`The real party of interest of this petition pursuant to § 42.8(b)(1) is
`
`
`
`
`
`
`
`
`Page 4
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,628,314
`
`
`
`Microsoft Corporation (“Microsoft”), located at One Microsoft Way, Redmond,
`
`WA 98052.
`
`2. Other Proceedings (§ 42.8(b)(2))
`The ’314 patent is the subject of Civil Action No. 2:12-cv-02829-JPM,
`
`served on Petitioner on October 10, 2012, and naming Petitioner as defendant.
`
`Designation of Lead and Backup Counsel
`
`3.
`Lead Counsel
`Jeffrey P. Kushan
`Reg. No. 43,401
`jkushan@sidley.com
`(202) 736-8914
`
`Backup Lead Counsel
`Scott M. Border
`Pro Hac Vice authorization
`requested
`sborder@sidley.com
`(202) 736-8818
`
`Petitioner requests authorization to file a motion for Scott M. Border to
`
`appear pro hac vice as backup lead counsel. Mr. Border is an experienced litigating
`
`attorney in patent cases, admitted to practice law in Washington, DC, and Virginia,
`
`and in numerous United States District Courts and Courts of Appeal, including the
`
`Eastern District of Virginia and the United States Court of Appeals for the Federal
`
`Circuit. Mr. Border has an established familiarity with the subject matter at issue in
`
`the proceeding, having advised the Petitioner in this matter and having previously
`
`represented Petitioner on related subject matter before the International Trade
`
`Commission and in District Court litigation in the Eastern District of Texas.
`
`Service Information (§ 42.8(b)(4))
`
`4.
`Service on Petitioner may be made by mail or hand delivery to: Sidley
`
`
`
`
`
`
`
`
`Page 5
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,628,314
`
`
`
`Austin LLP, 1501 K Street, N.W., Washington, D.C. 20005. The fax number for
`
`lead and backup counsel is (202) 736-8711.
`
`Proof of Service (§§ 42.6(e) and 42.105(a))
`D.
`Proof of service of this petition is provided in Attachment A.
`
`II.
`
`
`Identification of Claims Being Challenged (§ 42.104(b))
`Claims 11-22 of the ’314 patent are unpatentable as being anticipated under
`
`35 U.S.C. § 102 (e), and/or for being obvious over the prior art under 35 U.S.C. §
`
`103. Specifically:
`
`(i)
`
`Claims 11-14 and 16-19 are anticipated under § 102(e) and/or
`
`rendered obvious under § 103 by U.S. Patent No. 5,809,242 to Shaw,
`
`et al. (“Shaw”) (Ex. 1005).
`
`(ii) Claim 15 is obvious under § 103 based on Shaw (Ex. 1005) in view of
`
`Robinson (Ex. 1007);
`
`(iii) Claims 20-22 are obvious under § 103 based on Shaw (Ex. 1005) in
`
`view of RFC 1635 (Ex. 1022);
`
`(iv) Claims 11-14 and 16-19 are anticipated under § 102(e) and/or
`
`rendered obvious under § 103 by U.S. Patent No. 6,119,098 to Guyot
`
`(“Guyot”) (Ex. 1006);
`
`(v) Claim 15 is obvious under § 103 based on Guyot (Ex. 1006) in view
`
`of Robinson (Ex. 1007);
`
`
`
`
`
`
`
`
`Page 6
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,628,314
`
`
`
`(vi) Claims 20-22 are obvious under § 103 based on Guyot (Ex. 1006) in
`
`view of RFC 1635 (Ex. 1022);
`
`(vii) Claims 11-22 are anticipated under § 102(e) and/or rendered obvious
`
`under § 103 by U.S. Patent No. 5,918,014 to Robinson (“Robinson”)
`
`(Ex. 1007);
`
`(viii) Claims 20-22 are obvious under § 103 based on Robinson (Ex. 1007)
`
`in view of RFC 1635 (Ex. 1022);
`
`Petitioner’s proposed construction of the contested claims, the evidence relied
`
`upon, and the precise reasons why the claims are unpatentable are provided in
`
`§ IV, below. The evidence relied upon in support of this petition is listed in
`
`Attachment B.
`
`III. Relevant Information Concerning the Contested Patent
`A. Effective Filing Date and Prosecution History of the ’314 Patent
`The ’314 patent issued from U.S. Patent Application No. 09/699,705, filed
`
`Oct. 30, 2000. The ’705 application is a division of application 09/118,351, filed
`
`on July 17, 1998. The ’351 application did not claim priority to any earlier
`
`application. The effective filing date of claims 11-22 of the ’314 patent thus is not
`
`earlier than July 17, 1998.
`
`Person of Ordinary Skill in the Art
`
`B.
`A person of ordinary skill in the art in the field of the ’314 patent would
`
`have been someone with a good working knowledge of networking protocols, as
`
`
`
`
`
`Page 7
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,628,314
`
`
`
`well as computer systems (including servers) that support these protocols and
`
`techniques. The person also would be familiar with Internet standards related to
`
`communications, programming languages, database systems, and a variety of
`
`client-server systems and technologies. The person would have gained this
`
`knowledge either through education and training, several years of practical
`
`working experience, or through a combination of these. Ex. 1003 at ¶ 47.
`
`C. Construction of Terms Used in the Claims
`In this proceeding, claims must be given their broadest reasonable
`
`construction in light of the specification. 37 CFR § 42.100(b). In determining the
`
`broadest reasonable construction of a claim or a claim term, the Panel should
`
`consider subject matter that Patent Owner contends infringes the claims or
`
`meanings for claim terms that Patent Owner has proposed in past or in current
`
`litigation1. See, e.g., Ex. 1015. Also, if Patent Owner contends terms in the claims
`
`
`1 In its Initial Infringement Contentions in litigation against Petitioner, Ex.
`
`1015, Patent Owner appears to rely upon claim interpretations that are not bounded
`
`by even the broadest reasonable interpretation of the claims, and are not supported
`
`by the disclosure of the ’314 patent and relevant intrinsic and extrinsic evidence.
`
`Microsoft does not agree with the apparent claim interpretations proffered by the
`
`patent holder. Nothing in this Petition constitutes an admission that Patent
`
`(Footnote continued)
`
`
`
`
`
`
`
`
`Page 8
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,628,314
`
`
`
`should be read to have a special meaning, those contentions should be disregarded
`
`unless Patent Owner also amends the claims in a manner compliant with 35 U.S.C.
`
`§ 112 to make the claims expressly correspond to the contended meaning. See 77
`
`Fed. Reg. 48764 at II.B.6 (August 14, 2012); cf. In re Youman, 679 F.3d 1335,
`
`1343 (Fed. Cir. 2012).
`
`The standard of claim construction used in this proceeding differs from the
`
`standard used to interpret claims in a District Court proceeding. Consequently,
`
`constructions of the claims or of individual claim terms which the Panel may adopt
`
`in this proceeding, and positions Petitioner takes in respect of those constructions,
`
`are not relevant to or binding upon Microsoft in current or subsequent litigation
`
`related to the ’314 patent. See In re Zletz, 13 USPQ2d 1320, 1322 (Fed. Cir.
`
`1989). In particular, Petitioner expressly reserves the right to and may submit
`
`constructions for the claims or for individual claim terms in Civil Action No. 2:12-
`
`cv-02829-JPM, now pending in the Western District of Tennessee, under the legal
`
`standard applicable in that proceeding which are different than those proposed or
`
`adopted in this proceeding, including how a person of ordinary skill in the art
`
`would understand the claims in light of relevant intrinsic and extrinsic evidence.
`
`
`Owner’s Infringement Contentions or apparent claim constructions are correct, or
`
`an admission that Microsoft’s technology infringes the patent-in-suit.
`
`
`
`
`
`
`
`
`Page 9
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,628,314
`
`
`
`In the Petition below, Petitioner addresses the meaning of certain claim
`
`terms in the course of comparing the claims to the prior art. Petitioner submits this
`
`manner of addressing the scope of the claims is appropriate for this proceeding, as
`
`it identifies the basis of Petitioner’s contentions why the claims, in their broadest
`
`reasonable construction in view of the specification, are anticipated by or would
`
`have been obvious in view of the prior art.
`
`Petitioner also observes the ’314 patent specification provides definitions for
`
`certain terms, including “computer usage information” and “link.” See Ex. 1001 at
`
`3:33-4:15. In addition, the term “demographic information” is not expressly
`
`defined, but is used throughout the specification. See, e.g., Ex. 1001 at ¶¶ 80, 81,
`
`100, 105. The ’314 patent indicates that “demographic information” can include
`
`“time zone, locale, [and] client hardware.” Ex. 1001 at 3:8-11. The ’314 patent
`
`also distinguishes “demographic” information from information that can
`
`specifically identify an end-user and implicate privacy concerns. Ex. 1001 at 2:40-
`
`48. The broadest reasonable construction of “demographic information” thus
`
`includes “information collected about end user characteristics that does not
`
`identify the end user.” Ex. 1003 at ¶¶ 105-106.
`
`IV. Precise Reasons for Relief Requested
`A. Claims 11-14, 16-19 Are Anticipated by U.S. Patent No. 5,809,242
`(Shaw)
`
`U.S. Patent No. 5,809,242 (“Shaw”) (Ex. 1005) is prior art under at least
`
`
`
`
`
`
`
`
`Page 10
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,628,314
`
`
`§ 102(e). A concise summary of Ex. 1005 (Shaw) is provided at ¶¶ 117-168 of Ex.
`
`1003. Petitioner submits that claims 11 to 22 of the ’314 patent are unpatentable in
`
`view of Ex. 1005 (Shaw), considered alone or in conjunction Ex. 1022 (RFC 1635)
`
`and knowledge in the field of the ’314 patent, for the reasons set forth below and in
`
`§§ B to E, as supported by ¶¶ 117-263 of Ex. 1003.
`
`Shaw Anticipates Claim 11
`
`1.
`Ex. 1005 (Shaw) describes processes that perform every step of the process
`
`recited in claim 11, and thus, anticipates this claim. Ex. 1005 (Shaw) generally
`
`describes delivery of demographically-targeted advertising content to users
`
`running a client email program. Ex. 1003 at ¶¶ 118-132, 136, 138, 143-149, 158,
`
`160, 164-166. As its preferred embodiment, Ex. 1005 (Shaw) describes a
`
`customized email program that delivers demographically-targeted advertising
`
`content to users who establish and maintain email accounts with a particular server.
`
`Id. Ex. 1003 at ¶¶ 118-132, 145-147,149, 156, 158-160, 164-166. Ex. 1005
`
`(Shaw) shows that demographic information along with computer usage
`
`information acquired from a user’s client email program may be evaluated by the
`
`server system to determine which advertisements would be sent to that user. Ex.
`
`1003 at ¶¶ 124, 136-137, 141, 143, 147, 147, 149, 152, 158, 162-166. The
`
`advertisements selected by the server system for a particular user are subsequently
`
`delivered to the user’s client email program. Ex. 1003 at ¶¶ 118, 123-124, 138,
`
`
`
`
`
`
`
`
`Page 11
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,628,314
`
`142, 144-146. Ex. 1005 (Shaw) thus shows “[a] method of providing
`
`
`
`demographically-targeted advertising to a computer user….” as specified in claim
`
`1. Ex. 1003 at ¶¶ 169-170.
`
`The server system described in Ex. 1005 (Shaw) includes mail servers,
`
`subscriber servers, and a database management system, and is connected to client
`
`computers via a network connection. Ex. 1005 at ¶¶ 119, 120-124, 147, 149, 152.
`
`Ex. 1005 (Shaw) thus shows “providing a server that is accessible via a computer
`
`network.” Ex. 1003 at ¶¶ 171-172.
`
`Ex. 1005 (Shaw) shows a user could send, receive and manage e-mail by
`
`connecting to the server system through the client email program. Ex. 1003 at ¶
`
`118, 119, 123, 138, 149, 158-159. Ex. 1005 (Shaw) also shows the client program
`
`could communicate with the server system to download advertising targeted to the
`
`user, and upload user profile and computer usage information. Ex. 1003 at ¶ 118,
`
`135-138, 141-146, 158-159. Ex. 1005 (Shaw) thus shows “permitting a computer
`
`user to access said server via said computer network.” Ex. 1003 at ¶¶ 173-174.
`
`Ex. 1005 (Shaw) shows that a user must complete a member profile prior to
`
`accessing the server system. Ex. 1003 at ¶¶ 132-135. The information acquired
`
`from the user includes “hobbies, interests, employment, education, sports,
`
`demographics” and is transmitted to the server system and stored in the database
`
`management system. Ex. 1003 at ¶¶ 132-138, 152, 157, 159. Ex. 1005 (Shaw)
`
`
`
`
`
`
`
`
`Page 12
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,628,314
`
`
`
`thus shows “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.” Ex. 1003 at ¶¶ 175-176.
`
`Ex. 1005 (Shaw) describes configuring the server system to provide a link to
`
`a user to download the client email program from the server system. Ex. 1003 at
`
`¶¶ 126, 155. Ex. 1005 (Shaw) also shows the client email program displaying
`
`targeted advertising to the user when it is operated. Ex. 1003 at ¶¶ 118, 123, 146,
`
`160, 165. For example, the client email program could display advertising content
`
`to the user when composing or reading email, or when the user was in the process
`
`of establishing a connection with the server system. Ex. 1003 at ¶¶ 118, 123, 124,
`
`146, 160, 165.
`
`Ex. 1005 (Shaw) also shows the client email program records computer
`
`usage data regarding the user’s activity on the computer. Ex. 1003 at ¶¶ 139-141.
`
`This information includes how long the client email program was used, when it
`
`was used, whether the user interacted with any advertising, and other information
`
`that could be useful in refining the advertisements that were targeted to the user.
`
`Ex. 1003 at ¶¶ 139-141, 163. Ex. 1005 (Shaw) also explains that advertising
`
`content selected by the server system for a user is stored in a directory on the
`
`user’s mail server. Ex. 1003 at ¶¶ 164, 166. Upon connection to the server system,
`
`such as when the user requests to send or receive e-mail, the advertising content is
`
`
`
`
`
`
`
`
`Page 13
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,628,314
`
`
`
`downloaded to the user’s computer and stored locally. Ex. 1003 at ¶¶ 143-146,
`
`149, 164, 166. Ex. 1005 (Shaw) thus shows “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.” Ex. 1003
`
`at ¶¶ 177-180.
`
`Ex. 1005 (Shaw) describes a server system that can be configured to allow a
`
`user to download the client email program. Ex. 1003 at ¶¶ 126, 155. Thus, Ex.
`
`1005 (Shaw) shows “transferring a copy of said software to the computer in
`
`response to a download request by the user.” Ex. 1003 at ¶ 181.
`
`Ex. 1005 (Shaw) explains that after a user installs the client email program,
`
`the user is required to establish a unique email address (i.e. a user name) and
`
`password to access the email server system. Ex. 1003 at ¶¶ 127, 156. The client
`
`email program transmits the requested email address to the server system, which
`
`confirms that the email address is unique. Ex. 1003 at ¶¶ 127, 156. Then, if the
`
`email address is unique, the server system creates an entry in the database
`
`management system for the user. Ex. 1003 at ¶¶ 127, 156. Each time the user
`
`seeks to subsequently access the server system, the user is authenticated through a
`
`network login process involving the email address. Ex. 1003 at ¶¶ 127, 138, 161.
`
`Ex. 1005 (Shaw) also shows that a member profile is transmitted along with the
`
`
`
`
`
`
`
`
`Page 14
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,628,314
`
`
`
`user’s email address and password, and that the member profile is stored in a
`
`database management system. Ex. 1003 at ¶¶ 127, 137, 158. Ex. 1005 (Shaw) also
`
`shows that the user name and password are used to create a unique association
`
`between the user and a particular mail server (a “binding”). Ex. 1003 at ¶¶ 129-
`
`130. Ex. 1005 (Shaw) explains the user name and binding information will be
`
`stored on the user’s computer and sent to the mail server during the processes used
`
`to send and retrieve email. Ex. 1003 at ¶ 130-131. Ex. 1005 (Shaw) thus shows
`
`“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.” Ex. 1003 at ¶¶ 183-186.
`
`Ex. 1005 (Shaw) shows that advertising content is selected by the server
`
`system based on information in the user’s member profile and information related
`
`to the user’s computer usage activity. Ex. 1003 at ¶¶ 143-144, 147, 164, 166. The
`
`advertising content selected by the servers system is stored temporarily on the
`
`user’s mail server. Ex. 1003 at ¶¶ 128-129, 149, 164-166. Ex. 1005 (Shaw) thus
`
`shows “selecting advertising content for transfer to the computer in accordance
`
`with the demographic information associated with said unique identifier.” Ex.
`
`1003 at ¶¶ 187-188.
`
`Ex. 1005 (Shaw) shows that advertising content stored on the user’s mail
`
`
`
`
`
`
`
`
`Page 15
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,628,314
`
`
`
`server is transferred to the client email program when the user establishes a
`
`connection with the server system. Ex. 1003 at ¶¶ 143-144, 147, 164, 166. The
`
`client program then displays the advertising content when the user reads or writes
`
`e-mails, for example, or when the user is establishing a connection with the server
`
`system. Ex. 1003 at ¶¶ 128-129, 149, 164-166. Ex. 1005 (Shaw) thus shows
`
`“transferring said advertising content from said server to the computer for display
`
`by said program.” Ex. 1003 at ¶¶ 189-190.
`
`Ex. 1005 (Shaw) shows that users will periodically access the email server,
`
`and each time the user attempts to establish a connection with the server system,
`
`the user’s email address and password will be sent. Ex. 1003 at ¶¶ 129-130, 138,
`
`161. Upon establishing a connection, the client program uploads the user’s
`
`computer usage information and stores it in the user’s entry in the database
`
`management system. Ex. 1003 at ¶¶ 139-141, 152-153, 162. Ex. 1005 (Shaw)
`
`thus shows “periodically acquiring said unique identifier and said computer usage
`
`information recorded by said software from the computer via said computer
`
`network.” Ex. 1003 at ¶¶ 192-195.
`
`Ex. 1005 (Shaw) explains that a user’s member profile and computer usage
`
`information are stored in the database management system in an entry associated
`
`with the user. Ex. 1003 at ¶¶ 141-143, 149-153, 162, 166. Ex. 1005 (Shaw) thus
`
`shows “associating said computer usage information with said demographic
`
`
`
`
`
`
`
`
`Page 16
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,628,314
`
`
`
`information using said unique identifier” as required by claim 11. Ex. 1003 at ¶¶
`
`196-197.
`
`Because Ex. 1005 (Shaw) describes each of the steps recited in the claimed
`
`process, it anticipates claim 11 under 35 U.S.C. § 102(e). See FN1, above.
`
`Shaw Anticipates Claim 12
`
`2.
`Ex. 1005 (Shaw) explains that advertising content selected by the server
`
`system for a user is stored in a directory on the user’s mail server. Ex. 1003 at
`
`¶ 164, 166; see also § 1, above. Upon connection to the server system, for
`
`example, when the user requests to send or receive e-mail, the advertising content
`
`is transferred to the user’s computer and stored locally. Ex. 1003 at ¶¶ 143-146,
`
`149, 164, 166. Ex. 1005 (Shaw) thus shows a “method of claim 11, further
`
`comprising the step of periodically selecting and transferring additional
`
`advertising content to the computer in response to a request therefore.” Ex. 1003
`
`at ¶¶ 199-201.
`
`Shaw Anticipates Claim 13
`
`3.
`Ex. 1005 (Shaw) describes a system that uses publicly accessible networks,
`
`such as the Internet, a public telephone network or a wide area network. Ex. 1003
`
`at ¶ 119, 121. Ex. 1005 (Shaw) thus shows a “…method of claim 11, wherein said
`
`computer network is a publicly-accessible global computer network.” Ex. 1003 at
`
`¶¶ 202-203.
`
`
`
`
`
`
`
`
`Page 17
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,628,314
`
`
`
`Shaw Anticipates Claim 14
`
`4.
`Ex. 1005 (Shaw) describes processes that use a unique email address and
`
`password, which in combination distinguish the client email program being used
`
`by a specific user from an client email program being used by another user. Ex.
`
`1003 at ¶¶ 127, 137, 138, 156, 161. Ex. 1005 (Shaw) thus describes a “…method
`
`of claim 11, wherein said unique identifier identifies said copy of said software
`
`from among other copies of said software.” Ex. 1003 at ¶¶ 204-206.
`
`Shaw Anticipates Claim 16
`
`5.
`Ex. 1005 (Shaw) shows that when a user first signs up to use the system, the
`
`user establishes an email address and password. Ex. 1003 at ¶¶ 124-125,127, 156.
`
`The server system ensures that this email address is unique. Ex. 1003 at ¶¶ 127,
`
`156. The e-mail address and password are used each time the user connects, with
`
`the user password being hashed when it is transmitted to the server. Ex. 1003 at ¶¶
`
`137, 138, 161. Ex. 1005 (Shaw) thus shows a “…method of claim 11, wherein said
`
`providing steps further comprise providing said computer software which, when
`
`run on the computer, requires a user login to use said software and associates a
`
`different unique identifier with each of a number of valid users of said software.”
`
`Ex. 1003 at ¶¶ 222-223.
`
`Shaw Anticipates Claim 17
`
`6.
`Ex. 1005 (Shaw) shows that when a user first signs up to use the system, the
`
`user establishes an email address and password. Ex. 1003 at ¶¶ 124-125, 127, 156.
`
`
`
`
`
`Page 18
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,628,314
`
`
`
`The server system ensures that this email address is unique. Ex. 1003 at ¶ 127,
`
`156. The e-mail address and password are used each time the user connects, with
`
`the user password being hashed when it is transmitted to the server. Ex. 1003 at ¶¶
`
`137, 138, 161. Ex. 1005 (Shaw) also explains that mail servers collect the user’s
`
`computer usage data. Ex. 1003 at ¶ 147, 149, 162. Ex. 1005 (Shaw) thus shows a
`
`“…method of claim 11, wherein said providing steps further comprise providing
`
`said computer software which, when run on the computer, requires a user login to
`
`use said software and uses the user login to associate one of a number of unique
`
`identifiers with the computer usage information recorded by said software.”. Ex.
`
`1003 at ¶¶ 224-229.
`
`Shaw Anticipates Claim 18
`
`7.
`Ex. 1005 (Shaw) shows that a user in its system receives email over the
`
`Internet via the server system. Ex. 1003 at ¶ 150. The email application tracks the
`
`amount of time the user reads and writes the email that has been sent or will be
`
`sent via the Internet and uploads that information to the server system. Ex. 1003 at
`
`¶¶ 139-141, 152, 153, 162-163. Ex. 1005 (Shaw) thus shows a “…method of claim
`
`11, wherein said computer usage information includes data regarding information
`
`resources accessed by the user over the global computer network.”. Ex. 1003 at ¶¶
`
`230-232.
`
`8.
`
`Shaw Anticipates Claim 19
`
`
`
`
`
`
`
`
`Page 19
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,628,314
`
`
`
`Ex. 1005 (Shaw) describes client email program that tracks usage of that
`
`client email program on the user’s computer. Ex. 1003 at ¶¶ 139-141, 163. Ex.
`
`1005 (Shaw) thus shows a “…method of claim 11, wherein said computer usage
`
`information includes data regarding software applications run by the user on the
`
`computer.” Ex. 1003 at ¶¶ 233-234.
`
`B. Claim 15 Would Have Been Obvious Based on Shaw in view of
`Robinson
`
`Ex. 1005 (Shaw) describes a process where a user is required to establish an
`
`email address (i.e.,