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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
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`MICROSOFT CORPORATION AND GOOGLE INC.,
`Petitioner
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`v.
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`B.E. TECHNOLOGY, LLC
`Patent Owner
`___________
`
`Case IPR2014-000391
`Patent 6,628,314
`___________
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`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
`PATENT OWNER’S CONTINGENT MOTION TO AMEND
`(37 C.F.R. § 42.23)
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`1 Case IPR2014-00738 has been joined with this proceeding.
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`Patent Owner B.E. Technology, L.L.C. respectfully submits this reply to the
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`opposition of Petitioner to its Contingent Motion to Amend.
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`I. MICROSOFT’S CLAIM CONSTRUCTION ARGUMENTS HAVE NO
`MERIT.
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`Under a heading noting the absence of claim constructions, Microsoft
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`mentions “new claim language” but it is not clear which terms it claims to be in
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`need of construction. Microsoft mentions an alleged reordering of “the sequence
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`of steps in the claim,” but there is no reordering of consequence. Merely placing
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`limitations in a different order does not necessarily alter the meaning of the
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`limitations or the claim. Microsoft then argues that the purported change in
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`dependence has enlarged the scope of Claim 22 because it has resulted in the
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`omission of “limitations present in the original claim by its dependence on original
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`dependent claim 22 [sic].” Microsoft also appears to complain that “real-time and
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`other computer usage information” was not made the subject of a specific claim
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`construction. “Computer usage information” was defined in the ’705 application.
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`(Ex. 2005 at 6). “Other” requires no construction. Here, “other computer usage
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`information” obviously means “computer usage information other than real-time
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`computer usage information.” Microsoft has misread the claims.
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`Throughout the ’705 application, “real-time” is used in a manner referring to
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`what is occurring while the user is engaged in a given activity. In the Abstract,
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`there is a reference to what happens “when the user runs the program.” Elsewhere,
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`the reference is to matters “relevant to what the user is doing at any particular
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`time.” (Id. at 16:9:14). A prior art patent that refers to advertisement queues that
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`are prepared off-line is distinguished as not providing for “real time targeting of
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`advertising based upon user actions.” (Id. at 3:30-32).
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`II. DESCRIPTION SUPPORTS THE PROPOSED CLAIMS.
`In Ariad Pharm. v. Eli Lilly & Co., 598 F.3d 1336, 1334 (Fed. Cir. 2010),
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`the Federal Circuit held that the “written description” requirement of 35 U.S.C. §
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`112 is satisfied when the application “reasonably conveys to those skilled in the art
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`that the inventor had possession of the claimed subject matter as of the filing date.”
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`Proposed substitute Claim 23 provides for advertising content to be selected in
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`accordance with “real-time and other computer usage information and
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`demographic information associated with” a unique identifier. “Real-time
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`computer usage information” and “other computer usage information,” i.e.,
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`“computer usage information” other than “real-time computer usage information
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`are both supported, and the use of both to select advertising are also supported.
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`In multiple places, the ’705 application refers to the use of “other computer
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`usage information,” or to both “real-time computer usage information” and “other
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`computer usage information” in a manner sufficient to advise one of ordinary skill
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`in the art that the applicant was in possession of an invention including the use of
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`“other computer usage information.” (See Exhibit 2005 at 1, 6). The disclosed
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`2
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`“normal user interaction, or use, of the computer” would be understood by one of
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`ordinary skill as including “computer usage information” as it is defined.
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`This disclosure of the use of computer usage information to target
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`information is not limited to the use of “real-time computer usage information.”
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`The original claim language did not call for the computer usage information to be
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`used to select advertising, but the computer usage information was to be associated
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`with “the demographic information using the unique identifier.” (Id. at 10, 41).
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`The ’705 application disclosed the use of computer usage information to select
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`advertising, and the disclosure was not limited to the use of “real-time computer
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`usage information.”
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`There is a clear disclosure of the transmission of computer usage
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`information “for use in . . . better targeting future,” i.e., not real-time,
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`“advertising.” The reference to the transmission and storage of computer usage
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`information “for use in . . . better targeting future advertising” is a disclosure of the
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`use of computer usage information other than “real-time computer usage
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`information” to target advertising.
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`III. SUBSTITUTE CLAIMS ARE NOT INDEFINITE.
`Microsoft’s assertion that the defined term “computer usage information” is
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`indefinite has no merit, and its attempt to link a purported problem with this term
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`to a broader or different problem with the terms “real-time computer usage
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`information” or “other computer usage information” similarly has no basis.
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`IV. THE PROPOSED CLAIMS ARE PATENTABLE OVER PRIOR ART.
`Microsoft’s patentability arguments are also without merit. Guyot (Exhibit
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`1006) does not disclose all of the limitations of the original Claim 11 for the reason
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`explained in Patent Owner’s response to Microsoft’s petition. (See Paper 30 at 9-
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`25). Guyot further does not disclose using 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.” Guyot makes no
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`mention of the client application tracking what the user does after the initial launch
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`of the Internet link.
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`Robinson (Exhibit 1007) does not teach all of the limitations of the original
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`Claim 11 and does not teach or suggest all of the additional limitations of the
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`proposed substitute claims. Microsoft ignores Robinson’s disclosure that a “Smart
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`Ad Box is an area on a Web page.” (See Ex. 1007 at 4:8-13). The Smart Ad Box
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`is a part of the web page, and rendered by a browser (i.e., one program).
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`Greer (Ex. 1031) does not collect and use real-time computer usage
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`information. Although Greer discusses becoming aware of the programs on a
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`user’s computer, Greer fails to mention tracking the user’s interactions with any
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`program outside of the browser. (Ex. 1031 at ¶ 0014).
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`4
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`V. MICROSOFT HAS FAILED TO ESTABLISH A MOTIVATION TO
`COMBINE ANY REFERENCES.
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`Mr. Hough’s lengthy declaration is surprisingly short in addressing an
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`alleged motivation to combine Guyot and Robinson. See Ex. 1028 at ¶¶ 145-154.
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`Most of Mr. Hough’s discussion is focused on comparing Guyot and Robinson,
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`culminating in a conclusion that Guyot and Robinson are similar enough in kind
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`that one of ordinary skill would find their teachings combinable. See, e.g., id.at ¶
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`153. Other than a simple assertion, that is unconnected to any specific opinions
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`about why one of ordinary skill would have been motivated to alter Guyot or
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`Robinson in a way that would incorporate the teachings of the other, Mr. Hough
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`offers nothing regarding an actual motivating to combine. Using Patent Owner’s
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`proposed amended claim as a “roadmap” to find the elements is precisely the type
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`of hindsight obviousness analysis that has long been forbidden by the Federal
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`Circuit. Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1275 (Fed. Cir. 2004).
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`The proposed combination of Guyot and Greer suffers from similar failings.
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`See generally Ex. 1028 at ¶¶ 155-166. Mr. Hough presents the conclusions that
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`one of ordinary skill would recognize “the processes used in both Greer and Guyot
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`are very similar.” Ex. 1028 at ¶¶ 163. Mr. Hough’s opinion that one of ordinary
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`skill would have “recognized benefits” from combining the references in a way
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`that would produce a system having all elements of the proposed amended claim
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`does not establish a motivation to make such a combination.
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`5
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`Date: October 10, 2014
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`Respectfully submitted,
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`By: /s/
`Jason S. Angell
`Reg. No. 51408
`Counsel for Patent Owner
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`6
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`CERTIFICATE OF SERVICE
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`It is certified that copies of the PATENT OWNER’S MOTION TO
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`AMEND have been served on Petitioner as provided in 37 C.F.R. § 42.6(e) via
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`electronic mail transmission addressed to the persons at the address below:
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`[Insert service info]
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`Date: July 9, 2014
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`By: /s/ Jason S. Angell
`Jason S. Angell
`Reg. No. 51408
`Counsel for Patent Owner
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