UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
`
`B.E. TECHNOLOGY, L.L.C.,
`
`Plaintiff,
`
`v.
`
`MICROSOFT CORPORATION,
`
`Defendant.
`
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`)
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`
`
`
`Case No. 2:12-cv-2829 JPM-tmp
`
`JURY DEMAND
`
`INITIAL INFRINGEMENT CONTENTIONS AND DOCUMENT PRODUCTION
`ACCOMPANYING INITIAL INFRINGEMENT CONTENTIONS
`
`Plaintiff B.E. Technology, L.L.C. (“Plaintiff” or “B.E.”) hereby submits to Defendant
`
`Microsoft Corporation (“Defendant” or “Microsoft”) its Initial Infringement Contentions and
`
`Document Production Accompanying Initial Infringement Contentions pursuant to Local Patent
`
`Rules 3.1 and 3.2.
`
`Plaintiff makes these contentions based upon information reasonably available to it as of
`
`this date. Plaintiff has not completed its preparation of this matter for trial and discovery has not
`
`yet begun. Because Plaintiff’s investigations are ongoing and discovery is not yet complete,
`
`Plaintiff reserves the right to amend, modify, supplement, or narrow any portion of its asserted
`
`claims and infringement contentions, including, but not limited to, the identification of the claims
`
`infringed by Defendant and of the products and/or services accused of infringement. In
`
`particular, B.E. reserves the right to supplement its contentions as necessary and in accordance
`
`with this Court’s Local Rules in light of Defendant’s future document production, interrogatory
`
`answers, admissions, disclosures, fact witness testimony expert witness evidence, additional
`
`discovery, future rulings from the Court, any amendments to the pleadings, any additional items
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 1
`
`

`

`of evidence, and/or for any other reason authorized by statute, rule, or applicable case law. B.E.
`
`similarly reserves the right to supplement its Initial Infringement Contentions to assert
`
`infringement of claims currently not addressed. B.E. further reserves the right to supplement its
`
`Initial Infringement Contentions and the associated infringement claim charts after Defendant
`
`identifies which claim elements it contends are not present in Defendant’s products and/or
`
`services, and the bases for any such contentions.
`
`I.
`
`L.P.R 3.1: INITIAL INFRINGEMENT CONTENTIONS.
`
`A.
`
`Identification Of Asserted Claims.
`
`Based on the information presently known and reasonably available to Plaintiff, Plaintiff
`
`identifies Claims 11, 12, 13, 15, 18, and 20 of U.S. Pat. No. 6,628,314 (“the ’314 patent”); and
`
`Claims 2-3 of U.S. Pat. No. 6,771,290 (“the ’290 Patent”) to be the Asserted Claims. These
`
`contentions of Asserted Claims are, at this stage in the proceedings, necessarily limited in the
`
`sense that Plaintiff has had limited access to information concerning the structure and function of
`
`Defendant’s products and/or services. Plaintiff therefore reserves the right to supplement these
`
`contentions as it obtains additional information concerning Defendant’s products and/or services
`
`over the course of discovery.
`
`The applicable statutory subsections of 35 U.S.C. § 271 for each of the Asserted Claims
`
`are as follows:
`
`Claims 11, 12, 13, 15, 18, and 20 of the ’314 Patent: 35 U.S.C. §§ 271(a).
`Claims 2-3 of the ’290 Patent: 35 U.S.C. §§ 271(a).
`
`Plaintiff reserves the right to amend, modify, supplement, or narrow these contentions
`
`pursuant to Local Patent Rule 3.11 as discovery in this case proceeds.
`
`- 2 -
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 2
`
`

`

`B.
`
`Identification Of Accused Instrumentalities.
`
`Based on the information presently known to B.E., without the benefit of complete
`
`discovery from Defendant, B.E. presently accuses at least (but not limited to) the following of
`
`Defendant’s products and/or services of infringing the Asserted Claims of the ’314 Patent: Bing
`
`Ads, Microsoft Advertising, Windows Ads in App, any other products and/or services identified
`
`in the attached Appendix A, and all reasonably similar products and/or services (“Accused
`
`Instrumentalities”).
`
`Based on the information presently known to B.E., without the benefit of complete
`
`discovery from Defendant, B.E. presently accuses at least (but not limited to) the following of
`
`Defendant’s products and/or services of infringing the Asserted Claims of the ’290 Patent:
`
`Microsoft Surface, Microsoft Xbox 360, any other products and/or services identified in the
`
`attached Appendix B, and all reasonably similar products and/or services (“Accused
`
`Instrumentalities”). In addition, B.E. presently accuses all of Defendant’s products and/or
`
`services with the following programs, features, software, firmware, or applications of infringing
`
`the Asserted Claims of the ’290 patent: Xbox Live, Xbox Music, Apps Marketplace, Windows
`
`Store, Xbox Video, and Xbox Games (also, “Accused Instrumentalities”).
`
`Based on the information presently known to B.E., B.E. contends that the Asserted
`
`Claims of the ’314 Patent and ’290 Patent are infringed by the Accused Instrumentalities. B.E.
`
`believes that discovery will reveal additional Accused Instrumentalities, products, and/or services
`
`that infringe the ’314 Patent and ’290 Patent, and B.E. explicitly reserves the right to amend,
`
`modify, supplement, or narrow its contentions to identify additional Accused Instrumentalities,
`
`products, and/or services pursuant to Local Patent Rule 3.11.
`
`- 3 -
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 3
`
`

`

`C.
`
`Claim Chart Identifying Claim Elements Present In Accused
`Instrumentalities.
`
`Based on the information presently known to B.E., without the benefit of complete
`
`discovery from Defendant, B.E. provides the attached Appendix A (which explains how the
`
`Accused Instrumentalities and other products/services infringe each of the Asserted Claims of
`
`the ’314 Patent) and Appendix B (which explains how the Accused Instrumentalities and other
`
`products/services infringe each of the Asserted Claims of the ’290 Patent). B.E.’s attached
`
`Appendices are incorporated by reference as if fully set forth herein. The infringement
`
`contention charts appended hereto are exemplary and not limiting, and address the Asserted
`
`Claims without the benefit of full discovery. Any citations included in the infringement
`
`contention charts are exemplary only, and should not be construed to be limiting.
`
`In the attached Appendices containing B.E.’s infringement contention charts, B.E. has
`
`subdivided each Asserted Claim to better explain where each claim element may be found with
`
`the respective Accused Instrumentalities and other products/services. The subdivisions in the
`
`appended infringement contention charts should not be taken as an indication of the boundaries
`
`of claim elements with respect to doctrine of equivalents, or any other issue. Additionally, the
`
`Accused Instrumentalities and Defendant’s other products/services may infringe the Asserted
`
`Claims in multiple ways. B.E. reserves the right to provide an alternative claim mapping or
`
`infringement contention.
`
`B.E. reserves the right to amend, modify, supplement, or narrow these contentions
`
`pursuant to Local Patent Rule 3.11 as discovery in this case proceeds.
`
`D.
`
`Identification Of Direct Infringement Underlying Allegations Of Indirect
`Infringement.
`
`B.E. contends that the Asserted Claims of the ’314 Patent and ’290 Patent are directly
`
`infringed by Defendant. Defendant, without B.E.’s authority, directly infringes the Asserted
`
`- 4 -
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 4
`
`

`

`Claims of the ’314 Patent and ’290 Patent under 35 U.S.C. § 271(a) by making, using, offering to
`
`sell, or sell its Accused Instrumentalities and other products/services within the United States, or
`
`imports into the United States its Accused Instrumentalities and other products/services.
`
`B.E. reserves the right to amend, modify, supplement, or narrow these contentions
`
`pursuant to Local Patent Rule 3.11 as discovery in this case proceeds.
`
`E.
`
`Identification Of Elements Present Literally And Present Under The
`Doctrine Of Equivalents.
`
`Based on the information presently available to B.E., B.E. contends that each Asserted
`
`Claim is literally met in the Accused Instrumentalities and/or other Defendant products/services.
`
`At present, B.E. knows of no elements of the Asserted Claims where the doctrine of equivalents
`
`would change the infringement analysis set forth in the attached infringement claim charts.
`
`Without the benefit of the Court’s claim construction, B.E. presently believes that Defendant’s
`
`Accused Instrumentalities and other products/services literally infringe the Asserted Claims of
`
`the ’314 Patent and ’290 Patent.
`
`Regardless, B.E. also contends that each Asserted Claim is met in the Accused
`
`Instrumentalities and/or other Defendant products/services under the doctrine of equivalents.
`
`Specifically, to the extent a claim element is not met literally, it is met under the doctrine of
`
`equivalents because they perform substantially the same function, in substantially the same way,
`
`to achieve substantially the same result. To the extent that any differences are alleged to exist
`
`between the Asserted Claims and Defendant’s Accused Instrumentalities, products and/or
`
`services, such differences are insubstantial.
`
`Information regarding the formulations of the Accused Instrumentalities and Defendant’s
`
`products/services, and the processing conditions used to manufacture the Accused
`
`Instrumentalities and Defendant’s products/services, is either confidential or is not publically
`
`- 5 -
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 5
`
`

`

`available. Following discovery regarding Defendant’s products/services, Accused
`
`Instrumentalities, and technical information relating to the Accused Instrumentalities and
`
`Defendant’s products/services, B.E. reserves the right to amend, modify, supplement, or narrow
`
`these contentions pursuant to Local Patent Rule 3.11 as discovery in this case proceeds.
`
`Moreover, because discovery has not yet commenced, B.E. reserves the right to further apply the
`
`doctrine of equivalents to each and every Asserted Claim element after full discovery from
`
`Defendant, or as appropriate in response to the Court’s legal determination of issues, including,
`
`without limitation, the construction of the Asserted Claims.
`
`Should Defendant contend that any element or limitation of the Asserted Claims is absent
`
`in an Accused Instrumentality and/or Defendant’s products/services, B.E. reserves the right to
`
`demonstrate that the allegedly missing element or limitation is present in the Accused
`
`Instrumentality and/or Defendant’s products/services under the doctrine of equivalents.
`
`F.
`
`Identification Of Priority Date.
`
`The ’314 patent was filed on October 30, 2000, claiming priority from Division of U.S.
`
`Patent Application No. 09/118,351, filed July 17, 1998, now U.S. Patent No. 6,141,010. Thus,
`
`the ’314 Patent and each asserted claim are entitled to a priority date of at least as early as July
`
`17, 1998. The ’290 patent was filed on July 16, 1999, claiming priority from Continuation-in-
`
`Part of U.S. Patent Application No. 09/118,351, filed July 17, 1998, now U.S. Patent No.
`
`6,141,010. Thus, the ’290 Patent and each asserted claim are entitled to a priority date of at least
`
`as early as July 17, 1998. B.E. reserves the right to present evidence that the ’314 Patent and the
`
`’290 Patent are entitled to an earlier priority date based on an earlier conception of the claimed
`
`inventions and an earlier diligent reduction to practice.
`
`- 6 -
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 6
`
`

`

`G. Willful Infringement.
`
`Based on the information presently known to B.E., without the benefit of complete
`
`discovery from Defendant, B.E. contends that Defendant willfully infringed the ’314 Patent and
`
`’290 Patent beginning no later than September 2012 when B.E. filed its Complaint for Patent
`
`Infringement against Defendant. Plaintiff believes that discovery will reveal that Defendant was
`
`aware of the ’314 Patent and the ’290 Patent long before September 2012, but Defendant
`
`nevertheless proceeded with its infringing conduct. At all times when Defendant was aware of
`
`the ’314 Patent and the ’290 Patent, Defendant undertook no efforts to design its
`
`products/services around the ’314 Patent and the ’290 Patent to avoid infringement despite
`
`Defendant’s knowledge and understanding that its products/services infringe these patents.
`
`As such, Defendant proceeded with the infringing conduct with knowledge of the ’314
`
`Patent and the ’290 Patent. Moreover, Defendant proceeded in the face of an unjustifiably high
`
`risk that it was infringing the claims of valid and enforceable ’314 Patent and ’290 Patent.
`
`Moreover, Defendant cannot formulate a credible defense based on non-infringement.
`
`Because Defendant is very familiar with the formulations of the Accused Instrumentalities and
`
`its other products/services, as well as the method of manufacturing the Accused Instrumentalities
`
`and Defendant’s other products/services, Defendant is aware that each and every element of each
`
`Asserted Claim of the ’314 Patent and ’290 Patent is present in the Accused Instrumentalities
`
`and Defendant’s other products/services. Defendant cannot articulate a convincing non-
`
`infringement argument.
`
`Given the facts and circumstances available prior to and during Defendant’s infringing
`
`actions, a reasonable person in Defendant’s position would have appreciated a high likelihood
`
`that acting in Defendant’s manner would infringe the ’314 Patent and the ’290 Patent.
`
`- 7 -
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 7
`
`

`

`Furthermore, Defendant knew or should have known of the unjustifiably high risk that it was
`
`infringing the ’314 Patent and the ’290 Patent, each of which is valid and enforceable.
`
`II.
`
`L.P.R. 3.2: DOCUMENT PRODUCTION ACCOMPANYING INITIAL
`INFRINGEMENT CONTENTIONS
`
`A.
`
`Disclosure, Transfer, Sale, Offers To Sell Claimed Invention.
`
`Based on the information presently known to B.E., B.E. is not aware of any responsive,
`
`relevant, non-privileged, non-immune documents that correspond to this category. B.E. reserves
`
`the right to supplement this disclosure if, and as, warranted.
`
`B.
`
`Conception And Reduction To Practice.
`
`Based on the information presently known to B.E., B.E. refers Defendant to the
`
`documents produced in conjunction with the service of this disclosure and identified by Bates
`
`production numbers BE00000001-BE00002165, BE00002779-BE00002870.
`
`C.
`
`File Histories.
`
`Based on the information presently known to B.E., B.E. refers Defendant to the file
`
`histories produced in conjunction with the service of this disclosure and identified by Bates
`
`production numbers BE00002166-BE00002778.
`
`D.
`
`Ownership.
`
`Based on the information presently known to B.E., B.E. refers Defendant to the
`
`assignment records produced in conjunction with the service of this disclosure and identified by
`
`Bates production numbers BE00002871-BE00002873.
`
`Dated: January 7, 2013
`
`Respectfully submitted,
`
`
`
`s/Craig R. Kaufman
`Robert E. Freitas (CA Bar No. 80948)
`Craig R. Kaufman (CA Bar No. 159458)
`James Lin (CA Bar No. 241472)
`Qudus B. Olaniran (CA Bar No. 267838)
`FREITAS TSENG & KAUFMAN LLP
`
`
`
`- 8 -
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 8
`
`

`

`100 Marine Parkway, Suite 200
`Redwood Shores, CA 94065
`Telephone: (650) 593-6300
`Facsimile: (650) 593-6301
`rfreitas@ftklaw.com
`ckaufman@ftklaw.com
`jlin@ftklaw.com
`qolaniran@ftklaw.com
`
`
`Richard M. Carter (TN B.P.R. #7285)
`Adam C. Simpson (TN B.P.R. #24705)
`MARTIN, TATE, MORROW & MARSTON, P.C.
`6410 Poplar Avenue, Suite 1000
`Memphis, TN 38119-4839
`Telephone: (901) 522-9000
`Facsimile: (901) 527-3746
`rcarter@martintate.com
`asimpson@martintate.com
`
`Attorneys for Plaintiff B.E. Technology, L.L.C.
`
`
`
`
`
`
`- 9 -
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 9
`
`

`

`CERTIFICATE OF SERVICE
`I hereby certify that on this 7th day of January, 2013, a copy of the foregoing was
`served upon the following counsel by email:
`
`Bradley E. Trammell
`Adam Baldridge
`BAKER, DONELSON, BEARMAN, CALDWELL & BERKOWITZ
`165 Madison Avenue, Suite 2000
`Memphis, Tennessee 38103
`Telephone: (901) 577-2121
`Facsimile: (901) 577-2102
`btrammell@bakerdonelson.com
`abaldridge@bakerdonelson.com
`
`Counsel for Defendant MICROSOFT CORPORATION
`
`s/ Elizabeth Kim
`Elizabeth Kim
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`- 10 -
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 10
`
`

`

`APPENDIX A
`
`APPENDIX A
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 11
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 11
`
`

`

`
`
`1
`
`
`
`http://advertising.microsoft.com/splitter
`
`user.
`The Microsoft Accused Product performs a method of providing demographically-targeted advertising to a computer
`Accused Products
`
`Microsoft Accused Products: Microsoft Advertising; Windows Ads in Apps
`
`-vs.-
`
`U.S. Patent No. US 6,628,314 B1 (Hoyle)
`
`
`
`comprising the steps of:
`computer user,
`targeted advertising to a
`demographically-
`providing
`
`11. A method of
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 12
`
`

`

`2
`
`
`
`
`
`http://advertising.microsoft.com/online-targeting-audience
`
`
`
`
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 13
`
`

`

`3
`
`
`
`
`
`http://advertising.microsoft.com/online-targeting-audience
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 14
`
`

`

`4
`
`
`
`
`
`http://advertising.microsoft.com/profile-targeting
`
`
`
`
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 15
`
`

`

`5
`
`
`
`
`
`http://advertising.microsoft.com/ad-network/audience
`
`
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 16
`
`

`

`6
`
`
`
`
`
`http://advertising.microsoft.com/ad-network/audience
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 17
`
`

`

`7
`
`
`
`
`
`http://advertising.microsoft.com/profile -matcher
`
`
`
`
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 18
`
`

`

`8
`
`
`
`
`
`http://advertising.microsoft.com/ad-solutions/windows-8-ads-in-app#
`
`
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 19
`
`

`

`9
`
`
`
`To the extent this element is not met literally, it is met under the doctrine of equivalents because Microsoft performs
`
`
`
`http://advertising.microsoft.com/ad-solutions/windows-8-ads-in-apps#
`
`
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 20
`
`

`

`10
`
`
`
`
`
`
`
`
`
`on servers that are accessible via the Internet using a web browser.
`least one website included in the Microsoft Accused Product, including www.msn.com and ads1.msads.net, are hosted
`The Microsoft Accused Product performs providing a server that is accessible via a computer network. For example, at
`
`
`
`network,
`via a computer
`that is accessible
`(a) providing a server
`
`products and/or services, such differences are insubstantial.
`that any differences are alleged to exist between the claimed element and Defendant’s Accused Instrumentalities,
`substantially the same function, in substantially the same way, to achieve substantially the same result. To the extent
`Accused Products
`
`Claim
`
`
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 21
`
`

`

`11
`
`
`
`
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 22
`
`

`

`12
`
`
`
`via the Internet using a web browser.
`For example, Microsoft’s websites, www.microsoft.com and www.bing.com, are hosted on servers that are accessible
`The Microsoft Accused Product performs permitting a computer user to access said server via said computer network.
`
`products and/or services, such differences are insubstantial.
`that any differences are alleged to exist between the claimed element and Defendant’s Accused Instrumentalities,
`substantially the same function, in substantially the same way, to achieve substantially the same result. To the extent
`To the extent this element is not met literally, it is met under the doctrine of equivalents because Microsoft performs
`
`
`
`
`
`network,
`via said computer
`access said server
`computer user to
`
`(b) permitting a
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 23
`
`

`

`13
`
`
`
`
`
`
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 24
`
`

`

`14
`
`
`
`
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 25
`
`

`

`15
`
`by a user of Microsoft in response to a request by Microsoft for the demographic information.
`information. For example, Microsoft acquires demographic information, such as age and gender, specifically provided
`information including information specifically provided by the user in response to a request for said demographic
`The Microsoft Accused Product performs acquiring demographic information about the user, said demographic
`
`products and/or services, such differences are insubstantial.
`that any differences are alleged to exist between the claimed element and Defendant’s Accused Instrumentalities,
`substantially the same function, in substantially the same way, to achieve substantially the same result. To the extent
`To the extent this element is not met literally, it is met under the doctrine of equivalents because Microsoft performs
`
`
`
`
`
`
`
`
`
`(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)
`including
`information
`demographic
`the user, said
`information about
`demographic
`
`(c) acquiring
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 26
`
`

`

`16
`
`
`
`
`
`https://signup.live.com/signup.aspx
`
`
`
`information,
`demographic
`a request for said
`user in response to
`provided by the
`specifically
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 27
`
`

`

`17
`
`
`
`
`
`https://signup.live.com/signup.aspx
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 28
`
`

`

`18
`
`
`
`
`
`http://windows.microsoft.com/en-US/windows-live/sign-in-what-is-microsoft-account
`
`
`
`
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 29
`
`

`

`19
`
`
`
`
`
`http://www.microsoft.com/privacystatement/en-us/core/default.aspx
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 30
`
`

`

`20
`
`
`
`
`
`products and/or services, such differences are insubstantial.
`that any differences are alleged to exist between the claimed element and Defendant’s Accused Instrumentalities,
`substantially the same function, in substantially the same way, to achieve substantially the same result. To the extent
`To the extent this element is not met literally, it is met under the doctrine of equivalents because Microsoft performs
`
`
`
`http://www.microsoft.com/privacystatement/en-us/core/default.aspx
`
`
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 31
`
`

`

`21
`
`
`
`
`
`computer, and periodically requests additional advertising content.
`on a computer, displays advertising content, records computer usage information concerning the user's utilization of the
`The Microsoft Accused Product performs providing the user with download access to computer software that, when run
`Accused Products
`
`
`
`
`
`content,
`advertising
`additional
`requests
`and periodically
`of the computer,
`user's utilization
`concerning the
`information
`computer usage
`content, records
`advertising
`displays
`a computer,
`that, when run on
`computer software
`access to
`with download
`
`(d) providing the user
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 32
`
`

`

`22
`
`
`
`
`
`
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 33
`
`

`

`23
`
`
`
`
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 34
`
`

`

`24
`
`
`
`
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 35
`
`

`

`25
`
`
`
`
`
`
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 36
`
`

`

`substantially the same function, in substantially the same way, to achieve substantially the same result. To the extent
`To the extent this element is not met literally, it is met under the doctrine of equivalents because Microsoft performs
`
`26
`
`
`
`
`
`
`
`
`
`download request by the user.
`The Microsoft Accused Product performs transferring a copy of said software to the computer in response to a
`
`
`
`products and/or services, such differences are insubstantial.
`that any differences are alleged to exist between the claimed element and Defendant’s Accused Instrumentalities,
`substantially the same function, in substantially the same way, to achieve substantially the same result. To the extent
`To the extent this element is not met literally, it is met under the doctrine of equivalents because Microsoft performs
`Accused Products
`
`
`
`by the user,
`download request
`response to a
`computer in
`software to the
`copy of said
`(e) transferring a
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 37
`
`

`

`27
`
`
`
`user.
`Accused Product provides and stores a cookie that includes a unique identifier to the computer of a Microsoft Network
`identifies information sent over said computer network from the computer to said server. For example, the Microsoft
`The Microsoft Accused Product performs providing a unique identifier to the computer, wherein said identifier uniquely
`
`
`
`
`
`to said server,
`from the computer
`computer network
`over said
`information sent
`identifies
`identifier uniquely
`wherein said
`to the computer,
`unique identifier
`
`(f) providing a
`
`products and/or services, such differences are insubstantial.
`that any differences are alleged to exist between the claimed element and Defendant’s Accused Instrumentalities,
`Accused Products
`
`Claim
`
`
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 38
`
`

`

`28
`
`
`
`
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 39
`
`

`

`29
`
`
`
`
`
`http://www.microsoft.com/privacystatement/en-us/core/default.aspx
`
`
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 40
`
`

`

`30
`
`
`
`
`
`http://www.microsoft.com/privacystatement/en-us/core/default.aspx
`
`
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 41
`
`

`

`31
`
`
`
`products and/or services, such differences are insubstantial.
`that any differences are alleged to exist between the claimed element and Defendant’s Accused Instrumentalities,
`substantially the same function, in substantially the same way, to achieve substantially the same result. To the extent
`To the extent this element is not met literally, it is met under the doctrine of equivalents because Microsoft performs
`
`
`
`
`
`
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 42
`
`

`

`32
`
`
`
`
`
`
`
`demographic information) associated with a unique identifier (a cookie).
`database. For example, the Microsoft Accused Product saves activity by a registered user profile (containing
`The Microsoft Accused Product performs associating said unique identifier with demographic information in a
`Accused Products
`
`
`
`database,
`information in a
`with demographic
`unique identifier
`(g) associating said
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 43
`
`

`

`33
`
`the demographic information associated with said unique identifier.
`The Microsoft Accused Product performs selecting advertising content for transfer to the computer in accordance with
`
`products and/or services, such differences are insubstantial.
`that any differences are alleged to exist between the claimed element and Defendant’s Accused Instrumentalities,
`substantially the same function, in substantially the same way, to achieve substantially the same result. To the extent
`To the extent this element is not met literally, it is met under the doctrine of equivalents because Microsoft performs
`
`
`
`
`
`
`
`the demographic
`accordance with
`computer in
`transfer to the
`content for
`advertising
`
`(h) selecting
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 44
`
`

`

`
`
`
`
`34
`
`
`
`identifier;
`said unique
`associated with
`information
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 45
`
`

`

`35
`
`
`
`
`
`products and/or services, such differences are insubstantial.
`that any differences are alleged to exist between the claimed element and Defendant’s Accused Instrumentalities,
`substantially the same function, in substantially the same way, to achieve substantially the same result. To the extent
`To the extent this element is not met literally, it is met under the doctrine of equivalents because Microsoft performs
`
`
`
`
`
`http://choice.microsoft.com
`
`
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 46
`
`

`

`36
`
`
`
`
`
`
`
`display by said program.
`The Microsoft Accused Product performs transferring said advertising content from said server to the computer for
`Accused Products
`
`
`
`program,
`display by said
`computer for
`server to the
`content from said
`advertising
`
`(i) transferring said
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 47
`
`

`

`37
`
`
`
`
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 48
`
`

`

`38
`
`
`
`
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 49
`
`

`

`39
`
`
`
`
`
`products and/or services, such differences are insubstantial.
`that any differences are alleged to exist between the claimed element and Defendant’s Accused Instrumentalities,
`substantially the same function, in substantially the same way, to achieve substantially the same result. To the extent
`To the extent this element is not met literally, it is met under the doctrine of equivalents because Microsoft performs
`
`
`
`
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 50
`
`

`

`40
`
`information using said unique identifier.
`The Microsoft Accused Product performs associating said computer usage information with said demographic
`
`
`
`products and/or services, such differences are insubstantial.
`that any differences are alleged to exist between the claimed element and Defendant’s Accused Instrumentalities,
`substantially the same function, in substantially the same way, to achieve substantially the same result. To the extent
`To the extent this element is not met literally, it is met under the doctrine of equivalents because Microsoft performs
`
`
`
`
`
`information recorded by said software from the computer via said computer network.
`The Microsoft Accused Product performs periodically acquiring said unique identifier and said computer usage
`Accused Products
`
`
`
`
`
`said demographic
`information with
`computer usage
`(k) associating said
`
`network, and
`computer
`computer via said
`software from the
`recorded by said
`usage information
`and said computer
`unique identifier
`acquiring said
`
`(j) periodically
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 51
`
`

`

`
`
`
`
`41
`
`
`
`identifier.
`said unique
`information using
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 52
`
`

`

`42
`
`
`
`
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 53
`
`

`

`43
`
`
`
`
`
`products and/or services, such differences are insubstantial.
`that any differences are alleged to exist between the claimed element and Defendant’s Accused Instrumentalities,
`substantially the same function, in substantially the same way, to achieve substantially the same result. To the extent
`To the extent this element is not met literally, it is met under the doctrine of equivalents because Microsoft performs
`
`
`
`
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 54
`
`

`

`44
`
`
`
`
`
`computer in response to a request therefor.
`The Microsoft Accused Product performs periodically selecting and transferring additional advertising content to the
`Accused Products
`
`
`
`
`
`therefor.
`in response to a request
`content to the computer
`additional advertising
`and transferring
`periodically selecting
`comprising the step of
`claim 11, further
`
`12. The method of
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 55
`
`

`

`45
`
`
`
`
`
`
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 56
`
`

`

`46
`
`
`
`
`
`
`
`Accused Products
`
`Claim
`
`Petitioner Microsoft Corporation - Ex. 1012, p. 57
`
`

`

`47
`
`
`
`The Microsoft Accused Product is accessible over the Internet, which is a publicly-accessible global computer network.
`products and/or services, such differences are insubstantial.
`tha