`571-272-7822
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` Paper 10
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` Entered: April 9, 2014
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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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`FACEBOOK, INC.
`Petitioner
`
`v.
`
`B.E. TECHNOLOGY, L.L.C.
`Patent Owner
`
`
`Case IPR2014-00052
`Patent 6,628,314 B1
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE,
`and LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`Case IPR2014-00052
`Patent 6,628,314 B1
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`I.
`INTRODUCTION
`Facebook, Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 11-13, 15, 18, and 20 of U.S. Patent No. 6,628,314 B1
`(Ex. 1101, “the ’314 patent”). Paper 1 (“Pet.”). B.E. Technology, L.L.C.
`(“Patent Owner”) did not file a Preliminary Response. We have jurisdiction
`under 35 U.S.C. § 314.
`The standard for instituting an inter partes review is set forth in
`35 U.S.C. § 314(a), which provides as follows:
`THRESHOLD -- The Director may not authorize an inter
`partes review to be instituted unless the Director determines
`that the information presented in the petition filed under section
`311 and any response filed under section 313 shows that there
`is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`Upon consideration of the Petition, we determine that the information
`presented by Petitioner has established that there is a reasonable likelihood
`that Petitioner would prevail in showing the unpatentability of claims 11-13,
`15, 18, and 20 of the ’314 patent. Accordingly, we institute an inter partes
`review of these claims.
`
`A. Related Proceedings
`Petitioner indicates that the ’314 patent is the subject of litigation in
`B.E. Technology, L.L.C. v. Facebook, Inc., No. 12-cv-2769-JPM (W.D.
`Tenn.), filed on September 7, 2012. Pet. 1.
`Petitioner also seeks review of the ’314 patent in inter partes review
`IPR2014-00053. Additionally, the ’314 patent is the subject of these inter
`partes reviews: IPR2014-00038 and IPR2014-00039.
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`Patennt 6,628,3
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`B. Thee ’314 Pattent
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`The ’3144 patent relates to useer interfacees that proovide adverrtising
`obta
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`ined over aa global coomputer neetwork. Exx. 1101, cool. 1, ll. 12--16. The
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`’3144 patent disscloses a cllient softwware applicaation that ccomprises
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`a graphicaal
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`user interface ((GUI) proggram moduule and an
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`advertisingg and data
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`agement (AADM) moddule. Id. aat col. 6, ll.. 64-67. Thhe GUI coomprises
`man
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`multtiple regionns, includinng a first reegion commprising a nnumber of
`user
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`selecctable itemms and a seccond regioon comprisiing an infoormation ddisplay
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`regioon, such ass banner addvertisements. Id. at
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`col. 4, ll. 224-37. Proogram
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`moddules associated with the GUI sttore statistiical data reegarding thhe display
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`of thhe selected informatioonal data, aallowing thhe targetinng of banneer
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`adveertisementss based upoon the typee of link seelected by tthe user. IId. at col. 44,
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`ll. 433-51. The system forr selecting and providding adverrtisements
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`is set forthh
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`in Fiigure 3 as ffollows:
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`Patent 6,628,314 B1
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`Figure 3 illustrates a block diagram of a system distributing
`advertisements over the Internet. Id. at col. 6, ll. 21-22. ADM server 22 is
`accessible by client computers 40 over Internet 20, where client computers
`40 have the client software application installed. Id. at col. 8, ll. 32-35.
`ADM server has associated with it Ad Database 44 and User/Demographics
`Database 46. Id. at col. 8, ll. 38-43. Ad Database 44 stores banner
`advertising that is provided to client computers 40. Id. User/Demographics
`Database 46 stores demographic information used in targeting advertising
`downloaded to individual client computers 40. Id. at col. 8, ll. 55-57.
`When a user first accesses the client software application for the
`purposes of downloading and installing the application, the user submits
`demographic information that is used to determine what advertising is
`provided to the user. Id. at col. 8, ll. 57-62. The demographic information is
`submitted by the user by entering the information into a form provided to the
`user, and ADM server 22 checks the completeness of the form. Id. at col.
`16, l. 60 – col. 17, l. 2. ADM server 22 then assigns a unique ID to the user
`and stores the unique ID with the received user demographic information.
`Id. at col. 17, ll. 11-15. An initial set of advertisements is selected, and the
`client software application is downloaded to client computer 40 for
`installation. Id. at col. 17, ll. 17-23. The client software application
`monitors user interaction with the computer, whether with the client
`software application or with other applications, and later reports this
`information to the ADM server. Id. at col. 12, ll. 55-59; col. 13, ll. 1-2.
`Advertising banners are displayed in response to some user input or
`periodically at timed intervals. Id. at col. 14, ll. 40-43. The client software
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`application targets the banner advertising displayed, based on the user’s
`inputs, so that it relates to what the user is doing. Id. at col. 14, ll. 43-46.
`C. Exemplary Claim
`Petitioner challenges claims 11-13, 15, 18, and 20 of the ’314 patent.
`Independent claim 11 is illustrative of the claims at issue and follows:
`11. A method of providing demographically-targeted
`advertising to a computer user, comprising the steps of:
`providing a server that is accessible via a computer
`network,
`permitting a computer user to access said server via said
`computer network,
`acquiring demographic information about the user, said
`demographic information including information specifically
`provided by the user in response to a request for said
`demographic information,
`providing the user with download access to computer
`software that, when run on a computer, displays advertising
`content, records computer usage information concerning the
`user’s utilization of the computer, and periodically requests
`additional advertising content,
`transferring a copy of said software to the computer in
`response to a download request by the user,
`providing a unique identifier to the computer, wherein
`said identifier uniquely identifies information sent over said
`computer network from the computer to said server,
`associating said unique identifier with demographic
`information in a database,
`selecting advertising content for transfer to the computer
`in accordance with the demographic information associated
`with said unique identifier;
`transferring said advertising content from said server to
`the computer for display by said program,
`periodically acquiring said unique identifier and said
`computer usage information recorded by said software from the
`computer via said computer network, and
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`associating said computer usage information with said
`demographic information using said unique identifier.
`D. The Alleged Grounds of Unpatentability
`The information presented in the Petition sets forth Petitioner’s
`contentions of unpatentability of claims 11-13, 15, 18, and 20 of the ’314
`patent under 35 U.S.C. § 103, as follows (see Pet. 3-4, 9-51):
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`Reference(s)
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`Shaw1 and W3C2
`Logan3
`Logan and Merriman4
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`Basis
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`§ 103(a)
`§ 103(a)
`§ 103(a)
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`Claims Challenged
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`11-13, 15, 18, and 20
`11-13, 18, and 20
`15
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`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14,
`2012). Also, claim terms are given their ordinary and customary meaning,
`as would be understood by one of ordinary skill in the art in the context of
`the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`(Fed. Cir. 2007).
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`1 U.S. Patent No. 5,809,242 (Ex. 1103) (“Shaw”).
`2 Melissa Dunn et al., Privacy and Profiling on the Web (Jun. 1, 1997),
`available at http://www.w3.org/TR/NOTE-Web-privacy.html (Ex. 1105)
`(“W3C”).
`3 U.S. Patent No. 5,721,827 (Ex. 1107) (“Logan”).
`4 U.S. Patent No. 5,948,061 (Ex. 1108) (“Merriman”).
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`1. “periodically”
`Claim 11 recites “software that . . . periodically requests additional
`advertising content” and “periodically acquiring said unique identifier and
`said computer usage information.” Petitioner proposes that “periodically”
`should be construed to mean “recurring from time to time.” Pet. 8.
`Petitioner bases this construction on the dictionary definition of
`“periodically,” which includes “(1) having or marked by repeated cycles; (2)
`happening or appearing at regular intervals; or (3) recurring or reappearing
`from time to time; intermittent.” Id. (citing Ex. 1125, 6). We agree with
`Petitioner. The Specification does not provide a special definition for
`“periodically,” and the claims do not limit further the scope of periodically.
`Accordingly, we agree with Petitioner that the broadest reasonable definition
`provided by the dictionary is “(3) recurring or reappearing from time to
`time; intermittent” because this definition does not require regular cycles or
`intervals. Additionally, the broadest reasonable meaning of “periodically”
`does not require the recurrence or reappearance to be at a specific interval.
`Accordingly, we construe “periodically” to mean “recurring from time to
`time, at regular or irregular time intervals.”
`2. “associating”
`Claim 11 recites “associating said unique identifier with demographic
`information in a database” and “associating said computer usage information
`with said demographic information using said unique identifier.” Petitioner
`contends that the plain and ordinary meaning of “associating” is “to connect
`or join together, combine.” Pet. 7-8 (citing Ex. 1125, 4). Petitioner further
`contends that this ordinary meaning for “associating” also should include
`both indirect and direct “associating.” Id. We agree with Petitioner. The
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`Specification does not provide a special definition for “associating.” As
`discussed by Petitioner, claim 11, under the broadest reasonable
`interpretation, requires that the datasets of usage information and
`demographic information be associated, directly or indirectly, using the
`unique identifier. Id. Accordingly, we adopt the ordinary meaning and
`construe “associating” to mean “connecting or joining together,” either
`directly or indirectly.
`B. Claims 11-13, 15, 18, and 20 – Obvious over Shaw and W3C
`Petitioner contends that claims 11-13, 15, 18, and 20 are unpatentable
`under 35 U.S.C. § 103(a) as obvious over Shaw and W3C. Pet. 10-32. In
`support of this asserted ground of unpatentability, Petitioner provides
`detailed explanations as to how each claim limitation is disclosed by Shaw
`and W3C. In its explanations, Petitioner relies on a Declaration of Robert J.
`Sherwood (Ex. 1111).
`1. Shaw (Ex. 1103)
`Shaw discloses an electronic mail system that displays targeted
`advertisements to remote users when the users are off-line. Ex. 1103, col. 1,
`ll. 8-11. Shaw discloses that a user operates a client computer that runs a
`client program. Id. at col. 3, ll. 24-26. The client program allows a user to
`read, write, edit, send, receive, and store electronic mail. Id. at col. 3, ll. 56-
`58. The client program displays advertisements to the user when the user is
`composing emails. Id. at col. 4, ll. 4-6.
`The user completes a member profile that includes information about
`the user, such as hobbies, interests, employment, education, sports,
`demographics, etc. Id. at col. 5, ll. 5-9. The server system utilizes the user’s
`entered information to determine which advertisements should be directed to
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`the uuser. Id. att col. 5, ll. 14-16. Thhe client prrogram perriodically
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`ver systemm. Id. at cool. 3, ll. 35--36. The sserver
`with a ser
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`commmunicates
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`systeem transmiits eligible advertisemments to thhe client prrogram whhen the
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`system. Idd. at col. 5
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`cliennt programm establishees a connecction with tthe server
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`ll. 199-24. The advertisemments are sstored on thhe user’s c
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`lient compputer so thaat
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`adveertisementss can be dissplayed whhen the useer is not onn-line. Id.
`l.
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`at col. 5, l
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`32-335. The emmail systemm for providding targetted advertiisements iss set forth
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`in Fiigure 1 as ffollows:
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`Figure 1 illustratess the email
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`at transmitts and dispplays
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`adveertisementss to users wwhen compposing emaails. Cliennt computerr 101
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`commmunicates with serveer system 1107 via nettwork 103.. Id. at coll. 9, ll. 31-
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`35. Server sysstem 107 inncludes dattabase mannagement ssystem 1066. Id. at
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`col.
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`10, ll. 14-115. The usser is proviided with ssoftware, eeither on diisk or
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`electtronically ddownloadeed over thee Internet, wwhich is exxecuted onn client
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`compputer 101. Id. at col.. 10, ll. 44--48.
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`5) 2. W3CC (Ex. 1105)
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`W3C is directed too the personnalization
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`and targetting of infoormation
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`for ccustomers uusing demoographic innformationn, where thhe customeers providee
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`demographic innformationn once andd retain conntrol over hhow the infformation
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`sclosed. EEx. 1105, 1
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`-2. Users are enableed to createe one or moore
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`persoonae, whicch describee the role thhe user wisshes to releease to a wwebsite. Idd.
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`at 4. A personna includes an identififier, UserIDD, and demmographic
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`inforrmation, suuch as birthhday, gendder, level oof educationn, marital
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`nummber of chilldren, and iincome levvel. Id. at 55-6. The ppersonae arre
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`single proofile for a uuser. Id. att 4. The usser profile
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`associated to a
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`inforrmation is stored locaally in ordeer for the cclient softwware to proovide
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`inforrmation to websites. Id. at 7. UUsers are pprovided ann interface
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`mainntain their profile infoformation. Id.
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`The exchhange of ppersona infoformation i
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`folloows:
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` in order too
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`s illustrateed in Figuree 2 as
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`b
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`website. IId. at Fig. 22. The we
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`The cliennt requestss a documeent from a
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`site oor server reesponds wwith a requeest for perssonal informmation froom the
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`cliennt and a staatement of how this innformationn is to be uused. Id. att 8. The
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`cliennt defines rrules for acccessing annd acquirinng data, an
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`d the serveer only
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`receiives the reqquested daata if the ruules are sattisfied. Id.
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`The perssona informmation furtther includdes “click-sstream” infformation.
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`Id. aat 6. Click--stream infformation ddescribes aa user’s acttivity on a
`Web site.
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`Id. aat 12. The Web browwsers keep ttrack of thhe user’s brrowsing beehavior
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`locallly. Id. Thhis informaation perioodically is pposted bacck to the WWeb server.
`Id.
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`3. Analysis
`The evidence set forth by Petitioner indicates a reasonable likelihood
`that Petitioner will prevail in showing that claims 11-13, 15, 18, and 20 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Shaw and W3C. Pet.
`10-32. For example, independent claim 11 recites a method of providing
`demographically-targeted advertising to a computer user. Shaw describes an
`electronic mail system that displays targeted advertisements to remote users.
`Ex. 1103, col. 1, ll. 8-11. The system utilizes demographic information
`stored in the client profile to determine which advertisements to provide to a
`user. Id. at col. 5, ll. 5-16.
`
`Claim 11 further recites “providing a server that is accessible via a
`computer network” and “permitting a computer user to access said server via
`said computer network.” As discussed above, Shaw discloses that client
`computer 101 selectively communicates with server system 104 over
`network 103, where the server system is coupled to network 103 via
`communications server 105. Id. at col. 9, ll. 31-35; Fig. 1.
`Claim 11 also recites “acquiring demographic information about the
`user, said demographic information including information specifically
`provided by the user in response to a request for said demographic
`information.” Shaw discloses that a user completes a member profile when
`first using the system. Id. at col. 5, ll. 5-7. The member profile includes
`information about the user, such as hobbies, interests, employment,
`education, sports, and demographics. Id. at col. 5, ll. 7-9. As such, Shaw
`discloses requesting a user to submit demographic information for a member
`profile.
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`Claim 11 further recites “providing the user with download access to
`computer software that, when run on a computer, displays advertising
`content, records computer usage information concerning the user’s
`utilization of the computer, and periodically requests additional advertising
`content.” Shaw discloses that a user is provided with software, i.e., the
`client program, either on a disk or downloaded over the Internet. Id. at col.
`10, ll. 44-48. Advertisements are displayed continuously during the
`operation of the client software. Id. at col. 13, ll. 5-11. Shaw further
`discloses the client program periodically communicates with the server
`system. Id. at col. 3, ll. 34-35. The client program records when and how
`long the client program was used. Id. at col. 7, ll. 3-13. The client program
`further records “other statistical information useful to predict a user’s future
`behavior.” Id. This information is stored in an event log file on the client
`computer and is communicated to the server system. Id. The client
`computer connects to the server system and transmits an event log file and
`an advertisements statistics file. Id. at col. 20, ll. 28-36. These files are used
`to determine which advertisements are eligible for downloading to a
`particular user. Id. at col. 20, ll. 40-44. New banner advertisements are
`transmitted from the mail server to the user when the user connects to the
`mail server. Id. at col. 20, ll. 64-67.
`Claim 11 additionally recites “transferring a copy of said software to
`the computer in response to a download request by the user.” Shaw
`discloses that a user will install a client program on a client computer by
`executing an install program. Id. at col. 10, ll. 48-50. The user is provided
`with a copy of the client program on disk or electronically downloaded over
`the Internet. Id. at col. 10, ll. 44-48. In other words, the user implicitly
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`requests the client program, and the program is provided to the user for
`installation.
`Claim 11 also recites “selecting advertising content for transfer to the
`computer in accordance with the demographic information associated with
`said unique identifier” and “transferring said advertising content from said
`server to the computer for display by said program.” As discussed above,
`Shaw discloses that a user completes a member profile when first using the
`system. Id. at col. 5, ll. 5-7. The member profile includes information about
`the user, such as hobbies, interests, employment, education, sports, and
`demographics. Id. at col. 5, ll. 7-9. The server system utilizes the member
`profile information to determine which advertisements to select for the user.
`Id. at col. 5, ll. 13-15. Advertisements are transmitted from the mail server
`to the user when the user connects to the mail server. Id. at col. 5, ll. 18-23;
`col. 20, ll. 64-67. Shaw discloses a unique email address associated with
`each user; however, as discussed below, Petitioner also relies on W3C to
`describe a unique identifier. Id. at col. 12, ll. 6-12.
`Claim 11 also recites “periodically acquiring said unique identifier
`and said computer usage information recorded by said software from the
`computer via said computer network.” Shaw describes that the client
`program periodically communicates with the server system. Id. at col. 3, ll.
`34-35. The client computer connects to the server system and transmits an
`event log file and advertisements statistics file. Id. at col. 20, ll. 28-36.
`These files are used to determine which advertisements are eligible for
`downloading to a particular user. Id. at col. 20, ll. 40-44. New banner
`advertisements are transmitted from the mail server to the user when the user
`connects to the mail server. Id. at col. 20, ll. 64-67.
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`Claim 11 lastly recites “associating said computer usage information
`with said demographic information using said unique identifier.” As
`discussed above, Shaw describes that the client program periodically
`communicates with the server system. Id. at col. 3, ll. 34-35. The client
`computer connects to the server system and transmits an event log file and
`advertisements statistics file. Id. at col. 20, ll. 28-36. These files are used to
`determine which advertisements are eligible for downloading to a particular
`user. Id. at col. 20, ll. 40-44. New banner advertisements are transmitted
`from the mail server to the user when the user connects to the mail server.
`Id. at col. 20, ll. 64-67.
`Claim 11 additionally recites “providing a unique identifier to the
`computer, wherein said identifier uniquely identifies information sent over
`said computer network from the computer to said server” and “associating
`said unique identifier with demographic information in a database.” Shaw
`describes a unique email address is associated with each user and this unique
`email address is used when connecting to the server system to send member
`profile information. Id. at col. 12, ll. 6-12, 59-65. Petitioner argues that
`although Shaw discloses that the e-mail address is unique, W3C provides a
`more advanced technique for assigning a unique identifier. Pet. 16-17.
`W3C describes a unique User ID to identify uniquely a user independent of
`Web site affiliation. Ex. 1105, 7. A user creates a persona that associates
`the User ID with demographic information. Id. at 5-6.
`Petitioner argues that both Shaw and W3C are directed towards
`systems and methods for providing targeted advertising to users over the
`Internet using client/server architectures. Pet. 18-19, 22. Petitioner further
`argues that all of the elements of claim 11 are disclosed by Shaw and W3C
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`with no change to their respective functions and combining Shaw and W3C
`to produce a system with all of the features would render nothing more than
`predictable results. Id. at 18-19, 22, 25-26. Petitioner additionally argues
`that the combination of Shaw and W3C involves nothing more than known
`computer techniques to improve a similar advertising system in the same
`way. Id. The Sherwood declaration supports Petitioner’s argument that the
`combination of Shaw and W3C would have been obvious to a person with
`ordinary skill in the art and that such a combination would render nothing
`more than predictable results. Ex. 1111, ¶ 54. In light of these contentions,
`we are persuaded that Petitioner has shown a reasonable likelihood of
`prevailing in showing that claims 11-13, 15, 18, and 20 of the ’314 patent
`are unpatentable as obvious over Shaw and W3C.
`4. Conclusion
`Petitioner has shown a reasonable likelihood that Petitioner will
`prevail in showing that claims 11-13, 15, 18, and 20 of the ’314 patent
`would have been obvious over Shaw and W3C.
`C. Claims 11-13, 18, and 20 – Obvious over Logan
`Petitioner contends that claims 11-13, 18, and 20 are unpatentable
`under 35 U.S.C. § 103(a) as obvious over Logan. Pet. 32-49. Having
`reviewed this ground of unpatentability asserted by Petitioner, we exercise
`our discretion and determine it is redundant to the ground of unpatentability
`on which we institute review of the same claims. See 37 C.F.R. § 42.108(a).
`D. Claim 15 – Obvious over Logan and Merriman
`Petitioner contends that claim 15 is unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Logan and Merriman. Pet. 49-51. Having
`reviewed this ground of unpatentability asserted by Petitioner, we exercise
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`Case IPR2014-00052
`Patent 6,628,314 B1
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`our discretion and determine it is redundant to the ground of unpatentability
`on which we institute review of the same claims. See 37 C.F.R. § 42.108(a).
`E. Consolidation with IPR2014-00053
`We acknowledge Petitioner’s request that this Petition “be
`consolidated with” the Petition in IPR2014-00053, also filed by Petitioner,
`because both Petitions challenge the validity of claims 11-13, 15, 18, and 20
`of the ’314 patent. Pet. 51. Both parties should be prepared to discuss
`possible consolidation of IPR2014-00052 and IPR2014-00053 during the
`initial conference call with the Board at the date and time set forth below.
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the Petition establishes that there is a reasonable likelihood that
`Petitioner would prevail in establishing unpatentability of claims 11-13, 15,
`18, and 20 of the ’314 patent.
`The Board has not made a final determination on the patentability of
`any challenged claims.
`
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`hereby instituted as to the following proposed ground:
`Obviousness of claims 11-13, 15, 18, and 20 over Shaw and W3C.
`FURTHER ORDERED that no other grounds raised in the Petition are
`authorized for inter partes review.
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(d) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`commences on the entry date of this decision; and
`FURTHER ORDERED that an initial conference call with the Board
`is scheduled for 3:30 PM, Eastern Time on May 7, 2014; the parties are
`directed to the Office Patent Trial Practice Guide5 for guidance in preparing
`for the initial conference call and should come prepared to discuss any
`proposed changes to the Scheduling Order entered herewith and any motions
`the parties anticipate filing during the trial.
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`5 Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765-66 (Aug.
`14, 2012).
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`Patent 6,628,314 B1
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`For PETITIONER:
`Heidi L. Keefe
`Mark R. Weinstein
`COOLEY, LLP
`hkeefe@cooley.com
`mweinstein@cooley.com
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`
`
`For PATENT OWNER:
`Jason S. Angell
`Robert E. Freitas
`Freitas Tseng & Kaufman LLP
`jangell@ftklaw.com
`rfreitas@ftklaw.com
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