`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`FACEBOOK, INC. and GOOGLE INC.
`
`Petitioner
`
`v.
`
`B.E. TECHNOLOGY, L.L.C.
`Patent Owner
`___________
`
`Case IPR2014-000521
`Patent 6,628,314
`___________
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`PATENT OWNER’S CONTINGENT MOTION TO AMEND
`(37 C.F.R. § 42.121)
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`1 Case IPR2014-00743 has been joined with this proceeding.
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`Page
`
`SUMMARY OF MOTION TO AMEND .......................................................................... 2
`
`CLAIM LISTING .............................................................................................................. 3
`
`DISCUSSION OF PROPOSED CHANGES..................................................................... 7
`
`SUPPORT FOR CLAIMED SUBJECT MATTER ........................................................... 7
`
`ALLOWABILITY OF PROPOSED SUBSTITUTE CLAIMS ........................................ 8
`
`CONCLUSION ................................................................................................................ 14
`
`
`
`I.
`
`II.
`
`III.
`
`IV.
`
`V.
`
`VI.
`
`
`
`
`
`
`
`-i-
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`TABLE OF AUTHORITIES
`
`
`Page
`
`
`
`Federal Statutes
`
`35 U.S.C. § 102(a) .................................................................................................... ix
`
`35 U.S.C. § 102(e) .................................................................................................... ix
`
`35 U.S.C. § 103(a) ................................................................................................. viii
`
`35 U.S.C. §§ 311-319 ............................................................................................ viii
`
`Regulations
`
`37 C.F.R. § 42.20(c) ................................................................................................... x
`
`37 C.F.R. § 42.100 et. seq. ..................................................................................... viii
`
`37 C.F.R. § 42.121 .................................................................................................... ii
`
`37 C.F.R. § 42.121(a)(3) ........................................................................................... ii
`
`37 C.F.R. §§ 42.121(b)(1)-(2) .................................................................................. iii
`
`Other Authorities
`
`Deutsch et al. How to Use Anonymous FTP ............................................................. ix
`
`Dunn et al. Privacy and Profiling on the Web ....................................................... viii
`
`
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`-ii-
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`2011
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`2012
`
`2013
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`
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`LIST OF EXHIBITS
`
`
`
`U.S. Utility Patent Application Serial No. 09/699,705
`
`U.S. Patent No. 5,768,508 (Eikeland)
`
`U.S. Patent No. 5,848,396 (Gerace)
`
`U.S. Patent No. 5,796,952 (Davis et al.)
`
`U.S. Patent No. 5,823,879 (Goldberg et al.)
`
`U.S. Patent No. 6,714,975 (Aggarwal et al.)
`
`U.S. Patent No. 6,285,987 (Roth et al.)
`
`U.S. Patent No. 6,892,226 (Tso et al.)
`
`U.S. Patent No. 7,225,142 (Apte et al.)
`
`Declaration of Neal Goldstein
`
`- iii -
`
`
`
`
`
`I.
`
`SUMMARY OF MOTION TO AMEND.
`
`This contingent motion to amend is submitted in compliance with 37 C.F.R.
`
`§ 42.121. The Patent Owner requests that substitute claims 23-34 be entered in the
`
`event that original claim 11 is found to be not patentable.
`
`The proposed substitute claims include a single independent claim and
`
`eleven dependent claims (i.e. the exact number of original claims). The proposed
`
`substitute claim set presents one substitute claim for each original claim, satisfying
`
`the general presumption that “only one substitute claim would be needed to replace
`
`each challenged claim.” 37 C.F.R. § 42.121(a)(3).
`
`Proposed substitute claim 23 corresponds to original independent claim 11
`
`with the limitation that advertising content be selected for transfer to the computer
`
`in accordance with real-time and other computer usage information and
`
`demographic information associated with said unique identifier, and that the
`
`computer usage information comprise information about the user’s interactions
`
`with said computer software displaying advertising content and at least one other
`
`program.
`
`Proposed substitute claims 24-34 correspond to original dependent claims
`
`12-22. Substitute claims 24-34 do not include any amendments to original claims
`
`12-22, other than being renumbered to depend from proposed substitute claim 23.
`
`
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`- 1 -
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`
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`
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`Support for the proposed claim from “the original disclosure of the patent”
`
`and from the “earlier-filed disclosure for each claim for which benefit of the filing
`
`date of the earlier filed disclosure is sought” is provided below. See 37 C.F.R. §§
`
`42.121(b)(1)-(2).
`
`II. CLAIM LISTING.
`23. (Proposed substitute for original claim 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, wherein the computer usage information
`
`comprises information about the user’s interactions with said computer software
`
`displaying advertising content and at least one other program,
`
`transferring a copy of said software to the computer in response to a
`
`download request by the user,
`
`- 2 -
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`
`
`
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`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
`
`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
`
`associating said computer usage information with said demographic
`
`information using said unique identifier,
`
`selecting advertising content for transfer to the computer in accordance with
`
`real-time and other computer usage information and demographic information
`
`associated with said unique identifier, and
`
`transferring said advertising content from said server to the computer for
`
`display by said program.
`
`
`
`- 3 -
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`
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`
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`24. (Proposed substitute for original claim 12) The method of claim 11 23,
`
`further comprising the step of periodically selecting and transferring additional
`
`advertising content to the computer in response to a request therefor.
`
`25. (Proposed substitute for original claim 13) The method of claim 11 23,
`
`wherein said computer network is a publicly-accessible global computer network.
`
`26. (Proposed substitute for original claim 14) The method of claim 11 23,
`
`wherein said unique identifier identifies said copy of said software from among
`
`other copies of said software.
`
`27. (Proposed substitute for original claim 15) The method of claim 11 23,
`
`wherein said providing a unique identifier step further comprises storing a cookie
`
`on the computer.
`
`28. (Proposed substitute for original claim 16) The method of claim 11 23,
`
`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.
`
`29. (Proposed substitute for original claim 17) The method of claim 11 23,
`
`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
`
`- 4 -
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`
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`
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`computer usage information recorded by said software.
`
`30. (Proposed substitute for original claim 18) The method of claim 11 23,
`
`wherein said computer usage information includes data regarding information
`
`resources accessed by the user over the global computer network.
`
`31. (Proposed substitute for original claim 19) The method of claim 11 23,
`
`wherein said computer usage information includes data regarding software
`
`applications run by the user on the computer.
`
`32. (Proposed substitute for original claim 20) The method of claim 11 23,
`
`wherein said acquiring step further comprises requesting said demographic
`
`information in response to a request from the user to download said software and
`
`receiving said demographic information from the user prior to providing the user
`
`with access to said software.
`
`33. (Proposed substitute for original claim 21) The method of claim 11 23,
`
`wherein said step of providing download access further comprises examining said
`
`demographic information to determine that said demographic information includes
`
`certain required information and, upon determining that said demographic
`
`information includes said required information, providing the user with said
`
`download access to said software.
`
`34. (Proposed substitute for original claim 22) The method of claim 11 23,
`
`further comprising the step of limiting said required information to demographic
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`- 5 -
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`
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`information, whereby the user is permitted anonymous download access to said
`
`software and the server is provided demographically-relatable computer usage
`
`information.
`
`III. DISCUSSION OF PROPOSED CHANGES.
`Proposed substitute independent claim 23 includes all of the limitations of
`
`original independent claim 11, as well as additional elements (underlined, below).
`
`In particular, the additional elements of proposed substitute claim 23 recite:
`
`wherein the computer usage information comprises information about the
`
`user’s interactions with said computer software displaying advertising content and
`
`at least one other program,
`
`…
`
`selecting advertising content for transfer to the computer in accordance with
`
`real-time and other computer usage information and demographic information
`
`associated with said unique identifier.
`
`IV. SUPPORT FOR CLAIMED SUBJECT MATTER.
`Each of the proposed claims finds support in “the original disclosure of the
`
`patent” (U.S. Application Serial No. 09/699,705 (the ‘705 application), which
`
`issued as U.S. Patent No. 6,628,314). See 37 C.F.R. §§ 42.121(b)(1)-(2). Support
`
`for each of the proposed claims and/or the additional elements of the proposed
`
`claims is provided below with reference to the as-filed version of the application.
`
`- 6 -
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`
`
`
`
`The as-filed version of the ‘705 application is submitted herewith as Exhibit 2004.
`
`Support for proposed substitute claim 23 can be found in at least original
`
`claim 11, as well as the Abstract; page 4, lines 21-28; page 5, lines 6-7; page 8,
`
`lines 13-27; page 9; page 10, lines 1-13; page 11, lines 18-20; page 13, lines 18-22;
`
`page 14, lines 16-25; page 15, lines 7-26; page 17, lines 12-13; page 20, lines 19-
`
`28; page 21, lines 1-2 and 20-28; and pages 25-28.
`
`V. ALLOWABILITY OF PROPOSED SUBSTITUTE CLAIMS.
`
`On October 9, 2013, Facebook (“Petitioner”) filed a petition under 35 U.S.C.
`
`§§311-319 and 37 C.F.R. § 42.100 et seq. requesting inter partes review of U.S.
`
`Patent No. 6,628,314. On April 9, 2014, the Patent Trial and Appeal Board issued
`
`a decision instituting four inter partes reviews with respect to the ’314 patent. The
`
`seven grounds of inter partes review instituted in all of inter partes reviews of the
`
`‘314 patent include the following (the references relied upon in the IPR
`
`proceedings as listed below will be referred to collectively herein as “the cited
`
`references”):
`
`IPR2014-0052: Obviousness of Claims 11-13, 15, 18, and 20 under 35
`
`U.S.C. §103(a) over U.S. Patent 5,809,242 (“Shaw”) in view of Dunn et al.
`
`Privacy and Profiling on the Web (“W3C”).
`
`IPR2014-0053: Obviousness of Claims 11-13, 15, 18, and 20 under 35
`
`U.S.C. §103(a) over U.S. Patent 5,933,811 (“Angles”) in view of Shaw.
`
`- 7 -
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`
`
`
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`IPR2014-0038: Anticipation of Claims 11-13, 18, and 20 under 35 U.S.C.
`
`§102(a) by U.S. Patent 5,721,827 (“Logan”); Obviousness of Claim 15 under 35
`
`U.S.C. §103(a) over Logan in view of U.S. Patent 5,918,014 (“Robinson”).
`
`IPR2014-0039: Anticipation of Claims 11-14, and 16-19 under 35 U.S.C.
`
`§102(e) by U.S. Patent 6,119,098 (“Guyot”); Obviousness of Claim 15 under 35
`
`U.S.C. §103(a) over Guyot in view of Robinson; and Obviousness of Claims 20-22
`
`under 35 U.S.C. §103(a) over Guyot in view of Deutsch et al. How to Use
`
`Anonymous FTP (“RFC1635”).
`
`The cited references can be generally categorized as follows. Shaw, Guyot,
`
`and Logan select advertisements for batch transmission to a client device; Angles
`
`targets advertising based upon a user profile; W3C addresses tracking user
`
`behavior on the web to generate a user profile; and RFC1635 discusses
`
`Anonymous FTP. Any usage information collected by the references is data
`
`related to interaction by the user with the software program displaying
`
`advertisements to the user.
`
`Substitute independent claim 23 is patentable over the cited references.
`
`Guyot and Logan, the references being evaluated under section 102, do not
`
`disclose or suggest selecting advertising content for transfer to the computer in
`
`accordance with real-time and other computer usage information and demographic
`
`information associated with said unique identifier…wherein the computer usage
`
`- 8 -
`
`
`
`
`
`information comprises information about the user’s interactions with said computer
`
`software displaying advertising content and at least one other program.
`
`Pursuant to 37 C.F.R. §42.20(c), Patent Owner undertook review of all prior
`
`art cited by the Petitioner and all other defendants in district court. In addition, the
`
`Patent Owner has reviewed all prior art of which it is aware. A discussion of the
`
`closest known art is provided below.
`
`In general, the references fall into categories similar to those discussed
`
`above with regard to the cited references. For example, the references disclose
`
`monitoring a user’s interaction with websites or targeted content displayed to the
`
`user, selecting advertisements based upon historical usage or behavior of the user,
`
`and delivering advertisements in batches. However, none of the references
`
`discussed below discloses or suggests the proposed additional limitations in
`
`substitute claim 23.
`
`Eikeland (U.S. Patent 5,768,508 to Eikeland, Exhibit 2005) discloses
`
`delivering information targeted to a user’s interests and hobbies during times when
`
`the network is idle, in order to maximize the use of limited network bandwidth.
`
`(See Eikeland, 2:9-16). Information regarding whether the targeted information
`
`was displayed, and the duration of such display, is gathered and “eventually”
`
`transmitted to a master database. (See Eikeland, 7:42-51). In other words, targeted
`
`advertisements are delivered in batches in order to maximize limited network
`
`- 9 -
`
`
`
`
`
`bandwidth.
`
`Gerace (U.S. Patent 5,848,396 to Gerace, Exhibit 2006) discloses forming a
`
`psychographic profile of an end user by recording viewing habits of the end user.
`
`(See Gerace, Abstract). Advertisements are displayed based upon the formed
`
`profile, and a regression analysis is performed on recorded responses to the
`
`advertisements in order to refine the psychographic profile. (See Id. and 2:24-53).
`
`In other words, advertisements are selected based on historical viewing habits of
`
`the end user, and the viewing habits are within the program displaying the
`
`advertisements.
`
`Davis (U.S. Patent 5,796,952 to Davis et al., Exhibit 2007) discloses
`
`monitoring interactions with a resource that has been downloaded via a browser in
`
`order to create a user profile for later targeting of advertising. (See Davis, 4:24-37;
`
`5:7-10). Specifically, Davis states that a tracking program runs “to track the user’s
`
`interaction with and use of the file or to monitor choices…made by the user while
`
`within the file,” (See Davis, 4:47-51, emphasis added). The interaction
`
`information is sent to a server for storage and analysis, and is used to build a
`
`historical profile of the user. (See Davis, 4:64-67). In other words, Davis monitors
`
`a user’s activity within the program displaying advertisements and targets
`
`advertisements based on historical behavior.
`
`
`
`- 10 -
`
`
`
`
`
`Goldberg (U.S. Patent 5,823,879 to Goldberg et al., Exhibit 2008) discloses
`
`a networked gaming system where advertisements are presented to users during the
`
`course of a game, such as online poker. (See Goldberg, Abstract). Advertisements
`
`are selected based upon demographic profiles of the users, as well as the user’s
`
`web browsing activity. (See Goldberg, 21:36 – 22:15). The advertisements are
`
`selected as a batch, such that a table identifying advertising presentation candidates
`
`is ready when a user accesses the game site. (See Goldberg, 23:48-47). In other
`
`words, Goldberg discloses batch selection of advertisements based upon a user’s
`
`demographic profile and activity within a browser displaying the advertisements.
`
`Aggarwal (U.S. Patent 6,714,975 to Aggarwal et al., Exhibit 2009) discloses
`
`assigning advertisements to slots on web pages based on a characteristic of the
`
`requesting client or user, and the characteristics are gleened from self-learning data
`
`obtained from historical user behavior. (See Aggarwal, 2:33-38). The historical
`
`user behavior is related to user click behavior within the browser displaying the
`
`advertisements. (See Id.).
`
`Roth (U.S. Patent 6,285,987 to Roth et al., Exhibit 2010) discloses an
`
`Internet advertising system that evaluates, in real time, proposed bids submitted by
`
`different advertisers in order to determine which advertisement will be displayed to
`
`a viewer. (See Roth, Abstract). Characteristics of a particular viewer, including
`
`demographic information and historical web sites the viewer has visited in the past,
`
`- 11 -
`
`
`
`
`
`are stored at a central server system. (See Roth, 2:1-19). Advertisers provide a
`
`proposed bid that specifies how much the advertiser is willing to pay for displaying
`
`a particular advertisement to a viewer with certain characteristics. (See Roth, 2:20-
`
`23). When a viewer visits a website, the internet advertising system selects the
`
`appropriate bid based on bid specifications and characteristics of the viewer, and
`
`displays the associated advertisement. (See Roth, 2:54-65). In other words, Roth
`
`discloses selecting a bid associated with viewer characteristics, and the viewer
`
`characteristics are based upon historical browsing activity within the browser
`
`displaying the advertisements.
`
`Tso (U.S. Patent 6,892,226 to Tso et al., Exhibit 2011) discloses selecting
`
`advertisements for display to a user based on a user profile, the user profile being
`
`derived from monitoring clickstream behavior of the user. (See Tso, 2:3-10; 3:35-
`
`61; 8:11-67). In other words, Tso describes targeting advertisements based on
`
`activity within the browser displaying the advertisements.
`
`Apte (U.S. Patent 7,225,142 to “Apte” et al., Exhibit 2012) discloses
`
`streaming advertisements to a client computer based on a user’s current viewing
`
`habits. (See Apte, 6:60-7:8). A predetermined number of advertisements shown in
`
`the display area are cached on the client computer. (See Apte, 6:26-27). The
`
`advertisements are selected based on either selection of a topic by the user, or by
`
`deducing areas of interest based upon the content of pages on the web selected by
`
`- 12 -
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`
`
`
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`the user for viewing. (See Apte, 4:18-23). In other words, Apte describes
`
`targeting advertisements to users based upon interests and activity within the
`
`browser displaying the advertisements.
`
`None of the references, alone or in combination, teaches or suggests
`
`selecting advertising content for transfer to the computer in accordance with real-
`
`time and other computer usage information and demographic information
`
`associated with said unique identifier…wherein the computer usage information
`
`comprises information about the user’s interactions with said computer software
`
`displaying advertising content and at least one other program.
`
`Furthermore, one of ordinary skill in the art would not have been motivated
`
`to add these limitations to any of the identified art (See Goldstein Declaration, ¶¶
`
`22-27, Exhibit 2013).
`
`VI. CONCLUSION.
`For at least the foregoing reasons, the Patent Owner respectfully requests
`
`that the Board grant this contingent Motion to Amend.
`
`
`Date: July 9, 2014
`
`
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`
`Respectfully submitted,
`
`
`
`By: /s/Jason S. Angell
`Jason S. Angell
`Reg. No. 51408
`Counsel for Patent Owner
`
`
`
`- 13 -
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`
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`
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`CERTIFICATE OF SERVICE
`
`It is certified that copies of the PATENT OWNER’S MOTION TO
`
`AMEND have been served on Petitioner as provided in 37 C.F.R. § 42.6(e) via
`
`electronic mail transmission addressed to the persons at the address below:
`
`Heidi L. Keefe
`Mark R. Weinstein
`Orion Armon
`COOLEY, LLP
`hkeefe@cooley.com
`mweinstein@cooley.com
`oarmon@cooley.com
`IPR2014-00052-53@cooley.com
`
`Date: July 9, 2014
`
`
`
`
`
`
`
`
`
`By: /s/ Jason S. Angell
`Jason S. Angell
`Reg. No. 51408
`Counsel for Patent Owner
`
`
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`
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`- 14 -
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`
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