`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`FACEBOOK, INC., MATCH.COM LLC,
`PEOPLE MEDIA, INC., and GOOGLE INC.
`Petitioner
`
`v.
`
`B.E. TECHNOLOGY, L.L.C.
`Patent Owner
`___________
`
`Case IPR2014-00052*
`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 RESPONSE TO PETITION
`(37 C.F.R. § 42.120)
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`* Case IPR2014-00743 has been joined with this proceeding.
`
`
`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`Page(s)
`
`RELIEF REQUESTED .................................................................................. 1
`
`TECHNOLOGY BACKGROUND AND THE INVENTOR’S
`SOLUTION .................................................................................................... 1
`
`III. GOVERNING LEGAL STANDARDS ......................................................... 3
`
`A. Obviousness .......................................................................................... 3
`
`IV. SUMMARY OF THE INSTITUTION DECISION ....................................... 4
`
`V.
`
`FACEBOOK’S OBVIOUSNESS ARGUMENTS ARE BASED ON
`HINDSIGHT DISCONNECTED FROM THE REALITIES OF THE
`ANGLES AND SHAW SYSTEMS ............................................................... 5
`
`A. A Person Of Ordinary Skill Would Not Consider Combining
`Angles And Shaw ................................................................................. 5
`
`1.
`
`2.
`
`“Download Access To Computer Software That . . .
`Records Computer Usage Information.” ................................... 5
`
`“Download Access To Computer Software That . . .
`Periodically Requests Additional Advertising Content.” .......... 9
`
`VI. THE ADOPTION OF THE “BROADEST REASONABLE
`CONSTRUCTION” RULE EXCEEDED THE PTO’S RULE
`MAKING AUTHORITY ............................................................................. 12
`
`VII. CONCLUSION ............................................................................................. 14
`
`
`
`
`
`
`
`
`
`-i-
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Federal Cases
`CFMT, Inc. v. YieldUp Int’l Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) ............................................................................ 3
`
`Cooper Techs. Co. v. Dudas,
`536 F.3d 1330 (Fed. Cir. 2008) .......................................................................... 12
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) ............................................................................ 4
`
`Lacavera v. Dudas,
`441 F.3d 1380 (Fed. Cir. 2006) .......................................................................... 12
`
`Princeton Biochemicals, Inc. v. Beckman Coulter, Inc.,
`411 F.3d 1332 (Fed. Cir. 2005) ........................................................................ 3, 4
`
`Tafas v. Doll,
`559 F.3d 134 (Fed. Cir. 2009) ............................................................................ 13
`
`Federal Statutes
`
`U.S.C. § 101 ............................................................................................................. 14
`
`35 U.S.C. 2(b)(2)(A) ................................................................................................ 13
`
`35 U.S.C. § 2(b)(2) ................................................................................................... 12
`
`35 U.S.C. § 103 .......................................................................................................... 3
`
`35 U.S.C. §§ 311-319 ................................................................................................ 1
`
`35 U.S.C. § 316, B.E. ................................................................................................. 1
`
`35 U.S.C. § 316(e) ..................................................................................................... 1
`
`35 U.S.C. §§ 326 and 316 ........................................................................................ 13
`
`Regulations
`
`37 C.F.R. 42.100(b) ................................................................................................. 12
`
`- ii -
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`
`
`
`
`37 C.F.R. § 42.120 ..................................................................................................... 1
`
`Other Authorities
`
`Garmin Int’l, Inc. v. Patent of Cuozzo Speed Techs. LLC,
`Case No. IPR2012-00001, slip op. (P.T.A.B. Jan. 9, 2013) ................................. 3
`
`H.R. Rep. No. 112-98, pt. 1, at 46-47 ...................................................................... 13
`
`
`
`- iii -
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`
`
`
`
`2001
`
`2002
`
`2003
`
`
`
`LIST OF EXHIBITS
`
`
`
`Declaration of Neal Goldstein
`
`Curriculum Vitae of Neal Goldstein
`
`Deposition Transcript of Robert Sherwood taken June 25, 2014
`
`- iv -
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`
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`Patent Owner B.E. Technology, L.L.C. (hereafter “B.E.”) respectfully
`
`submits this Patent Owner Response to petitioner Facebook, Inc.’s (“Facebook”)
`
`Petition for Inter Partes Review. This filing is timely under 35 U.S.C. §§ 311-319
`
`and 37 C.F.R. § 42.120.
`
`Facebook contends that Claims 11-13, 15, 18, and 20 of U.S. Patent No.
`
`6,628,314 (Ex. 1101) (“’314 patent”) are rendered obvious by U.S. Patent No.
`
`5,809,242 (Ex. 1103) (“Shaw”) in view of Melissa Dunn et al., Privacy and
`
`Profiling on the Web (Jun. 1, 1997) (Ex. 1105) (“W3C”). Under 35 U.S.C. §
`
`316(e), Facebook has the burden of proving its unpatentability contentions by a
`
`preponderance of the evidence. The motivation to combine Shaw and W3C is
`
`premised on pure hindsight and is insufficient to sustain Facebook’s obviousness
`
`argument.
`
`I.
`
`RELIEF REQUESTED.
`
`Pursuant to 35 U.S.C. § 316, B.E. respectfully requests that the Board
`
`determine that Claims 11-13, 15, 18, and 20 of the’314 patent are patentable in
`
`view of Shaw and W3C.
`
`II. TECHNOLOGY BACKGROUND AND THE INVENTOR’S
`SOLUTION.
`
`The ’314 patent claims a method and apparatus of providing
`
`demographically-targeted advertising to a computer user. Ex. 1101, Abstract, Col.
`
`22:41-42 (“A method and apparatus for providing an automatically upgradeable
`
`- 1 -
`
`
`
`
`
`software application that includes targeted advertising based upon demographics
`
`and user interaction with the computer.”). The patent recognized that the Internet
`
`presents a vast new advertising medium with “significant advantages for
`
`advertisers,” including that advertising can be targeted “demographically or
`
`reactively.” Id., Col. 1:44-50.
`
`But acquiring information from potential consumers so that advertising
`
`could be specially targeted presented problems. “[S]tudies have shown that while
`
`people are concerned about privacy issues, and, in particular, do not wish to
`
`provide specific information that identifies them (such as their name, address, or
`
`Social Security number), they generally do not mind providing demographic
`
`information, nor do they mind monitoring of their computer usage as long as their
`
`usage is not associated with any specific information that could be used to identify
`
`them.” Ex. 1101, Col. 2:41-48. There also were limits to the type of usage
`
`information that could be collected. See id., Col. 3:11-14 (“One of the
`
`disadvantages of prior art systems that acquire data regarding an end-user’s
`
`computer usage is that they are generally limited to gathering information
`
`concerning only certain limited uses of the computer.”); id., Col. 3:20-22 (“By
`
`limiting the reported data in this manner, it is difficult to develop accurate profiles
`
`for the individual users that are useful in targeting advertising.”). The ’314 patent
`
`claims an improvement over these prior art methods by providing an anonymous
`
`- 2 -
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`
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`system that permits targeting of advertising based upon collected demographic
`
`information.
`
`III. LEGAL STANDARDS GOVERNING OBVIOUSNESS.
`
`Obviousness under 35 U.S.C. § 103 can be found only when a combination
`
`of prior art references shows all of the elements of a challenged claim. If a single
`
`element is absent from a combination of prior art references, the claim cannot be
`
`considered obvious, even when the evidence properly establishes a motivation to
`
`make the combination. See CFMT, Inc. v. YieldUp Int’l Corp., 349 F.3d 1333,
`
`1342 (Fed. Cir. 2003) (“Obviousness requires a suggestion of all limitations in a
`
`claim”) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)); Garmin Int’l, Inc. v.
`
`Patent of Cuozzo Speed Techs. LLC, Case No. IPR2012-00001, slip op. at 15
`
`(P.T.A.B. Jan. 9, 2013) (denying inter partes review request under 35 U.S.C. § 103
`
`where prior art combination did not disclose all claim limitations).
`
`As the Federal Circuit has explained, when differences between the prior art
`
`and the claimed subject matter are evaluated, 35 U.S.C. section 103 “specifically
`
`requires consideration of the claimed invention ‘as a whole.’” Princeton
`
`Biochemicals, Inc. v. Beckman Coulter, Inc., 411 F.3d 1332, 1337 (Fed. Cir. 2005)
`
`(citing Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1275 (Fed. Cir. 2004)). “The ‘as a
`
`whole’ instruction in title 35 prevents evaluation of the invention part by part.” Id.
`
`(citing Ruiz, 357 F.3d at 1275). “Without this important requirement, an
`
`- 3 -
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`
`
`
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`obviousness assessment might successfully break an invention into its component
`
`parts, then find a prior art reference corresponding to each component.” Id. The
`
`result would be to “import hindsight into the obviousness determination by using
`
`the invention as a roadmap to find its prior art components.” Id. The required “as
`
`a whole” assessment prevents the importation of hindsight into the analysis by
`
`requiring proof that “an artisan of ordinary skill in the art at the time of invention,
`
`confronted by the same problems as the inventor and with no knowledge of the
`
`claimed invention, would have selected the various elements from the prior art and
`
`combined them in the claimed manner.” Id.; see also Kinetic Concepts, Inc. v.
`
`Smith & Nephew, Inc., 688 F.3d 1342, 1368-69 (Fed. Cir. 2012) (“We must still be
`
`careful not to allow hindsight reconstruction of references to reach the claimed
`
`invention without any explanation as to how or why the references would be
`
`combined to produce the claimed invention.”) (quoting Innogenetics, N.V. v.
`
`Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir. 2008)).
`
`IV. SUMMARY OF THE INSTITUTION DECISION.
`
`Facebook’s petition asserted, among other things, that Claims 11-13, 15, 18,
`
`and 20 of the ’314 patent are unpatentable over Shaw in view of W3C. Paper 10 at
`
`6. B.E. elected not to file a preliminary response. The Board instituted an inter
`
`partes review based on the asserted obviousness of Claims 11-13, 15, 18 over
`
`Shaw in view of W3C. Id. at 16. No other grounds were authorized for inter
`
`- 4 -
`
`
`
`
`
`partes review.
`
`V.
`
`SHAW DOES NOT TEACH PROVIDING A UNIQUE IDENTIFIER
`TO THE COMPUTER.
`
`Claim 11 of the ’314 patent includes the step of “providing a unique
`
`identifier to the computer, wherein said identifier uniquely identifies information
`
`sent over said computer network from the computer to said server.” Ex. 1101, Col.
`
`22:59-62. Facebook contends that “Shaw discloses an identifier in the form of an
`
`e-mail address (also referred to as a user name) that is unique to each member.”
`
`Petition at 16. The e-mail address in Shaw does not meet the claim limitation
`
`because the e-mail address is not “provided” to the computer by the server and the
`
`e-mail address identifies the user, not the computer.
`
`A.
`
`Shaw Does Not Disclose “Providing A Unique Identifier To The
`Computer.”
`
`The Shaw Reference does not disclose that the e-mail address is provided to
`
`the computer. Instead, Shaw shows that the e-mail address is provided by the user,
`
`at the client, to the server. See Ex. 1103, Col. 12:6-13 (“On first time use, the
`
`client program passes to the server system 104 the selected user name and
`
`password.”). The ’314 patent, on the other hand, explicitly provides that the
`
`unique identifier is “provided” to the computer by the server. First, the claim
`
`language is unambiguous: “providing a unique identifier to the computer.” Ex.
`
`1101, Col. 22:59. Second, in describing how a new account is created, the
`
`- 5 -
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`
`
`
`
`specification states that “[o]nce all required information has been provided, flow
`
`moves to block 164 where the application reports demographic data back to server
`
`22, receives an assigned ID from the server, and stores the new user data at the
`
`client computer in user data storage 34.” Id., Col. 18:11-16 (emphasis added). A
`
`person of ordinary skill in the art would understand the difference between an
`
`identifier being provided from the server to the client, in the case of the ’314
`
`patent, and an identifier being provided from the client to the server, in the case of
`
`Shaw. In the absence of the server providing the unique identifier to the client
`
`computer, Shaw fails to show this element of claim 11.
`
`B.
`
`The Teaching Of A User Identifier Is Distinct From A Computer
`Identifier.
`
` Not only must the unique identifier of claim 11 of the ’314 patent be
`
`provided to the computer, but the unique identifier must uniquely identify “the
`
`computer” so that it may uniquely identify “information sent over said computer
`
`network from the computer to the server.” Ex. 1101, Col. 22:59-62. Shaw
`
`discloses that more than one user may utilize a single client computer. Ex. 1103,
`
`Col. 21:12-18. Where, as in Shaw, the identifier identifies a user, and there may be
`
`more than one user on a client computer, the identifier neither identifies the
`
`computer nor uniquely identifies the information sent from the computer to server.
`
`The Shaw e-mail address does not uniquely identify information sent from
`
`the computer to the server.
`
`- 6 -
`
`
`
`
`
`VI. A PERSON OF ORDINARY SKILL WOULD NOT CONSIDER
`COMBINING SHAW WITH W3C.
`
`Shaw is a mostly disconnected e-mail system that is not dependent on the
`
`use of an identifier that can be used on the World Wide Web. The W3C proposal
`
`addressed a possible personal profile standard that could be used on the Web. The
`
`W3C profile is of no use to the Shaw system. Ex. 2001 ¶ 23.
`
`In addition, there is no reason why an unapproved proposal of this nature
`
`would have been adopted by one of ordinary skill. Pursuing a standard not suited
`
`to the Shaw system before the standard was approved would not have been
`
`prudent. Id. ¶ 24.
`
`VII. THE ADOPTION OF THE “BROADEST REASONABLE
`CONSTRUCTION” RULE EXCEEDED THE PTO’S RULE MAKING
`AUTHORITY.
`
`Pending before the Federal Circuit is the issue of whether under 37 C.F.R.
`
`42.100(b), in an inter partes review, a claim in an unexpired patent should “be
`
`given its broadest reasonable construction in light of the specification of the patent
`
`in which it appears,” rather than the construction that would be applied in a judicial
`
`proceeding. B.E. objects to the broadest reasonable construction (“BRC”) standard
`
`and request that claim construction be carried out in a manner consistent with the
`
`rules that would be applied in B.E.’s infringement actions against Microsoft and
`
`others in the United States District Court for the Western District of Tennessee.
`
`The adoption of the BRC standard exceeds the PTO’s limited rule making
`
`- 7 -
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`
`
`
`
`authority. It is settled that the office has no substantive rule making authority.
`
`Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336 (Fed. Cir. 2008); see also
`
`Lacavera v. Dudas, 441 F.3d 1380, 1383 (Fed. Cir. 2006). The adoption of the
`
`BRC standard was substantive because it can affect the meaning of the claims and
`
`ultimately the validity of the patent. The Board has acknowledged that there is no
`
`dispute that “[p]rior to the AIA, 35 U.S.C. § 2(b)(2) was said to be the ‘broadest of
`
`the Office’s rulemaking powers,’” and those powers were limited to the
`
`promulgation of procedural rules.
`
`The argument that 35 U.S.C. §§ 326 and 316 granted new rule making
`
`authority has no merit. Both of these sections refer to “conduct” of, respectively,
`
`inter partes reviews and post grant reviews. The use of the word “conduct” does
`
`not signify “substance.” The language of the statute is consistent with language of
`
`35 U.S.C. 2(b)(2)(A) allowing the PTO to govern the “conduct” of proceedings in
`
`the Office. The Federal Circuit has recognized that this language confers no
`
`substantive authority. Tafas v. Doll 559 F.3d 134, 1352 (Fed. Cir. 2009), vacated
`
`and reh'g en banc granted, 328 F. App’x 658 (Fed. Cir. 2009), stayed, 331 F.
`
`App’x 748 (Fed. Cir. 2009). Nothing contained in either section 316 or 326
`
`confers substantive rule-making authority. In addition, the rule providing for the
`
`BRC is not a reasonable interpretation of the AIA. The rule is therefore
`
`independently invalid for that reason.
`
`- 8 -
`
`
`
`
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`Inter partes reviews were intended by congress to provide an adjudicative
`
`alternative to the determination of patent validity, “[t]he Act converts inter partes
`
`reexamination from an examinational to an adjudicative proceeding, and
`
`renames the proceeding ‘inter partes review.’” H.R. Rep. No. 112-98, pt. 1, at 46-
`
`47 (emphasis added). In an inter partes review, the patent owner does not have the
`
`right to amend claims that existed during examination and reexamination. Under
`
`these circumstances, application of the BRC standard is not consistent with the
`
`letter or spirit of the AIA.
`
`VIII. CONCLUSION.
`For the foregoing reasons, B.E. respectfully requests a final written decision
`
`confirming the patentability of claims 11-13, 15, 18, and 20 under U.S.C. § 101.
`
`
`
`Dated: July 9, 2014
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`By: /s/ Jason S. Angell
`Jason S. Angell
`Reg. No. 51408
`Counsel for Patent Owner
`
`
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`- 9 -
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`
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`CERTIFICATE OF SERVICE
`
`It is certified that copies of the PATENT OWNER’S RESPONSE TO
`
`PETITION 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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`- 10 -
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