Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`Facebook, Inc.
`Petitioner
`
`v.
`
`B.E. Technology, L.L.C.
`Patent Owner
`
`U.S. Patent No. 6,628,314
`Filing Date: October 30, 2000
`Issue Date: September 30, 2003
`Title: COMPUTER INTERFACE METHOD AND APPARATUS WITH TARGETED
`ADVERTISING
`
`
`
`
`Inter Partes Review No. ______
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`

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`
`
`Table of Contents
`
`
`
`I. 
`
`II. 
`III. 
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ..................................... 1 
`A. 
`Real Party-ln-lnterest under 37 C.F.R. § 42.8(b)(1) ..................................... 1 
`B. 
`Related Matters under 37 C.F.R. § 42.8(b)(2) ............................................ 1 
`C. 
`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3) ........................... 1 
`D. 
`Service Information .................................................................................. 2 
`E. 
`Power of Attorney .................................................................................... 2 
`PAYMENT OF FEES - 37 C.F.R. § 42.103 ........................................................... 2 
`REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. §§
`42.104 AND 42.108 ........................................................................................... 2 
`A. 
`Grounds for Standing under 37 C.F.R. § 42.104(a) ..................................... 2 
`B. 
`Identification of Challenge under 37 C.F.R. § 42.104(b) and Statement
`of Precise Relief Requested ..................................................................... 3 
`Threshold Requirement for Inter Partes Review 37 C.F.R. § 42.108(c) ......... 4 
`C. 
`SUMMARY OF THE ‘314 PATENT ..................................................................... 4 
`A. 
`Brief Description ...................................................................................... 4 
`B. 
`Summary of the Prosecution History of the ‘314 Patent ............................... 5 
`CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3)................................. 7 
`A. 
`Legal Overview ....................................................................................... 7 
`B. 
`Clarification of “associating” ...................................................................... 7 
`C. 
`Clarification of “periodically” ...................................................................... 8 
`PERSON HAVING ORDINARY SKILL IN THE ART & STATE OF THE ART ......... 8 
`VI. 
`VII.  CLAIMS 11-13, 15, 18, AND 20 OF THE ‘314 PATENT ARE
`UNPATENTABLE .............................................................................................. 9 
`Ground 1 – Claims 11-13, 15, 18, and 20 Are Obvious Under 35
`A. 
`U.S.C. § 103(a) Over Shaw in View of the W3C Submission ..................... 10 
`Ground 2 – Claims 11-13, 18, and 20 Are Obvious Under 35 U.S.C. §
`103(a) Over Logan In View of the Knowledge of a Person Having
`Ordinary Skill in the Art (“PHOSITA”) ....................................................... 32 
`
`IV. 
`
`V. 
`
`B. 
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`-i-
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`Table of Contents
`(continued)
`
`
`
`C. 
`
`Ground 3 – Claims 11 and 15 Are Obvious Under 35 U.S.C. § 103(a)
`Over Logan In View of Merriman ............................................................. 49 
`VIII.  CONSOLIDATION OF THIS PETITION WITH THE CONCURRENTLY FILED
`PETITION ....................................................................................................... 51 
`CONCLUSION ................................................................................................ 52 
`
`IX. 
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`-ii-
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`List of Exhibits
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`
`
`Exhibits Cited in this Petition
`Exhibit 1101: U.S. Patent No. 6,628,314 to Hoyle (“the ‘314 patent”)
`Exhibit 1102: Excerpted File History of the ‘314 Patent
`Exhibit 1103: U.S. Patent No. 5,809,242 to Shaw et al., filed on April 19, 1996 and issued
`on September 15, 1998 (“Shaw”)
`Exhibit 1104: Sheree R. Curry, Pointcast and its Wannabes (1996)
`Exhibit 1105: Melissa Dunn et al., Privacy and Profiling on the Web (1997) (“W3C
`Submission”)
`Exhibit 1106: U.S. Patent No. 6,587,127 to Leeke et al., filed on November 24, 1998 and
`issued on July 1, 2003 (“Leeke”)
`Exhibit 1107: U.S. Patent No. 5,721,827 to Logan et al., filed on October 2, 1996 and issued
`on February 24, 1998 (“Logan”)
`Exhibit 1108: U.S. Patent No. 5,948,061 to Merriman et al., filed on October 29, 1996 and
`issued on September 7, 1999 (“Merriman”)
`Exhibit 1109: U.S. Patent No. 5,918,014 to Robinson, filed on December 26, 1996 and
`issued on June 29, 2999 (“Robinson”)
`Exhibit 1110: U.S. Patent No. 5,848,396 to Gerace, filed on April 26, 1996 and issued on
`December 8, 1998 (“Gerace”)
`Exhibit 1111: Declaration of Robert J. Sherwood In Support Of This Petition (“Sherwood
`Decl.”)
`Exhibit 1112: U.S. Patent No. 7,225,142 to Apte et al., filed on August 1, 1996 and issued
`on May 29, 2007
`Exhibit 1113: U.S. Patent No. 6,141,010 to Hoyle, filed on July 17, 1998, and issued on
`October 31, 2000
`Exhibit 1114: Excerpted File History of U.S. Patent No. 6,141,010
`
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`-iii-
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`List of Exhibits
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`
`
`Exhibit 1115: Neil Barrett, Advertising on the Internet (Sept. 1997)
`Exhibit 1116: Jim Sterne, Advertising on the Web (Sean Dixon & Patrick Kanouse,
`Jan.1997)
`Exhibit 1117: Simon St. Laurent, Cookies (Mar. 1998)
`Exhibit 1118: Don Peppers & Martha Rogers, The One to One Future (Dec. 1996)
`Exhibit 1119: Robbin Zeff & Brad Aronson, Advertising on the Internet (Tim Ryan et al., July
`1997)
`Exhibit 1120: Ramez Elmasri & Shamkant B. Navathe, Fundamentals of Database Systems
`(Dan Joraanstad et al., 2nd ed. Aug. 1998)
`Exhibit 1121: Mark R. Brown et al., Using Netscape 3 (Kellie M. Brooks et al. eds., special
`ed., Dec. 1996)
`Exhibit 1122: Rosalind Resnick & Dave Taylor, The Internet Business Guide (Cindy Morrow
`et al., 2nd ed., Jan. 1995)
`Exhibit 1123: U.S. Patent No. 6,134,592 to Montulli, filed on August 27, 1997 and issued on
`October 17, 2000
`Exhibit 1124: M. Crawford, Transmission of IPv6 Packets over FDDI Networks (1998)
`Exhibit 1125: The American Heritage Dictionary of the English Language (Anne H.
`Soukhanov et al., 3rd ed. 1992)
`Exhibit 1126: Alan Freedman, The Computer Desktop Encyclopedia (2nd ed. 1999)
`Exhibit 1127: U.S. Patent No. 5,826,242 to Montulli, filed August 27, 1997 and issued on
`October 20, 1998
`Exhibit 1128: Non-Final Office Action, U.S. App. No. 13/107,231 (July 29, 2013)
`Exhibit 1129: Persistent Client State HTTP Cookies, Preliminary Specification, Netscape
`Communications Corp. (1996)
`
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`-iv-
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`List of Exhibits
`
`
`
`Exhibit 1130: U.S. Patent No. 5,724,521 to Dedrick, filed November 3, 1994 and issued on
`March 3, 1998
`Exhibit 1131: U.S. Patent No. 5,796,952 to Davis et al., filed on March 21, 1997 and issued
`on August 18, 1998.
`Exhibit 1132: D. Kristol & L. Montulli, HTTP State Management Mechanism, Network
`Working Group, Request for Comments 2109 (Feb. 1997)
`Exhibit 1133: Network Working Group, Request for Comments: 1945 HTTP/1.0 (May 1996)
`available at http://www.w3.org/Protocols/rfc1945/rfc1945
`Exhibit 1134: U.S. Patent No. 5,933,811 to Angles et al., filed on August 20, 1996 and
`issued on August 3, 1999 (“Angles”)
`Exhibit 1135: Microsoft Corp., A History of Windows, available at
`http://windows.microsoft.com/en-us/windows/history
`Exhibit 1136: Affidavit of Ralph Swick Regarding the Authenticity and Publication Date of
`“Privacy and Profiling on the Web” and the “Open Profiling Specification”
`Published on June 9, 1997
`Exhibit 1137: Pat Hensley et al., Proposal for an Open Profiling Standard, v1.0 (June 2,
`1997), available at http://www.w3.org/TR/NOTE-OPS-FrameWork
`
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`-v-
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`

`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`
`Facebook, Inc. (“Petitioner”) petitions for inter partes review (“IPR”) under 35 U.S.C.
`
`§§ 311-319 and 37 C.F.R. § 42 of claims 11-13, 15, 18, and 20 of U.S. Patent No.
`
`6,628,314 (Ex. 1101) (“the ‘314 patent”), and asserts there is a reasonable likelihood that it
`
`will prevail with respect to each of the claims challenged in this Petition.
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`A.
`Real Party-ln-lnterest under 37 C.F.R. § 42.8(b)(1)
`Petitioner, Facebook, Inc. is the real party-in-interest for the instant Petition.
`
`Related Matters under 37 C.F.R. § 42.8(b)(2)
`B.
`The ‘314 patent is asserted in B.E. Technology, L.L.C. v. Facebook, Inc., No. 12-cv-
`
`2769-JPM, pending in the U.S. District Court for the Western District of Tennessee. B.E.
`
`Technology, L.L.C. (“Patent Owner” or “B.E.”) filed suit on September 7, 2012, and
`
`Facebook was served with process on October 9, 2012. B.E. alleges that some of the
`
`targeted advertising functionalities of Facebook’s website and mobile application for smart
`
`phones infringe claims 11-13, 15, 18, and 20 of the ‘314 patent.
`
`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3)
`C.
`Petitioner provides the following designation of counsel.
`
`LEAD COUNSEL
`Heidi L. Keefe (Reg. No. 40,673)
`hkeefe@cooley.com
`zpatdcdocketing@cooley.com
`Cooley LLP
` ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`
`
`
`BACK-UP COUNSEL
`Mark R. Weinstein
`mweinstein@cooley.com
`zpatdcdocketing@cooley.com
`Cooley LLP
` ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`1
`
`

`

`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`Tel: (650) 843-5007
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`Fax: (650) 849-7400
`
`Petitioner requests authorization to file a motion for Mark R. Weinstein, an
`
`experienced patent litigator and counsel for Petitioner, to appear pro hac vice.
`
`Service Information
`D.
`The Petition is being served by Federal Express to the ‘314 Patent Owner’s attorney
`
`of record, James D. Stevens. Facebook may be served at the address provided above and
`
`consents to electronic service by e-mail at the address provided above.
`
`Power of Attorney
`E.
`Filed concurrently with this petition in accordance with 37 C.F.R. § 42.10(b).
`
`II.
`
`PAYMENT OF FEES - 37 C.F.R. § 42.103
`This Petition requests review of six claims of the ‘314 patent and is accompanied by
`
`a payment of $23,000. 37 C.F.R. § 42.15. No excess claims fees are required. Thus, this
`
`Petition meets the fee requirements of 35 U.S.C. § 312(a)(1).
`
`III.
`
`REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. §§ 42.104 AND 42.108
`A.
`Grounds for Standing under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ‘314 patent is eligible for IPR and further certifies that it is
`
`not barred or estopped from requesting IPR challenging the identified claims on the grounds
`
`identified within the present petition.
`
`
`
`2
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`

`

`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`
`B.
`
`Identification of Challenge under 37 C.F.R. § 42.104(b) and Statement of
`Precise Relief Requested
`Petitioner requests IPR of claims 11-13, 15, 18, and 20 of the ‘314 patent and
`
`requests that each claim be found unpatentable. The prior art cited includes:
`
` U.S. Patent No. 5,809,242 to Shaw et al., filed on Apr. 19, 1996, and issued
`
`on Sept. 15, 1998 (Ex. 1103) (“Shaw”).
`
` Melissa Dunn et al., Privacy and Profiling on the Web (Jun. 9, 1997) (Ex.
`
`1105) (“W3C Submission”).
`
` U.S. Patent No. 5,721,827 to Logan et al., filed on Oct. 2, 1996, and issued
`
`on Feb. 24, 1998.
`
` U.S. Patent No. 5,948,061 to Merriman et al., filed on Oct. 29, 1996, and
`
`issued on Sept. 7, 1999.
`
`An explanation of why each claim is unpatentable under the statutory grounds
`
`identified below is provided in the form of detailed claim charts. Additional support for each
`
`ground of rejection is set forth in the Declaration of Robert J. Sherwood (Ex. 1111)
`
`(“Sherwood Decl.”), an expert in the field.
`
`Ground
`
`Ground 1
`
`Ground 2
`
`Ground 3 15
`
`Basis for Challenge
`
`‘314 Patent
`Claims
`Obvious over Shaw in view of the W3C Submission under 35
`11-13, 15,
`U.S.C. §103(a)
`18, 20
`11-13, 18, 20 Obvious over Logan in view of the knowledge of a Person
`Having Ordinary Skill in the Art under 35 U.S.C. §103(a)
`Obvious over Logan in view of Merriman under 35 U.S.C.
`§103(a)
`
`
`
`3
`
`

`

`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`
`
`Shaw, Logan, and Merriman are each prior art references under 35 U.S.C §
`
`102(e)(2). The W3C Submission is prior art under 35 U.S.C § 102(b).
`
`Threshold Requirement for Inter Partes Review 37 C.F.R. § 42.108(c)
`C.
`Inter partes review of claims 11-13, 15, 18, and 20 should be instituted because this
`
`Petition establishes a reasonable likelihood that Facebook will prevail with respect to each
`
`of the claims challenged. 35 U.S.C. § 314(a). Each limitation of the challenged claims is
`
`disclosed or suggested by the prior art references.
`
`IV.
`
`SUMMARY OF THE ‘314 PATENT
`A.
`Brief Description
`The ‘314 patent claims downloadable software that presents targeted advertising to
`
`a computer user based on demographic information. (Ex. 1101, Col. 5:8-43; Figs. 5 & 5a.)
`
`
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`
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`The system described in the ‘314 patent delivers targeted advertising from a server
`
`to a computer user. The ‘314 patent does not address how to select an advertisement for a
`4
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`

`

`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`user based on demographic data and does not claim to solve any significant technological
`
`problem. By 1998, the art of computer advertising had advanced to a point where
`
`demographically-targeted computer advertising was well developed and commonly used.
`
`(Sherwood Decl., ¶¶ 25-26, 28.) Admissions in the ‘314 specification confirm that the
`
`technology presented in claims 11-13, 15-18, and 20 was already known in the art. The
`
`specification alleges that a primary point of novelty for the ‘314 patent is real-time targeting
`
`of advertising based on demographics and individuals’ computer usage information. (Ex.
`
`1001, Col. 3:23-32, Col. 16:10-28.) But targeting based on computer usage information
`
`(generally or in real time) is not claimed, and the specification acknowledges that it was also
`
`known in the prior art. (See Ex. 1001, Col. 2:51-65, 3:23-26.) As shown below, claims 11-
`
`13, 15, 18, and 20 are not patentably distinguishable from the prior art.
`
`Summary of the Prosecution History of the ‘314 Patent
`B.
`The ‘314 patent is a divisional of U.S. Patent No. 6,141,010 (“the ‘010 patent”). (Ex.
`
`1101 at 1.) The Patent Owner filed the application for the ‘010 patent (09/118,351) on July
`
`17, 1998, and it issued on October 31, 2000. (Ex. 1113 at 1.) The Patent Owner filed the
`
`application for the ‘314 patent with claims 1-22 on October 30, 2000, one day before the
`
`‘010 patent issued. (Id.; Ex. 1101 at 1.) The restriction requirement that resulted in the
`
`application for the ‘314 patent was issued before any substantive examination of the
`
`application for the ‘010 patent. (Ex. 1114 at 13-15.)
`
`
`
`5
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`

`

`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`
`The application for the ‘314 patent received only a cursory review. An Examiner’s
`
`Statement of Reasons for Allowance (“the ESRA”) was drafted on April 30, 2003—the same
`
`day the only prior art search for the ‘314 patent was conducted—a search that identified
`
`only two prior art references. (Id. at 7.) No rejections were issued for any claims of the ‘314
`
`patent. (See Ex. 1102.) The ESRA identified U.S. Patent No. 5,937,392 to Alberts and U.S.
`
`Patent No. 5,948,061 to Merriman et al. as the closest prior art. (Id. at 4-5.) The ESRA
`
`indicated that claims 1-22 were allowable because they “claimed uniquely distinct features
`
`… which are not found in the prior art.” (Id. at 3.) Specifically, the ESRA pointed to the
`
`automatic upgradeability feature as the allegedly novel feature of the invention. (Id. at 3.)
`
`That feature, however, is not recited in independent claim 11 or any of its challenged
`
`dependent claims.
`
`On August 4, 2003, the Patent Owner notified the examiner that the patentably
`
`distinct feature cited in the ESRA is not recited in independent claim 11. (Id. at 13.) The
`
`Examiner did not respond, and the ‘314 patent issued on September 30, 2003. The patent
`
`owner never filed an IDS, though one was filed in the parent application (the ‘010 patent).
`
`(See Ex. 1102 at 7; Ex. 1114 at 5.)
`
`
`
`6
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`

`

`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`V.
`
`CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(b)(3)
`A.
`Legal Overview
`A claim subject to IPR is given its “broadest reasonable construction in light of the
`
`specification of the patent in which it appears.”1 37 C.F.R. § 42.100(b). This Petition
`
`applies the broadest reasonable interpretation standard (“BRI”) of the plain and ordinary
`
`meaning of each claim term in the ‘314 patent. Specific terms that require claim
`
`construction are discussed below.
`
`B.
`
`Clarification of “associating”
`
`Claim 11 recites “associating” a unique identifier with demographic information and
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`“associating” demographic and computer usage data with a unique identifier. (Ex. 1101,
`
`claim 11.) “Associating” is not expressly defined in the ‘314 patent but it is a common word
`
`meaning “to connect or join together, combine.” (Ex. 1125 at 4.) Petitioner asserts that in
`
`light of the specification the ordinary meaning of “associating” should be adopted with the
`
`additional clarification that “associating” includes indirect and direct “associating.” The
`
`specification supports this construction. For example, claim 11 recites “associating said
`
`1 Interpretations of the claims in this IPR are not binding on Petitioner in litigation. In re
`
`Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Furthermore, claim construction disputes that are
`
`irrelevant to this IPR may arise in the District Court Litigation because the Court ordered the
`
`Defendants in all 17 cases to jointly brief claim construction, or because of ambiguities in
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`B.E. Technology’s Infringement Contentions.
`
`
`
`7
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`

`

`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`computer usage information with said demographic information using said unique identifier.”
`
`(Ex. 1101, Col. 23:6-7 (emphasis added).) Thus, the claim language under its broadest
`
`reasonable interpretation indirectly associates two distinct sets of data (usage and
`
`demographic information) using a unique identifier. The specification also teaches indirectly
`
`associating banner ads with user demographics via a user ID. (Ex. 1101, Col. 16:20-22.)
`
`Therefore, Petitioner asserts that “associating” means “to connect, join together, or
`
`combine, either directly or indirectly.” (Ex. 1101, Col. 16:20-22, 23:6-7.)
`
`C.
`
`Clarification of “periodically”
`
`Claim 11 of the ‘314 patent recites “computer software that…periodically requests
`
`additional advertising content.,” and “periodically acquiring said unique identifier….” (Ex.
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`1101, Col. 22:52-56, 23:3-4.) The American Heritage Dictionary defines “Periodically” as:
`
`“(1) having or marked by repeated cycles; (2) happening or appearing at regular intervals; or
`
`(3) recurring or reappearing from time to time; intermittent.” (Ex. 1125, 6.) Consistent with
`
`the broadest reasonable interpretation consistent with the specification, “periodically” should
`
`be construed to mean “recurring from time to time.” (Ex. 1101, Abstract (“from time to time”),
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`Col. 8:41-43, 14:42-43 (“periodically…as needs to be replaced”) 16:17-20 (“from time to
`
`time”).)
`
`VI.
`
`
`PERSON HAVING ORDINARY SKILL IN THE ART & STATE OF THE ART
`A PHOSITA is presumed to be aware of the relevant prior art, thinks along
`
`conventional wisdom in the art, and is a person of ordinary creativity. The ‘314 patent is
`
`
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`8
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`

`

`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`directed toward e-commerce through targeted advertising. (Ex. 1001, Abstract.) A
`
`PHOSITA would have had knowledge of the literature concerning targeted advertising on
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`the Internet as of July 17, 1998.
`
`
`
`With respect to the subject matter of the ‘314 patent, a PHOSITA would have (1) a
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`Bachelor’s degree in computer science, electrical engineering, or a similar field, or (2)
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`commensurate industry experience of at least two years in Internet advertising methods,
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`browser technology, and related computer programming, or (3) a combination of (1) and (2).
`
`(Sherwood Decl. ¶¶ 1-17.)
`
`VII. CLAIMS 11-13, 15, 18, AND 20 OF THE ‘314 PATENT ARE UNPATENTABLE
`As detailed in the claim charts below, all limitations of claims 11-13, 15, 18, and 20 of
`
`the ‘314 patent were well-known in the prior art. The ‘314 patent claims merely recite the
`
`combination of “prior art elements according to known methods to yield predictable results,”
`
`or “simple substitution of one known element for another to obtain predictable results.”
`
`MPEP § 2143 (A), (B); see also MPEP § 2143 (E), (F), (G).
`
`Each of the prior art references relied upon in this Petition discloses a computer
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`program or software that provides targeted advertising to users. As such, the references
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`are all analogous art and one of ordinary skill in the art would readily recognize the
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`desirability of combining features of the various references to create a system that offered
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`the advantages taught by the combined teachings of the prior art. MPEP § 2141.01(a).
`
`Specific motivation to combine each of the references is set forth below and in the attached
`
`
`
`9
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`

`

`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`Sherwood Declaration. The limitations of claim 11 are separately addressed and numbered
`
`11a–11k in the charts below. Some limitations need no further discussion beyond the
`
`quotes and figures in the chart below, so narrative is not included for all limitations.2
`
`A.
`
`Ground 1 – Claims 11-13, 15, 18, and 20 Are Obvious Under 35 U.S.C. §
`103(a) Over Shaw in View of the W3C Submission
`U.S. Patent No. 5,809,242 to Shaw et al. (“Shaw,” Ex. 1103) issued from an
`
`
`
`application filed on April 19, 1996, and therefore, qualifies as prior art under at least 35
`
`U.S.C. § 102(e)(2). Privacy and Profiling on the Web (“W3C Submission”) is a Microsoft
`
`submission to the World Wide Web Consortium (“W3C”) detailing a proposed standard for
`
`tracking and targeting users on the Internet. The W3C Submission qualifies as prior art
`
`under 35 U.S.C. § 102(b) as it was published on June 9, 1997, more than a year prior to the
`
`earliest filing date of the ‘314 patent. (Ex. 1136.)
`
`
`
`Shaw, entitled “Electronic Mail System for Displaying Advertisements at Local
`
`Computer Received from Remote System While the Local Computer Is Off-Line the Remote
`
`System,” discloses an e-mail communications system that displays targeted advertisements
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`to a user who is online or off-line. (Shaw, Ex. 1103, Col. 1:8-11.) Shaw’s email/advertising
`
`system includes software downloaded to the user’s computer that periodically acquires
`
`advertisements from a server, and records the user’s response to the advertisements, and
`
`
`2 Petitioner applies the broadest reasonable interpretation to each limitation. Petitioner
`
`reserves the right to assert the defense of indefiniteness in the proper forum.
`
`
`
`10
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`

`

`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`keeps track of usage of the software. (Id., Col. 3:35-36, 5:19-30, 6:21-40.) The advertising
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`system in Shaw, although described in the context of an e-mail system, “could be used to
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`provide advertisements to users in online systems other than e-mail systems,” such as
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`viewing web pages. (Id., Col. 23:64-24:4.) Ground 1 relies on Shaw to disclose the majority
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`of the limitations recited in claims 11-13, 15, 18, and 20.
`
`
`
`The W3C Submission, entitled “Privacy and Profiling on the Web,” was a proposal
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`for a Web standard for creating and maintaining profiles of Internet users to facilitate
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`targeted advertising. (See W3C Submission, Ex. 1105 at 1.) Ground 1 relies on the W3C
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`Submission for certain limitations relating to the assignment of unique identifiers and
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`acquiring computer usage information.
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`
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`A limitation-by-limitation explanation of the disclosures of Shaw and the W3C
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`Submission, their application to the claims of the ‘314 patent, and specific rationales to
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`combine the references to render the claims obvious, are provided below.
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`
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`Limitation 11p (Preamble), 11a, 11b, 11c: Shaw discloses each and every aspect
`
`of these claim limitations, as shown in the chart below.
`
`Claim Language
`11. A method of
`providing
`demographically-
`targeted
`advertising to a
`computer user,
`comprising the
`
`U.S. Patent 5,809,242 (Shaw) in view of the W3C Submission
`“The present invention is directed to an electronic mail system that
`displays advertisements to remote users, and in particular, to a system
`that displays targeted advertisements to remote users when the users
`are off-line.” Shaw, Ex. 1103, Col. 1:8-11.
`
`“When first using the system of the present invention, the user
`completes a member profile (or survey) at the client computer. The
`
`
`
`11
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`Petition for Inter Partes Review of
`Patent No. 6,628,314
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`
`Claim Language
`steps of:
`
`U.S. Patent 5,809,242 (Shaw) in view of the W3C Submission
`member profile records information about the user, e.g., hobbies,
`interests, employment, education, sports, demographics, etc. . . The
`server system utilizes the information in the member profile to
`determine which advertisements should be directed to the user.”
`Shaw, Ex. 1103, Col. 5:5-16.
`“The client program periodically communicates with a server system.
`In the representative embodiment, the server system comprises a
`number of mail servers and a database management system. Each
`mail server is a high speed processor with secondary memory. Each
`mail server is coupled to the database management system and to an
`external computer network, such as, for example, the Internet.” Shaw,
`Ex. 1103, Col 3:34-41.
`“Referring again to FIG. 1, the client computer 101 selectively
`communicates with a server system 104 over the network 103 using
`the communication interface 102. The server system 104 is coupled to
`the network 103 via a communications server 105.” Shaw, Ex. 1103,
`Col. 9:31-35.
`
`See Shaw, Ex. 1103, Fig. 1 (client computer 101 and servers 104).
`“Referring again to FIG. 3, once the user's account is activated (step
`304), the user is asked to complete a member profile (step 305).”
`Shaw, Ex. 1103, Col. 12:22-24.
`
`“The member profile records information about the user, e.g., hobbies,
`interests, employment, education, sports, demographics, etc. The
`client program transmits the member profile to the server system when
`the user's client program first establishes a connection with the server
`system (e.g., on initial sign-up).” Shaw, Ex. 1103, Col. 5:7-12.
`
`11a. providing a
`server that is
`accessible via a
`computer network,
`
`11b. permitting a
`computer user to
`access said server
`via said computer
`network,
`
`11c. 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,
`
`
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`12
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`Petition for Inter Partes Review of
`Patent No. 6,628,314
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`
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`Limitation 11d. This limitation requires “providing download access to software
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`that, when run on a computer,” performs three functions. Each of these three functions is
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`discussed separately below.
`
`
`
`As shown below, Shaw discloses providing the user with download access to
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`computer software, referred to in Shaw as the “client program.”
`
`US Patent 5,809,242 (Shaw) in view of the W3C Submission
`“Typically,
`the user
`is provided (e.g., on disk or electronically
`downloaded over the Internet) with a copy of a software program (the
`client program) that is executed by the client computer 101 according to
`the principles of the present invention.” Shaw, Ex. 1103, Col. 10:44-48.
`
`Claim Language
`11d. providing
`the user with
`download access
`to computer
`software that,
`when run on a
`computer,
`
`
`
`Limitation 11d(i). As noted previously, claim 11 recites software that, when run on
`
`a computer, performs three functions. The first of those functions is “display[ing] advertising
`
`content.” As shown below, the client program disclosed in Shaw performs this function.
`
`Claim Language
`11d(i) displays
`advertising
`content,
`
`US Patent 5,809,242 (Shaw) in view of the W3C Submission
`“While composing e-mail messages, advertisements are displayed to
`the user by the client program.” Shaw, Ex. 1103, Col. 4:4-6.
`
`See also Shaw, Ex. 1103, FIG. 8 (showing advertisements 800).
`
`
`
`Limitation 11d(ii). The second function performed by the software recited in
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`limitation 11d is “record[ing] computer usage information concerning the user’s utilization of
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`the computer.” This limitation is disclosed in both Shaw and the W3C Submission. As
`
`shown below, the client program in Shaw stores an “event log file” and an “advertisements
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`statistics file,” which are sent to the server system when the user connects to the Internet.
`
`(Shaw, Ex. 1103, Col. 7: 3-13.)
`
`Claim Language
`11d(ii) records
`computer usage
`information
`concerning the
`user’s utilization
`of the computer,
`and
`
`US Patent 5,809,242 (Shaw) in view of the W3C Submission
`“The client program records (i) which advertisements are shown to the
`user, for how long and at what times; (ii) when there is a period of
`inactivity while the client program is running on the client computer, for
`example, if the user does not enter an instruction for a period of five
`minutes; and (iii) whether any advertisement has been altered by the
`user. This information is stored in an advertisement statistics file on the
`client computer. . .” Shaw, Ex. 1103, Col. 6:20-30.
`
`“The client program also records (i) when a user activates the client
`program; (ii) how long the client program was used; . . . and (vi) other
`statistical information useful to predict a user's future behavior with
`respect to the client program. This information is stored in an event log
`file on the client computer and is communicated to the server system
`when the user sends and/or receives e-mail messages or whenever the
`client computer establishes a connection with the server system.” Shaw,
`Ex. 1103, Col. 7: 3-13.
`
`
`Although Shaw sufficiently discloses this limitation, the disclosure of the
`W3C Submission is presented to further support this proposed rejection.
`“Server based information is limited, however, since many page-views
`are never reported back to servers. . . . The obvious solution is for Web
`browsers to support client side logging of offline hits, keeping track of
`the user’s browsing behavior locally. This information can then be
`periodically posted back to Web servers.” W3C Submission, Ex. 1105.
`§ 5.
`
`
`
`
`Limitation 11d(iii). The third and final function performed by the software recited in
`
`11d is “periodically request[ing] additional advertising content.” This limitation is disclosed
`
`by Shaw. The client computer in Shaw initiates a connection with the server and the “event
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`log” and “advertisements statistics” files are sent to the server system. Those files are then
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`used to determine which advertisements to download to the user’s computer.
`
`Claim Language
`11d(iii)
`periodically
`requests
`additional
`advertising
`content,
`
`US Patent 5,809,242 (Shaw) in view of the W3C Submission
`“The client program periodically communicates with a server system.”
`Shaw, Ex. 1103, 3:34-35.
`
`“New banner and showcase advertisements are transmitted from the
`mail server Mn to the user at the client computer 101. When the user
`connects to mail server Mn, mail server Mn transmits the appropriate
`advertisements to the user.” Shaw, Ex. 1103, Col. 20:64-67; 19:34-37.
`
`“The mail server Mn also receives statistical information from the client
`computer 101, such as, for example, the event log file and the
`advertisements statistics
`file (step 1103).
`In
`the representative
`embodiment, the user profile and the statistical information may be
`temporarily stored in the mail server Mn. Late at night (off-peak), a batch
`job may be run to incorporate all the new data into the database
`management s