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 B1
`___________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
`PATENT OWNER’S CONTINGENT MOTION TO AMEND
`(37 C.F.R. § 42.121)
`
`
`
`
`
`
`1 Cases IPR2014-00743 has been joined with this proceeding.
`
`
`
`
`___________
`
`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 B1
`___________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
`PATENT OWNER’S CONTINGENT MOTION TO AMEND
`(37 C.F.R. § 42.121)
`
`
`
`
`
`
`1 Cases IPR2014-00743 has been joined with this proceeding.
`
`
`
`
`
`Patent Owner respectfully submits this reply to the opposition of Petitioner
`
`Facebook, Inc. (“Facebook”) to its Contingent Motion to Amend.
`
`I.
`
`THE PROPOSED CLAIMS ARE PATENTABLE OVER PRIOR ART
`
`As previously discussed, Apte discloses streaming advertisements to a client
`
`computer based on a user’s current viewing habits. Apte discloses that advertising
`
`software is downloaded to a client computer and acts as an overlay to a browser.
`
`Exhibit 1 at 3:33-41. The advertising software provides capabilities to the user,
`
`including “buttons for the user to control the presentation and content of
`
`advertisements, and for the user to view multimedia information, securely purchase
`
`an item, clip an electronic coupon.” See id. at 3:42-45. Apte further discloses that
`
`advertisements can be targeted to the user based upon various recorded
`
`information. Id. at 9:56-68, 10:3-5, 10:11-13.
`
`It is clear from the disclosure of Apte that the advertising software
`
`downloaded to the client computer records user interaction with the advertising
`
`software because advertisements are targeted based upon audit trails of
`
`functionalities specifically provided by the advertising software.
`
`Facebook has not shown that one of ordinary skill in the art would have been
`
`motivated to combine Apte with either of its other two obviousness combinations.
`
`Mr. Sherwood’s declaration states in conclusory fashion that one of ordinary skill
`
`would have been motivated to combine Apte with either of the Shaw combinations,
`
`- 1 -
`
`
`
`
`
`but he offers no explanation of how the specific teaching of Apte could be
`
`combined with the other two combinations. Mr. Sherwood offers no analysis of
`
`how or why the combinations could be made, beyond result-oriented statements
`
`that the combination would result in a system having all elements of the proposed
`
`amended claim. The Federal Circuit has cautioned against this hindsight
`
`reasoning. Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1275 (Fed. Cir. 2004);
`
`Ecolochem, Inc. v. S. California Edison Co., 227 F.3d 1361, 1371 (Fed. Cir. 2000).
`
`Facebook’s reliance on Barrett is also misplaced. Barrett describes an
`
`observer agent that monitors user interaction with a web browser to determine
`
`information to be pushed to a user computer. See Ex. 1143 at Abstract, 9:18-46.
`
`Barrett does not disclose advertising software downloaded to a client, and the
`
`generalized statements in Barrett regarding the desirability of understanding a
`
`user’s behavior adds nothing to references already identified. Barrett makes no
`
`mention of demographics, targeted advertising, or advertising at all. Facebook’s
`
`presentation regarding motivation to combine Barrett with the Shaw combinations
`
`are similarly conclusory, and without support. Ruiz, 357 F.3d at 1275.
`
`None of the references, alone or in combination, teaches or suggests
`
`computer usage information comprises information about the user’s interactions
`with said computer software displaying advertising content and at least one
`other program …[or] 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.
`
`-2-
`
`
`
`
`
`II. THE PROPOSED CLAIMS ARE PATENTABLE UNDER § 101
`Facebook argues that the subject matter of the proposed substitute claims is
`
`not patentable under 35 U.S.C. § 101. Facebook bases its argument on the notion
`
`that the proposed substitute claims “are directed to the abstract idea of improving
`
`advertising results by showing people advertising for products and services they
`
`are interested in purchasing.” Paper 34 at 12. That is obviously not true. The
`
`proposed substitute claims are not written in a manner that would capture all or a
`
`significant part of this idea, and it is plainly wrong to construe them to do so.
`
`The Supreme Court has recently addressed the idea that “abstract ideas” are
`
`not patentable under Section 101, while also cautioning against the indiscriminate
`
`use of the “abstract ideas” concept. In Alice Corp. v. CLS Bank Intl, 134 S. Ct.
`
`2347, 2354 (2014), the Court explained that “[a]t some level, all inventions . . .
`
`embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or
`
`abstract ideas.” One must “tread
`
`carefully in construing this exclusionary principle lest it swallow all of patent law.” Id.
`
`The Supreme Court has “described the concern that drives this exclusionary
`
`principle as one of pre-emption,” recognizing that if tools could be “monopolized”
`
`through the grant of a patent, innovation might be impeded more than it would be
`
`promoted. Mayo Collaborative Services v. Prometheus Labs., 132 S. Ct. 1289,
`
`1354 (2012). The proposed substitute claims present no such threat as they are
`
`-3-
`
`
`
`
`
`actually written. In applying the exclusionary rule, courts must “distinguish
`
`between patents that claim the ‘buildin[g] block[s]’ of human ingenuity and those
`
`that integrate the building blocks into something more.” Id. at 1303. The proposed
`
`substitute claims do not claim any such “building blocks,” and they cannot be said
`
`merely to transport an abstract idea to a computer. (Given the limitations of the
`
`proposed claims, it would not, of course, be possible to practice them without a
`
`computer.) Those interested in “improving advertising results by showing people
`
`advertising for products and services they are interested in purchasing” have ample
`
`opportunity to do so, notwithstanding the proposed substitute claims, on line or off
`
`line, with or without the use of the specific types of information called for by the
`
`proposed claims, and with or without the use of the specific steps required by the
`
`proposed substitute claims.
`
`III. THE PROPOSED CLAIMS ARE NOT INDEFINITE
`Facebook asserts that the proposed substitute claims are indefinite under 35
`
`U.S.C. § 112(b) because “real time” is not defined. “Real time” is used in the ’314
`
`patent to refer to events that occur while a user is engaged in an activity. In the
`
`Abstract, there is a reference to what happens “when the user runs the program.”
`
`Exhibit 1101, Abstract. Elsewhere, the reference is to matters “relevant to what
`
`the user is doing at any particular time.” Id. at 16:9-14. A prior art patent that
`
`refers to advertisement queues that are prepared off-line is distinguished as not
`
`-4-
`
`
`
`
`
`providing for “real time targeting of advertising based upon user actions.” Id. at
`
`3:30-32. There is a clear objective boundary on the concept. It is not necessary
`
`that the boundary be expressed as a specific duration of a period of time.
`
`IV. CONCLUSION
`For the foregoing reasons and those set forth in its Contingent Motion to
`
`Amend, Patent Owner B.E. Technology, L.L.C. respectfully requests that the
`
`Board grant its Contingent Motion to Amend in the event original Claim 11 is
`
`
`
`
`
`Respectfully submitted,
`
`
`
`By: /s/Jason S. Angell
`Jason S. Angell
`Reg. No. 51408
`Counsel for Patent Owner
`
`
`
`found not to be patentable.
`
`
`
`Date: October 10, 2014
`
`
`
`
`
`-5-
`
`
`
`CERTIFICATE OF SERVICE
`
`It is certified that a copy of the foregoing has 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
`
`Sanjay Murthy (Reg. No. 45,976)
`Kacy Dicke (Reg. No. 67,392)
`K&L Gates LLP
`sanjay.murthy@klgates.com
`kacy.dicke@klgates.com
`
`
`
`
`
`Date: October 10, 2014
`
`
`
`
`
`
`
`By: /s/Jason S. Angell
`Jason S. Angell
`Reg. No. 51408
`Counsel for Patent Owner
`
`
`
`
`
`- 6 -
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