Trials@uspto.gov
`571-272-7822
`
`Paper No. 44 and 44
`Entered: February 5, 2015
`
`
`
`RECORD OF ORAL HEARING
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`- - - - - -
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`- - - - - -
`
`FACEBOOK INC.
`
`Petitioner
`
`vs.
`
`B.E. TECHNOLOGY, LLC
`
`Patent Owner
`
`- - - - - -
`
`Case No. IPR2014-00052 and 2014-00053
`
`Patent 6,628,314
`
`Application No. 09/699705
`
`Technology Center 2100
`
`- - - - - -
`
`Oral Hearing Held: Wednesday, December 10, 2014
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and LYNNE E.
`
`PETTIGREW, Administrative Patent Judges.
`
`
`
`
`
`The above-entitled matter came on for hearing on Wednesday,
`
`December 10, 2014 at the U.S. Patent and Trademark Office, 600 Dulany
`
`Street, Alexandria, Virginia at 9:30 a.m. in Courtroom A.
`
`
`571-272-7822
`
`Paper No. 44 and 44
`Entered: February 5, 2015
`
`
`
`RECORD OF ORAL HEARING
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`- - - - - -
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`- - - - - -
`
`FACEBOOK INC.
`
`Petitioner
`
`vs.
`
`B.E. TECHNOLOGY, LLC
`
`Patent Owner
`
`- - - - - -
`
`Case No. IPR2014-00052 and 2014-00053
`
`Patent 6,628,314
`
`Application No. 09/699705
`
`Technology Center 2100
`
`- - - - - -
`
`Oral Hearing Held: Wednesday, December 10, 2014
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and LYNNE E.
`
`PETTIGREW, Administrative Patent Judges.
`
`
`
`
`
`The above-entitled matter came on for hearing on Wednesday,
`
`December 10, 2014 at the U.S. Patent and Trademark Office, 600 Dulany
`
`Street, Alexandria, Virginia at 9:30 a.m. in Courtroom A.
`
`
`
`Case Nos. IPR2014-00052 and 2014-00053
`Patent 6,628,314
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`
`
`
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`HEIDI KEEFE, ESQ.
`Cooley LLP
`3175 Hanover Street
`Palo Alto, California 94304
`650-843-5000
`
`ROBERT E. FREITAS, ESQ.
`DANIEL J. WEINBERG, ESQ.
`DANA M. ZOTTOLA, ESQ.
`Freitas Angell & Weinberg LLP
`350 Marine Parkway, Suite 200
`Redwood Shores
`, California 94065
`650-593-6300
`
`
`
`
`
`2
`
`
`
`Case No. IPR2014-00039
`Patent 6,628,314
`
`
`P R O C E E D I N G S
`
`(9:30 a. m. )
`
`JUDGE M EDLEY: Ple ase be seate d.
`
`Good mo rning. This is a da y -long hearing
`
`involving Patent Owne r B . E. Tech nology's U.S . P at ent Nu mber
`
`6,628,314, ref erre d to as the '314 p atent.
`
`The hea ring involves three sessions. During the
`
`first session, we will hear argu me nts for IP R2014 -00052 and
`
`53.
`
`After the session this morning, we will take a
`
`lunch break, and then we will resu me to hea r a rgu ments for
`
`IPR2014 -00038 at 1:00 p. m. , followed b y another br eak, and
`
`we will finish with the final sessio n to hear argu men ts for
`
`IPR2014 -00039 at 3:00 p. m.
`
`Because ther e is much overlap bet ween the cases
`
`and to avoid duplicative efforts to explain certain is sues,
`
`today's hea ring will result in a sing le transcript to be uploa ded
`
`in each c ase.
`
`Yesterda y afterno on a confer ence c all was held
`
`involving counsel for the respectiv e parties and us. One
`
`purpose of the cal l was to discuss B. E. lead counsel's absence
`
`for the hea ring toda y and to mor row.
`
`Specificall y Mr . Angell, le ad counsel for B. E. ,
`
`explained that an urgent matter aro se, work matt er a rose that
`
`would prevent his attendance toda y and to mo rrow.
`
`
`
`3
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`
`
`Case No. IPR2014-00039
`Patent 6,628,314
`
`
`Backup counsel f or B. E. are not re gistered to
`
`practice befor e th e Office but were ad mitted for the li mited
`
`purpose of partici pating in these proceedings. As th e parties
`
`are awa re, a part y who has counsel ad mitted pro hac vice is to
`
`have a registered practitioner repre sent the part y as l ead
`
`counsel for the pr oceeding at all ti mes .
`
`Moreover, the Of fice expects that l ead counsel will
`
`participate in all hearings with the Board. Ideall y, Mr. Angell
`
`should be here. Howeve r, given the specific facts of these
`
`proceedings, the Board has dete r mined that it is in t he
`
`interests of justice to proceed with Patent Owner 's co unsel
`
`ad mitted pro hac vice.
`
`We again re mind counsel for Paten t Owner that
`
`the y should update the PR PS meta data and file a notice under
`
`42.8 indicating backup counsel. B ased on the cur re nt record
`
`before us, onl y M r. Angell is listed as counsel for B . E.
`
`Please see F AQ F 12 on the Board's web page for
`
`instructions on how to do that .
`
`For the first session we will he ar a rgu ments for
`
`IPRs 2014 -00052 and 53 between P etitioner and Pate nt Owner
`
`B. E. . IP R2014 -000743 has been jo ined with the 52 I PR and
`
`IPR2014 -000698 and 744 have bee n joined with the 53 IPR.
`
`The Petitioners in those cases we re given the
`
`opportunity to att end toda y but not to participate b y presenting
`
`argu ments.
`
`
`
`4
`
`
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`Case No. IPR2014-00039
`Patent 6,628,314
`
`
`So at this ti me we would like counsel who will
`
`present for the morning session inv olving IPR2014 -00052 and
`
`53 to please identif y the ms elves be ginning with the Petitioner.
`
`MS. KEEF E: Tha nk you, Your Hon ors. Good
`
`morning. M y n a me is Heidi Kee fe . I' m f ro m the Co ole y la w
`
`fir m and I will be representing Fa c ebook today.
`
`With me is in -house counsel fro m F acebook, Stac y
`
`Chen.
`
`Owne r?
`
`JUDGE M EDLEY: Thank you . An d for Patent
`
`MR. FR EI TAS: Good mo rning, Your Honors. I a m
`
`Robert Freitas of Freitas Angell & Weinberg. I will be
`
`representing the Plaintiff this mor ning.
`
`Daniel Weinberg and Dana Zottola, who is a
`
`registered practiti oner, a re pr esent as well .
`
`JUDGE M EDLEY: Oka y. Thank you. Per the
`
`Nove mb er 14th or der, each pa rt y will have 60 minute s of total
`
`ti me to present ar gu ments for the t wo cases .
`
`Petitioner will pr oceed first to pre sent its case with
`
`respect to the cha llenged clai ms an d grounds for whi ch the
`
`Board instituted trial for both case s.
`
`Therea fter , P atent Owner will respond to
`
`Petitioner's prese ntation for both cases and present i ts motion
`
`to a mend.
`
`
`
`5
`
`
`
`Case No. IPR2014-00039
`Patent 6,628,314
`
`
`Petitioner, yo u ma y reserve rebutta l ti me to
`
`respond to Patent Owner 's presenta tion with respect to both
`
`cases. P atent Owner, you ma y r ese rve so me of your ti me for
`
`rebuttal to respond to Petitioner's o pposing presentation on
`
`your motion to a mend onl y.
`
`Petitioner, you ma y begin. Would you like to
`
`reserve rebuttal time?
`
`MS. KEEF E: Yes, Your Honor. I would ver y
`
`much like to rese rve rebuttal ti me . I a m hoping to go down in,
`
`ma ybe not record , but certainl y notable in ter ms of t he brevit y
`
`of my a rgu ment t oday.
`
`So I would like t o si mpl y present for
`
`approxi matel y ten minutes up front and reserve the r e st to the
`
`extent that it is n ecessar y.
`
`JUDGE M EDLEY: Oka y. Thank you. You ma y
`
`proceed.
`
`MS. KEEF E: Tha nk you, Your Hon ors.
`
`Your Honors, tod a y presents an int eres ting
`
`question because this is one of the only ti mes, that I have been
`
`in front of the Bo ard at l east, whe r e there has not be en an y
`
`argu ment b y the Patent Owner that the li mitations of the
`
`clai ms are not me t.
`
`Instead, the y r est their argu ments e ntirel y on the
`
`notion that the combinations that have been propose d to find
`
`those ele ments ar e not proper.
`
`
`
`6
`
`
`
`Case No. IPR2014-00039
`Patent 6,628,314
`
`
`Wh en we put toge ther our petition asking for the
`
`'314 patent to be declared unpatentable, we used a c o mbination
`
`of li mitations f rom two separate co mbinations . One was the
`
`Shaw refe rence , p lus the W3C artic le. The second was the
`
`Shaw refe rence plus Angles or Ang les plus Shaw, de pending
`
`on how you chose to look at it.
`
`And, again, in both instances Petitioner does not
`
`dispute that both we as the Petitioners f ound and loc ated ever y
`
`single li mitation fro m the clai ms i n the co mbination of the
`
`referenc es.
`
`The Board found those li mitations in the ref erences
`
`as well in its Inst itution decision. The onl y thing we're here
`
`to talk about today is the co mbinab ility of those refe rences,
`
`but we think that the co mbinabilit y is absolute.
`
`In ter ms of - - I would like to start first with Angles
`
`and Shaw. So the one that is in the '053 petition. I do have
`
`de monstratives fo r the Board, although I won't be pr ojecting
`
`an y of the m on the scre en. The y a r e mostl y just in c ase we
`
`need to look at an y specifi c quotes or the clai ms fro m the
`
`patent.
`
`Ma y I approach a nd hand the m to Your Honors?
`
`JUDGE M EDLEY: Yes, please .
`
`MS. KEEF E: An d the court r eporter alr ead y has
`
`one, as do es opposing counsel.
`
`JUDGE M EDLEY: Thank you .
`
`
`
`7
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`
`
`Case No. IPR2014-00039
`Patent 6,628,314
`
`
`MS. KEEF E: Tha nk you. So with respect to
`
`Angles in co mbination with Sha w, Patent Owner see ms to be
`
`arguing that the r eason that those two re ferenc es can not be
`
`co mbined is be ca use, in their word s, Angles require s there to
`
`be a consistent connection, that it b e a persistent connection
`
`that is alwa ys on.
`
`And since Sha w i s directed to a s yste m that per mits
`
`inter mittent conn ectivity, in other words, that so meti mes you
`
`are connected to t he Internet and then o ther ti mes yo u are
`
`off-line wo rking and advertise ments are being prese nted to
`
`you during that ti me period, that s o mehow that me a ns that the y
`
`are not co mbinabl e.
`
`First, that doesn't mean the y are no t co mbinable .
`
`Instead, what both refe rences are a ctuall y looking at are better
`
`wa ys to i mprove targeting of advert ise ments to on -li ne users
`
`and getting the best targeted ad that you can to an on -line
`
`user.
`
`Both of the m do that. Sha w specifi call y t alks
`
`about it, as does Angles. It would be natural for one of
`
`ordinar y skill in t he art to look to both.
`
`But their onl y arg u ment se e ms to b e this notion of
`
`connectivity, of inter mittent ve rsus persistent. No where in
`
`Angles does Angl es sa y that its connectivity must be
`
`continuous, that i t must be a cross a ll ti me . In fact , Angles
`
`sa ys exa ctl y the o pposite.
`
`
`
`8
`
`
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`Case No. IPR2014-00039
`Patent 6,628,314
`
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`Angles specifical l y sets out that its s yste m can and
`
`should be used with Ame rica Online, The Microsoft Network ,
`
`Prodigy, Co mpuserve and Net work Intensive. This is at
`
`colu mn 4, line 27 of the '811 prior art.
`
`It specificall y poi nts out here that - - I don't have it
`
`zoo med in enough, so I will just r ead it to Your Ho nors.
`
`"Another aspect of the invention re lates to the addition of a
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`fourth categor y o f entities, the Int ernet providers. An Internet
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`provider is a se rvice which provides Internet a ccess to
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`custo mers. Exa mples of Internet providers include Americ a
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`Online, Mic rosoft Net work, Prodig y, Co mpuserve and Net work
`
`Intensive. M an y users pa y monthly access fees to t he Internet
`
`providers to obtain local telepho ne connections, a va riet y of
`
`help services and organized for mats for accessing the
`
`Internet."
`
`The patent goes on to acknowledge that IS Ps c an
`
`be expensive and that that can be a reason that you would want
`
`to mini mize your use of those I SPs. There fore, A ngles
`
`specificall y contemplates using s ys te ms that have int er mittent
`
`connections.
`
`Our expert , Mr . S herwood, also put in a declaration
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`in which he attac hed a book fro m a man na med Deg enhart,
`
`which was " AOL in a Nutshell," which shows that
`
`conte mporaneous to the filing of th e patent, users an d persons
`
`of ordinar y skill in the art readil y u nderstood that Ame rica
`
`
`
`9
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`
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`Case No. IPR2014-00039
`Patent 6,628,314
`
`Online was, in fa ct, an inter mittent s yste m that would, in fa ct,
`
`kick users off o f t he s yste m.
`
`In describing a th ird -part y piece of softwar e, the
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`Degenhart refe ren ce at page 380 sp ecificall y conte mplates the
`
`notion that you would use a third -part y s yste m to pre vent
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`yourself fro m bei ng kicked off of AOL. It would
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`auto maticall y go in and click the " I' m not idle" button to make
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`sure that your co nnecti on could be maintained.
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`The i mportance o f this ref erence is to show that
`
`persons of ordinar y skill in the art at the ti me recog nized AOL
`
`as an inter mittent s yste m, one that would, in f act, kick users
`
`off.
`
`Therefor e, it is ea s y to se e wh y you would co mb ine
`
`Angles with Shaw. Angles desc ribes use on inter mitt ent
`
`s yste ms . Sha w sa ys if you have an inter mittent s yst e m, where
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`you can do so me work off -line, it would be great to be able to
`
`show you advertise ments during th at ti me pe riod.
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`Si mila rl y, Shaw i tse lf specificall y sa ys that it can
`
`and should be used with Americ a Online. Colu mn 1 of the
`
`'242 patent at lin e 51 specificall y talks about using Americ a
`
`Online, Prodig y, Co mpuserve and The Mic rosoft Ne twork.
`
`Both patents, ther efore, specificall y conte mpla te
`
`being used on the exact sa me s yste m in the exact sa me wa y
`
`and, therefo re, ar e co mbinable.
`
`
`
`10
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`Case No. IPR2014-00039
`Patent 6,628,314
`
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`And once the y ar e co mbinable, there is no dispute
`
`that the two have all of the li mitati ons of the '314 pa tent,
`
`specificall y that i n Angles, you ha ve a user who s igns on with
`
`a s yste m and prov ides infor mation that's given up to a
`
`co mputer . The c o mputer then picks a user I D, ships it back
`
`down to the co mp uter, where it is stored on the user' s
`
`co mputer .
`
`That is used to fo llow the user and track what the y
`
`are doing on a se parate progra m th at follows the user's
`
`activities, whethe r the user clicks o n ads, et cete ra , i n order to
`
`gain a better pers pective of the de mographics that a re
`
`interesting to that user, and then chooses fro m advert ise ments
`
`that are provided based on that de mographic infor mat ion.
`
`The onl y thing that Angles is not a s clear on --
`
`now, I want to ma ke this clear for t he record -- we a ctuall y
`
`believe Angles do es describe storin g infor mation about the
`
`user's use of the s yste m.
`
`And, in fact , in th e Ang les refe renc e, it
`
`specificall y t alks about the fact in colu mn 20 that us er
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`infor mation, in ot her wo rds, things -- that usage info r mation
`
`that the user makes, and this is in colu mn 20, starti ng at line
`
`21: " When the co nsu mer selects th e custo miz ed adv ertis e ment
`
`during state 17, t he consu me r cont rol module sends a message
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`to the advertising module that the consumer has sel ected the
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`custo mized adver tise ment."
`
`
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`11
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`
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`Case No. IPR2014-00039
`Patent 6,628,314
`
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`There is no wa y t hat that infor mati on could be sent
`
`to the server , if it had not been cap tured and stored, if onl y for
`
`mic roseconds, b y virtue of the fact that it has to be stored so
`
`that it can be sent .
`
`But if the Board i nsists on a mo re narrow
`
`definition of stored, which me ans so me kind of per manent
`
`storage, that's wh ere we use the Sh aw refe rence fo r because
`
`Shaw specificall y talks in detail ab out storing all of the
`
`consumer infor ma tion at the s yste m.
`
`And so that's wh y the co mbinability of Sha w and
`
`Angles is absolutel y appropriate.
`
`The co mbinability of Sha w with W3C is also
`
`absolutely appropriate . Sha w talks about the possibility of
`
`having a s yste m - - not the possibilit y, it describes a s yste m
`
`which has a user profile in which the user fills in de mographic
`
`infor mation based on a for m that is sent down for the Sha w
`
`s yste m.
`
`That is then used to d e mographicall y ta rget
`
`advertise ments. Wh at W3 C does i s W3C sa ys , inste ad of
`
`li miting ourselves to what's in one for m fro m one s yste m, we
`
`prefer to have the richest profile possible across the Internet
`
`so that we can act ually target you e ven better.
`
`W3 C conte mplate s taking infor mati on fro m all of
`
`the different t ype s of progra ms that you might acces s on the
`
`Internet. W3 C is co mbinable with Shaw because the y are ,
`
`
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`12
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`
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`Case No. IPR2014-00039
`Patent 6,628,314
`
`again, solving the sa me proble m of getting a target -ri ch
`
`environ ment f ro m a profile .
`
`A user at the ti me would look to W3C because the y
`
`would think that that was a richer profile and that th ere would
`
`be ver y good reas ons to use as rich a profile as possible so as
`
`to gain better and better ta rgeting.
`
`One of the a rgu ments that see ms to have been m ade
`
`b y the Patent Owner is that the y ar e not co mbinable because
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`Shaw is about e - mail and W3 C is about the Internet .
`
`But Shaw specifi call y conte mplate s being used
`
`be yond e - mail an d, in f act, talks a bout the fact that in Shaw
`
`itself you should and can use it for an y downloaded content,
`
`including content that you have found in other portions of the
`
`Internet.
`
`If we look, for ex a mple , at colu mn s 23 to 24 of the
`
`'242 Shaw re feren ce, Exhibit 1103, the quote is: "It will be
`
`appreciated that t he principles of t he present invention could
`
`be used to provide advertise ments to users in on -line s yste ms ,
`
`other than e - mail s yste ms .
`
`"For exa mple , the present invention could be
`
`adapted to output a se ries of advert ise ments to use rs in a
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`s yste m that allowed downloading a nu mbe r of web p ages for
`
`off-line browsing.
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`
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`13
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`Case No. IPR2014-00039
`Patent 6,628,314
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`"In general , the present invention could be utilized
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`wherever digital content is downloaded to a user for off -line
`
`access."
`
`Thereb y indicating, in f act, that it i s conte mplated
`
`that you would use Sha w while y ou are browsing a round the
`
`Internet, finding articles that you want to read, and then
`
`pulling them down so that you can use the m later .
`
`Therefor e, using the personalized p rofile, the
`
`extre mel y rich pr ofile of W3 C in c o mbination with Shaw
`
`would yield a be t ter Sha w, that is , a Sha w which had better
`
`targeting because it was able to us e a more rich prof ile.
`
`And that's what W3 C adds, as wel l as the notion of
`
`an individuated unique ID that is p assed down to the user.
`
`The last argu ment that I wanted to addre ss ver y
`
`briefl y fro m Pate nt Owners see ms to be so mething a long the
`
`lines of Sha w not being co mbinabl e or useful in this scenario
`
`because it conte mplates multiple us ers on a single co mputer .
`
`Howeve r, Patent Owne r see ms to b e ignoring the
`
`explicit teaching of the Ho yle '314 ref erence itself, which also
`
`conte mplates mul tiple users being on a single co mp uter.
`
`If we look at the ' 314 patent, colu mn 17, line 43:
`
`"Also, the provision of a user log -i n" -- and this is i n the
`
`patent in question -- "the provision of a user log -in al lows the
`
`client software ap plication to be utilized b y multiple users
`
`
`
`14
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`Case No. IPR2014-00039
`Patent 6,628,314
`
`while per mitting different de mogra phically -targeted
`
`advertising to be displayed for eac h user."
`
`So the ver y p atent at issue in the s pecification sa ys
`
`that the prefe r red e mbodi ment has one co mputer with one
`
`application on it used b y multiple people, each with unique
`
`IDs. Exactl y the sa me as is disclosed in Sha w.
`
`And if that weren 't enough, we also have clai m 16
`
`of the '314 patent itself which spec ificall y sa ys that you have
`
`the method of cla i m 11, " wherein said providing steps further
`
`co mprise providing said software which, when run on the
`
`co mputer" -- that' s the one user co mputer that the a dvertising
`
`software is on - - "requires a log -in to use said soft ware and
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`asso ciates a diff e rent unique identifier with ea ch of a nu mbe r
`
`of valid users of said software ." That one progra m on the
`
`co mputer .
`
`So the a rgu ment t hat Patent Owner see ms to be
`
`presenting, that so mehow we ne ed to have onl y prior art that
`
`has one-to-one re la tionships betwe en a co mputer an d an I D,
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`doesn't make sens e with the clai ms and the specificat ion.
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`Instead, the unique identifier of the user si mpl y
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`needs to be provided to the co mputer. That can be done either
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`when the se rver a ssigns an ID and sends it down, as we se e in
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`the Angles r efer e nce and in W3C, or it can be done when a
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`user t ypes in a user na me and pass word as is done i n Shaw.
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`15
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`And Sha w specifi call y s a ys that when the user
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`provides that infor mation to the co mputer , Shaw the n goes and
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`makes abso lutel y certain that that user infor mation is , in fact ,
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`unique.
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`Colu mn 12 of Sha w, lines 6 through 11
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`specificall y: Sig n -up server 6 esta blishes an account for the
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`user, e .g. , queries the database man age ment s yste m t o
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`deter mine whether the requested e - mail address is u nique to
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`the server s yste m 104 and, if it is , creates an entr y i n the
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`database manage ment s yste m for t hat user, thereb y i mpl ying
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`that, if it were not, an account would not be set up.
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`So Sha w also ma ndates that it be u nique to the user
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`so t hat you c an g et the user their t argeted de mograp hic
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`infor mation.
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`So the a rgu ment t hat Patent Owner see ms to be
`
`making, that the i nfor mation has to be of the co mput er, instead
`
`of unique infor ma tion being sent to a co mputer , doesn't jibe
`
`with the clai m la n guage itself, with the dependent c lai m,
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`which insists that you be able to use the sa me co mpu ter with
`
`multiple users, with the specificati on of the '314 patent, which
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`specificall y discl oses use of the sa me co mputer multiple users,
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`and with the discl osures o f Sha w which mir ror that .
`
`Unless Your Hon ors have an y further questions, I
`
`will save the rest of my ti me for re buttal.
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`JUDGE M EDLEY: Thank you .
`
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`16
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`MS. KEEF E: Tha nk you ver y mu ch.
`
`MR. FR EI TAS: Good mo rning, Your Honors.
`
`Petitioner contends that the S ha w referenc e would be
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`co mbinable with both Angles and with W3C . And, in doing
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`so, makes so me a rgu ments that don 't full y re flect or don't
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`accuratel y r eflect the points that we have be en maki ng.
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`First of all , Petitioner sa ys that our argu ment
`
`against the co mbi nation of Angles and Shaw depends entirel y
`
`on the idea that t here is a need for a connection in Angles.
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`That's not quite right, but there is a need for a conne ction.
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`And I would like to talk about the point Ms. Keefe
`
`made this morning regarding AO L and MSN and si milar
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`networks like tha t, which ar e discl osed, which are d iscussed in
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`Angles, but the important point that's being made i n Angles
`
`about those services is not so mething like what the Petitioner
`
`is suggesting.
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`Rather, what is b eing discusse d, a nd it is quite
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`clear in ref erence nu mbe r 52 and 62, the point of the
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`disclosure, the point of the r efer ence to Ame rica On line is that
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`it serves as a gate wa y to the Intern et.
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`In figure 2 in Angles, what we se e is a connection,
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`and that connection can be acco mp lished directl y, as Angles
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`states, or through Ame rica Online.
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`There is no significance to the fact that Angles
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`discusses Americ a Online and si mi lar s yste ms . It d oesn't
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`17
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`Case No. IPR2014-00039
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`overco me the funda mental point that we're making a nd it
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`doesn't show that, a s M r. Goldstein said in his decla r ation, to
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`work properl y the Angles s yste m re quires a continuous
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`connection.
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`That is the point that is being made about Angles
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`and a connection. To work properl y, Mr . Goldstein said, it is
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`necessar y that the re be a conti nuous connection. No thing
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`about the refe ren ce to AOL change s that or refutes i t.
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`Funda mentall y, we suggest, there i s no reason wh y
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`an yone would be motivated to co mbine the Sha w s ys te m with
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`Angles.
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`As we pointed out, these are differ ent s yste ms.
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`And, b y the wa y, in the Institution decision the Boar d found
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`that the two li mit ations regarding the recording of c o mputer
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`usage infor mation and the other li mitation regarding the
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`periodic requests for additional content, that the y we re
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`concededl y missi ng fro m A ngles.
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`Now, in the later argu ments, P etitioner atte mpts to
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`sa y that it didn't make the concession, but it did. Those
`
`li mitations aren't present, and the Board so found. The Board
`
`found that the Pet itioner had conce ded the point.
`
`Now, back to the idea of the co mbination or the
`
`reasons wh y there wouldn't be a combination about - - between
`
`Angles and Sha w. I don't think the re is a dispute ab out the
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`nature of the Sha w s yste m. It is a n e - mail s yste m.
`
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`18
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`And in a mo ment when I address th e other issue
`
`involving W3C , t hat's i mport ant be cause, as in W3C where the
`
`persona is useful for navigating the World Wide Web , we don't
`
`have a ne ed for that in Sha w. Shaw is an e - mail s yst e m
`
`designed to address the viewing of infor mation off -line.
`
`Now, this mornin g Ms. Ke efe said that it is
`
`i mportant that in the Shaw s yste m one could use it when going
`
`on the Internet and downloading web content. Well, that
`
`doesn't address the point that's being made.
`
`The refe rence fro m Sha w that Ms. Keef e pointed to
`
`refers to downloa din g of web information fo r late r v iewing
`
`off-line. It is the sa me thing that is being done whe n the
`
`advertising content is downloaded and viewed lat er when
`
`off-line.
`
`It doesn't have anything to do with a suggestion
`
`that Shaw is an yt hing other than what it was, or that what Mr .
`
`Goldstein said wh en he addressed what one of ordinar y skill
`
`would consider when looking at the Sha w s yste m, is incorrect .
`
`There si mpl y isn' t an y reason wh y one looking at
`
`Shaw would be in terested in a s yst e m like Angles that requir es
`
`a continuous connection and is funda mentall y diff er ent.
`
`With respect to the atte mpt to co mb ine Shaw and
`
`W3 C, the idea is that W3C provide s a profile or a pe rsona -- or
`
`a persona or pers onae that can be used in navigating the web.
`
`
`
`19
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`Case No. IPR2014-00039
`Patent 6,628,314
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`As Mr . Goldstein has pointed out, that's of no use to so meone
`
`working with the Shaw s yste m.
`
`The Shaw s yste m is not a web -base d s yste m. It
`
`does not have a u se for a pe rsona or personae that co uld be
`
`used when naviga ting the web. An d that's funda men tall y the
`
`proble m with th e idea that W3C off ers so mething of use.
`
`Now, when the pe tition was filed, t he idea was that
`
`even though the W3 C proposal wa s never adopted, i t was
`
`si mpl y a proposal, that that is what provided the mot ivation or
`
`at least that was a ke y aspect of wh at wou ld provide the
`
`motivation to co mbine.
`
`The Petitioner ap pears to be backing awa y fro m
`
`that sort of an arg u ment. We even heard that becaus e W3C
`
`ca me fro m e mployees of Mic rosoft Corporation, that would
`
`have made it espe ciall y desirable a nd would have en cou raged
`
`one to adopt it.
`
`Well, that isn't tr ue. Mr . Goldstein addressed that
`
`as well .
`
`And there isn't an y reason to believ e that the
`
`feature that woul dn't add an ything to Shaw would ha ve been
`
`adopted for that r eason or for an y other.
`
`There were a fe w other co mments t hat Ms. Ke efe
`
`made . And most of the m involve i naccurate portra yals of what
`
`we' re sa ying or things that don't re all y get to the poi nt. But
`
`
`
`20
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`Case No. IPR2014-00039
`Patent 6,628,314
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`there is one thing that she said about the wa y that th e
`
`identifier is provided.
`
`We think that the disclosure of the '314 patent, the
`
`Ho yle patent, the B. E. patent, make s refe rence to the unique
`
`identifier being provided fro m the server.
`
`That's the onl y wa y it is discussed. That's the onl y
`
`wa y it is describe d. Ms. Keefe see ms to be sa ying t here is
`
`so mething else th ere. We don't agr ee with that.
`
`Also, with respec t to the question of what the
`
`unique identifier is, we have explained that the unique
`
`identifier of the ' 314 patent is one in clai m 11 that i dentifies,
`
`that uniquely identifies infor mation that is sent f rom the
`
`co mputer , not inf or mation that comes fro m the user .
`
`And that's missing in Shaw, as has been explained.
`
`But the basic idea here that the Peti tioner is advocating is that
`
`si mpl y because the re ferences oper ate in the s a me or an
`
`analog ous field, that that alone is e nough to provide a basis
`
`for co mbining and that alone would motivate one of ordinar y
`
`skill to make the co mbination.
`
`We pointed out the re ferences ar e d ifferent, that
`
`the feature fro m W3 C is not useful in the Sha w s yst e m, an d
`
`that there is no re ason wh y the Angles s yste m that does
`
`require a continuous connection through AOL o r otherwise
`
`would be co mbined.
`
`
`
`21
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`Case No. IPR2014-00039
`Patent 6,628,314
`
`
`JUDGE DESHPANDE: Counsel or, is this argu ment
`
`presented in your response, this a r gu ment r egarding the
`
`inter mittent conn ection and continuous connection?
`
`I a m seeing this a rgu ment for the fi rst ti me in the
`
`Patent Owner res ponse on page 7. Is this further el aborated
`
`so me where else?
`
`MR. FR EI TAS: I t was in Mr . Gold stein's
`
`declaration, I beli eve, Your Honor.
`
`JUDGE DESHP ANDE: Is that the only place I can
`
`find it?
`
`MR. FR EI TAS: I think Mr. Goldstein addressed it.
`
`He certainl y said in his declaration that a continuous
`
`connection is required.
`
`JUDGE DESHPANDE: Wh ere in h is declaration is
`
`it?
`
`find it.
`
`MR. FR EI TAS: Pardon me , You r Honor, while I
`
`JUDGE DESHPANDE: Is this it i n paragraph 23?
`
`(Pause)
`
`MR. FR EI TAS: Paragraph 27, Your Honor, he
`
`makes the specifi c state ment: Ang les is a co mmunication
`
`s yste m that requires continuously being connected to the
`
`Internet to opera t e properl y. Sha w is a B AT s yste m with the
`
`goal of mini mi zing connection ti me .
`
`
`
`22
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`Case No. IPR2014-00039
`Patent 6,628,314
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`
`JUDGE DESHPANDE: And that's for the 53, I
`
`think?
`
`MR. FR EI TAS: That's in 53, Your Honor.
`
`JUDGE DESHPANDE: And for the 52, that
`
`argu ment is in pa ragraph 23?
`
`MR. FR EI TA S: I t is a si mila r a rgument , Your
`
`Honor. It is not e xactl y the sa me , because the point in the 53
`
`IPR is specificall y about Angles an d about how Angles
`
`requires a continuous connection.
`
`So that specific point is not releva nt in the 52
`
`where Angles is no t cited.
`
`JUDGE DESHPANDE: Oka y.
`
`MR. FR EI TAS: Ma y I address the motion to
`
`a mend now, Your Honor, or should we wait until aft er the
`
`rebuttal b y Faceb ook?
`
`JUDGE M EDLEY: No, you ne ed t o present it now.
`
`And then if you would like to hav e rebuttal ti me to respond
`
`only to that, you can do that.
`
`MR. FR EI TAS: Yes, I would like to reserve , Your
`
`Honor.
`
`JUDGE M EDLEY: Oka y.
`
`MR. FR EI TAS: So the points that Fac ebook makes
`
`in opposition to the motion to a me nd involve two re ferences
`
`and two other points.
`
`
`
`23
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`Case No. IPR2014-00039
`Patent 6,628,314
`
`
`First of all , with respect to the Apt e re ference ,
`
`what we have sai d is that Apte shows interaction wi th the
`
`advertising software but not with a nother progra m. And the
`
`proposed a mend ment addresses a re quire ment of both.
`
`Barrett is the oth er r efer ence th at Facebook
`
`addresses and Bar rett doesn't disclose selecting adver tising
`
`content for transf er to the co mputer in ac cordance with the
`
`real-ti me and other co mputer usage infor mation and
`
`de mographic info r mation.
`
`Those ar e the req uire ments of the a me nded clai m.
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`Advertising content must be selecte d in accordance with real-
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`ti me co mputer us age infor mation, other co mputer us age
`
`infor mation, and de mographic info r mation. And, of course,
`
`Barrett has nothing to do with adv ertising, so it cou ldn't
`
`possibly address all of those things.
`
`There is no adver tising being selected at all and,
`
`thus, Barr ett doesn't address selecti ng advertising or doing so
`
`in accordance wit h either t yp e of c o mputer usage inf or
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