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. ______
`
`
`
`
`

`

`Table of Contents
`
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ......................................................... 1 
`A. 
`Real Party-ln-Interest 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 ...................................................................................................... 2 
`Threshold Requirement for Inter Partes Review 37 C.F.R. § 42.108(c) .......................... 3 
`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) .................................................... 6 
`A. 
`Legal Overview ......................................................................................................... 6 
`B. 
`Clarification of “associating” ....................................................................................... 6 
`C. 
`Clarification of “periodically” ....................................................................................... 7 
`PERSON HAVING ORDINARY SKILL IN THE ART & STATE OF THE ART ............................ 8 
`CLAIMS 11-13, 15, 18, AND 20 OF THE ‘314 PATENT ARE UNPATENTABLE ....................... 8 
`Ground 1 – Claims 11-13, 15, 18, and 20 Are Obvious Under 35 U.S.C. § 103(a)
`A. 
`Over Angles in View of Guyot and Fox ........................................................................ 9 
`Ground 2 – Claims 11-13, 15, 18 and 20 Are Obvious Under 35 U.S.C. § 103(a)
`Over Angles in View of Shaw ................................................................................... 35 
`CONSOLIDATION OF THIS PETITION WITH THE CONCURRENTLY FILED PETITION......... 60 
`CONCLUSION ................................................................................................................... 60 
`
`B. 
`
`-i-
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`
`
`
`
`I. 
`
`II. 
`III. 
`
`IV. 
`
`V. 
`
`VI. 
`VII. 
`
`VIII. 
`IX. 
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`
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`
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`

`

`List of Exhibits
`
`
`
`Exhibit 1001: U.S. Patent No. 6,628,314 to Hoyle (“the ‘314 patent”)
`Exhibit 1002: Excerpted File History of the ‘314 Patent
`Exhibit 1003: U.S. Patent No. 5,933,811 to Angles et al., filed on August 20, 1996 and
`issued on August 3, 1999 (“Angles”)
`Exhibit 1004: U.S. Patent No. 5,809,242 to Shaw et al., filed on April 19, 1996 and issued
`on September 15, 1998 (“Shaw”)
`Exhibit 1005: U.S. Patent No. 6,119,098 to Guyot et al., filed on October 14, 1997 and
`issued on September 12, 2000 (“Guyot”)
`Exhibit 1006: U.S. Patent No. 6,009,410 to LeMole et al., filed on October 16, 1997 and
`issued on December 28, 1999 (“LeMole”)
`Exhibit 1007: Declaration of Robert J. Sherwood In Support Of This Petition (“Sherwood
`Decl.”)
`Exhibit 1008: U.S. Patent No. 7,225,142 to Apte et al., filed on August 1, 1996 and issued
`on May 29, 2007
`Exhibit 1009: U.S. Patent No. 6,141,010 to Hoyle, filed on July 17, 1998, and issued on
`October 31, 2000
`Exhibit 1010: Excerpted File History of U.S. Patent No. 6,141,010
`Exhibit 1011: Neil Barrett, Advertising on the Internet (Sept. 1997)
`Exhibit 1012: Jim Sterne, Advertising on the Web (Sean Dixon & Patrick Kanouse,
`Jan.1997)
`Exhibit 1013: Simon St. Laurent, Cookies (Mar. 1998)
`Exhibit 1014: Don Peppers & Martha Rogers, The One to One Future (Dec. 1996)
`Exhibit 1015: Robbin Zeff & Brad Aronson, Advertising on the Internet (Tim Ryan et al., July
`1997)
`
`
`
`
`
`-ii-
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`
`
`

`

`List of Exhibits
`
`
`
`Exhibit 1016: Ramez Elmasri & Shamkant B. Navathe, Fundamentals of Database Systems
`(Dan Joraanstad et al., 2nd ed. Aug. 1998)
`Exhibit 1017: Mark R. Brown et al., Using Netscape 3 (Kellie M. Brooks et al. eds., special
`ed., Dec. 1996)
`Exhibit 1018: Rosalind Resnick & Dave Taylor, The Internet Business Guide (Cindy Morrow
`et al., 2nd ed., Jan. 1995)
`Exhibit 1019: U.S. Patent No. 6,134,592 to Montulli, filed on August 27, 1997 and issued on
`October 17, 2000
`Exhibit 1020: M. Crawford, Transmission of IPv6 Packets over FDDI Networks (1998)
`Exhibit 1021: The American Heritage Dictionary of the English Language (Anne H.
`Soukhanov et al., 3rd ed. 1992)
`Exhibit 1022: Alan Freedman, The Computer Desktop Encyclopedia (2d ed. 1999)
`Exhibit 1023: U.S. Patent No. 5,826,242 to Montulli, filed August 27, 1997 and issued on
`October 20, 1998
`Exhibit 1024: 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
`Exhibit 1025: Melissa Dunn et al., Privacy and Profiling on the Web (June 1, 1997),
`available at http://www.w3.org/TR/NOTE-Web-privacy
`Exhibit 1026: Network Working Group, Request for Comments: 1945 HTTP/1.0 (May 1996)
`available at http://www.w3.org/Protocols/rfc1945/rfc1945
`Exhibit 1027: Sheree R. Curry, Pointcast and its Wannabes (1996), available at
`http://money.cnn.com/magazines/fortune/fortune_archive/1996/11/25/218683/
`index.htm
`Exhibit 1028: U.S. Patent No. 5,724,521 to Dedrick, filed on November 3, 1994 and issued
`on March 3, 1998
`
`
`
`
`
`-iii-
`
`
`
`

`

`List of Exhibits
`
`
`
`Exhibit 1029: Persistent Client State HTTP Cookies, Preliminary Specification, Netscape
`Communications Corp. (1996)
`Exhibit 1030: U.S. Patent No. 5,796,952 to Davis et al., filed on March 21, 1997 and issued
`on August 18, 1998
`Exhibit 1031: D. Kristol & L. Montulli, HTTP State Management Mechanism, Network
`Working Group, Request for Comments 2109 (Feb. 1997)
`Exhibit 1032: Microsoft Corp., A History of Windows, available at
`http://windows.microsoft.com/en-us/windows/history
`Exhibit 1033: David Fox & Troy Downing, Web Publisher’s Construction Kit with HTML 3.2
`(2d ed 1996) Pgs. 547-592.
`
`
`
`
`
`
`
`
`
`
`-iv-
`
`
`
`

`

`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. 1001) (“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-Interest 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
`
`smartphones 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) 843-5001
`Fax: (650) 849-7400
`
`
`
`Tel: (650) 843-5007
`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.
`
`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 in this Petition includes:
`2
`
`
`
`

`

`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`
`
`
`U.S. Patent No. 5,933,811 to Angles et al., filed on Aug. 20, 1996, and issued
`
`on Aug. 3, 1999 (Ex. 1003) (“Angles”);
`
`
`
`
`
`
`
`U.S. Patent No. 6,119,098 to Guyot et al., filed on Oct. 14, 1997 and issued
`
`on Sept. 12, 2000 (Ex. 1005) (“Guyot”);
`
`David Fox & Troy Downing, Web Publisher’s Construction Kit with HTML 3.2
`
`(2d ed 1996) Pgs. 547-592 (Ex. 1033) (“Fox”); and
`
`U.S. Patent No. 5,809,242 to Shaw et al., filed on April 19, 1996 and issued
`
`on September 15, 1998 (Ex. 1004) (“Shaw”).
`
`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. 1007)
`
`(“Sherwood Decl.”), an expert in the field.
`
`Ground
`
`Basis for Challenge
`
`‘314 Patent
`Claims
`Ground 1 11-13, 15, 18, 20 Obvious over Angles in view of Guyot and Fox under 35
`U.S.C. § 103(a).
`Ground 2 11-13, 15, 18, 20 Obvious over Angles in view of Shaw under 35 U.S.C. §
`103(a).
`
`
`Angles and Guyot are prior art to the ‘314 patent under 35 U.S.C. § 102(e)(2). Fox 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
`
`
`
`3
`
`

`

`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`Petition establishes a reasonable likelihood that Facebook will prevail with respect to each
`
`of the claims challenged. 35 U.S.C. § 314(a).
`
`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. 1001, Col. 5:8-43; Figs. 5 & 5a.)
`
`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
`
`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, 29.) 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.
`
`
`
`4
`
`

`

`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`
`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.
`
`1001 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. 1009 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. 1001 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. 1010 at 13-15.)
`
`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. (Ex. 1002 at 7.) No rejections were issued on any claims of
`
`the ‘314 patent. (See Ex. 1002.) 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,” and 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 challenged dependent claim.
`
`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
`
`
`
`5
`
`

`

`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`Examiner did not respond, and the ‘314 patent issued. The patent owner never filed an
`
`IDS, though one was filed in the parent application. (See Ex. 1002 at 7; Ex. 1010 at 5.)
`
`V.
`
`CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(b)(3)
`A.
`Legal Overview
`This Petition applies the broadest reasonable interpretation standard (“BRI”) of the
`
`plain and ordinary meaning of each claim term in the ‘314 patent. 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). Specific terms that require claim construction are
`
`discussed below. Though applying BRI for the purposes of this petition, Petitioner reserves
`
`the right to assert the defense of indefiniteness in the proper forum.
`
`B.
`
`Clarification of “associating”
`
`Claim 11 recites “associating” a unique identifier with demographic information and
`
`“associating” demographic and computer usage data with a unique identifier. (Ex. 1001,
`
`claim 11.) “Associating” is not defined in the ‘314 patent but it is a common word meaning
`
`“to connect or join together, combine.” (Ex. 1021 at 4.) Petitioner asserts that in light of the
`
`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
`
`B.E. Technology’s Infringement Contentions.
`
`
`
`6
`
`

`

`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`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 computer usage
`
`information with said demographic information using said unique identifier.” (Ex. 1001, Col.
`
`23:6-7 (emphasis added).) Thus, the claim language under its broadest reasonable
`
`construction contemplates indirectly associating 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. 1001, Col. 16:20-22.)
`
`Therefore, Petitioner asserts that “associating” means “to connect, join together, or
`
`combine, either directly or indirectly.” (Ex. 1001, 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.
`
`1001, 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. 1021, 6.) Consistent with
`
`the broadest reasonable interpretation consistent with the specification, “periodically” should
`
`be construed to mean “recurring from time to time.” (Ex. 1001, Abstract (“from time to time”),
`
`Col. 8:41-43 (“periodically…as needs to be replaced”), 16:17-20 (“from time to time”).)
`
`
`
`7
`
`

`

`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`VI.
`
`
`PERSON HAVING ORDINARY SKILL IN THE ART & STATE OF THE ART
`A person having ordinary skill in the art (“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 directed toward e-commerce through targeted advertising. (Ex.
`
`1001, Abstract.) A PHOSITA would have had knowledge of the literature concerning
`
`targeted advertising on the Internet as of July 17, 1998.
`
`
`
`With respect to the subject matter of the ‘314 patent, a PHOSITA would have (1) a
`
`Bachelor’s degree in computer science, electrical engineering, or a similar field, or (2)
`
`commensurate industry experience of at least two years in Internet advertising methods,
`
`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 in this Petition discloses a computer program or
`
`software that provides targeted advertising. The references are analogous art and a
`
`PHOSITA would recognize the desirability of combining features of the various references
`
`
`
`8
`
`

`

`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`to create a system that offered 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. The limitations of claim 11 are separately addressed and numbered 11a-11k.
`
`Narrative is not included for limitations that need no further discussion beyond the quotes
`
`and figures in the charts below.
`
`A.
`
`Ground 1 – Claims 11-13, 15, 18, and 20 Are Obvious Under 35 U.S.C. §
`103(a) Over Angles in View of Guyot and Fox
`U.S. Patent No. 5,933,811 to Angles et al. (“Angles,” Ex. 1003) issued from an
`
`
`
`application filed on August 20, 1996. U.S. Patent No. 6,119,098 to Guyot et al. (“Guyot,”
`
`Ex. 1005) issued from an application filed October 14, 1997. Angles and Guyot qualify as
`
`prior art to the ‘314 patent under 35 U.S.C. § 102(e)(2) because both were filed prior to the
`
`earliest filing date of the ‘314 patent. As described below and in the attached Sherwood
`
`Declaration, Angles in view of Guyot and Fox discloses all limitations of claims 11-13, 15,
`
`18, and 20 and renders them obvious under 35 U.S.C. § 103(a).
`
`
`
`Angles, entitled “System and Method for Delivering Customized Advertisements
`
`within Interactive Communication Systems,” discloses “an on-line advertising service which
`
`can custom tailor specific advertisements to particular consumers and track consumer
`
`responses to the advertisements.” (Angles, Ex. 1003, Col. 2:46-49.) The advertising
`
`system described in Angles, in its preferred embodiment, includes an advertisement
`
`provider’s computer that (a) transmits customized advertisements to a consumer’s computer
`
`
`
`9
`
`

`

`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`over the Internet based on that consumer’s stored demographic information, and (b)
`
`monitors the consumer response and activity related to that advertisement. (Angles, Ex.
`
`1003, Col. 2:59-3:17.) Ground 1 relies on Angles for the vast majority of the limitations of
`
`claims 11-13, 15, 18, and 20.
`
`
`
`Guyot, entitled “System and Method for Targeting and Distributing Advertisements
`
`Over a Distributed Network,” similarly discloses a system and method “for targeting and
`
`distributing advertisements over a distributed network, such as the Internet.” (Guyot, Ex.
`
`1005, Col. 1:10-11.) The system disclosed in Guyot includes a software application that is
`
`downloaded and executed on a user’s computer that displays targeted advertising
`
`independent of a browser. (Guyot, Ex. 1005, Col. 1:56-60, 5:18-24.) Ground 1 relies on
`
`Guyot for certain of the limitations of claims 11-13, 15, 18, and 20 relating to the ability to
`
`record “computer usage data” and “periodically” acquire advertising and computer usage
`
`information. The systems and methods disclosed in Angles and Guyot are both
`
`implemented in client-server configurations. (Angles, Ex. 1003, Col. 2:59-3:17; Guyot, Ex.
`
`1005, Col. 1:56-65.)
`
`
`
`Fox is a textbook published in 1996 that discloses various aspects of Internet and
`
`web technology. Fox discloses techniques for downloading and installing browser plug-ins.
`
`(Fox, Ex. 1033, pages 568-69.) Ground 1 cites Fox solely for a single limitation of
`
`transferring software “in response to a download request by the user.”
`
`
`
`10
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`

`

`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`
`
`A limitation-by-limitation explanation of the disclosures of Angles, Guyot and Fox,
`
`their application to the claims of the ‘314 patent, and the rationales to combine the
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`references to render the claims obvious, are provided below.
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`
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`Limitation 11p (Preamble), 11a, 11b, 11c: Angles discloses each and every
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`aspect of these claim limitations, as shown in the chart below.
`
`Claim Language
`11p. A method of
`providing
`demographically-
`targeted advertising
`to a computer user,
`comprising the steps
`of:
`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
`
`
`
`Ground 1: Angles + Guyot + Fox
`“The advertisement provider’s computer stores demographic
`information
`about
`consumers,
`and
`sends
`customized
`advertisements to the consumers based on the consumer’s
`demographic profile and tracks consumer responses to the
`customized advertisements.” Angles, Ex. 1003, Col. 3:6-11.
`
`“[T]he advertisement provider computers 18 can include, a server
`within a computer network, a provider of video delivery systems,
`audio-visual media server, a television programming provider, a
`computer connected to a telephone switching network, a computer
`server in a wireless communication center and the like.” Angles,
`Ex. 1003, Col. 13:41-46.
`
`Angles, Ex. 1003, FIG. 1 (advertisement provider computer 18).
`“The interactive communication system 10 includes a consumer
`computer 12, a content provider computer 14 and an
`advertisement provider computer 18 which communicate with each
`other by use of a communication medium 20.” Angles, Ex. 1003,
`Col. 7:48-52.
`
`See Angles, Ex. 1003, FIG. 1 (consumer computer 12).
`“[W]hen a consumer registers with the advertisement provider
`computer 18, the registration module 60 displays a HTML
`document which prompts the consumer to enter demographic
`data. The demographic data can contain a wide variety of
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`11
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`

`

`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`
`Claim Language
`demographic
`information including
`information
`specifically provided
`by the user in
`response to a
`request for said
`demographic
`information,
`
`Ground 1: Angles + Guyot + Fox
`information, including, but not limited to, age, sex, income, career,
`interests, hobbies, consumer preferences, the account number of
`the consumer's Internet provider, other account information, etc.
`Once the consumer enters the demographic data, the registration
`module 60 stores the demographic data as a profile in the
`registration database.” Angles, Ex. 1003, Col. 14:16-26.
`
`
`
`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.
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`
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`The software in Angles takes the form of a “consumer control module” 42 that is sent
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`to the client computer. (Angles, Ex. 1003, Col. 23:7:15; Fig. 5:510.) The consumer control
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`module, for example, may be embodied as a Java “plug-in” that runs with a web browser.
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`(Id., Col. 23:16-26, 6:66-7-3 (describing plug-ins).) As is seen in FIG. 5 (step 510)
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`reproduced below, the consumer control module is downloaded from the advertising
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`provider’s computer to the consumer’s computer.
`
`Claim Language
`11d. providing the
`user with download
`access to computer
`software that, when
`run on a computer,
`
`Ground 1: Angles + Guyot + Fox
`“Advertisement provider downloads the consumer member code
`and consumer control module.” Angles, Ex. 1003, FIG. 5:510
`(capitalization altered).
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`
`
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`12
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`

`

`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`
`Claim Language
`
`Ground 1: Angles + Guyot + Fox
`
`
`
`Angles, Ex. 1003, FIG. 5 (Step 510, partial figure shown).
`
`“Located in the consumer computer 12 is a software plug-in on the
`consumer computer 12 called the consumer control module 42
`which merges
`the electronic page 32 and customized
`advertisement 30
`into a single document. Preferably,
`the
`consumer control module 42 is a plug-in that works in conjunction
`with the consumer browser 40.” Angles, Ex. 1003, Col. 23:8-15.
`
`“Plug-in. A plug-in is a custom application which allows developers
`to customize or enhance features of Web browsers and Web
`servers. Thus, a plug-in works in concert with the Web browser or
`a Web server to provide additional features.” Angles, Ex. 1003,
`Col. 6:66-7:3.
`
`
`
`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
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`content.” The “consumer control module” 42 in Angles performs this function.
`
`Claim Language
`11d(i). displays
`advertising content,
`
`Ground 1: Angles + Guyot + Fox
`“During state 714, the consumer control module 42 combines the
`customized advertisement 30 identified by the advertisement
`command with the electronic page 32 and displays them to the
`consumer.” Angles, Ex. 1003, Col. 23:42-45.
`
`
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`13
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`

`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`
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`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 Angles and Guyot, as shown in the chart
`
`below. With respect to Angles, the consumer control module sends a message to the
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`advertising module in response to a consumer clicking on or selecting a customized
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`advertisement. (Angles, Ex. 1003, Col. 20:21-30; Fig. 11.) This action qualifies as
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`“computer usage information” under the express definition in the ‘314 patent specification.
`
`(Ex. 1001, Col. 3:37-39.) In particular, the specification defines “computer usage
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`information” as “[d]ata concerning a person’s use of a computer,” including “what
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`information resources they access.” (Id.)
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`
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`Angles does not appear to expressly disclose that the software stores this computer
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`usage information in a persistent storage medium on the client computer—the usage
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`information is sent back to the server in response to the user action. (Angles, Ex. 1003,
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`Col. 20:21-30; Fig. 11.) To the extent storage of computer usage information in a persistent
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`manner is deemed to be a requirement of “recording” as recited in limitation 11d(ii), any
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`such requirement is disclosed in Guyot.
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`
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`Guyot discloses a client application executed on a client computer that records and
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`stores “Subscriber Statistics” in client memory 320 (Fig. 2), and periodically uploads those
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`statistics to the server when a network connection is established. (Guyot, Ex. 1005, Col.
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`5:19-24.) The client memory 320 can be, for example, a hard disk drive or other persistent
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`
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`Petition for Inter Partes Review of
`Patent No. 6,628,314
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`storage medium. (Id., Col. 11:16-20.) These “Subscriber Statistics” include information
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`relating to the specific ads displayed to the consumer and the resources the consumer has
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`accessed. (Id., Col. 4:15-23.)
`
`Claim Language
`11d(ii). records
`computer usage
`information
`concerning the
`user’s utilization of
`the computer, and
`
`Ground 1: Angles + Guyot + Fox
`
`Angles:
`“When the consumer selects the customized advertisement 30
`during state 718, the consumer control module 42 sends a
`message to the advertising module 62 that the consumer has
`selected the customized advertisement 30. In response, the
`advertising module 62 stores the message in the accounting
`database 72.” Angles, Ex. 1003, Col. 20:21-30.
`Guyot:
`“In a further embodiment, the client application accumulates
`subscriber statistics and sends the subscriber statistics to the
`server when the subscriber's computer accesses the server. For
`example, the client application can accumulate statistics on which
`advertisements have been displayed and, for each advertisement,
`the number of times (and/or how long) it has been displayed…In
`another embodiment, the client application keeps track of Internet
`sites that the subscriber has accessed over a predetermined
`period of time.” Guyot, Ex. 1005, Col. 2:22-40; see also 4:15-23.
`
`“The Subscriber Context preferably includes the queue of the
`advertisements to be displayed, and the Subscriber Statistics. The
`Subscriber Context, stored in the memory 320. . . .” Guyot, Ex.
`1005, Col. 4:35-38.
`
`