Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`MATCH.COM LLC and PEOPLE MEDIA, INC.
`Petitioners
`
`v.
`
`B.E. TECHNOLOGY, L.L.C.
`Patent Owner
`
`
`
`IPR Case No.: To be Assigned
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,628,314
`UNDER 35 U.S.C §§ 311-319 AND 37 C.F.R. §§ 42.1-.80, 42.100-.123
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`
`Table of Contents
`
`B.
`
`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ..................... 1
`A.
`Real Party-In-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) ................... 3
`D.
`Service Information ............................................................................... 3
`II. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37
`C.F.R. §§ 42.104 AND 42.108 ....................................................................... 3
`A.
`Identification of Challenge under 37 C.F.R. § 42.104(b) and
`Statement of Precise Relief Requested ................................................. 4
`Threshold Requirement for Inter Partes Review 37 C.F.R. §
`42.108(c) ................................................................................................ 5
`III. SUMMARY OF THE ‘314 PATENT .......................................................... 5
`A.
`Brief Description ................................................................................... 5
`B.
`Summary of the Prosecution History of the ‘314 Patent ...................... 6
`IV. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) ................ 8
`A.
`Legal Overview ..................................................................................... 8
`B.
`Clarification of “associating” ................................................................ 8
`C.
`Clarification of “periodically” ............................................................... 9
`PERSON HAVING ORDINARY SKILL IN THE ART & STATE
`OF THE ART ............................................................................................... 10
`VI. CLAIMS 11-13, 15, 18, AND 20 OF THE ‘314 PATENT ARE
`UNPATENTABLE ...................................................................................... 11
`A. Ground 2 – Claims 11-13, 15, 18 and 20 Are Obvious Under 35
`U.S.C. § 103(a) Over Angles in View of Shaw .................................. 12
`VII. CONCLUSION ............................................................................................ 39
`
`
`V.
`
`- i -
`
`

`
`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
`
`U.S. Patent No. 5,933,811 to Angles et al., filed on August 20,
`Exhibit 1003:
`1996 and issued on August 3, 1999 (“Angles”)
`
`U.S. Patent No. 5,809,242 to Shaw et al., filed on April 19,
`Exhibit 1004:
`1996 and issued on September 15, 1998 (“Shaw”)
`
`Declaration of Robert J. Sherwood In Support Of This Petition
`Exhibit 1005:
`(“Sherwood Decl.”)
`
`U.S. Patent No. 7,225,142 to Apte et al., filed on August 1,
`Exhibit 1006:
`1996 and issued on May 29, 2007
`
`U.S. Patent No. 6,141,010 to Hoyle, filed on July 17, 1998, and
`Exhibit 1007:
`issued on October 31, 2000
`
`Exhibit 1008:
`
`Excerpted File History of U.S. Patent No. 6,141,010
`
`The American Heritage Dictionary of the English Language
`Exhibit 1009:
`(Anne H. Soukhanov et al., 3rd ed. 1992)
`
`
`
`- ii -
`
`

`
`
`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`Match.com LLC and People Media, Inc. (“Petitioners”) petition for inter
`
`partes review 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 (“the ’314 Patent”) (PM - 1001 “Ex.
`
`1001”) based on identical grounds as the pending IPR proceeding, IPR2014-
`
`00053.
`
`For the exact same reasons previously considered by the Board, on the exact
`
`same schedule, Petitioners respectfully seek to join IPR2014-00053. In this
`
`petition, Petitioners assert verbatim only the arguments that the Board has already
`
`instituted in IPR2014-00053.
`
`This petition does not add or alter any arguments that have already been
`
`considered by the Board, and this petition does not seek to expand the grounds of
`
`invalidity that the Boards has already found support institution of an IPR
`
`proceeding. Because this petition is filed within 30 days of the institution of
`
`IPR2013-00053, and because this petition is accompanied by a motion for joinder
`
`to the IPR, this petition is timely and proper under 35 U.S.C. § 315(c).
`
`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
`A. Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1)
`Match.com LLC and People Media, Inc. are the real parties-in-interest for
`
`this Petition.
`
`B. Related Matters under 37 C.F.R. § 42.8(b)(2)
`
` 1
`
`

`
`
`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`Current Litigation
`
`The ’314 Patent is presently the subject of litigation in the following cases
`
`which may affect or be affected by a decision in this proceeding: B.E. Technology,
`
`LLC v. Google Inc., WD. Ten., No 2:12-cv-02830; B.E. Technology, LLC v.
`
`Microsoft Corp., W.D. Ten., No 2:12-cv-02829; B.E. Technology, LLC v. Apple,
`
`Inc., W.D. Ten., No 2:12-cv-02831; B.E. Technology, LLC v. Twitter, Inc., W.D.
`
`Ten., No 2:12-cv-02783; B.E. Technology, LLC v. People Media, Inc., W.D. Ten.,
`
`No 2:12-cv-02833; B.E. Technology, LLC v. Match.com LLC, W.D. Ten., No 2:12-
`
`cv-02834; B.E. Technology, LLC v Pandora Media, Inc., W.D. Ten., No 2:12-cv-
`
`02782; B.E. Technology, LLC v. LinkedIn Corp., W.D. Ten., No 2:12-cv-02772;
`
`B.E. Technology, LLC v. Facebook, Inc., W.D. Ten., No 2:12-cv-02769; and B.E.
`
`Technology, LLC v. Groupon, Inc., W.D. Ten., No 2:12-cv-02781.
`
`Administrative Proceedings
`The ’314 Patent is presently the subject of four instituted inter partes
`
`reviews: (1) Facebook v. B.E. Technology, L.L.C. (Case No. IPR2014-00053); (2)
`
`Microsoft Corporation v. B.E. Technology, L.L.C. (Case No. IPR2014-00039); (3)
`
`Facebook v. B.E. Technology, L.L.C. (Case No. IPR2014-00052); and (4) Google
`
`Inc. v. B.E. Technology, L.L.C. (Case No. IPR2014-00038). For the reasons
`
`expressed in the concurrently filed Motion for Joinder under 35 U.S.C. 315(c), 37
`
`C.F.R. §§ 42.22 and 42.122(b), Petitioners seek joinder with IPR2014-00053.
`
` 2
`
`

`
`
`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`C. Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3)
`Petitioners provide the following designation of counsel.
`
`Lead Counsel
`Sanjay Murthy (Reg. No. 45,976)
`sanjay.murthy@klgates.com
`
`K&L Gates LLP
`70 W. Madison St., Suite 3100
`Chicago, IL 60602
`Telephone: (312) 807-4416
`Fax: (312) 827-8138
`
`
`Backup Counsel
`Kacy Dicke (Reg. No. 67,392)
`kacy.dicke@klgates.com
`
`K&L Gates LLP
`70 W. Madison St., Suite 3100
`Chicago, IL 60602
`Telephone: (312) 807-4312
`Fax: (312) 345-9961
`
`Pursuant to 37 C.F.R. § 42.10(b), powers of attorney accompany this
`
`Petition.
`
`Service Information
`
`D.
`Service of any documents via hand-delivery may be made at the mailing
`
`address of lead and backup counsel designated above. Petitioners also consent to
`
`electronic service by email at the above listed e-mail addresses of Lead and
`
`Backup Counsel.
`
`II. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§§ 42.104 AND 42.108
`
`Petitioners certify that (1) the ’314 Patent is available for inter partes review;
`
`and (2) Petitioners are not barred or estopped from requesting inter partes review
`
`of Claims 11-13, 15, 18, and 20 of the ’314 Patent on the grounds identified in this
`
`Petition. In particular, as this Petition is accompanied by a Motion for Joinder
`
` 3
`
`

`
`
`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`under 37 C.F.R. §§ 42.22 and 42.122(b), the one year time limitation prescribed by
`
`35 U.S.C. § 315 (b) does not apply. See 35 U.S.C. § 315 (b) (“The time limitation
`
`set forth in the preceding sentence shall not apply to a request for joinder under
`
`subsection (c).”); see also Paper No. 15, IPR2013-00109 (“the one-year time bar
`
`does not apply to a request for joinder.”).
`
`In addition, the required fees are submitted herewith. The Office is
`
`authorized to charge any fee deficiency, or credit overpayment, to Deposit Account
`
`No. 02-1818. Petitioners are currently filing an Exhibit List (37 C.F.R. §
`
`42.63(e)).
`
`A.
`
`Identification of Challenge under 37 C.F.R. § 42.104(b) and
`Statement of Precise Relief Requested
`
`Petitioners request 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:
`
`●
`
`●
`
`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. 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.
`
` 4
`
`

`
`
`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`Additional support for each ground of rejection is set forth in the Declaration of
`
`Robert J. Sherwood (Ex. 1005) (“Sherwood Decl.”), an expert in the field.
`
`Ground ‘314 Patent
`Claims
`11-13, 15, 18,
`20
`
`Ground
`1
`
`
`Basis for Challenge
`
`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).
`
`B.
`
`Threshold Requirement for Inter Partes Review 37 C.F.R. §
`42.108(c)
`
`Inter partes review of claims 11-13, 15, 18, and 20 should be instituted
`
`because this Petition establishes a reasonable likelihood that Petitioners will
`
`prevail with respect to each of the claims challenged. 35 U.S.C. § 314(a).
`
`III. 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
`
` 5
`
`

`
`
`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`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.
`
`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. 1007 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. 1008 at 13-15.)
`
` 6
`
`

`
`
`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. (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 Petition for 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.)
`
` 7
`
`
`
`

`
`
`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`IV. 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, Petitioners reserve 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. 1009 at
`
`1 Interpretations of the claims in this IPR are not binding on Petitioners 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.
`
` 8
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`

`
`
`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`4.) Petitioners assert 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 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, Petitioners assert 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. 1011, 6.) Consistent with the broadest reasonable
`
`interpretation consistent with the specification, “periodically” should be construed
`
` 9
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`

`
`
`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`to mean “recurring from time to time.”23 (Ex. 1001, Abstract (“from time to time”),
`
`Col. 8:41-43 (“periodically…as needs to be replaced”), 16:17-20 (“from time to
`
`time”).)
`
`V.
`
`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
`
`
`2 Petitioners note that in IPR2014-00053, the Board determined that the broadest
`
`reasonable construction of “periodically” is “recurring from time to time, at regular
`
`or irregular time intervals.” See Paper No. 10, IPR2014-00053, at 7.
`
`3 A proper litigation construction may be different, when the disclosure of the
`
`specification and file history is considered.
`
` 10
`
`

`
`
`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`Internet advertising methods, browser
`
`technology, and related computer
`
`programming, or (3) a combination of (1) and (2). (Sherwood Decl., ¶¶ 1-17.)
`
`VI. 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 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.
`
` 11
`
`
`
`

`
`
`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`A. Ground 2 – Claims 11-13, 15, 18 and 20 Are Obvious Under 35
`U.S.C. § 103(a) Over Angles in View of Shaw
`
`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. 5,809,242 to Shaw et al.
`
`(“Shaw,” Ex. 1004) issued from an application filed on April 19, 1996. Angles and
`
`Shaw qualify as prior art to the ‘314 patent under at least 35 U.S.C. § 102(e)(2)
`
`because both were filed prior to the earliest filing date of the ‘314 patent.
`
`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 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 2 relies on Angles for the vast majority of the limitations of claims
`
`11-13, 15, 18, and 20.
`
`Shaw, entitled “Electronic Mail System for Displaying Advertisements at
`
`Local Computer Received from Remote System While the Local Computer Is Off-
`
` 12
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`

`
`
`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`Line the Remote System,” discloses an e-mail system that displays targeted
`
`advertisements to a user who is online or off-line, but its disclosure expressly
`
`extends to an Internet browser based “system that allow[s] downloading of a
`
`number of web pages for off-line browsing.” (Shaw, Ex. 1004, Cols. 1:8-11, 23:64-
`
`24:4.) Shaw’s email/advertising system
`
`includes software
`
`that acquires
`
`advertisements from a server for display to the user and tracks usage information.
`
`As described below and in the attached expert Declaration, Angles in view
`
`of Shaw discloses all limitations of claims 11-13, 15, 18, and 20 of the ‘314 patent
`
`and renders those claims obvious under 35 U.S.C. § 103(a). A limitation-by-
`
`limitation explanation of the disclosures of Angles and Shaw, their application to
`
`the claims of the ‘314 patent, and the rationales to combine the references to render
`
`the claims obvious, are provided below.
`
`Limitation 11p (Preamble), 11a, 11b, 11c. Angles discloses each and every
`
`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
`
`Ground 2: Angles + Shaw
`stores
`advertisement
`provider’s
`computer
`“The
`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
`
` 13
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`

`
`
`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`Ground 2: Angles + Shaw
`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 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.
`
`Claim Language
`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,
`
`Limitation 11d. This limitation requires “providing download access to
`
`
`
`software that, when run on a computer,” performs three functions. Each of these
`
`three functions is discussed separately below.
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`Petition for Inter Partes Review of
`Patent No. 6,628,314
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`The software in Angles takes the form of a “consumer control module” 42
`
`that is sent to the client computer. (Angles, Ex. 1003, Col. 23:7:15; Fig. 5:510.)
`
`The consumer control module, for example, may be embodied as a Java “plug-in”
`
`that runs with a web browser. (Id., Col. 23:16-26, 6:66-7-3 (describing plug-ins).)
`
`As is seen in FIG. 5 (step 510) reproduced below, the consumer control module is
`
`downloaded from the advertising provider’s computer to the consumer’s computer.
`
`Ground 2: Angles + Shaw
`“Advertisement provider downloads the consumer member
`code and consumer control module.” Angles, Ex. 1003,
`FIG. 5:510 (capitalization altered).
`
`
`Claim Language
`11d. providing the
`user with
`download access
`to computer
`software that,
`when run on a
`computer,
`
`
`
`
`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
`
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`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`Claim Language
`
`Ground 2: Angles + Shaw
`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 content.” The “consumer control module” 42 in Angles
`
`performs this function.
`
`Claim Language
`11d(i). displays
`advertising
`content,
`
`Ground 2: Angles + Shaw
`“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.
`
`Limitation 11d(ii). The second function performed by the software recited
`
`
`
`in limitation 11d is “record[ing] computer usage information concerning the user’s
`
`utilization of the computer.” This limitation is disclosed in both Angles and Shaw,
`
`as shown in the chart below. With respect to Angles, the consumer control module
`
`sends a message to the advertising module in response to a consumer clicking on
`
`or selecting a customized advertisement. (Angles, Ex. 1003, Col. 20:21-30; Fig.
`
`11.) This action qualifies as “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 information” as “[d]ata concerning a
`
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`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`person’s use of a computer,” including “what information resources they access.”
`
`(Id.)
`
`Angles does not appear to expressly disclose that the software stores this
`
`computer usage information in a persistent storage medium on the client
`
`computer—the usage information is sent back to the server in response to the user
`
`action. (Angles, Ex. 1003, Col. 20:21-30; Fig. 11.) To the extent storage of
`
`computer usage information in a persistent manner is deemed to be a requirement
`
`of “recording” as recited in limitation 11d(ii), any such requirement is disclosed in
`
`Shaw.
`
`Shaw discloses an event log file and advertisements statistics file that are
`
`recorded at the client and sent to the server system when the user connects to the
`
`Internet. (Shaw, Ex. 1004, Col. 7: 3-13.) Particularly the event log file qualifies as
`
`“computer usage information” under the express definition in the ‘314 patent
`
`specification. (Ex. 1001, Col. 3:37-39.)
`
`Claim Language
`11d(ii). records
`computer usage
`information
`concerning the
`user’s utilization
`of the computer,
`and
`
`Ground 2: Angles + Shaw
`
`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.
`
`Shaw:
`
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`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`Claim Language
`
`Ground 2: Angles + Shaw
`“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. 1004, 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. 1004, Col. 7: 3-13.
`
`Motivation to Combine Angles and Shaw for limitation 11d(ii).
`
`It would have been obvious to a PHOSITA to add the storage of computer
`
`
`
`usage information from Shaw to Angles to produce a system in which the
`
`downloaded software of Angles records computer usage information concerning
`
`the user’s utilization of the computer by storing it in a persistent storage medium.
`
`Angles and Shaw are analogous references that both disclose systems and methods
`
`for providing targeted advertising to users over the Internet using client-server
`
`architectures. Additional rationales for combining Angles and Shaw for limitation
`
`11d(ii) include at least the following: (1) all elements of this limitation are
`
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`Petition for Inter Partes Review of
`Patent No. 6,628,314
`
`disclosed by Angles and Shaw with no change in their respective functions, and the
`
`combination would have yielded nothing more than predictable results; and (2)
`
`modifying Angles to record and persistently store computer usage information, as
`
`disclosed in Shaw would have involved nothing more than known computer
`
`storage techniques to improve a similar advertising system in the same way. For
`
`example, the system in Shaw does not require a continuous Internet connection
`
`between the client computer and the server. The client computer instead
`
`periodically contacts the server when the user needs to send or receive e-mail, at
`
`which time the client application (a) downloads advertisements in bulk, (b) uploads
`
`any changed user profile information, and (c) uploads computer usage information.
`
`(Shaw, Ex. 1004, Col. 18:63-19:43.)
`
`The ‘314 patent acknowledges that, at the time of the alleged invention, not
`
`all Internet users enjoyed a continuous network connection. (Ex. 1001, Col. 16:38-
`
`42.) In the mid-1990s, bandwidth was limited, and many users had slow and
`
`inconsistent dial-up connections. (Sherwood Decl., ¶ 59.) A PHOSITA would
`
`understand that the storing recorded computer usage information locally at the
`
`computer, instead of immediately uploading it to the server, avoided the need for a
`
`continuous network connection and enabled transmission of the usage information
`
`to be deferred until a l