`571-272-7822
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` Paper 12
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` Entered: June 13, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`MATCH.COM LLC and PEOPLE MEDIA, INC.
`Petitioner
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`v.
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`B.E. TECHNOLOGY, L.L.C.
`Patent Owner
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`
`
`Case IPR2014-00698
`Patent 6,628,314 B1
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`
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`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE,
`and LYNNE E. PETTIGREW, Administrative Patent Judges.
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`DESHPANDE, Administrative Patent Judge.
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`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`Case IPR2014-00698
`Patent 6,628,314 B1
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`I.
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`INTRODUCTION
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`Match.com LLC and People Media, Inc. (collectively, “Petitioner”)
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`filed a Petition requesting an inter partes review of claims 11-13, 15, 18, and
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`20 of U.S. Patent No. 6,628,314 B1 (Ex. 1001, “the ’314 patent”). Paper 1
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`(“Pet.”). B.E. Technology, L.L.C. (“Patent Owner”) elected not to file a
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`preliminary response. See Paper 11. We have jurisdiction under 35 U.S.C.
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`§ 314.
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`The standard for instituting an inter partes review is set forth in
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`35 U.S.C. § 314(a), which provides as follows:
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`THRESHOLD -- The Director may not authorize an inter
`partes review to be instituted unless the Director determines
`that the information presented in the petition filed under
`section 311 and any response filed under section 313 shows that
`there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the
`petition.
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`Upon consideration of the Petition, we determine that the information
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`presented by Petitioner has established that there is a reasonable likelihood
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`that Petitioner would prevail in showing the unpatentability of claims 11-13,
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`15, 18, and 20 of the ’314 patent. Accordingly, we institute an inter partes
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`review of these claims.
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`A. Related Proceedings
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`Petitioner indicates that the ’314 patent is the subject of proceedings
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`in B.E. Technology, L.L.C. v. People Media, Inc., No. 2:12-cv-02833 (W.D.
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`Tenn.), filed on September 21, 2012, B.E. Technology, L.L.C. v. Match.com
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`LLC, No. 2:12-cv-02834 (W.D. Tenn.), filed on September 21, 2012, and
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`numerous district court cases filed by Patent Owner against other
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`defendants. Pet. 2.
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`2
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`Patent 6,628,314 B1
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`Petitioner also seeks review of the ’314 patent in inter partes review
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`case IPR2014-00699. Additionally, the ’314 patent is the subject of the
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`following inter partes reviews: Google, Inc. v. B.E. Technology, L.L.C.,
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`Case IPR2014-00038 (PTAB Apr. 9, 2014), Microsoft Corporation v. B.E.
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`Technology, L.L.C., Case IPR2014-00039 (PTAB Apr. 9, 2014), Facebook,
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`Inc. v. B.E. Technology, L.L.C., Case IPR2014-0052 (PTAB Apr. 9, 2014),
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`and Facebook, Inc. v. B.E. Technology, L.L.C., Case IPR2014-00053 (PTAB
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`Apr. 9, 2014). Petitioner filed a motion for joinder with Facebook, Inc. v.
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`B.E. Technology, L.L.C., Case IPR2014-00053 (PTAB Apr. 9, 2014). See
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`Paper 4.
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`B. Illustrative Claim
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`Petitioner challenges claims 11-13, 15, 18, and 20 of the ’314 patent.
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`Independent claim 11 is illustrative of the claims at issue and follows:
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`11. A method of providing demographically-targeted
`advertising to a computer user, comprising the steps of:
`providing a server that is accessible via a computer
`network,
`permitting a computer user to access said server via said
`computer network,
`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,
`providing the user with download access to computer
`software that, when run on a computer, displays advertising
`content, records computer usage information concerning the
`user’s utilization of the computer, and periodically requests
`additional advertising content,
`transferring a copy of said software to the computer in
`response to a download request by the user,
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`providing a unique identifier to the computer, wherein
`said identifier uniquely identifies information sent over said
`computer network from the computer to said server,
`associating said unique identifier with demographic
`information in a database,
`selecting advertising content for transfer to the computer
`in accordance with the demographic information associated
`with said unique identifier;
`transferring said advertising content from said server to
`the computer for display by said program,
`periodically acquiring said unique identifier and said
`computer usage information recorded by said software from the
`computer via said computer network, and
`associating said computer usage information with said
`demographic information using said unique identifier.
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`C. The Alleged Grounds of Unpatentability
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`The information presented in the Petition sets forth Petitioner’s
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`contentions of unpatentability of claims 11-13, 15, 18, and 20 of the ’314
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`patent under 35 U.S.C. § 103, as follows (see Pet. 4-5, 12-39):
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`Reference(s)
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`Basis
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`Claims Challenged
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`Angles1 and Shaw2
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`§ 103(a)
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`11-13, 15, 18, and 20
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`II. ANALYSIS
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`Petitioner argues that claims 11-13, 15, 18, and 20 are unpatentable
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`under 35 U.S.C. § 103 as obvious over Angles and Shaw. Pet. 4-5, 12-39.
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`Petitioner submits arguments and evidence identical to those submitted in
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`IPR2014-00053. Pet. 1. Petitioner proposes the same claim construction
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`1 U.S. Patent No. 5,933,811 (Ex. 1003) (“Angles”).
`2 U.S. Patent No. 5,809,242 (Ex. 1004) (“Shaw”).
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`and argues the same rationale of unpatentability of claims 11-13, 15, 18, and
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`20 as presented in IPR2014-00053. Pet. 8-39; Facebook, Inc. v. B.E.
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`Technology, L.L.C., Case IPR2014-00053, Paper 1, 35-60. Petitioner further
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`relies on the same declaration by Robert J. Sherwood in support of their
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`alleged ground of unpatentability. Pet. 4-5; Ex. 1005. Patent Owner did not
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`file a preliminary response in IPR2014-00053, and does not file a
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`preliminary response in this case. See Paper 11.
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`We determined that the Petitioner in IPR2014-00053 (“the -00053
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`Petitioner”) demonstrated a reasonable likelihood of prevailing in
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`establishing the unpatentability of claims 11-13, 15, 18, and 20 of the ’314
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`patent. Facebook, Inc. v. B.E. Technology, L.L.C., Case IPR2014-00053,
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`slip op. at 11-16 (Paper 10). We granted that petition and instituted an inter
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`partes review of claims 11-13, 15, 18, and 20 as unpatentable under
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`35 U.S.C. § 103 as obvious over Angles and Shaw. Facebook, Inc. v. B.E.
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`Technology, L.L.C., Case IPR2014-00053, slip op. at 17 (Paper 10).
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`Accordingly, we incorporate our previous analysis, including our
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`claim interpretation analysis (see Facebook, Inc. v. B.E. Technology, L.L.C.,
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`Case IPR2014-00053, slip op. at 6-8 (Paper 10)) and our unpatentability
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`analysis regarding this asserted ground of unpatentability (see Facebook,
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`Inc. v. B.E. Technology, L.L.C., Case IPR2014-00053, slip op. at 11-16
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`(Paper 10)), from IPR2014-00053, and we determine that Petitioner has
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`demonstrated a reasonable likelihood that Petitioner would prevail in
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`establishing the unpatentability of claims 11-13, 15, 18, and 20 of the ’314
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`patent in this petition for the same reasons discussed in Facebook, Inc. v.
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`B.E. Technology, L.L.C., Case IPR2014-00053 (PTAB Apr. 9, 2014).
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`III. CONCLUSION
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`For the foregoing reasons, we determine that the information
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`presented in the Petition establishes that there is a reasonable likelihood that
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`Petitioner would prevail in establishing unpatentability of claims 11-13, 15,
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`18, and 20 of the ’314 patent.
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`The Board has not made a final determination on the patentability of
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`any challenged claims.
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`Accordingly, it is
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`IV. ORDER
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`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
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`hereby instituted as to the following proposed grounds:
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`Obviousness of claims 11-13, 15, 18, and 20 over Angles and Shaw.
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`FURTHER that no other grounds raised in the Petition are authorized
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`for inter partes review.
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(d) and
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`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial and the
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`trial commences on the entry date of this decision.
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`7
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`Case IPR2014-00698
`Patent 6,628,314 B1
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`For PETITIONER:
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`Sanjay Murthy
`Sanjay.murthy@klgates.com
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`Kacy Dicke
`Kacy.dicke@klgates.com
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`For PATENT OWNER:
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`Jason Angell
`jangell@fawlaw.com