Trials@uspto.gov
`571-272-7822
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` Paper 11
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` Entered: June 13, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`MATCH.COM LLC and PEOPLE MEDIA, INC.
`Petitioner
`
`v.
`
`B.E. TECHNOLOGY, L.L.C.
`Patent Owner
`
`
`Case IPR2014-00699
`Patent 6,628,314 B1
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE,
`and LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
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`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`571-272-7822
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` Paper 11
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` Entered: June 13, 2014
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MATCH.COM LLC and PEOPLE MEDIA, INC.
`Petitioner
`
`v.
`
`B.E. TECHNOLOGY, L.L.C.
`Patent Owner
`
`
`Case IPR2014-00699
`Patent 6,628,314 B1
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE,
`and LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`Case IPR2014-00699
`Patent 6,628,314 B1
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`
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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 10. We have jurisdiction under 35 U.S.C.
`
`§ 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
`2
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`Case IPR2014-00699
`Patent 6,628,314 B1
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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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`Petitioner also seeks review of the ’314 patent in inter partes review
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`case IPR2014-00698. 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 Google, Inc. v. B.E.
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`Technology, L.L.C., Case IPR2014-00038 (PTAB Apr. 9, 2014). See Paper
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`4.
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`B. Illustrative Claims
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`Petitioner challenges claims 11-13, 15, 18, and 20 of the ’314 patent.
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`Independent claim 11 and dependent claim 15 are illustrative of the claims at
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`issue and follow:
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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
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`Case IPR2014-00699
`Patent 6,628,314 B1
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`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,
`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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`15. The method of claim 11, wherein said providing a unique
`identifier step further comprises storing a cookie on the
`computer.
`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
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`4
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`Case IPR2014-00699
`Patent 6,628,314 B1
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`’314 patent under 35 U.S.C. §§ 102 and 103, as follows (see Pet. 4-5, 13-
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`36):
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`Reference(s)
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`Basis
`
`Claims
`Challenged
`
`Logan1
`Logan and Robinson2
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`§ 102(a)
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`11-13, 18, and 20
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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, 18, and 20 are unpatentable under
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`35 U.S.C. § 102(a) as anticipated by Logan. Pet. 4-5, 13-33. Petitioner also
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`argues that claim 15 is unpatentable under 35 U.S.C. § 103 as obvious over
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`Logan and Robinson. Pet. 4-5, 34-36. Petitioner submits arguments and
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`evidence identical to those submitted in IPR2014-00038. Pet. 1. Petitioner
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`proposes the same claim construction and argues the same rationale of
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`unpatentability of claims 11-13, 15, 18, and 20 as presented in IPR2014-
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`00038. Pet. 5-36; Google, Inc. v. B.E. Technology, L.L.C., Case IPR2014-
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`00038, Paper 1, 13-32, 60. Petitioner further relies on the same declaration
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` 1
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` U.S. Patent No. 5,721,827 (Ex. 1002) (“Logan”).
`2 U.S. Patent No. 5,918,014 (Ex. 1003) (“Robinson”).
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`Patent 6,628,314 B1
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`by Stephen Gray in support of their alleged ground of unpatentability. Pet.
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`4-5; Ex. 1004. Patent Owner did not file a preliminary response in IPR2014-
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`00038, and does not file a preliminary response in this case. See Paper 10.
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`We determined that the Petitioner in IPR2014-00038 (“the -00038
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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. Google, Inc. v. B.E. Technology, L.L.C., Case IPR2014-00038, slip
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`op. at 10-17 (Paper 9). We granted that petition and instituted an inter
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`partes review of claims 11-13, 18, and 20 as unpatentable under 35 U.S.C.
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`§ 102(a) as anticipated by Logan and of claim 15 as unpatentable under
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`35 U.S.C. § 103 as obvious over Logan and Robinson. Google, Inc. v. B.E.
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`Technology, L.L.C., Case IPR2014-00038, slip op. at 18 (Paper 9).
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`Accordingly, we incorporate our previous analysis, including our
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`claim interpretation analysis (see Google, Inc. v. B.E. Technology, L.L.C.,
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`Case IPR2014-00038, slip op. at 7-10 (Paper 9)) and our unpatentability
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`analysis regarding these asserted grounds of unpatentability (see Google,
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`Inc. v. B.E. Technology, L.L.C., Case IPR2014-00038, slip op. at 10-17
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`(Paper 9)), from IPR2014-00038, 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 Google, Inc. v. B.E.
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`Technology, L.L.C., Case IPR2014-00038 (PTAB Apr. 9, 2014).
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`Case IPR2014-00699
`Patent 6,628,314 B1
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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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`IV. ORDER
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`Accordingly, it is
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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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`1.
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`2.
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`Anticipation of claims 11-13, 18, and 20 by Logan; and
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`Obviousness of claim 15 over Logan and Robinson.
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`FURTHER ORDERED that no other grounds raised in the Petition are
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`authorized 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 IPR2014-00699
`Patent 6,628,314 B1
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`FOR PETITIONER:
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`Sanjay Murthy
`Kacy Dicke
`K&L Gates LLP
`sanjay.murthy@klgates.com
`kacy.dicke@klgates.com
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`FOR PATENT OWNER:
`
`Jason S. Angell
`Freitas Tseng & Kaufman LLP
`jangell@ftklaw.com
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`8
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