`571-272-7822
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` Paper 8
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` Entered: June 18, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.
`Petitioner
`
`v.
`
`B.E. TECHNOLOGY, L.L.C.
`Patent Owner
`
`
`Case IPR2014-00738
`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
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`
`
`
`
`
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`Case IPR2014-00738
`Patent 6,628,314 B1
`
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`I.
`
`INTRODUCTION
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`Google, Inc. (“Petitioner”) filed a Petition requesting an inter partes
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`review of claims 11-22 of U.S. Patent No. 6,628,314 B1 (Ex. 1001, “the
`
`’314 patent”). Paper 1 (“Pet.”). B.E. Technology, L.L.C. (“Patent Owner”)
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`elected not to file a preliminary response. See Paper 7. We have jurisdiction
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`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 11-22
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`of the ’314 patent. Accordingly, we institute an inter partes review of these
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`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. Google, Inc., No. 2:12-cv-02830 (W.D. Tenn.),
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`filed on September 21, 2012, and numerous district court cases filed by
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`Patent Owner against other defendants. Pet. 2-3.
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`Petitioner also seeks review of the ’314 patent in inter partes review
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`case IPR2014-00743 and inter partes case IPR2014-00744. Additionally,
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`the ’314 patent is the subject of the following inter partes reviews: Google,
`
`2
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`
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`Case IPR2014-00738
`Patent 6,628,314 B1
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`Inc. v. B.E. Technology, L.L.C., Case IPR2014-00038 (PTAB Apr. 9, 2014),
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`Microsoft Corporation v. B.E. Technology, L.L.C., Case IPR2014-00039
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`(PTAB Apr. 9, 2014), Facebook, Inc. v. B.E. Technology, L.L.C., Case
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`IPR2014-0052 (PTAB Apr. 9, 2014), Facebook, Inc. v. B.E. Technology,
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`L.L.C., Case IPR2014-00053 (PTAB Apr. 9, 2014), Match.com LLC and
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`People Media, Inc v. B.E. Technology, L.L.C., Case IPR2014-00698 (PTAB
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`June 13, 2014), and Match.com LLC and People Media, Inc v. B.E.
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`Technology, L.L.C., Case IPR2014-00699 (PTAB June 13, 2014). Petitioner
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`filed a motion for joinder with Microsoft Corporation v. B.E. Technology,
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`L.L.C., Case IPR2014-00039 (PTAB Apr. 9, 2014). See Paper 3.
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`B. Illustrative Claim
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`Petitioner challenges claims 11-22 of the ’314 patent. Independent
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`claim 11 and dependent claims 15 and 20 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
`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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`3
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`Case IPR2014-00738
`Patent 6,628,314 B1
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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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`
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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.
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`20. The method of claim 11, wherein said acquiring step
`further comprises requesting said demographic information in
`response to a request from the user to download said software
`and receiving said demographic information from the user prior
`to providing the user with access to said software.
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`4
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`Case IPR2014-00738
`Patent 6,628,314 B1
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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 11-22 of the ’314 patent under
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`35 U.S.C. §§ 102 and 103, as follows (see Pet. 5, 10-25):
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`Reference(s)
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`Basis
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`Claims Challenged
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`Guyot1
`Guyot and Robinson2
`Guyot and RFC 16353
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`§ 102(e)
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`§ 103(a)
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`§ 103(a)
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`11-14 and 16-19
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`15
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`20-22
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`II. ANALYSIS
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`Petitioner argues that claims 11-14 and 16-19 are unpatentable under
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`35 U.S.C. § 102(e) as anticipated by Guyot, claim 15 is unpatentable under
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`35 U.S.C. § 103 as obvious over Guyot and Robinson, and claims 20-22 are
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`unpatentable under 35 U.S.C. § 103 as obvious over Guyot and RFC 1635.
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`Pet. 5, 10-25. Petitioner submits arguments and evidence identical to those
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`submitted in IPR2014-00039. Pet. 1. Petitioner proposes the same claim
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`construction and argues the same rationale of unpatentability of claims 11-
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`22 as presented in IPR2014-00039. Pet. 7-25; Facebook, Inc. v. B.E.
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`Technology, L.L.C., Case IPR2014-00039, Paper 1, 8-10, 27-42. Petitioner
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`further relies on the same declaration by Henry Houh in support of their
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`alleged grounds of unpatentability. Pet. 6-25; Ex. 1003. Patent Owner did
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`
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`1 U.S. Patent No. 6,119,098 (Ex. 1006) (“Guyot”).
`2 U.S. Patent No. 5,918,014 (Ex. 1007) (“Robinson”).
`3 Deutsch et al., How to Use Anonymous FTP, IAFA Working Group, 1-13
`(May 1994) (Ex. 1022) (“RFC 1635”).
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`5
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`Case IPR2014-00738
`Patent 6,628,314 B1
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`not file a preliminary response in IPR2014-00039, and does not file a
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`preliminary response in this case. See Paper 7.
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`We determined that the Petitioner in IPR2014-00039 (“the -00039
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`Petitioner”) demonstrated a reasonable likelihood of prevailing in
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`establishing the unpatentability of claims 11-22 of the ’314 patent.
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`Facebook, Inc. v. B.E. Technology, L.L.C., Case IPR2014-00039, slip op. at
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`8-18 (Paper 13). We granted that petition and instituted an inter partes
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`review of claims 11-14 and 16-19 as unpatentable under 35 U.S.C. § 102(e)
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`as anticipated by Guyot, claim 15 as unpatentable under 35 U.S.C. § 103 as
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`obvious over Guyot and Robinson, and claims 20-22 as unpatentable under
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`35 U.S.C. § 103 as obvious over Guyot and RFC 1635. Facebook, Inc. v.
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`B.E. Technology, L.L.C., Case IPR2014-00039, slip op. at 19 (Paper 13).
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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 IPR2014-00039, slip op. at 7-8 (Paper 13)) 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 IPR2014-00039, slip op. at 8-18
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`(Paper 13)), from IPR2014-00039, 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 11-22 of the ’314 patent in this
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`petition for the same reasons discussed in Facebook, Inc. v. B.E.
`
`Technology, L.L.C., Case IPR2014-00039 (PTAB Apr. 9, 2014).
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`
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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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`6
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`Case IPR2014-00738
`Patent 6,628,314 B1
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`Petitioner would prevail in establishing unpatentability of claims 11-22 of
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`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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`1.
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`2.
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`3.
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`Anticipation of claims 11-14 and 16-19 by Guyot; and
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`Obviousness of claim 15 over Guyot and Robinson.
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`Obviousness of claims 20-22 over Guyot and RFC 1635.
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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 IPR2014-00738
`Patent 6,628,314 B1
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`For PETITIONER:
`
`Clinton Brannon
`cbrannon@mayerbrown.com
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`For PATENT OWNER:
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`Jason Angell
`jangell@fawlaw.com
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`8
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