UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.
`Petitioner
`
`v.
`
`B.E. TECHNOLOGY, LLC
`Patent Owner
`____________
`
`Case No.: IPR2014-00743
`Patent 6,628,314
`____________
`
`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 22313-145
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`I.
`
`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) .....................................2
`Current Litigation.................................................................................2
`Administrative Proceedings .................................................................2
`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3) .................3
`C.
`Service Information..............................................................................4
`D.
`Power of Attorney ................................................................................4
`E.
`REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37
`C.F.R. §§ 42.104 AND 42.108......................................................................4
`A.
`Identification of Challenge under 37 C.F.R. § 42.104(b) and
`Statement of Precise Relief Requested ................................................5
`Threshold Requirement for Inter Partes Review 37 C.F.R. §
`42.108(c)...............................................................................................5
`SUMMARY OF THE ’314 PATENT............................................................6
`A.
`Brief Description ..................................................................................6
`B.
`Summary of the Prosecution History of the ’314 Patent .....................7
`IV. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(b)(3) ...................8
`A.
`Legal Overview ....................................................................................9
`B.
`Clarification of “associating”...............................................................9
`C.
`Clarification of “periodically”............................................................10
`PERSON HAVING ORDINARY SKILL IN THE ART & STATE
`OF THE ART ...............................................................................................11
`VI. CLAIMS 11-13, 15, 18, AND 20 OF THE ’314 PATENT ARE
`UNPATENTABLE.......................................................................................12
`A.
`Ground 1 – Claims 11-13, 15, 18, and 20 Are Obvious Under
`35 U.S.C. § 103(a) Over Shaw in View of the W3C
`Submission .........................................................................................13
`VII. CONCLUSION.............................................................................................37
`
`II.
`
`III.
`
`V.
`
`

`

`List of Exhibits1
`Exhibit 1101: U.S. Patent No. 6,628,314 to Hoyle (“the ’314 patent”)
`
`Exhibit 1102: Excerpted File History of the ’314 Patent
`
`Exhibit 1103: U.S. Patent No. 5,809,242 to Shaw et al., filed on April 19, 1996
`and issued on September 15, 1998 (“Shaw”)
`
`Exhibit 1104: Sheree R. Curry, Pointcast and its Wannabes (1996)
`
`Exhibit 1105: Melissa Dunn et al., Privacy and Profiling on the Web (1997)
`(“W3C Submission”)
`
`Exhibit 1106: U.S. Patent No. 6,587,127 to Leeke et al., filed on November 24,
`1998 and issued on July 1, 2003 (“Leeke”)
`
`Exhibit 1107: U.S. Patent No. 5,721,827 to Logan et al., filed on October 2,
`1996 and issued on February 24, 1998 (“Logan”)
`
`Exhibit 1108: U.S. Patent No. 5,948,061 to Merriman et al., filed on October 29,
`1996 and issued on September 7, 1999 (“Merriman”)
`
`Exhibit 1109: U.S. Patent No. 5,918,014 to Robinson, filed on December 26,
`1996 and issued on June 29, 2999 (“Robinson”)
`
`Exhibit 1110: U.S. Patent No. 5,848,396 to Gerace, filed on April 26, 1996 and
`issued on December 8, 1998 (“Gerace”)
`
`Exhibit 1111: Declaration of Robert J. Sherwood In Support Of This Petition
`(“Sherwood Decl.”)
`
`Exhibit 1112: U.S. Patent No. 7,225,142 to Apte et al., filed on August 1, 1996
`and issued on May 29, 2007
`
`1 All of the following exhibits are found in Case No. Case No. IPR2013-00052, the
`
`proceeding Petitioner seeks to join. While not all exhibits are referenced in the
`
`Petition below, Petitioner has included all exhibits and kept
`
`their original
`
`numbering for the purposes of consistency and accurate internal cross-citations.
`
`ii
`
`

`

`Exhibit 1113: U.S. Patent No. 6,141,010 to Hoyle, filed on July 17, 1998, and
`issued on October 31, 2000
`
`Exhibit 1114: Excerpted File History of U.S. Patent No. 6,141,010
`
`Exhibit 1115: Neil Barrett, Advertising on the Internet (Sept. 1997)
`
`Exhibit 1116: Jim Sterne, Advertising on the Web (Sean Dixon & Patrick
`Kanouse, Jan.1997)
`
`Exhibit 1117: Simon St. Laurent, Cookies (Mar. 1998)
`
`Exhibit 1118: Don Peppers & Martha Rogers, The One to One Future (Dec.
`1996)
`
`Exhibit 1119: Robbin Zeff & Brad Aronson, Advertising on the Internet (Tim
`Ryan et al., July 1997)
`
`Exhibit 1120: Ramez Elmasri & Shamkant B. Navathe, Fundamentals of
`Database Systems (Dan Joraanstad et al., 2nd ed. Aug. 1998)
`
`Exhibit 1121: Mark R. Brown et al., Using Netscape 3 (Kellie M. Brooks et al.
`eds., special ed., Dec. 1996)
`
`Exhibit 1122: Rosalind Resnick & Dave Taylor, The Internet Business Guide
`(Cindy Morrow et al., 2nd ed., Jan. 1995)
`
`Exhibit 1123: U.S. Patent No. 6,134,592 to Montulli, filed on August 27, 1997
`and issued on October 17, 2000
`
`Exhibit 1124: M. Crawford, Transmission of IPv6 Packets over FDDI Networks
`(1998)
`
`Exhibit 1125: The American Heritage Dictionary of the English Language (Anne
`H. Soukhanov et al., 3rd ed. 1992)
`
`Exhibit 1126: Alan Freedman, The Computer Desktop Encyclopedia (2nd ed.
`1999)
`
`Exhibit 1127: U.S. Patent No. 5,826,242 to Montulli, filed August 27, 1997 and
`issued on October 20, 1998
`
`Exhibit 1128: Non-Final Office Action, U.S. App. No. 13/107,231 (July 29,
`2013)
`
`iii
`
`

`

`Exhibit 1129: Persistent Client State HTTP Cookies, Preliminary Specification,
`Netscape Communications Corp. (1996)
`
`Exhibit 1130: U.S. Patent No. 5,724,521 to Dedrick, filed November 3, 1994 and
`issued on March 3, 1998
`
`Exhibit 1131: U.S. Patent No. 5,796,952 to Davis et al., filed on March 21, 1997
`and issued on August 18, 1998.
`
`Exhibit 1132: D. Kristol & L. Montulli, HTTP State Management Mechanism,
`Network Working Group, Request for Comments 2109 (Feb. 1997)
`
`Exhibit 1133: Network Working Group, Request for Comments: 1945 HTTP/1.0
`(May
`1996)
`available
`at
`http://www.w3.org/Protocols/rfc1945/rfc1945
`
`Exhibit 1134: U.S. Patent No. 5,933,811 to Angles et al., filed on August 20,
`1996 and issued on August 3, 1999 (“Angles”)
`
`Exhibit 1135: Microsoft Corp., A History of Windows, available at
`http://windows.microsoft.com/en-us/windows/history
`
`Exhibit 1136: Affidavit of Ralph Swick Regarding the Authenticity and
`Publication Date of “Privacy and Profiling on the Web” and the
`“Open Profiling Specification” Published on June 9, 1997
`
`Exhibit 1137: 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
`
`iv
`
`

`

`On behalf of Google Inc. (“Petitioner”) and in accordance with 35 U.S.C. §§
`
`311-319 and 37 C.F.R. §§ 42.1-.80 & 42.100-.123,
`
`inter partes review is
`
`respectfully requested for claims 11-13, 15, 18, and 20 of U.S. Patent No.
`
`6,628,314 (“the ’314 Patent”) (GOOGLE Ex. 1101 “Ex. 1001”) based on identical
`
`grounds as the pending IPR proceeding, Case No. IPR2014-00052.
`
`For the exact same reasons previously considered by the Board, on the exact
`
`same schedule, Petitioner respectfully seeks to join IPR2014-00052.
`
`In this
`
`petition, Petitioner asserts only the exact same grounds of unpatentability that the
`
`Board has already instituted in IPR2014-00052. See Case No. IPR2014-00052,
`
`Paper No. 10.
`
`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
`
`unpatentability that the Board has already found in support of its institution of the
`
`related IPR proceeding. Because this petition is filed within 30 days of the
`
`institution of IPR2013-00052, 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)
`
`Google Inc. is the real party-in-interest.
`
`1
`
`

`

`B.
`
`Related Matters under 37 C.F.R. § 42.8(b)(2)
`
`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 and two pending
`
`inter partes review proceedings. The instituted IPR proceedings are Google Inc. v.
`
`B.E. Technology, L.L.C. (Case No. IPR2014-00038); Microsoft Corporation v.
`
`B.E. Technology, L.L.C.
`
`(Case No.
`
`IPR2014-00039); Facebook
`
`v. B.E.
`
`Technology, L.L.C.
`
`(Case Nos.
`
`IPR2014-00052); and Facebook v. B.E.
`
`Technology, L.L.C. (Case No. IPR2014-00053). The two pending IPRs are
`
`2
`
`

`

`Match.com et al. v. B.E. Technology, L.L.C. (Case Nos. IPR2014-00698 and
`
`IPR2014-000699). Petitioner is also concurrently filing two additional inter partes
`
`review petitions with corresponding Motions for Joinder.
`
`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), Petitioner seeks joinder with IPR2014-00052.
`
`C.
`
`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3)
`
`Lead Counsel
`Clinton H. Brannon (Reg. No. 57,887)
`cbrannon@mayerbrown.com
`
`Mayer Brown, LLP
`1999 K Street, N.W.
`Washington, D.C. 20006-1101
`Telephone: (202) 263-3440
`Fax: (202) 263-3300
`
`Backup Counsel
`Brian A. Rosenthal
`motion requested)
`brosenthal@mayerbrown.com
`
`(pro hac vice
`
`Mayer Brown, LLP
`1999 K Street, N.W.
`Washington, D.C. 20006-1101
`Telephone: (202) 263-3446
`Fax: (202) 263-3300
`
`Petitioner respectfully requests authorization to file a motion for Brian A.
`
`Rosenthal to appear before the USPTO pro hac vice. Mr. Rosenthal
`
`is an
`
`experienced litigating attorney and is currently serving as one of the lead counsels
`
`for Google Inc. in related matter B.E. Technology, LLC v. Google Inc., W.D. Ten.,
`
`No 2:12-cv-02830.
`
`In addition, Mr. Rosenthal has been granted to appear pro hac
`
`vice in instituted case no. IPR2014-00038 relating to the same ’314 Patent.
`
`Accordingly, Mr. Rosenthal has established familiarity with the subject matter at
`
`issue in this proceeding. Petitioner intends to file a motion to appear pro hac vice
`
`3
`
`

`

`under 37 C.F.R. § 42.10. Pursuant to 37 C.F.R. § 42.10(b), powers of attorney
`
`accompany this Petition.
`
`D.
`
`Service Information
`
`Service of any documents via hand-delivery may be made at the mailing
`
`address of lead and backup counsel designated above. Petitioner also consents to
`
`electronic service by email at the above listed e-mail addresses of Lead and
`
`Backup Counsel.
`
`E.
`
`Power of Attorney
`
`Filed concurrently with this petition in accordance with 37 C.F.R. §
`
`42.10(b).
`
`II.
`
`REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§§ 42.104 AND 42.108
`Petitioner certifies that (1) the ’314 Patent is available for inter partes
`
`review; and (2) Petitioner is 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 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 Case No. IPR2013-00109, Paper No. 15
`
`(“the one-year time bar does not apply to a request for joinder.”).
`
`4
`
`

`

`In addition,
`
`the required fees are submitted herewith. The Office is
`
`authorized to charge any fee deficiency, or credit overpayment, to Deposit Account
`
`No. 130019. Petitioner is 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
`
`The precise relief requested by Petitioner is that claims 11-13, 15, 18, and 20
`
`of the ’314 patent be cancelled in view of the following prior art references:
`
` U.S. Patent No. 5,809,242 to Shaw et al., filed on Apr. 19, 1996, and
`issued on Sept. 15, 1998 (Ex. 1103) (“Shaw”).
`
` Melissa Dunn et al., Privacy and Profiling on the Web (Jun. 9, 1997)
`(Ex. 1105) (“W3C Submission”).
`
`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 the ground of rejection is set forth in the Declaration of
`
`Robert J. Sherwood (Ex. 1111) (“Sherwood Decl.”), an expert in the field.
`
`Ground
`
`Ground 1
`
`’314 Patent Claims
`
`Basis for Challenge
`
`11-13, 15, 18, 20
`
`Obvious over Shaw in view of the
`W3C Submission under 35 U.S.C. §
`103(a)
`
`Shaw qualifies as a prior art reference under 35 U.S.C § 102(e)(2). The
`
`W3C Submission qualifies as prior art under 35 U.S.C § 102(b).
`
`B.
`
`Threshold Requirement for Inter Partes Review 37 C.F.R.
`42.108(c)
`
`§
`
`5
`
`

`

`Inter partes review of claims 11-13, 15, 18, and 20 should be instituted
`
`because this Petition establishes a reasonable likelihood that Petitioner 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. 1101, 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
`
`6
`
`

`

`well developed and commonly used. (Sherwood Decl. ¶¶ 25-26, 28.) 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.
`
`B.
`
`Summary of the Prosecution History of the ’314 Patent
`
`The ’314 patent is a divisional of U.S. Patent No. 6,141,010 (“the ’010
`
`patent”). (Ex. 1101 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. 1113 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. 1101 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. 1114 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
`
`7
`
`

`

`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. (Id. at 7.) No
`
`rejections were issued for any claims of the ’314 patent. (See Ex. 1102.) 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.”
`
`(Id. at 3.) Specifically, the ESRA 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 of its
`
`challenged dependent claims.
`
`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 Examiner did not respond, and the ’314 patent issued on
`
`September 30, 2003. The patent owner never filed an IDS, though one was filed in
`
`the parent application (the ’010 patent). (See Ex. 1102 at 7; Ex. 1114 at 5.)
`
`IV. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3)2
`
`2 Petitioner notes that Board, in its Decision to institute Case Number IPR2014-
`
`00052, has generally agreed with Facebook’s proposed constructions and has set
`
`forth interpretations for the terms “periodically” and “associating.” Accordingly,
`
`the following clarifications should in no way be read as limiting Petitioner’s
`
`8
`
`

`

`A.
`
`Legal Overview
`
`A claim subject to IPR is given its “broadest reasonable construction in light
`
`of the specification of the patent in which it appears.”3 37 C.F.R. § 42.100(b). This
`
`Petition applies the broadest reasonable interpretation standard (“BRI”) of the plain
`
`and ordinary meaning of each claim term in the ’314 patent. Specific terms that
`
`require claim construction are discussed below.
`
`B.
`
`Clarification of “associating” 4
`Claim 11 recites “associating” a unique identifier with demographic
`
`information and “associating” demographic and computer usage data with a unique
`
`proposed constructions in District Court litigation or related inter partes review
`
`proceedings.
`
`3 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.
`
`4 The Board,
`
`in its Decision to institute Case Number IPR2014-00052, has
`
`construed “associating” to mean “‘to connect or join together,’ either directly or
`
`indirectly.” (IPR2014-00052, Paper No. 10).
`
`9
`
`

`

`identifier. (Ex. 1101, claim 11.) “Associating” is not expressly defined in the ’314
`
`patent but it is a common word meaning “to connect or join together, combine.”
`
`(Ex. 1125 at 4.) Petitioner asserts 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.
`
`1101, Col. 23:6-7 (emphasis added).) Thus, the claim language under its broadest
`
`reasonable interpretation indirectly associates 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. 1101,
`
`Col. 16:20-22.) Therefore, Petitioner asserts that “associating” means “to connect,
`
`join together, or combine, either directly or indirectly.” (Ex. 1101, Col. 16:20-22,
`
`23:6-7.)
`
`C.
`
`Clarification of “periodically” 5
`Claim 11 of the ’314 patent recites “computer software that… periodically
`
`requests additional advertising content,” and “periodically acquiring said unique
`
`5 The Board,
`
`in its Decision to institute Case Number IPR2014-00052, has
`
`construed “periodically” to mean “recurring from time to time, at regular or
`
`irregular time intervals.” (IPR2014-00052, Paper No. 10).
`
`10
`
`

`

`identifier....”
`
`(Ex. 1101, 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. 1125 at 6.) Consistent with the broadest
`
`reasonable interpretation consistent with the specification, “periodically” should be
`
`construed to mean “recurring from time to time.” (Ex. 1101, Abstract (“from time
`
`to time”), Col. 8:41-43, 14:42-43 (“periodically … as needs to be replaced”) 16:17-
`
`20 (“from time to time”).)
`
`V.
`
`PERSON HAVING ORDINARY SKILL IN THE ART & STATE OF
`THE ART6
`A 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.
`
`6 Petitioner set forth a similar definition of who is “a person having ordinary skill
`
`in the art” with respect to the ’314 Patent in IPR2014-00038. Again, the following
`
`example of a PHOSITA should in no way be read as limiting Petitioner’s definition
`
`in District Court litigation or related inter partes review proceedings.
`
`11
`
`

`

`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.)
`
`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 relied upon in this Petition discloses a
`
`computer program or software that provides targeted advertising to users. As such,
`
`the references are all analogous art and one of ordinary skill in the art would
`
`readily 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 and in the attached Sherwood Declaration. The
`
`limitations of claim 11 are separately addressed and numbered 11a–11k in the
`
`12
`
`

`

`charts below. Some limitations need no further discussion beyond the quotes and
`
`figures in the chart below, so narrative is not included for all limitations.7
`
`A.
`
`Ground 1 – Claims 11-13, 15, 18, and 20 Are Obvious Under 35
`U.S.C. § 103(a) Over Shaw in View of the W3C Submission
`
`U.S. Patent No. 5,809,242 to Shaw et al. (“Shaw,” Ex. 1103) issued from an
`
`application filed on April 19, 1996, and therefore, qualifies as prior art under at
`
`least 35 U.S.C. § 102(e)(2).
`
`Privacy and Profiling on the Web (“W3C
`
`Submission”) is a Microsoft submission to the World Wide Web Consortium
`
`(“W3C”) detailing a proposed standard for tracking and targeting users on the
`
`Internet. The W3C Submission qualifies as prior art under 35 U.S.C. § 102(b) as it
`
`was published on June 9, 1997, more than a year prior to the earliest filing date of
`
`the ’314 patent. (Ex. 1136.)
`
`Shaw, entitled “Electronic Mail System for Displaying Advertisements at
`
`Local Computer Received from Remote System While the Local Computer Is Off-
`
`Line the Remote System,” discloses an e-mail communications system that
`
`displays targeted advertisements to a user who is online or off-line. (Shaw, Ex.
`
`1103, Col. 1:8-11.) Shaw’s
`
`email/advertising system includes
`
`software
`
`7 Petitioner applies the broadest reasonable interpretation to each limitation.
`
`Petitioner reserves the right to assert the defense of indefiniteness in the proper
`
`forum.
`
`13
`
`

`

`downloaded to the user’s computer that periodically acquires advertisements from
`
`a server, and records the user’s response to the advertisements, and keeps track of
`
`usage of the software.
`
`(Id., Col. 3:35-36, 5:19-30, 6:21-40.) The advertising
`
`system in Shaw, although described in the context of an e-mail system, “could be
`
`used to provide advertisements to users in online systems other than e-mail
`
`systems,” such as viewing web pages. (Id., Col. 23:64-24:4.) Ground 1 relies on
`
`Shaw to disclose the majority of the limitations recited in claims 11-13, 15, 18, and
`
`20.
`
`The W3C Submission, entitled “Privacy and Profiling on the Web,” was a
`
`proposal for a Web standard for creating and maintaining profiles of Internet users
`
`to facilitate targeted advertising. (See W3C Submission, Ex. 1105 at 1.) Ground 1
`
`relies on the W3C Submission for certain limitations relating to the assignment of
`
`unique identifiers and acquiring computer usage information.
`
`A limitation-by-limitation explanation of the disclosures of Shaw and the
`
`W3C Submission, their application to the claims of the ’314 patent, and specific
`
`rationales to combine the references to render the claims obvious, are provided
`
`below.
`
`Limitation 11p (Preamble), 11a, 11b, 11c: Shaw discloses each and every
`
`aspect of these claim limitations, as shown in the chart below.
`
`14
`
`

`

`Claim
`Language
`
`Patent 5,809,242 (Shaw)
`U.S.
`Submission
`
`in view of
`
`the W3C
`
`11. 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,
`
`permitting
`11b.
`a computer user
`to
`access
`said
`server via said
`computer
`network,
`
`“The present invention is directed to an electronic mail system
`that displays advertisements to remote users, and in particular,
`to a system that displays targeted advertisements to remote
`users when the users are off-line.” Shaw, Ex. 1103, Col. 1:8-
`11.
`
`“When first using the system of the present invention, the user
`completes a member profile (or
`survey) at
`the client
`computer. The member profile records information about the
`user, e.g., hobbies, interests, employment, education, sports,
`demographics, etc.
`.
`. The server system utilizes the
`information in the member profile to determine which
`advertisements should be directed to the user.” Shaw, Ex.
`1103, Col. 5:5-16.
`
`“The client program periodically communicates with a server
`system. In the representative embodiment, the server system
`comprises a number of mail
`servers and a database
`management system. Each mail server is a high speed
`processor with secondary memory. Each mail server is
`coupled to the database management system and to an
`external computer network,
`such as,
`for example,
`the
`Internet.” Shaw, Ex. 1103, Col 3:34-41.
`
`the client computer 101
`“Referring again to FIG. 1,
`selectively communicates with a server system 104 over the
`network 103 using the communication interface 102. The
`server system 104 is coupled to the network 103 via a
`communications server 105.” Shaw, Ex. 1103, Col. 9:31-35.
`
`See Shaw, Ex. 1103, Fig. 1 (client computer 101 and servers
`104).
`
`acquiring
`11c.
`demographic
`information
`about
`the user,
`said
`
`is
`3, once the user’s account
`“Referring again to FIG.
`activated (step 304), the user is asked to complete a member
`profile (step 305).” Shaw, Ex. 1103, Col. 12:22-24.
`
`“The member profile records information about the user, e.g.,
`
`15
`
`

`

`Claim
`Language
`
`Patent 5,809,242 (Shaw)
`U.S.
`Submission
`
`in view of
`
`the W3C
`
`sports,
`education,
`employment,
`interests,
`hobbies,
`demographics, etc. The client program transmits the member
`profile to the server system when the user’s client program
`first establishes a connection with the server system (e.g., on
`initial sign-up).” Shaw, Ex. 1103, Col. 5:7-12.
`
`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.
`
`As shown below, Shaw discloses providing the user with download access to
`
`computer software, referred to in Shaw as the “client program.”
`
`Claim
`Language
`
`Patent 5,809,242 (Shaw)
`U.S.
`Submission
`
`in view of
`
`the W3C
`
`providing
`11d.
`user with
`the
`download access
`to
`computer
`software
`that,
`when run on a
`computer,
`
`“Typically, the user is provided (e.g., on disk or electronically
`downloaded over the Internet) with a copy of a software
`program (the client program) that is executed by the client
`computer 101 according to the principles of the present
`invention.” Shaw, Ex. 1103, Col. 10:44-48.
`
`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
`
`16
`
`

`

`“display[ing] advertising content.” As shown below, the client program disclosed
`
`in Shaw performs this function.
`
`Claim
`Language
`
`Patent 5,809,242 (Shaw)
`U.S.
`Submission
`
`in view of
`
`the W3C
`
`displays
`11d(i)
`advertising
`content,
`
`“While composing e-mail messages, advertisements are
`displayed to the user by the client program.” Shaw, Ex. 1103,
`Col. 4:4-6.
`
`See also Shaw, Ex. 1103, FIG. 8 (showing advertisements
`800).
`
`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 Shaw and the
`
`W3C Submission. As shown below, the client program in Shaw stores an “event
`
`log file” and an “advertisements statistics file,” which are sent to the server system
`
`when the user connects to the Internet.
`
`(Shaw, Ex. 1103, Col. 7: 3-13.)
`
`17
`
`

`

`Claim
`Language
`
`Patent 5,809,242 (Shaw)
`U.S.
`Submission
`
`in view of
`
`the W3C
`
`records
`11d(ii)
`computer usage
`information
`the
`concerning
`user’s utilization
`of the computer,
`and
`
`“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. 1103, 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. 1103, Col. 7: 3-13.
`
`the
`limitation,
`this
`Although Shaw sufficiently discloses
`disclosure of
`the W3C Submission is presented to further
`support this proposed rejection.
`
`“Server based information is limited, however, since many
`page-views are never reported back to servers.
`.
`.
`. The
`obvious solution is for Web browsers to support client side
`logging of offline