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.: IPR2014-00744
`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 22313-1
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`B.
`
`III.
`
`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
`C.
`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3) ..................3
`D.
`Service Information..............................................................................4
`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)...................9
`A.
`Legal Overview ....................................................................................9
`B.
`Clarification of “associating”.............................................................10
`C.
`Clarification of “periodically”............................................................11
`PERSON HAVING ORDINARY SKILL IN THE ART & STATE
`OF THE ART ...............................................................................................12
`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 Angles in View of Shaw .................................13
`VII. CONCLUSION.............................................................................................41
`
`V.
`
`-i-
`
`

`

`List of Exhibits1
`Exhibit 1001: U.S. Patent No. 6,628,314 to Hoyle (“the ’314 patent”)
`
`Exhibit 1002: Excerpted File History of the ’314 Patent
`
`Exhibit 1003: U.S. Patent No. 5,933,811 to Angles et al., filed on August 20, 1996
`and issued on August 3, 1999 (“Angles”)
`
`Exhibit 1004: U.S. Patent No. 5,809,242 to Shaw et al., filed on April 19, 1996
`and issued on September 15, 1998 (“Shaw”)
`
`Exhibit 1005: U.S. Patent No. 6,119,098 to Guyot et al., filed on October 14, 1997
`and issued on September 12, 2000 (“Guyot”)
`
`Exhibit 1006: U.S. Patent No. 6,009,410 to LeMole et al., filed on October 16,
`1997 and issued on December 28, 1999 (“LeMole”)
`
`Exhibit 1007: Declaration of Robert J. Sherwood In Support Of This Petition
`(“Sherwood Decl.”)
`
`Exhibit 1008: U.S. Patent No. 7,225,142 to Apte et al., filed on August 1, 1996
`and issued on May 29, 2007
`
`Exhibit 1009: U.S. Patent No. 6,141,010 to Hoyle, filed on July 17, 1998, and
`issued on October 31, 2000
`
`Exhibit 1010: Excerpted File History of U.S. Patent No. 6,141,010
`
`Exhibit 1011: Neil Barrett, Advertising on the Internet (Sept. 1997)
`
`Exhibit 1012: Jim Sterne, Advertising on the Web (Sean Dixon & Patrick
`Kanouse, Jan.1997)
`
`1 All of the following exhibits are found in Case No. Case No. IPR2013-00053, 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 1013: Simon St. Laurent, Cookies (Mar. 1998)
`
`Exhibit 1014: Don Peppers & Martha Rogers, The One to One Future (Dec. 1996)
`
`Exhibit 1015: Robbin Zeff & Brad Aronson, Advertising on the Internet (Tim
`Ryan et al., July1997
`
`Exhibit 1016: Ramez Elmasri & Shamkant B. Navathe, Fundamentals of Database
`Systems (Dan Joraanstad et al., 2nd ed. Aug. 1998)
`
`Exhibit 1017: Mark R. Brown et al., Using Netscape 3 (Kellie M. Brooks et al.
`eds., special ed., Dec. 1996)
`
`Exhibit 1018: Rosalind Resnick & Dave Taylor, The Internet Business Guide
`(Cindy Morrow et al., 2nd ed., Jan. 1995)
`
`Exhibit 1019: U.S. Patent No. 6,134,592 to Montulli, filed on August 27, 1997 and
`issued on October 17, 2000
`
`Exhibit 1020: M. Crawford, Transmission of IPv6 Packets over FDDI Networks
`(1998)
`
`Exhibit 1021: The American Heritage Dictionary of the English Language (Anne
`H. Soukhanov et al., 3rd ed. 1992)
`
`Exhibit 1022: Alan Freedman, The Computer Desktop Encyclopedia (2d ed. 1999)
`
`Exhibit 1023: U.S. Patent No. 5,826,242 to Montulli, filed August 27, 1997 and
`issued on October 20, 1998
`
`Exhibit 1024: 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
`
`Exhibit 1025: Melissa Dunn et al., Privacy and Profiling on the Web (June 1,
`1997), available at http://www.w3.org/TR/NOTE-Web-privacy
`
`Exhibit 1026: Network Working Group, Request for Comments: 1945 HTTP/1.0
`(May
`1996)
`available
`at
`http://www.w3.org/Protocols/rfc1945/rfc1945
`
`-iii-
`
`

`

`Exhibit 1027: Sheree R. Curry, Pointcast and its Wannabes (1996), available at
`http://money.cnn.com/magazines/fortune/fortune_archive/1996/11/
`25/218683/ index.htm
`
`Exhibit 1028: U.S. Patent No. 5,724,521 to Dedrick, filed on November 3, 1994
`and issued on March 3, 1998
`
`Exhibit 1029: Persistent Client State HTTP Cookies, Preliminary Specification,
`Netscape Communications Corp. (1996)
`
`Exhibit 1030: U.S. Patent No. 5,796,952 to Davis et al., filed on March 21, 1997
`and issued on August 18, 1998
`
`Exhibit 1031: D. Kristol & L. Montulli, HTTP State Management Mechanism,
`Network Working Group, Request for Comments 2109 (Feb. 1997)
`
`of Windows,
`Exhibit 1032: Microsoft Corp., A History
`http://windows.microsoft.com/en-us/windows/history
`
`available
`
`at
`
`Exhibit 1033: David Fox & Troy Downing, Web Publisher’s Construction Kit
`with HTML 3.2 (2d ed. 1996) Pgs. 547-592.
`
`-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. 1001 “Ex. 1001”) based on identical
`
`grounds as the pending IPR proceeding, Case No. IPR2014-00053.
`
`For the exact same reasons previously considered by the Board, on the exact
`
`same schedule, Petitioner respectfully seeks to join IPR2014-00053.
`
`In this
`
`petition, Petitioner asserts only the exact same grounds of unpatentability that the
`
`Board has already instituted in IPR2014-00053. See Case No. IPR2014-00053,
`
`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 IPR2013-00053, 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)
`
`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
`
`Match.com et al. v. B.E. Technology, L.L.C. (Case Nos. IPR2014-00698 and
`-2-
`
`

`

`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 IPR2014-00053.
`
`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 (pro hac vice
`motion requested)
`brosenthal@mayerbrown.com
`
`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.
`
`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.”).
`
`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)).
`
`-4-
`
`

`

`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. 5,933,811 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.
`
`Additional support for the ground of rejection is set forth in the Declaration of
`
`Robert J. Sherwood (Ex. 1007) (“Sherwood Decl.”), an expert in the field.
`
`Ground
`
`Ground 1
`
`’314 Patent
`Claims
`11-13, 15, 18, 20
`
`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).
`
`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 Petitioner will prevail
`
`with respect to each of the claims challenged. 35 U.S.C. § 314(a).
`
`-5-
`
`

`

`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
`
`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
`
`-6-
`
`

`

`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. 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.
`
`1009 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. 1010 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
`
`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
`
`-7-
`
`

`

`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.)
`
`-8-
`
`

`

`IV. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3)2
`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.”3 37 C.F.R. § 42.100(b). Specific
`
`terms that require claim construction are discussed below. Though applying BRI
`
`2 Petitioner notes that Board, in its Decision to institute Case Number IPR2014-
`
`00053, 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
`
`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.
`
`-9-
`
`

`

`for the purposes of this petition, Petitioner reserves the right to assert the defense
`
`of indefiniteness in the proper forum.
`
`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
`
`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. 1021 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.
`
`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, Petitioner asserts that
`
`4 The Board, in its Decision to institute Case Number IPR2014-00053, has
`
`construed “associating” to mean “‘to connect or join together,’ either directly or
`
`indirectly.” (IPR2014-00053, Paper No. 10.)
`
`-10-
`
`

`

`“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”5
`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. 1021 at 6.) Consistent with the broadest reasonable
`
`interpretation consistent with the specification, “periodically” should be construed
`
`to mean “recurring from time to time.” (Ex. 1001, Abstract (“from time to time”),
`
`Col. 8:41-43 (“periodically…as needs to be replaced”), 16:17-20 (“from time to
`
`time”).)
`
`5 The Board, in its Decision to institute Case Number IPR2014-00053, has
`
`construed “periodically” to mean “recurring from time to time, at regular or
`
`irregular time intervals.” (IPR2014-00053, Paper No. 10).
`
`-11-
`
`

`

`V.
`
`PERSON HAVING ORDINARY SKILL IN THE ART & STATE OF
`THE ART6
`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
`
`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
`
`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. 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.
`
`-12-
`
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`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.
`
`A.
`
`Ground 1 – 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.
`
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`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-
`
`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.
`
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`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 server that is
`accessible via a computer
`network
`
`Ground 1: Angles + Shaw
`“The advertisement provider’s computer stores
`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 ,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).
`
`-15-
`
`

`

`Claim Language
`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,
`
`Ground 1: Angles + Shaw
`“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).
`the
`registers with
`consumer
`“[W]hen
`a
`the
`computer
`18,
`provider
`advertisement
`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.
`
`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.
`
`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).)
`
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`

`

`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.
`
`Claim Language
`11d. providing the user with
`download access to computer
`software that, when run on a
`computer,
`
`Ground 1: Angles + Shaw
`the
`“Advertisement
`provider
`downloads
`consumer member code and consumer control
`module.” Angles, Ex. 1003, FIG. 5:510
`(capitalization altered).
`
`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
`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
`
`-17-
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`

`

`“display[ing] advertising content.” The “consumer control module” 42 in Angles
`
`performs this function.
`
`Claim Language
`11d(i). displays advertising
`content,
`
`Ground 1: 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
`
`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
`
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`

`

`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 1: 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:
`(i) which
`client program records
`“The
`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