Trials@uspto.gov
`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 IPR2014-00744
`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
`
`
`
`
`
`
`571-272-7822
`
`
`
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`
`
`
`
` Paper 8
`
`
` Entered: June 18, 2014
`
`
`
`
`
`
`
`
`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 IPR2014-00744
`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 IPR2014-00744
`Patent 6,628,314 B1
`
`
`I.
`
`INTRODUCTION
`
`Google, Inc. (“Petitioner”) filed a Petition requesting an inter partes
`
`review of claims 11-13, 15, 18, and 20 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”) elected not to file a preliminary response. See Paper 7.
`
`We have jurisdiction under 35 U.S.C. § 314.
`
`The standard for instituting an inter partes review is set forth in
`
`35 U.S.C. § 314(a), which provides as follows:
`
`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.
`
`Upon consideration of the Petition, we determine that the information
`
`presented by Petitioner has established that there is a reasonable likelihood
`
`that Petitioner would prevail in showing the unpatentability of claims 11-13,
`
`15, 18, and 20 of the ’314 patent. Accordingly, we institute an inter partes
`
`review of these claims.
`
`A. Related Proceedings
`
`Petitioner indicates that the ’314 patent is the subject of proceedings
`
`in B.E. Technology, L.L.C. v. Google, Inc., No. 2:12-cv-02830 (W.D. Tenn.),
`
`filed on September 21, 2012, and numerous district court cases filed by
`
`Patent Owner against other defendants. Pet. 2.
`
`Petitioner also seeks review of the ’314 patent in inter partes review
`
`case IPR2014-00738 and inter partes case IPR2014-00743. Additionally,
`
`the ’314 patent is the subject of the following inter partes reviews: Google,
`
`2
`
`
`
`Case IPR2014-00744
`Patent 6,628,314 B1
`
`Inc. v. B.E. Technology, L.L.C., Case IPR2014-00038 (PTAB Apr. 9, 2014),
`
`Microsoft Corporation v. B.E. Technology, L.L.C., Case IPR2014-00039
`
`(PTAB Apr. 9, 2014), Facebook, Inc. v. B.E. Technology, L.L.C., Case
`
`IPR2014-0052 (PTAB Apr. 9, 2014), Facebook, Inc. v. B.E. Technology,
`
`L.L.C., Case IPR2014-00053 (PTAB Apr. 9, 2014), Match.com LLC and
`
`People Media, Inc v. B.E. Technology, L.L.C., Case IPR2014-00698 (PTAB
`
`June 13, 2014), and Match.com LLC and People Media, Inc v. B.E.
`
`Technology, L.L.C., Case IPR2014-00699 (PTAB June 13, 2014). Petitioner
`
`filed a motion for joinder with Facebook, Inc. v. B.E. Technology, L.L.C.,
`
`Case IPR2014-00053 (PTAB Apr. 9, 2014). See Paper 3. Petitioner in
`
`IPR2014-00698 (“the -00698 Petitioner”) also filed a motion for joinder
`
`with Facebook, Inc. v. B.E. Technology, L.L.C., Case IPR2014-00053
`
`(PTAB Apr. 9, 2014) and that motion for joinder was granted. See
`
`Match.com LLC and People Media, Inc v. B.E. Technology, L.L.C., Case
`
`IPR2014-00698, Papers 4, 13.
`
`B. Illustrative Claim
`
`Petitioner challenges claims 11-13, 15, 18, and 20 of the ’314 patent.
`
`Independent claim 11 is illustrative of the claims at issue and follows:
`
`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
`
`3
`
`
`
`Case IPR2014-00744
`Patent 6,628,314 B1
`
`
`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.
`
`4
`
`
`
`Case IPR2014-00744
`Patent 6,628,314 B1
`
`
`C. The Alleged Grounds of Unpatentability
`
`The information presented in the Petition sets forth Petitioner’s
`
`contentions of unpatentability of claims 11-13, 15, 18, and 20 of the
`
`’314 patent under 35 U.S.C. § 103, as follows (see Pet. 5, 13-41):
`
`Reference(s)
`
`Basis
`
`Claims Challenged
`
`Angles1 and Shaw2
`
`§ 103(a)
`
`11-13, 15, 18, and 20
`
`
`
`II. ANALYSIS
`
`Petitioner argues that claims 11-13, 15, 18, and 20 are unpatentable
`
`under 35 U.S.C. § 103 as obvious over Angles and Shaw. Pet. 5, 13-41.
`
`Petitioner submits arguments and evidence identical to those submitted in
`
`IPR2014-00053. Pet. 1. Petitioner proposes the same claim construction
`
`and argues the same rationale of unpatentability of claims 11-13, 15, 18, and
`
`20 as presented in IPR2014-00053. Pet. 9-41; Facebook, Inc. v. B.E.
`
`Technology, L.L.C., Case IPR2014-00053, Paper 1, 35-60. Petitioner further
`
`relies on the same declaration by Robert J. Sherwood in support of their
`
`alleged ground of unpatentability. Pet. 5; Ex. 1007. Patent Owner did not
`
`file a preliminary response in IPR2014-00053, and does not file a
`
`preliminary response in this case. See Paper 7.
`
`We determined that the Petitioner in IPR2014-00053 (“the -00053
`
`Petitioner”) demonstrated a reasonable likelihood of prevailing in
`
`establishing the unpatentability of claims 11-13, 15, 18, and 20 of the
`
`’314 patent. Facebook, Inc. v. B.E. Technology, L.L.C., Case IPR2014-
`
`
`
`1 U.S. Patent No. 5,933,811 (Ex. 1003) (“Angles”).
`2 U.S. Patent No. 5,809,242 (Ex. 1004) (“Shaw”).
`
`5
`
`
`
`Case IPR2014-00744
`Patent 6,628,314 B1
`
`00053, slip op. at 11-16 (Paper 10). We granted that petition and instituted
`
`an inter partes review of claims 11-13, 15, 18, and 20 as unpatentable under
`
`35 U.S.C. § 103 as obvious over Angles and Shaw. Facebook, Inc. v. B.E.
`
`Technology, L.L.C., Case IPR2014-00053, slip op. at 17 (Paper 10).
`
`Accordingly, we incorporate our previous analysis, including our
`
`claim interpretation analysis (see Facebook, Inc. v. B.E. Technology, L.L.C.,
`
`Case IPR2014-00053, slip op. at 6-8 (Paper 10)) and our unpatentability
`
`analysis regarding this asserted ground of unpatentability (see Facebook,
`
`Inc. v. B.E. Technology, L.L.C., Case IPR2014-00053, slip op. at 11-16
`
`(Paper 10)), from IPR2014-00053, and we determine that Petitioner has
`
`demonstrated a reasonable likelihood that Petitioner would prevail in
`
`establishing the unpatentability of claims 11-13, 15, 18, and 20 of the
`
`’314 patent in this petition for the same reasons discussed in Facebook, Inc.
`
`v. B.E. Technology, L.L.C., Case IPR2014-00053 (PTAB Apr. 9, 2014).
`
`
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that the information
`
`presented in the Petition establishes that there is a reasonable likelihood that
`
`Petitioner would prevail in establishing unpatentability of claims 11-13, 15,
`
`18, and 20 of the ’314 patent.
`
`The Board has not made a final determination on the patentability of
`
`any challenged claims.
`
`
`
`6
`
`
`
`Case IPR2014-00744
`Patent 6,628,314 B1
`
`
`Accordingly, it is
`
`IV. ORDER
`
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`
`hereby instituted as to the following proposed grounds:
`
`Obviousness of claims 11-13, 15, 18, and 20 over Angles and Shaw.
`
`FURTHER that no other grounds raised in the Petition are authorized
`
`for inter partes review.
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(d) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial and the
`
`trial commences on the entry date of this decision.
`
`
`
`7
`
`
`
`8
`
`Case IPR2014-00744
`Patent 6,628,314 B1
`
`For PETITIONER:
`
`Clinton Brannon
`cbrannon@mayerbrown.com
`
`For PATENT OWNER:
`
`Jason Angell
`jangell@fawlaw.com
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