UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`
`
`GOOGLE INC.
`Petitioner
`
`v.
`
`AT HOME BONDHOLDERS' LIQUIDATING TRUST
`Patent Owner.
`
`
`
`
`Case IPR2015-006571
`Patent 6,286,045 B1
`_____________________
`
`PETITIONER'S REPLY TO
`PATENT OWNER RESPONSE
`
`
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
` 1
`
` Case IPR2015-00660 has been consolidated with this proceeding.
`
`
`
`

`
`Case IPR2015-00657
`U.S. Patent No. 6,286,045
`
`TABLE OF CONTENTS
`
`B. 
`
`B. 
`
`3. 
`
`A POSA would have combined Angles, Merriman, and HTTP1.0 as
`proposed by the Petitions ................................................................................. 3 
`A. 
`PO's argument that the prior art combination would require
`explicit user confirmation is technically incorrect. ............................... 4 
`Substituting Merriman's redirect for Angles' advertisement
`command does not, as PO argues, eliminate the speed benefit. ........... 6 
`Angles, Merriman, and HTTP1.0 render obvious all claim elements. ............ 9 
`A. 
`The prior art combination discloses a banner location signal for
`a banner stored on a server. ................................................................... 9 
`The Angles/Merriman/HTTP1.0 combination teaches an
`advertisement request that would not be blockable by cache. ............ 13 
`1. 
`Angles discloses a non-blockable advertisement request. ........ 13 
`2. 
`The asserted combination does not have to teach a URL
`that includes "cgi-bin" and "?", as PO suggests. ....................... 14 
`The Board should discount PO's critique of Petitioner's
`other exhibits. ............................................................................ 18 
`Because the redirect would operate according to normal caching
`behavior, it discloses a "second [banner] request signal" that is a
`"content specific request signal" (claim 52). ....................................... 20 
`The combined prior art renders obvious that the claimed first
`server and second server can be one and the same (claims 50,
`69). ....................................................................................................... 21 
`PO's alleged secondary considerations fail to overcome Petitioner's
`strong showing of obviousness. ..................................................................... 21 
`A. 
`PO's "evidence" of long felt but unmet need is misleading and
`insufficient. .......................................................................................... 22 
`PO's "evidence" of praise and widespread adoption is
`insufficient. .......................................................................................... 24 
`
`C. 
`
`D. 
`
`B. 
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`- i -
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`
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`I. 
`
`II. 
`
`III. 
`
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`

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`Case IPR2015-00657
`U.S. Patent No. 6,286,045
`
`In its Institution Decision, the Board deemed 22 claims to be, with reasona-
`
`ble likelihood, unpatentable. That initial assessment should stand because the '045
`
`patent claims nothing more than a well-known method of distributing a banner ad-
`
`vertisement over a network. This involves sending a first request (intended to be
`
`non-blockable) from a user's computer to a server. Rather than responding to the
`
`first request with the banner itself, the server counts the first request and redirects
`
`the first request to the desired advertiser's web site. The redirected address is sent
`
`to the user's computer, and a second request from the user's computer is then sent
`
`to the selected advertising web site for the banner.
`
`In short, because the claimed methods involve nothing more than the pre-
`
`dictable use of known techniques, they were obvious, and Patent Owner's ("PO's")
`
`arguments to the contrary are based on incorrect statements and incomplete facts.
`
`For example, PO relies heavily on an AdvertisingAge article to support its non-
`
`obviousness arguments. But that article relates to TrueCount, which PO's expert
`
`did not opine as implementing any of the challenged claims of the '045 patent.
`
`And, in a follow-up post (known to PO but not disclosed to PO's declarants or the
`
`Board), the same author notes that the TrueCount cache-counting methodology
`
`was not new after all. As another example, PO's arguments largely rest on certain
`
`signals being POST requests instead of GET requests; however, the reference in
`
`question and the inventor himself acknowledge that such signals were, in fact,
`
`GET requests, negating PO's position.
`
`As set forth in detail in the Petition, the claimed methods are obvious in light
`
`of the combination of Angles, Merriman, and HTTP1.0. Angles discloses the ma-
`
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`

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`Case IPR2015-00657
`U.S. Patent No. 6,286,045
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`jority of the independent claim limitations, leaving only minor modifications that
`
`would have been obvious to a person of ordinary skill in the art ("POSA"): (1) re-
`placing Angles' location signal identifying an ad's location on a local resource with
`
`a redirect signal identifying an ad's location on a remote resource, and (2) checking
`
`the cache before sending the second request (in response to the redirect). With re-
`
`spect to the first of those limitations, Merriman demonstrates that redirect signals
`
`to remote resources after counting were commonly used in the advertising context.
`
`As for the second of those limitations, HTTP1.0 demonstrates that caching files
`
`and checking cache were basic functions of browsers and the Internet.
`
`PO resorts to a series of flawed arguments in response:
`
`
`
`
`
`
`
`PO contends that implementing Angles would require POST requests, when
`
`Angles itself explicitly discloses using HTTP GET requests;
`
`PO argues against Merriman individually, but does not address Merriman's
`
`teachings in combination with Angles;
`
`PO argues that CGI scripts are not "unblockable," which is both incorrect
`
`and inconsistent with the specification, prosecution history, and inventor tes-
`
`timony; and
`
`
`
`PO argues that the proposed combination does not disclose using "cgi-bin" +
`
`"?", when none of the challenged claims even require that feature.
`
`PO also attempts to highlight all the benefits achieved by its alleged inven-
`
`tion, which merely underscore Petitioner's argument that a POSA would have been
`
`motivated to combine the prior art in the manner proposed—particularly since
`
`those benefits are the predictable results of such a combination. Moreover, while
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`

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`Case IPR2015-00657
`U.S. Patent No. 6,286,045
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`PO asserts the relevance of secondary considerations, each is insufficient to over-
`
`come the strong showing of obviousness advanced in the Petitions.
`
`I.
`
`A POSA would have combined Angles, Merriman, and HTTP1.0 as
`proposed by the Petitions
`PO's arguments against the obviousness of independent claims 49, 59, 64,
`
`and 72 are faulty. First, PO contends that the combination would require a POST
`
`request instead of a GET or HEAD request, and therefore also require user confir-
`
`mation for accepting each advertisement. (Paper 24, 9-11.) PO then alleges that
`
`such user intervention is unacceptable, and "therefore teaches away from the sub-
`
`stitution of the Merriman redirect for the Angles advertising command." (Id., 11.)
`
`PO's argument is at best misdirected, technically incorrect, and ignores the envi-
`ronment in which both Angles and Merriman operate.2
`Second, PO argues that substituting Merriman's redirect for Angles' adver-
`
`
`2 It is unclear how much weight should be given to the portions of Dr. Almeroth's
`declaration regarding Angles. At deposition, he stated "I haven't undertaken an in-
`
`dependent analysis to determine whether I believe Angles is sufficient to disclose
`
`certain limitations, and so I – to the extent that I don't have opinions that a limita-
`
`tion is missing within the declaration, I'm not arguing one way or the other whether
`
`it's there or not." (GOOG 1034, 50:11-17.) He also admitted he did not understand
`
`what a "variable component in a link on a Web page" was. (Id., 162:8-25.) Further,
`
`Dr. Almeroth's declaration adds nothing beyond PO's response; the declaration is
`
`largely a word-for-word recitation of the response's arguments.
`
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`

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`Case IPR2015-00657
`U.S. Patent No. 6,286,045
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`tisement command would eliminate the speed benefit gained by redirecting to ad-
`
`vertisements in local storage instead of the original server. (Paper 24, 12.) But this
`
`argument ignores the benefits known to a POSA of obtaining both speed and
`
`scalability using, for example, ad-hosting servers, as addressed in the Petitions and
`
`their supporting exhibits.
`
`A.
`
`PO's argument that the prior art combination would require ex-
`plicit user confirmation is technically incorrect.
`HTTP1.0 combined with Angles and Merriman would not require user con-
`
`firmation for accepting each advertisement; as such, the combination does not
`
`teach away from the alleged invention of independent claims 49, 59, 64, and 72.
`
`(Paper 24, 9-11.)
`
`As an initial matter, to the extent PO's argument rests on some claim re-
`
`quirement of automatic redirection without user intervention, the independent
`
`claims do not recite any language requiring transmission either "with user confir-
`
`mation" or "without user confirmation." The claims are thus broad enough to cover
`
`sending a second request signal both with and without user confirmation, rendering
`
`PO's argument regarding "user confirmation" irrelevant.
`
`In any event, PO's argument that the prior art combination requires user con-
`
`firmation is incorrect. That argument rests on the premise that Angles' advertise-
`
`ment request must be a POST, not a GET or HEAD method (because an HTTP re-
`
`direct response using a POST method requires user confirmation). (Paper 24, 10.)
`
`PO's premise is faulty, belied by the disclosure of Angles and reliant upon a mis-
`
`application of HTTP1.0. First, Angles explicitly discloses using the GET method,
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`Case IPR2015-00657
`U.S. Patent No. 6,286,045
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`and does not even mention using the POST method. (GOOG 1012, 6:55-57.)
`
`Second, HTTP1.0 does not prohibit GET methods from performing actions
`
`other than retrieval, i.e. generating side effects as a result of performing a GET
`
`method (e.g., crediting/debiting), as PO contends (Paper 24, 9-10). To the contrary,
`
`HTTP1.0 acknowledges that "it is not possible to ensure that the server does not
`
`generate side-effects as a result of performing a GET request; in fact, some dynam-
`
`ic resources consider that a feature. The important distinction here is that the user
`
`did not request the side-effects, so therefore cannot be held accountable for them."
`
`(GOOG 1008, p. 40 § 12.2.) In fact, PO's argument contradicts the '045 patent it-
`
`self. As described in the '045 patent, a GET method causes actions other than re-
`
`trieval (e.g., counting impressions, selecting an advertisement) (GOOG 1001, 3:37-
`
`42, 15:15-17, 16:54-56; see also id., 18:56-57; Ex. 1030, 60-61 (explaining that the
`
`"?" and the query string are used by the GET method).)
`
`In keeping with HTTP1.0, the inventor agreed that, in allegedly implement-
`
`ing the claimed method, other actions would be performed in response to a GET
`
`request:
`
`Q: Besides, of course, selecting the banner, was anything else happen-
`ing in response to that get request? A: Well, the – the general deci-
`sion-making for the ad server was happening. The accumulation of
`counts against campaigns was happening. Over time, other database
`requests were happening, and updates were happening as well. So a
`lot of management work was being done in that first request." (GOOG
`1033, 77:14-233; see generally id., 76:10-78:7.)
`
`3 Emphasis added throughout unless otherwise noted.
`
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`

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`Case IPR2015-00657
`U.S. Patent No. 6,286,045
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`In short, PO's argument that the disclosure of Angles requires using a POST re-
`
`quest is not correct, at which point the remainder of PO's arguments fall apart.
`
`B.
`
`Substituting Merriman's redirect for Angles' advertisement
`command does not, as PO argues, eliminate the speed benefit.
`PO argues that substituting Merriman's redirect for Angles' advertisement
`
`command would eliminate the speed benefit obtained from the advertisement
`
`command redirecting to local storage. (Paper 24, 12.) According to PO, the faster
`
`speed of Angles would be eliminated by "an additional network round-trip request
`
`… required for each such advertisement." (Paper 24, 15.) First, Angles contem-
`plates that "the consumer computer 12 could, for example, be…a local area net-
`work of individual computers…While in such systems, the operating systems will
`
`differ, they will continue to provide the appropriate communications protocols
`
`needed." (GOOG 1012, 10:33-42.) So Angles already recognizes that parts of FIG.
`
`4's consumer computer (including storage 44) can be spread across a network, and
`
`the protocols used would be appropriate to the architecture. Further, sending a redi-
`
`rect and issuing a responsive HTTP request (the "additional network round trip re-
`
`quest" referred to by PO) impose only a negligible burden on the network; both
`
`types of signals contain very little information compared to a banner, as PO itself
`
`acknowledges. (Paper 24, 4-5 (citing GOOG 1001 at 20:24-36).) PO's argument
`
`also ignores the then-widespread use of proximate mirroring servers, which reduce
`
`round trip times as compared to calling on the original server.
`
`As discussed in the Petitions and their supporting exhibits, contrary to PO's
`
`argument, substituting a redirect is still consistent with providing the speed benefit
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`Case IPR2015-00657
`U.S. Patent No. 6,286,045
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`described in Angles. Angles explains that "consumer computer 12 can retrieve an
`
`advertisement from the advertising storage medium 44 much faster than obtain-
`
`ing the advertisement directly from the advertisement provider computer 18."
`
`(GOOG 1012, 12:4-7.) Substituting a redirect for Angles' advertisement command
`
`still provides Angles' stated benefit of being "faster than obtaining the advertise-
`
`ment directly from the advertisement provider computer."
`
`Notably, the Petitions and their supporting declarations explain that it was
`
`well known to use HTTP redirect messages "to refer a client computer to a server
`located in the [closer] geographical proximity [e.g., based on subnet] of the client
`
`for reducing latency." (See Paper 2, 9-10; GOOG 1003, ¶ 19; GOOG 1021, 6;
`
`GOOG 1009, 9.) Accordingly, a POSA would have recognized that substituting a
`
`redirect for Angles' advertisement location command would still have achieved
`
`Angles' speed benefit of being "faster than obtaining the advertisement directly
`
`from the advertisement provider computer," because a redirect message typically
`
`referred the client computer to a closer server than advertisement provider comput-
`
`er 18. (GOOG 1033, 64:17-24, 68:10-15.)
`
`When speed is balanced with scalability, the benefits would have been even
`
`more obvious. As explained in the Petitions, a POSA would have been motivated
`
`to replace Angles' advertisement command with a redirect message (such as in
`
`Merriman) for scalability reasons. (Paper 2, 21.) PO argues that scalability would
`
`not have motivated a POSA to modify Angles as proposed, because Angles' adver-
`
`tisement database 70 alone provided scalability benefits for "numerous" advertise-
`
`ments. (Paper 24, 13-14.) First, this argument ignores how Angles and Merriman
`
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`

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`Case IPR2015-00657
`U.S. Patent No. 6,286,045
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`are combined. Merriman's redirect message replaces Angles' advertisement com-
`
`mand, which "directs the consumer computer 12 to retrieve and display one of the
`
`advertisements stored on the advertising storage medium 44." (Paper 2, 20-21;
`
`GOOG 1012, 11:61-65.) The scalability issue solved by a redirect is the space and
`
`management/overhead inefficiency of the advertising storage medium local to the
`
`consumer computer. (Paper 2, 21; GOOG 1003, ¶ 69.) Advertisement database 70
`
`is a part of advertisement provider computer 18, but not part of the storage medium
`
`or the consumer computer. (GOOG 1012, FIG. 4, 13:47-51.)
`
`Furthermore, PO's argument ignores the realities of Angles' implementation.
`
`If a new ad was not stored locally (which would have been likely unless ads were
`
`continually downloaded onto the user's computer), then the ad would have to come
`
`from the provider, negating the speed benefit in favor of scalability. While some
`
`ads would be stored in local storage, space and bandwidth limitations on down-
`
`loading all ads to the user computer would negate scalability in favor of speed.
`
`(GOOG 1003, ¶ 67-69.) So while the different embodiments in Angles offer, re-
`
`spectively, speed or scalability advantages, a POSA would have been motivated to
`
`gain further benefits by building a system with speed and scalability. A POSA
`
`would have done so by implementing well-known redirects to a server hosting ad-
`
`vertisements, as described in the Petitions. (Paper 2, 9-10; GOOG 1003, ¶ 19;
`
`GOOG 1008, 6; GOOG 1033, 79:8-18.) This would have both increased speed as
`
`compared to delivery from the provider computer, and increased scalability as
`
`compared to the user's local storage. These dual benefits would have motivated a
`
`POSA to implement the combination, rather than relying on the "either/or" embod-
`
`- 8 -
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`

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`Case IPR2015-00657
`U.S. Patent No. 6,286,045
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`iments of Angles.
`
`II. Angles, Merriman, and HTTP1.0 render obvious all claim elements.
`Contrary to PO's arguments, the combination of Angles, Merriman, and
`
`HTTP1.0 renders obvious all limitations of independent claims 49, 59, 64, and 72.
`
`Furthermore, PO's arguments attacking the references in isolation fail to address
`
`the combined result of what would have been obvious to a POSA at the time.
`
`A. The prior art combination discloses a banner location signal for a
`banner stored on a server.
`PO improperly attacks various sections of the prior art in isolation, arguing
`
`that none of the references suggests an HTTP redirect to retrieve a banner from a
`
`server. (Paper 24, 16.) Such arguments do not undermine Petitioner's showing of
`
`obviousness based on the combination of Angles, Merriman, and HTTP1.0. See In
`
`re Keller, 642 F.2d 413, 426 (CCPA 1981) (non-obviousness cannot be established
`
`by attacking references individually where the ground of unpatentability is based
`
`upon the teachings of a combination of references). The test for obviousness is
`
`whether the combination of references, taken as a whole, would have suggested the
`
`patentees' invention to a person having ordinary skill in the art. In re Merck & Co.,
`
`Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
`
`PO's main argument is that Merriman's redirect message identifies the loca-
`
`tion of a web page, not a banner. (Paper 24, 16.) This argument mischaracterizes
`
`how the references are combined. Angles discloses sending a location signal iden-
`
`tifying the location where an ad is stored. (Paper 2, 19-20; GOOG 1012, 11:61-65.)
`
`Merriman discloses using a redirect signal to another server in an advertising con-
`
`- 9 -
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`Case IPR2015-00657
`U.S. Patent No. 6,286,045
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`text. (Paper 2, 20-21.) The combination demonstrates that a location signal identi-
`
`fying the location of an advertisement can be a redirect signal to another server. Id.
`
`To be clear, to render obvious the claimed location signal, Petitioner relies
`
`on Angles' advertisement command in view of Merriman's HTTP redirect message,
`
`not on Merriman's HTTP redirect to a web page. In other words, Petitioner propos-
`
`es using a redirect signal to a banner at a particular location—the redirect being
`
`from Merriman but the target banner being disclosed in Angles itself—rather than
`
`borrowing from Merriman both the redirect and its target (a web page). The com-
`
`bined result is "an advertisement command … that identifies a URL at which the
`
`advertisement can be obtained." (See Paper 2, 21.)
`
`A POSA would have known that HTTP redirect can identify files other than
`
`web pages, contrary to PO's argument. (Paper 24, 16-17.) It was standard and well
`
`known that an HTTP redirect can identify a URL for automatic redirection to a re-
`
`source. (See GOOG 1008, 35.) The source identified by the URL is not limited to a
`
`web page, but any "network data object or service which can be identified by a
`
`[URL]." (GOOG 1008, 4.) Moreover, it was well known that a URL (in an HTTP
`
`redirect) can identify an image such as a banner. (GOOG 1033, 74:25-75:6.) In-
`
`deed, PO even acknowledges that the claimed second request signal is no more
`
`than a "conventional request signal." (Paper 24, 4.)
`
`PO also cites other sections from the references, but these arguments again
`
`attack the references individually and are not responsive to how the references are
`
`combined. For example, PO argues that Merriman teaches "click through" interac-
`
`tion (Paper 24, 17-18); however, Petitioner does not rely on Merriman's "click
`
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`Case IPR2015-00657
`U.S. Patent No. 6,286,045
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`through" teachings.4 (See Paper 2, 21.) Rather, Angles already discloses an impres-
`sion-based advertisement system. (Paper 2, 19 (citing GOOG 1012, 2:59-3:5, 3:58-
`
`65).) And, in any event, a redirect signal operates in accordance with standard
`
`HTTP, regardless of whether the environment is click-through or impression-
`
`based.
`
`PO also incorrectly argues that Merriman teaches away from serving ads
`
`from multiple nodes. Specifically, PO points to Merriman's Summary of the Inven-
`
`tion for its assertion that "Merriman summarizes this notion of serving various
`
`banner ads from a single node on the network as the invention that is the subject of
`
`the patent." (Paper 24, 18.) Yet this portion of Merriman actually says, "[t]he vari-
`ous advertisements are stored on the network of the server and preferably on the
`
`server." (GOOG 1013, 2:17-19.) This clearly contemplates ads being stored across
`
`a "network," and gives no impression that Merriman's invention was limited to
`
`serving ads from a single node on the network. Further, Merriman explicitly states:
`
`"while the advertising server process…[is] described as being imple-
`mented on one computer platform performing all of the above de-
`scribed functions, it is readily understood by those of skill that any or
`all of these functions may be implemented on one or more different
`computers and further that these processes may be performed at dif-
`ferent nodes on the network." (GOOG 1013, 9:9-16.)
`
`4 Although the '045 patent claims are so broad that they do not preclude a "click
`
`through" system from reading on the claims, that is not Petitioner's argument.
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`Case IPR2015-00657
`U.S. Patent No. 6,286,045
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`PO's argument is therefore directly contradicted by the disclosure of Merriman.
`
`PO also incorrectly contends that because Angles' advertisement command
`
`identifies a track and sector, it would not work with a redirect. (Paper 24, 19.) As
`
`Angles explains, "the advertisement command identifies a particular location on
`
`the advertising storage medium 44, such as the particular track and sector."
`
`(GOOG 1012, 11:50-12:11.) A POSA would have recognized that "the particular
`
`location" can instead be a location based on file path, for example. (GOOG 1003, ¶
`67.) Angles even states that "the consumer computer 12 could, for example,
`be…a local area network of individual computers." (GOOG 1012, 10:33-42.) So
`
`Angles recognizes that the consumer computer's parts can be spread across a net-
`
`work, and there is no reason that Angles' system would be inoperable if modified
`
`as proposed. Instead, the combination of Angles and Merriman is a simple substi-
`
`tution resulting in an "advertisement command from an advertisement server that
`
`identifies a URL at which the advertisement can be obtained." (Paper 2, 21.)
`
`While PO argues that Angles does not disclose the location signal containing a
`
`network address, this argument improperly addresses Angles on its own, not in
`
`combination with Merriman and HTTP1.0. A POSA implementing Angles using a
`
`redirect would have understood that redirect to include a URL. (Paper 2, 21.)
`
`PO's assertion that the Angles/Merriman combination cannot store banners
`
`in a database similarly ignores how the references are combined. Here PO argues
`
`that the combination does not work because HTTP allegedly does not support di-
`
`rect querying of database records. (Paper 24, 19-20.) Again, this argument is irrel-
`
`evant because, as Petitioner noted, "the redirect signal could just as easily point to
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`Case IPR2015-00657
`U.S. Patent No. 6,286,045
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`a location on an external storage device, such as another server." (Paper 2, 20.) Be-
`
`sides, Merriman also teaches using HTTP to retrieve the banners, and PO admits
`
`that Merriman stores its banners in a database. (Paper 24, 19; GOOG 1013 3:38-
`
`57, 5:64-6:3.)
`
`In short, the modification to Angles just employs an HTTP redirect to a ban-
`
`ner stored remotely instead of locally. The HTTP redirect message in the combina-
`
`tion of Angles, Merriman, and HTTP1.0 points to an advertisement, because Mer-
`
`riman's HTTP redirect replaces Angles' advertisement command that already
`
`points to an advertisement. As explained in the Petitions, such replacement "would
`
`have been nothing more than a simple substitution of one known element (Merri-
`
`man's HTTP redirect message) for another (Angles' advertisement command) to
`
`obtain predictable results (an advertisement command from an advertisement serv-
`
`er that identifies a URL at which the advertisement can be obtained)." (Paper 2,
`
`21; GOOG 1003, ¶ 68.)
`
`B.
`
`The Angles/Merriman/HTTP1.0 combination teaches an adver-
`tisement request that would not be blockable by cache.
`1.
`Angles discloses a non-blockable advertisement request.
`PO erroneously contends that Angles' advertisement request (referencing a
`
`CGI script) may be blocked even if it is a GET request. (Paper 24, 20-25.) Notably,
`
`in so arguing, PO concedes that "HTTP1.0 contemplates GET requests for 'data-
`
`producing processes' such as CGI scripts," and also admits that Angles discloses
`
`CGI scripts. (Id., 21.) As such, PO's argument here contradicts its other argument
`
`that the Angles advertisement request must be a POST request, not a GET request.
`
`- 13 -
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`In any event, PO's reasoning fails because it rests on the presence of optional
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`HTTP headers designed specifically for enabling caching. Neither the "Expires”
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`nor "If-Modified-Since" headers are required by HTTP, (see GOOG 1008, 25, 33),
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`and Angles makes no suggestion that these optional headers could or should be
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`used for the advertisement request. Thus, PO's argument is misleading and depends
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`on use cases that apply only "if" optional headers are used (Paper 24, 22).
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`Finally, as detailed in the next section, the fact that CGI scripts are not cache
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`blockable is admitted in the '045 patent's specification and prosecution history,
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`HTTP1.0, and the inventor's testimony. (GOOG 1001, 17:65-18:9; GOOG 1002,
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`175-176; GOOG 1008, 25, 33; GOOG 1033, 33:13-34:4.)
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`2.
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`The asserted combination does not have to teach a URL
`that includes "cgi-bin" and "?", as PO suggests.
`Given the countervailing evidence that CGI scripts themselves are not
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`blockable by cache, the Board should reject PO's suggestion that both "cgi-bin"
`and "?" are required. (Paper 24, 26.) Indeed, PO's argument is contradicted by the
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`specification and prosecution history, HTTP1.0, and the inventor's own testimony.
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`As the '045 patent's specification points out, one option for implementing
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`cache busting was to incorporate variable components into links. (GOOG 1001,
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`18:18-23.) Among the enumerated techniques for doing so, the patent lists using a
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`"cgi-bin string." (Id., 18:23-29.) Similarly, during prosecution, PO acknowledged
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`that the techniques disclosed in the '045 patent, including simply using a "cgi-bin
`string," met the unblockable signal limitation because they "assur[e] that the re-
`quest signal will not be blocked from the intended server…. [and] prevent blocking
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`of the request signal by presently known HTTP compatible systems, terminals and
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`browsers." (See GOOG 1002, 175-176; see also GOOG 1033, 33:13-35:18.)
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`The inventor further confirmed—contrary to PO's arguments in its Re-
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`sponse—that dynamically generated requests would not be blocked by cache. First,
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`Mr. Griffiths confirmed that a reference to a "CGI script" (such as that in Angles)
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`would have been understood to mean a cgi-bin string that would default to a script
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`in the cgi-bin directory. (GOOG 1033, 50:19-51:4.) Next, he acknowledged that
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`any response to such a CGI request would have been uncacheable: "the answers to
`cgi-bin requests were not allowed to be cached. By definition, they were dynamic.
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`So even though the request looked the same, the response could be dramatically
`different in every case, so [the cache] could not – it cannot remember the an-
`swers." (Id., 52:13-19.) Specifically:
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`"cgi-bin…was a way to invoke a script on a server…And therefore,
`since a script is dynamic and it could return different results, all the
`caches knew that they couldn't – they couldn't – they weren't allowed
`to remember the result, because every time you asked for it, it could
`be different. So cgi-bin was another technique to make the caches do
`what we wanted to do, which was to pass the request all the way to the
`origin server and not to remember the result of that server."
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`(Id., 49:10-24.) Even when pressed by PO's own attorney to revisit his comments,
`Mr. Griffiths confirmed: "My belief at the time, and to this day, was that CGI re-
`quests naturally were not cached." (Id., 101:18-19.)
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`Given such admissions, PO cannot now argue that the request taught by An-
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`gles is blocked by cache, much less that Angles fails because it does not disclose
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`"cgi-bin" and "?" syntax. (See Paper 24, 21-26.) Petitioner has presented sufficient
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`evidence to show that Angles' advertisement request, referencing a dynamic CGI
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`script, prevents such blocking, as would have been understood by a POSA at the
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`time. (See Paper 2, 5-6, 19; GOOG 1003, ¶¶ 64-65; GOOG 1017, 7-8 ("Cache
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`busting methods include … generating all pages dynamically through a cgi-
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`script"); GOOG 1018, 2.)
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`In Angles, "advertisement request 26 references a content provider CGI
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`script 64 which exists on the advertisement provider computer." (GOOG 1012,
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`13:2-4; see also 7:65-8:1.) CGI scripts are usually stored in a directory called "cgi-
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`bin," as shown in the same CGI Book touted by PO (in a portion PO withheld from
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`the Board). (GOOG 1030, 6 ("Most servers expect CGI programs and scripts to re-
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`side in a special directory, usually called cgi-bin").) Mr. Kent also confirms that,
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`by default, CGI scripts are stored in the cgi-bin directory. (See GOOG 1031,
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`164:10-18.)
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`Angles' advertisement provider computer runs "a standard Web server"
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`without mentioning any specific changes regarding where to store the CGI scripts.
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`(GOOG 1012, 12:41-43.) So, a POSA would have recognized that CGI scripts are,
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`by default, stored in a cgi-bin directory on Angles' advertisement provider comput-
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`er. When Angles' advertisement request refers to CGI script 64, it would have been
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`obvious to a POSA that the request URL contains the "cgi-bin" string, because this
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`string is part of the default directory that stores CGI script 64. (GOOG 1033,
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`50:19-51:4; see also GOOG 1030, 6.) And use of a CGI script ensures that the re-
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`quest would be unblockable. (GOOG 1033, 49:10-24; 50:20-51:4; 52:9-19; 101:9-
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`19.) Accordingly, the "cgi-bin" string alone "assure[s] that the request will not be
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`blocked," and Angles' reference to a CGI script satisfies this limitation. (See
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`GOOG 1001, 18:18-42; GOOG 1002, 175-176.)
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`PO further argues that certain web server configurations can be changed to
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`"hide" the "cgi-bin" string, and such a configuration may cause the caching of a
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`document produced by a CGI script. (See Paper 24, 27-29.) But this argument i