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 IPR No. Unassigned
`U.S. Patent 6,286,045
`
`Petition for Inter Pcirtes Review of U.S. Patent No. 6,286,045 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 22313-1450
`
`

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`Page i
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`Inter Partes Review of
`U.S. Patent No. 6,286,045
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`TABLE OF CONTENTS
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`INTRODUCTION ..........................................................................................1
`I. (cid:9)
`II. GROUNDS FOR STANDING (37 C.F.R. § 42.104(a)); PROCEDURAL
`STATEMENTS............................................................................................... 1
`III. STATEMENT OF THE PRECISE RELIEF REQUESTED AND THE
`REASONS THEREFOR (37 C.F.R. § 42.22(a))............................................2
`OVERVIEW ...................................................................................................2
`The’045 Patent .....................................................................................2
`Prosecution History ..............................................................................3
`State of the Art......................................................................................4
`Serving and Counting of Banners was Well-Known.................4
`Serving and Counting Banners without Significantly
`Increasing Network Traffic was Well-Known...........................6
`Advertisement Targeting based on Demographics was
`Well-Known...............................................................................7
`Fault Tolerance and Reliability Were Well Known ..................8
`4.
`HTTP Redirect was Well-Known..............................................9
`5.
`CLAIM CONSTRUCTION..........................................................................10
`?B anner (cid:9)
`..........................................11
`"Best Suited ......................................................................................... 12
`!!Content General Request Signal" .....................................................13
`"Content Specific Request Signal ....................................................... 14
`
`IV. (cid:9)
`
`A.
`B.
`C.
`
`V. (cid:9)
`
`1.
`2.
`
`3.
`
`A.
`B.
`C.
`D.
`VI. PERSON OF SKILL IN THE ART & STATE OF THE ART....................15
`VII. IDENTIFICATION OF PRIOR ART AND CHALLENGE (37 C.F.R. §
`42.104(b))......................................................................................................15
`Prior art................................................................................................16
`Challenge............................................................................................16
`Ground 1: Claims 20, 24-26, 28, 30, 31, 75, and 78
`Would Have Been Obvious Over Angles in view of
`Merriman..................................................................................17
`
`A.
`B.
`
`1. (cid:9)
`
`(cid:9)
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`Page ii
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`Inter Partes Review of
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`2.
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`3.
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`4.
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`5.
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`6.
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`Ground 2: Claim 21 would have been obvious over
`Angles in view of Merriman and further in view of
`Davis......................................................................................... 28
`Ground 3: Claims 22-23, 29, 33, 43-44, 47-48, and 77
`would have been obvious over Angles in view of
`Merriman and further in view of Garland................................ 30
`Ground 4: Claims 27, 59, 61-63, 72, and 73 would
`have been obvious over Angles in view of Merriman
`and further in view ofHTTP1.0 ............................................... 36
`Ground 5: Claims 20,21,24-28,31,33,72,75,77,78
`would have been obvious over Wexler in view of
`HTTP1.0 ................................................................................... 40
`Ground 6: Claims 30, 59, 61-63, and 73 would have
`been obvious over Wexler in view ofHTTP1.0 and
`further in view of Meeker ........................................................ 51
`Ground 7: Claims 22, 23, 29, 43, 44, and 47 would
`have been obvious over Wexler in view of HTTP1 .0
`and further in view of Garland................................................. 54
`Ground 8: Claim 48 would have been obvious over
`Wexler in view ofHTTP1.0 and further in view of
`Garland (cid:9) and Meeker................................................................. 59
`VIII. CONCLUSION.............................................................................................59
`IX. MANDATORY NOTICES (37 C.F.R. § 42.8(a)(1))...................................59
`
`7.
`
`8.
`
`- 1 -
`
`(cid:9)
`

`

`Inter Partes Review of
`U.S. Patent No. 6,286,045
`
`I.
`
`INTRODUCTION
`
`Google Inc. ("Petitioner") petitions for Inter Partes Review, seeking
`
`cancellation of claims 20-31, 33, 43-44, 47-48, 59, 61-63, 72-73, 75, and 77-78
`
`("challenged claims") of U.S. Patent No. 6,286,045 to Griffiths et al. ("the ’045
`
`patent") (GOOG 1001), which is owned by At Home Bondholders’ Liquidating
`
`Trust ("Patent Owner")
`
`II.
`
`GROUNDS FOR STANDING (37 C.F.R. § 42.104(a)); PROCEDURAL
`STATEMENTS
`
`Petitioner certifies that the ’045 patent is available
`
`for IPR, and that it is not
`
`barred or estopped from requesting IPR of the challenged claims on the grounds
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`identified in this petition, as Petitioner was first served less than a year ago with an
`
`infringement complaint on Feb. 20, 2014, in U.S. District Court for the District of
`
`Delaware (1:14-cv-00216) 1 . (GOOG 1015.) Filed herewith are Powers of Attorney
`
`and an Exhibit List per § 42.10(b) and § 42.63(e), respectively. The required fee is
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`paid online via credit card. The Office is authorized to credit overpayments and
`
`charge fee deficiencies to Deposit Acct. No. 19-0036 (Cust. ID No. 45324).
`
`1 Petitioner notes that it was also served with a complaint based on the ’045 patent
`
`on Feb. 10, 2014. However, that complaint was dismissed without prejudice, and is
`
`therefore not relevant to the IPR bar date. (1PR2012-00004, Paper No. 18.)
`
`

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`Inter Partes Review of
`U.S. Patent No. 6,286,045
`
`III.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED AND THE
`REASONS THEREFOR (37 C.F.R. § 42.22(a))
`
`Petitioner requests IPR and cancellation of claims 20-31, 33, 43-44, 47-48 5
`
`59, 61-63, 72-73, 75, and 77-78 of the ’045 patent. A detailed statement of the
`
`reasons for the relief requested is set forth in §§ IV and VII below.
`
`IV. OVERVIEW
`
`Inter partes review ("IPR") was created to improve patent quality and, if
`
`warranted, cancel unpatentable claims. That core purpose is furthered by this
`
`Petition, as the challenged claims of the ’045 patent should never have been issued.
`
`Not only was the alleged invention known before the ’045 patent filing date, but the
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`four "fundamental principles" of the alleged invention - touted by the Patent
`
`Owner during prosecution as distinguishing the invention from the art - were also
`
`well-understood by the industry. Because Petitioner is, at a minimum, reasonably
`
`likely to prevail in showing unpatentability, the Petition should be granted and trial
`
`instituted on all of the challenged claims as set forth below.
`
`A. (cid:9)
`
`The ’045 Patent
`
`The ’045 patent was filed on May 19, 1997, and issued on September 4,
`
`2001. According to USPTO assignment recordation records, At Home
`
`Bondholders’ Liquidating Trust is now the Patent Owner.
`
`The ’045 patent claims nothing more than a well-known method of Internet
`
`advertising and the ability to accurately account for the number of times an
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`

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`Page 3 (cid:9)
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`Inter Partes Review of
`U.S. Patent No. 6,286,045
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`advertisement is displayed to a user, while reducing heavy Internet traffic. In
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`general, the ’045 patent’s claims describe distributing a banner advertisement over a
`
`network. This involves generating a request for an ad banner from a user’s
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`computer. Rather than sending the request directly to an advertiser’s web site, the
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`request is sent to another server that counts the request and redirects the request to
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`the desired advertiser’s web site. The redirected address is sent to the user’s
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`computer and a request from the user’s computer is then sent to the selected
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`advertising web site.
`
`B. (cid:9)
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`Prosecution History
`
`In arguments made during prosecution, Patent Owner emphasized four
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`"fundamental principles" of the alleged invention that the Examiner was to keep in
`
`mind when analyzing the prior art: making request signals unblockable to reduce
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`inaccurate display counting caused by banner caching (GOOG 1002, P.
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`149-150);
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`allowing such counting to occur without significantly increasing data traffic on or
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`delay over the network (Id., p. 151); targeting advertisements to users to increase
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`thier effectiveness (Id); and increasing fault tolerance and reliability for
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`information and banner delivery and storage systems.
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`(Id.). Such arguments were
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`apparently persuasive to the Examiner in overcoming the cited prior art. Yet each
`
`of these "fundamental principles," along with the mechanisms described in the
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`’045
`
`patent as embodying those principles, were well known in the industry before the
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`

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`Inter Partes Review of
`U.S. Patent No. 6,286,045
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`’045 patent was filed.
`
`C. (cid:9)
`
`State of the Art
`Serving and Counting of Banners was Well-Known
`1. (cid:9)
`
`Paul Leach was an early member of the HTTP Working Group of the World
`
`Wide Web Consortium and, in the mid-1990s, was heavily involved in developing
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`the protocols by which Web traffic was governed . 2 (GOOG 1005, ¶ 8.) In his
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`declaration, Mr. Leach explains that "[t]he concept and concern for accurately
`
`counting the number of times a banner was displayed on a client device was a well
`
`known issue at the time of the filing of the ’045 patent." (GOOG 1005, ¶ 20.) Mr.
`
`Leach has also explained that "[i]t was also well known that the use of cache would
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`cause an underreporting of the counting of banners. ... ’A request is a connection to
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`an Internet site (i.e., hit) that successfully retrieves content,’ but counting such
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`requests accurately was a known issue ’because browser software and many
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`Internet gateways intercept some requests before reaching the server, and these
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`cached requests are never logged." (GOOG 1005, ¶ 21 (quoting GOOG 1022, p.
`
`13).)
`
`Not only was the problem a known issue, but Patent Owner’s solution was
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`2 Mr. Leach was a contributor to both he HTTP 1.0 and HTTP 1.1 specifications.
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`(GOOG 1008, pp. 41-42; GOOG 1026, pp. 99-100.)
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`Page 5 (cid:9)
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`Inter Partes Review of
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`also known. Specifically, cache avoidance to reliably determine page views - also
`
`known as "cache-busting" - was well known by early 1997. As Mr. Leach stated in
`
`his co-authored HTTP Working Group paper, "[f]or a variety of reasons, content
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`providers want to be able to collect information on the frequency with which their
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`content is accessed. This desire leads to some of the ’cache-busting’ done by
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`existing servers. (’Cache-busting’ is the use by servers of techniques intended to
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`prevent caching of responses...)" (GOOG 1024, pp. 2-3.) Further, as discussed in
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`an earlier version of the same Working Group paper, "[s]ome cache-busting is also
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`done to provide different advertising images to appear on the same page
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`(i.e., each
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`retrieval of the page sees a different ad). ...HTTP/1.1 already allows origin servers
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`to prevent caching of responses, and we have evidence that at least some of the
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`time, this is being done for the sole purpose of collecting counts of the number
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`of accesses of specific pages. " 3 (GOOG 1016, pp. 2-3.)
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`Peter Kent is another expert in the field, having been involved in Internet
`
`advertising from the early days of the Web. (G000 1003, TT 5-8.) Mr. Kent adds
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`that "In fact, attempting to improve counting accuracy via cache avoidance was
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`such a burden on the Web’s bandwidth by early 1997 that other proposals were
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`already being made to move advertisers away from the use of cache-avoidance."
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`(GOOG 1003, ¶ 15.)
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`Emphasis added throughout unless otherwise noted.
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`

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`Inter Partes Review of
`U.S. Patent No. 6,286,045
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`Further, the cache avoidance methods described in the
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`’045 patent
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`specification ("HTTP no-cache pragma, appending a random segment to the LTRL,
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`and using a cgi script to generate dynamic pages") were already known before the
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`patent’s filing date. (000G 1003, ¶16.) Mr. Kent also describes additional known
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`cache avoidance methods, including modifying URLs and the use of third party
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`products such as PageMeter. (GOOG 1003, ¶17.)
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`Thus, it was well-known by a person of ordinary skill in the art ("POSA")
`
`when the ’045 patent was filed "that caching distorted the accurate counting of the
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`display of advertising banners and web pages and that there were known ’cache-
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`busting’ methods that could be used to prevent caching and thus allow for a more
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`accurate method of counting the delivery and display of Internet based
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`advertisements." (000G 1005, ¶ 27.)
`
`2. (cid:9)
`
`Serving and Counting Banners without Significantly
`Increasing Network Traffic was Well-Known
`
`While cache-busting allowed for a more accurate counting of banners, it was
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`recognized in the industry at the time that cache-busting "also resulted in increased
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`loads on servers." (GOOG 1005, ¶ 28.) "Not only was this method expensive
`
`computationally to the sever, but it defeated intermediary caching and did not
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`correctly handle the exchanging of URLs between people." (G000 1005, ¶ 28,
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`G000 1023, p. 2.) So, methodologies to allow for the serving and counting of
`
`banner advertisements without significantly increasing data traffic through the use
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`Page 7 (cid:9)
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`Inter Partes Review of
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`of cache-busting were also "well known at the time of the filing of the ’045 patent
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`application." (GOOG 1005, ¶29.)
`
`Mr. Leach declares that "[o]ne of ordinary skill in the art at the time of the
`
`filing of the ’045 patent would have known that cache control mechanisms such as
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`If-Modified-Since or If-NoneMatch headers would result in not blocking the
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`request signal from reaching the intended server, but avoiding a refetch of the
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`requested information if that information existed in cache." (GOOG 1005, ¶32,
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`see
`
`also G000 1005, ¶J33-34.)
`
`Mr. Leach’s declaration also discusses a "hit-metering" approach that he and
`
`Jeffrey Mogul developed. That approach "outlines a method of counting requests,
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`or ’hit counts’ without defeating the use of cache where appropriate." (GOOG 1005,
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`¶ 35.) As Mr. Leach puts it, "[o]ur hit-metering approach allowed content
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`providers to be able to collect information on the frequency with which their
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`content is accessed, but without resorting to ’cache-busting’ techniques discussed
`
`above that defeat the use of cache." (Id.; see also, GOOG 1024.)
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`Thus, "it was well known by a POSA at the time of the filing of the ’045
`
`patent that multiple methods existed that would allow for the accurate counting of
`
`banner advertisement requests without significantly increasing data traffic and that
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`also allows for the efficient use of cache." (GOOG 1005, ¶36.)
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`3. (cid:9)
`
`Advertisement Targeting based on Demographics was Well-
`Known
`
`

`

`MMOO (cid:9)
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`Inter Partes Review of
`U.S. Patent No. 6,286,045
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`Mr. Leach explains that "[t]he concept of targeting advertisements to
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`particular users to increase advertising effectiveness was a well known issue at the
`
`time of the filing of the ’045 patent." (GOOG 1005, ¶37.) As discussed in Mr.
`
`Leach’s Hit-Metering paper, "some advertisers employed the use of ’cache-busting’
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`to ’collect demographic information’ so that advertising images could be tailored
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`and targeted to those demographics, e.g., ’each retrieval of the page sees a different
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`ad." (GOOG 1005, ¶ 37 (quoting GOOG 1024, p. 3).)
`
`And Mary Meeker, in her detailed analysis of Internet advertising in early
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`1997, noted, "the Internet offers the ability to target and deliver messages to an
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`audience with specific demographics and interests." (GOOG 1010, p. 3-13.)
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`"Targeting gives advertisers the opportunity to filter messages to
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`selected audiences based on certain criteria. This may be the most
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`powerful aspect of the Internet as an advertising medium the
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`ability to dictate the exact composition of an advertisement’s
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`audience. . . each individual delivery can be tailored, based on user
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`information. The power of the second aspect is increased substantially
`
`with more detailed user data, potentially collected through registration
`or in the course of using the site." (GOOG 1010, p. 6-3.)
`
`Thus, "it was well-known by a POSA at the time of the filing of the ’045
`
`patent that advertisers were developing methods using demographics to increase
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`advertising effectiveness." (GOOG 1005, ¶ 39.)
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`4. (cid:9)
`
`Fault Tolerance and Reliability Were Well Known
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`

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`Page 9 (cid:9)
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`Inter Partes Review of
`U.S. Patent No. 6,286,045
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`Based on Mr. Leach’s extensive experience in "ACM conferences and
`
`committees directed to distributed computing, replication and fault tolerance as
`
`early as 1985" and his "published papers on the theories and principles of
`
`distributed computing in 1982, 1985 and 1987," he explains that the "concept of
`
`fault tolerant computing for increased reliability was a well-known concept at the
`
`time of the filing of the ’045 patent."(GOOG 1005, ¶ 40.). Indeed, "[m]irroring
`
`and redundancy were common fault tolerant methods at the time." (Id.) Thus, a
`
`POSA at the time of the ’045 patent would have understood "that fault tolerant
`
`solutions in distributed computing existed and provided increased reliability in
`
`computer delivery and storage systems." (G000 1005, ¶ 41.)
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`5. (cid:9)
`
`HTTP Redirect was Well-Known
`
`Mr. Kent explains that "HTTP redirect was also widely employed in the
`
`field of information delivery (including delivery of online advertisements)," and
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`points to prior art including "Wexler [that] describes a third party accounting and
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`statistical service ’configured to issue a ’302’ redirect response when a specific
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`URL is requested." (GOOG 1003, ¶ 18.) Mr. Kent further notes that "Merriman
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`describes an advertisement server for ’send[ing] the redirect message causing the
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`user’s browser to receive the URL for the advertiser’s web site based upon data
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`stored in the server." (GOOG 1003, ¶ 18 (quoting GOOG 1013, 7:22-26).)
`
`Indeed, Mr. Kent explains that "[o]ne well-known use of HTTP redirect
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`Page 10 (cid:9)
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`Inter Partes Review of
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`messages was to refer a client computer to a server located in the close
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`geographical proximity of the client for reducing latency.. . .HTTP redirect
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`messages [were] to refer the client computer to a selected server in a group of
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`distributed servers," because "a group of web servers can reduce latency because a
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`distributed web server group can balance the load and dispatch the request to the
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`least loaded web server." (GOOG 1003, ¶ 19.)
`
`A POSA, considering the ’045 patent’s claims in light of the prior art, would
`
`have understood that the prior art rendered the claims unpatentable. The prior art
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`references are discussed in detail below in Sec. VII. Each applied reference is
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`analogous art to the claimed invention at least because it (1) falls within the ’045
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`patent’s stated field of "storage, management, and delivery of information on a
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`computer network" (GOOG 1001, 1:9-11), and/or (2)is reasonably pertinent to one
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`of the apparent problems allegedly solved.
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`As such, the challenged claims were well known and should not have been
`
`issued. Instead they should be cancelled. In view of the showings of obviousness
`
`provided below, Petitioner is reasonably likely to prevail in establishing that each
`
`of claims 20-31, 33, 43-44, 47-48, 59, 61-63, 72-73, 75, and 77-78 is unpatentable.
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`V. CLAIM CONSTRUCTION
`
`In accordance with 37 C.F.R. § 42.100(b), the challenged claims must be
`
`given their broadest reasonable interpretations ("BR!") in light of the specification
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`

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`Page 11 (cid:9)
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`Inter Partes Review of
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`of the ’045 patent. The following terms and phrases from the claims of the ’045
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`patent require construction in accordance with these principles for the purpose of
`
`this IPR. The plain and ordinary meaning should be applied to any claim terms that
`
`are not addressed below. Petitioner reserves the right to pursue different
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`constructions under different standards applicable in other forums.
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`A. (cid:9)
`
`"Banner"
`
`Claims 20, 22-30, 33, 43, 47, 48, 59, 62, 72, 73, 75, and 78 recite a "banner."
`
`Patent Owner has acted as its own lexicographer and makes it clear that this term is
`
`to be construed "very broadly." Specifically, the ’045 patent specification states:
`
`For purposes of the present invention, the term ’banner’ is meant to
`
`be construed very broadly and includes any information displayed in
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`conjunction with a web page wherein the information is not part of the
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`same file as the web page. That is, a banner includes anything that is
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`displayed or used in conjunction with a web page, but which can exist
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`separately from the web page or which can be used in conjunction
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`with many web pages. Banners can include graphics, textual
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`information, video, audio, animation, and links to other computer
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`sites, web sites, web pages, or banners. (GOOG 1001, 2:28-3 7.)
`
`Under BRI, and given the explicit definition in the specification, a POSA
`
`would have understood the term "banner" to mean "information displayed in
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`conjunction with a web page wherein the information is not part of the same file as
`
`the web page." This would include one or more of graphics, textual information,
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`Page 12
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`Inter Partes Review of
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`video, audio, animation, and links to other computer sites, web sites, web pages, or
`
`banners. (GOOG 1003, ¶ 39.)
`
`B. (cid:9)
`
`"Best Suited"
`
`Claims 22, 23, and 43 recite a determining a server that is "best suited" to
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`serve a banner. The ’045 patent specification states:
`
`Typically, the information server best suited to handle the serving or
`
`transmittal of a banner to the terminal 36 will be the information
`
`server that can download or serve the banner to the terminal 36 in the
`
`shortest period of time. Other selection criteria can be used, however,
`
`in download or serve a banner to a terminal, including the network
`
`topological distance between the terminal 36 and the information
`
`servers, the geographical distance between the terminal 36 and the
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`information servers, the bandwidth of the information servers, or the
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`round trip times for a message between the terminal 36 and the
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`information servers. (G000 1001, 20:62-21:7.)
`
`Based on these examples, under BRI, a POSA would have understood the a
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`"best suited ,4 server to at least include a server that can serve a banner based on
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`one of the criteria including shortest period of time, network topological distance,
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`The term "best suited" is relative and subjective, and is arguably indefinite under
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`MPEP § 2 173.05(b). Despite this defect, Petitioner makes a good-faith attempt to
`
`apply the claims.
`
`(cid:9)
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`Page 13
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`Inter Partes Review of
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`geographical distance, bandwidth of the server, and round trip times. (000G
`
`1003, ¶ 41.)
`
`C. (cid:9)
`
`"Content General Request Signal"
`
`Claim 24 recites a "content general request signal." The ’045 patent
`
`specification states:
`
`In other words, the initial banner request signal generated by terminal
`
`36 during the step 112 can be a content general signal and may
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`contain only the minimum amount of information needed to tell a
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`designated computer site, information server, or other device which
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`receives the initial banner request signal and on which a banner may
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`or may not be stored or located, only that the terminal 36 desires that
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`an unspecified banner be served to the terminal. (GOOG 1001, 15:8-
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`16.)
`
`Further, "[i]f the optional selection step 113 is used with the method 110, the
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`terminal 36 will only request during step 112 that a banner be served to the
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`terminal 36, but the terminal 36 will not specify which banner is to be served to the
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`terminal 36." (GOOG 1001, 15:25-29.)
`
`The ’045 patent specification additionally states:
`
`A general content URL address for a banner does not provide the
`
`necessary information to determine which banner is to be displayed.
`
`Rather a general content URL address for a banner only indicates that
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`a banner is to be displayed and the receiver of the signal generated by
`
`the terminal 36 during the step 112 can decide which banner is to be
`
`(cid:9)
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`Inter Partes Review of
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`displayed during the selection step 113. A general content URL
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`address (cid:9)
`
`for (cid:9)
`
`a (cid:9)
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`banner (cid:9)
`
`could (cid:9)
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`be (cid:9)
`
`of the (cid:9)
`
`form
`
`http://www.bannersite I.com/image;spacedesc=contentsitename.
`
`(GOOG 1001, 16:50-58.)
`
`Further, "[t]he space descriptor field in the general content URL address can
`
`reference different groups of banners such as, for example, a collection of car
`
`advertisements, a collection of detergent advertisements, etc., depending on the
`
`web page providing the general content IJRL address." (GOOG 1001, 17:3-8.)
`
`Accordingly, the content general request signal can still contain general
`
`information regarding a type of content or user interest, as long as a specific banner
`
`is not identified.
`
`Under BRI, a POSA would therefore have understood the term "content
`
`general request signal" to mean "a request indicating that information is to be
`
`displayed and that the receiver can decide what information is to be displayed."
`
`(GOOG 1003, para 46.)
`
`D. (cid:9)
`
`"Content Specific Request Signal"
`
`Claim 25 recites a "content specific request signal." The ’045 patent
`
`specification states: "If the optional selection step 113 is not used with the method
`
`110, the terminal 36 will request during the step 112 that a specific banner to be
`
`served to the terminal 36." (GOOG 1001, 15:23-25.) Additionally:
`
`In order to speed up the process of downloading, transmitting, or
`
`(cid:9)
`

`

`Page 15
`
`Inter Partes Review of
`U.S. Patent No. 6,286,045
`
`serving a specific banner from an information server to the terminal
`
`56, the content specific URL address of the requested or selected
`
`banner sent to the terminal during step 114 can contain the exact
`
`Internet Protocol (IP) address of the requested or selected banner. For
`
`example, instead of providing the specific content URL address for
`
`the banner 62 as http://www.bannersitel.comlbannerl.gif , the specific
`
`content URL address for the banner 62 could be provided as, for
`
`example, http ://23 6.45.78.190/banner 1 .gif, thereby removing any
`
`need to use the Domain Name System (DNS) to convert the
`
`alphanumeric address "www.bannersite 1 .com" of the information
`
`server to its exact IP address. (000G 1001, 18:62-19:8.)
`
`Under BRT, a POSA would have understood the term "content specific
`
`request signal" to mean "a request containing a content specific URL address with
`
`the location of the information." (GOOG 1003, ¶ 49.)
`
`VI. PERSON OF SKILL IN THE ART & STATE OF THE ART
`
`A POSA is presumed to be aware of all pertinent art, thinks along
`
`conventional wisdom in the art, and is a person of ordinary creativity. With respect
`
`to the ’045 patent, a POSA would typically have at least (a) a Bachelor of Science
`
`degree in computer science and/or a similar field or (b) at least 3 years of
`
`experience in web-based information management and delivery systems. (GOOG
`
`1003, ¶J 13-14; GOOG 1005, ¶ 13.)
`
`VII. IDENTIFICATION OF PRIOR ART AND CHALLENGE (37 C.F.R. §
`42.104(b))
`
`(cid:9)
`

`

`Inter Partes Review of
`U.S. Patent No. 6,286,045
`
`A.
`
`Prior art
`
`(1) U.S. Patent No. 5,933,811 to Angles et at. was filed Aug. 20, 1996, and
`
`issued Aug. 3, 1999. Angles is prior art under 35 U.S.C. 102(e) 5 . (2) U.S. Patent
`
`No. 5,948,061 to Merriman et at. was filed Oct. 29, 1996, and issued Sept. 7, 1999.
`
`Merriman is prior art under 35 U.S.C. 102(e). (3) U.S. Patent No. 5,960,409 to
`
`Wexler was filed Oct. 11, 1996, and issued Sept. 28, 1999. Wexler is prior art
`
`under 35 U.S.C. 102(e). (4) Fielding et at., "HTTP Working Group Internet Draft
`
`Hypertext Transfer Protocol - HTTP/1.0," ("HTTPl.O") was published Feb. 20,
`
`1996. HTTP1.0 is prior art under 35 U.S.C. 102(b).
`
`(5) Garland et al.,
`
`"Implementing Distributed Server Groups for the World Wide Web," was
`
`published Jan. 25, 1995. Garland is prior art under 35 U.S.C. 102(b). (6) U.S.
`
`Patent No. 5,796,952 to Davis et at. was filed Mar. 21, 1997, and issued Aug. 18,
`
`1998. Davis is prior art under 35 U.S.C. 102(e). (7) Meeker, Mary, "Technology:
`
`Internet/New Media The Internet Advertising Report" was published by Morgan
`
`Stanley, U.S. Investment Research in January 1997. Meeker is prior art under
`
`102(a).
`
`B.
`
`Challenge
`
`IPR is requested for claims 20-31, 33, 43-44, 47-48, 59, 61-63, 72-73, 75,
`
`All references to Title 35 of the U.S. Code are to the pre-AIA version.
`
`

`

`Page 17
`
`Inter Partes Review of
`U.S. Patent No. 6,286,045
`
`and 77-78 on the grounds for unpatentability listed in the index below. Per 37
`
`C.F.R. § 42.6(d), copies of the references are filed herewith. In support of the
`
`proposed grounds, this Petition is accompanied by a declaration of a technical
`
`expert, Mr. Peter Kent (GOOG 1003), which explains what the art would have
`
`conveyed to a POSA.
`
`Ground 35 USC
`
`Index of Reference(s)
`
`Claims
`
`1
`2
`3
`
`4
`
`5
`
`6
`
`7
`8
`
`§103(a) Angles, Merriman
`§103(a) Angles, Merriman, Davis
`§103(a) Angles, Merriman, Garland
`
`§ 103(a) Angles, Merriman,
`HTTP1.0
`§ 103(a) Wexler, HTTP1.0
`
`§ 103(a) Wexler, HTTP1.0, Meeker
`§ 103(a) Wexler, HTTP1.0, Garland
`§103(a) Wexler, HTTP1.0, Garland,
`Meeker
`
`20, 24-26, 28, 30, 31, 75, 78
`21
`22, 23, 29, 33, 43, 44, 47, 48,
`77
`
`27, 59, 61-63 9 72, 73
`20, 21, 24-28, 31 1 33, 725 75,
`77,78
`30, 59, 61-63, 73
`22, 23, 29, 43, 44, 47
`
`48
`
`Ground 1: Claims 20, 24-26, 28, 30, 31, 75, and 78 Would
`1. (cid:9)
`Have Been Obvious Over Angles in view of Merriman
`
`a) Independent Claim 20
`
`Claim 20 does no more than add a few limitations to a conventional method
`
`of delivering a banner referenced in a "document" (e.g., a web page) served to a
`
`device. The added limitations include a non-blockable "first banner request signal"
`
`and a redirecting "banner location signal" providing an address of a specified
`
`(cid:9)
`

`

`Inter Partes Review of
`U.S. Patent No. 6,286,045
`
`banner. These added limitations themselves were also well known in the art before
`
`the ’045 patent’s filing date.
`
`FIG. 4 of Angles (annotated below) illustrates the requesting and ultimate
`
`delivery of a customized banner advertisement to a consumer computer.
`
`De’ ice (cid:9)
`
`First banner (cid:9)
`request signal (cid:9)
`
`Document served to
`the device
`
`CONSUMER
`
`COMPUTER .CONTENT PROER COPuTR
`
`Second (cid:9)
`
`signal
`
`- (cid:9)
`
`MODULE (cid:9)
`
`:
`
`A
`
`ArF imi (cid:9)
`STORAOE
`ULCUU (cid:9)
`
`(cMtIcATN
`MEDIUM (cid:9)
`7
`
`
`
`I
`
`
`
`) (cid:9)
`
`NILE
`
`J LMMUNk TK AN
` ELECTRONIC (cid:9)
`PALE (cid:9)
`L
` MODULE
`MV
`
`
`
`ADVERTISEMENT PR OVIDER COMPUTER
`
`
`
`SCRIPTS
`
`A (cid:151) LNSLERIsTAriN
`
`E C ONTENT (N PRICER
`RELNIRA ILM SLE H (cid:9)
`CONtUMERALLEES
`CONTENT
`
`’i (cid:9)
`
`O (cid:151)E N’AOE SENT
`
`* (cid:151)CONUM R MEMBER
`CODE
`SENT TO ADVERTISEMENT (cid:9)
`PROVIDER (SEE F10, 71
`
`SENT TO CON$01MER
`(SEE (cid:9)
`7) (cid:9)
`
`___
`
`[RECIS ,!R,:A~TI,’N
`______
`
`7",
`
`VAtABASE (cid:9)
`
`DATASA5r (cid:9)
`
`DATABASE
`
`Banner
`location sianal
`
`First Server
`
`Angles’ "Summary of the Invention" describes Angles’ general process flow:
`
`"[T]he invention is directed to delivering custom advertisements to
`
`consumers who use their computers to view information offered by
`
`different content providers existing on the Internet. Preferably, when a
`
`consumer accesses a content provider, the content provider transmits
`
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`

`

`Inter Partes Review of
`U.S. Patent No. 6,286,045
`
`an electronic document to the consumer. Embedded within the
`
`electronic document is a[n] advertisement request. When the
`
`consumer’s computer displays the electronic document, the embedded
`
`advertisement request directs the consumer computer to communicate
`
`with an advertisement provi