Trials@uspto.gov
`571–272–7822
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`Paper 14
`Entered: August 14, 2015
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`
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`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 IPR2015-00660
`Patent 6,286,045 B1
`
`____________
`
`
`
`Before, KARL D. EASTHOM, JUSTIN T. ARBES, and
`MIRIAM L. QUINN Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
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`571–272–7822
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`
`Paper 14
`Entered: August 14, 2015
`
`
`
`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 IPR2015-00660
`Patent 6,286,045 B1
`
`____________
`
`
`
`Before, KARL D. EASTHOM, JUSTIN T. ARBES, and
`MIRIAM L. QUINN Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
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`IPR2015–00657
`Patent 6,286,045 B1
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`Google, Inc. (“Petitioner”) filed a Petition to institute inter partes
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`review of claims 4953, 5558, 6467, and 6971 of U.S. Patent No.
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`6,286,045 B1 (“the ’045 patent”) pursuant to 35 U.S.C. § 311319. Paper 2
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`(“Pet.”). At Home Bondholders’ Liquidating Trust (“Patent Owner”) timely
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`filed a Preliminary Response. Paper 10 (“Prelim. Resp.”). We have
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`jurisdiction under 35 U.S.C. § 314.
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`For the reasons that follow, we institute an inter partes review as to
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`claims 4953, 5558, 6467, and 6971 on certain grounds of
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`unpatentability.
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`I.
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`BACKGROUND
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`A. RELATED MATTERS
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`Petitioner identifies that the patent-at-issue is the subject matter of a
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`district court case filed in the U.S. District Court for the District of Delaware
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`(Case No. 1:14-cv-00216). Pet. 51.
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`B. ASSERTED GROUNDS
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`Petitioner contends that claims 4953, 5558, 6467, and 6971 (“the
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`challenged claims”) are unpatentable under 35 U.S.C. § 103 based on the
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`following specific grounds:
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`Reference[s]
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`Angles,1 Merriman,2 and
`HTTP1.03
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`
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`Basis
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`§ 103
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`Claims challenged
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`49, 51-53, 55-58, 64-67,
`and 70-71
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` U.S. Patent No. 5,933,811 (Exhibit 1012) (“Angles”).
`2
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` 1
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`Basis
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`§ 103
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`§ 103
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`§ 103
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`Claims challenged
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`50 and 69
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`49-53 and 55-57
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`58, 64-67, and 69-71
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`IPR2015–00657
`Patent 6,286,045 B1
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`Reference[s]
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`
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`Angles, Merriman, HTTP10, and
`Davis4
`Wexler5 and HTTP1.0
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`Wexler, HTTP1.0, Meeker6
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`C. THE ’045 PATENT (EX. 1001)
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`The ’045 patent is directed to a system for storing information on a
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`computer network and allowing the information to be accessed by terminals
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`connected to the computer network, either directly, or through an
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`intermediary device such as a local or proxy server. Ex. 1001, Abstract.
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`The system includes computers or web sites that store pages, which may
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`include references to banners to be displayed in conjunction with the web
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`pages on the terminal. Id. The ’045 patent also discloses a method that
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`“solves the initial problem of how to create accurate counts of banner
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`information displays on user terminals while avoiding the problems created
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`by requiring the banner information to be retransmitted across the computer
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`network each time the banner information is requested by a user or a user’s
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`
`
` 2
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` U.S. Patent No. 5,948,061 (Exhibit 1013) (“Merriman”).
`3 T. Berners-Lee et al., HTTP Working Group Internet Draft Hypertext
`Transfer ProtocolHTTP/1.0, (Feb. 19, 1996) (Exhibit 1008) (“HTTP1.0”).
`4 U.S. Patent No. 5,796,952 (Exhibit 1014) (“Davis”).
`5 U.S. Patent No. 5,960,409 (Exhibit 1007) (“Wexler”).
`6 Mary Meeker, Technology: Internet/New Media The Internet Advertising
`Report, Morgan Stanley, U.S. Investment Research (Dec. 1996) (Exhibit
`1010) (“Meeker”).
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`terminal.” Id. at 14:3340. In one embodiment, the ’045 patent describes
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`the use of an initial banner request signal that is a general content Uniform
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`Resource Locator (“URL”) address generated by the terminal, where the
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`URL does not specify which banner is to be displayed. Id. at 17:2226. The
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`recipient of the initial banner request signal selects which banner is to be
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`displayed on the terminal, and returns a specific content URL address to the
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`terminal, using a “Status HTTP 302 Redirect signal,” indicating the address
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`of the selected banner. Id. at 17:2636. Therefore, even though the banner
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`may be cached or stored on the user’s terminal or on a proxy server, the
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`specific content URL address signal is not cached, preventing the initial
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`banner request signal from being blocked by either the terminal or the proxy
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`server. Id. at 17:4250.
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`D. ILLUSTRATIVE CLAIMS
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`Challenged claims 49 and 64 are independent, and are reproduced
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`below.
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`49. A method for enabling distribution of a banner over a computer
`network to a device when the banner is referenced in a document served to
`the device, wherein the banner is stored in one or more servers connected to
`the computer network, and the device is connected to the computer network
`via an intermediary server, comprising:
`causing a first banner request signal to be transmitted from the device to
`a first server requesting that a banner be served to the device, wherein
`said first banner request signal includes information intended to make
`said first banner request signal not blockable by the device or the
`intermediary server as a result of a storage in the device or the
`intermediary server of said requested banner prior to the generation of
`said first banner signal by the device;
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`sending a banner location signal from said first server to the device,
`wherein said banner location signal includes location information for
`said requested banner stored on a second server; and
`determining if said requested banner is stored on the device and, if said
`requested banner is not stored on the device, then causing a second
`banner request signal to be transmitted from the device to the
`intermediary server and determining if said requested banner is stored
`on the intermediary server, wherein if said requested banner is not
`stored on the intermediary server, causing at least a portion of said
`second banner request signal to be sent to said second server
`requesting that said second server serve said requested banner to said
`device.
`
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`64. A method for enabling accurate counting of displays of a banner on a
`client device, comprising:
`receiving a first banner request signal at a first server requesting that a
`banner be served to a client device, wherein said first banner request
`includes information intended to prevent said first banner request
`signal from being blocked from said first server, even though there
`has been previous caching or storing of said banner by the client
`device or an intermediary device;
`sending a banner location signal to the client device, wherein said banner
`location signal includes location information for a specified banner
`stored on a second server; and
`causing a determination of whether said specified banner is stored on the
`client device and, if said specified banner is not stored on the client
`device, receiving a second banner request signal from the client
`device at said intermediary device and causing a determination of
`whether said specified banner is stored on said intermediary device,
`wherein if said specified banner is not stored on said intermediary
`device, receiving a third banner request signal at said second server
`requesting that said second server serve said specified banner to the
`client device.
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`II. ANALYSIS
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`In the analysis that follows, we may discuss facts as they have been
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`presented thus far in this proceeding. Any inferences or conclusions drawn
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`from those facts are neither final nor dispositive of any issue on which we
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`institute trial.
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`A. CLAIM INTERPRETATION
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`The Board interprets claims using the “broadest reasonable
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`construction in light of the specification of the patent in which [they]
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`appear[].” 37 C.F.R. § 42.100(b). We presume that claim terms have their
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`ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d
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`1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning ‘is the
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`meaning that the term would have to a person of ordinary skill in the art in
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`question.’” (citation omitted)).
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`Petitioner and Patent Owner have proposed constructions for various
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`terms. See Pet. 1115; Prelim. Resp. 1418. We do not need to construe
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`every term proposed by the parties if the construction is not helpful in our
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`determination of whether to institute trial. The scope of the claim term
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`“banner” is determinative of whether we institute certain asserted grounds.
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`Our discussion of this term follows.
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`“banner”
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`Both parties agree that “banner” means “information displayed in
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`conjunction with a web page.” Pet. 12; Prelim. Resp. 15. The parties
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`disagree, however, on whether additional explanations should be included in
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`the definition. For example, Petitioner asserts that the information “is not
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`part of the same file as the web page” (Pet. 12) while Patent Owner asserts
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`that the information “can exist separately from the web page or which can be
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`used in conjunction with many web pages” (Prelim. Resp. 15-16). Both
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`parties rely on different portions of the specification to support their
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`respective proposed constructions. Two issues are thus presented: (1) does
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`the specification provide an express definition of the term as alleged by
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`Petitioner; and (2) does the specification support a construction broader than
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`Petitioner argues. These issues arise because the specification states that,
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`for purposes of the present invention, the term ‘banner’ is
`meant to be construed very broadly and includes any
`information displayed in conjunction with a web page
`wherein the information is not part of the same file as the
`web page. That is, a banner includes anything that is
`displayed or used in conjunction with a web page, but
`which can exist separately from the web page or which
`can be used in conjunction with many web pages.
`Banners can include graphics, textual information, video,
`audio, animation, and links to other computer sites, web
`sites, web pages, or banners.
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`Ex. 1001, 2:2837. Patent Owner also points to additional statements in the
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`specification where the banner information may be served with the web
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`page. See Prelim. Resp. 1516 (citing Ex. 1001, 10:2326 (“banner
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`information may be served with the webpage or, more commonly, the
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`banner information may reside in separate files.”)).
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`We agree with the parties that the specification provides a description
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`of a “banner” as information displayed in conjunction with a web page. But
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`it is unnecessary for us to decide whether a banner may comprise
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`information that may be part of the “same file as the web page” or served
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`with the web page. The specification states the intent of construing “banner”
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`with a stated, broad definition, and, therefore, we may not limit the
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`construction of “banner” to how it may be served or stored vis-à-vis a web
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`page. The claims provide sufficient detail regarding the location and
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`operation of the banner such that we do not need to define the term further
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`than how the information is displayed. Accordingly, under the broadest
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`reasonable interpretation in light of the specification, for purposes of this
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`Decision, we construe “banner” to mean “information displayed in
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`conjunction with a web page.”
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`B. OBVIOUSNESS GROUNDS BASED ON ANGLES, MERRIMAN,
`HTTP1.0, AND DAVIS
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`Petitioner asserts two grounds predicated on, at a minimum, the
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`combination of Angles and Merriman.
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`1. Overview of Angles (Ex. 1012)
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`Angles describes a system and method for delivering customized
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`electronic advertisements in an interactive communication system. Ex.
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`1012, Abstract. Angles’s system interconnects multiple consumer
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`computers, multiple content provider computers, and multiple Internet
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`provider computers with an advertisement provider computer. Id. Figure 4,
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`reproduced below, illustrates the Angles’s system and shows the flow of
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`information among these computers. See id. at 4:61:65.
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`Figure 4 depicts content provider computer 14 that includes electronic
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`pages 32 for presenting information to the consumer. See id. at 12:5160.
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`Each electronic page 32 contains advertising insert 56 which is a place-
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`holder configured to contain customized advertisement 30 generated by
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`advertisement provider computer 18. Id. Advertising insert 56 contains
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`advertisement request 26, which references a content provider Common
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`Gateway Interface (CGI) script 64 that exists on advertisement provider
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`computer 18. Id. at 13:14. “When the advertisement provider computer 18
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`executes the content provider script 64, the advertisement provider computer
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`18 identifies which content provider computer 14 is being accessed by a
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`consumer computer 12.” Id. at 13:1619. Advertisement provider computer
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`18 sends customized advertisement 30 to consumer computer 12. Id. at
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`8:5661. Electronic page 32 and customized advertisement 30 are combined
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`into a displayable page. Id. at 8:6265.
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`Angles further describes an embodiment in which consumer computer
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`12 includes advertising storage medium 44, which can be a compact disk
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`drive and a compact disk, to store a variety of advertisements that can be
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`retrieved and displayed by consumer computer 12. Id. at 11:5055. In this
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`embodiment, the advertisement command identifies a particular location on
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`advertising storage medium 44, such as the particular track and sector where
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`an advertisement is located. Id. at 11:6612:2.
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`2. Overview of Merriman (Ex. 1013)
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`Merriman describes targeting the delivery of advertisements over a
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`network, such as the Internet. Ex. 1013, Abstract. Figure 1, reproduced
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`below, illustrates an affiliate’s web site 12, an advertisement (“ad”) server
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`web site 19, and an advertiser’s web site 18. See id. at 2:5962.
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`In Figure 1, above, a user operates a web browser to generate
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`request 20 directed to affiliate web site 12. Id. at 3:2428. The affiliate web
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`site sends messages 22 containing the information available at the particular
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`web site 12 for the requested page to be displayed by the user browser 16,
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`except for one or more advertising objects such as banner advertisements.
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`Id. at 3:3034. Instead of sending the advertising objects, affiliate web
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`server sends a link to the node running advertiser server process 19, where
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`the link refers to an inline image, such as a banner. Id. at 3:3441. User
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`browser 16 sends message 23 to advertising server process 19 to access the
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`object. Id. at 3:4152. Upon receiving message 23, advertising server
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`process 19 determines which advertisement or other object to provide to user
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`browser 16 and transmits message 24 containing the object. Id. at 3:5257.
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`The advertisement object then is displayed “as a composite of the received
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`affiliate’s web page plus the object transmitted back by the advertising web
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`server.” Id. at 3:5963. “As part of the ‘click through’ process, when the
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`user clicks on the banner or other advertising object displayed by the user’s
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`browser 16, the user’s browser again transmits a message [23] to the ad
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`server.” Id. at 3:6467. Advertising server 19 notes the address of the
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`computer that generated message 23 and transmits back the URL of the
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`advertiser’s web page so that user browser 16 can generate a message 26 to
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`contact advertiser web site 18. Id. at 3:674:5.
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`3. Overview of HTTP1.0 (Ex. 1008)
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`HTTP1.0 is a working document of the Hypertext Transfer Protocol
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`(HTTP) Working Group. Ex. 1008, 1. The document describes
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`specifications for the protocol referred to as “HTTP/1.0.” Id. In particular,
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`HTTP1.0 discloses the use of a “Pragma general-header field.” Id. at 35.
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`“All pragma directives specify optional behavior from the viewpoint of the
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`protocol; however, some systems may require that behavior be consistent
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`with the directives.” Id. One pragma directive is a “no-cache” directive,
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`which is described as follows:
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`When the “no-cache” directive is present in a request
`message, an application should forward the request
`toward the origin server even if it has a cached copy of
`what is being requested. This allows a client to insist
`upon receiving an authoritative response to its request.
`It also allows a client to refresh a cached copy which is
`known to be corrupted or stale.
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`Id. at 3536.
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`4. Overview of Davis (Ex. 1014)
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`Davis is directed to monitoring client use of and interaction with a
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`resource downloaded from a server on a computer network. Ex. 1014,
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`1:810. In particular, Davis describes the access and display of an ad banner
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`that is embedded inside a Web page located in a server through the use of
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`“HTML <IMG> tag” by stating that
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`When a client machine passes a TCP/IP request for the Web page
`to the first server, the Web page is downloaded to the client,
`including the ad banner embedded using the <IMG> tag. The
`<IMG> tag is used to reference a resource (i.e., the “ad banner”)
`stored on the same or a different server which captures the user’s
`ID (via the HTTP request header) and dynamically returns an ad
`related image to the client for display within the Web page.
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`Ex. 1014, 3:3542.
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`5. Discussion
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`Petitioner contends that Angles discloses most of the limitations of
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`independent claims 49 and 64. Pet. 17–30. In particular, Petitioner contends
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`that Angles’s advertisement request, which references a CGI script, is an
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`“unblockable” signal because the “signal is dynamic and the resulting
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`content would not be cached.” Pet. 19. Petitioner further argues that a
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`redirect signal containing a URL address for another address is a well-
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`known feature of HTTP and Merriman teaches such a feature. Id. at 20.
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`Finally, Petitioner asserts that HTTP1.0 teaches that any client or server may
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`include a cache, and that a person of ordinary skill in the art would have
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`understood that a cache may be located on the consumer computer in
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`Angles. Id. at 2223.
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`The evidence provided by Petitioner is insufficient, according to
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`Patent Owner, because the use of a CGI script alone does not prevent
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`caching. Prelim. Resp. 21–22. Further, the argument goes, Angles does not
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`disclose, other than a reference to a CGI script, what strings are included in
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`the URL. Id. at 23–24. Patent Owner argues that there is a reason the
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`’045 patent discloses specific characters included in the URL for prevention
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`of blocking as a result of previous caching. Id. at 24.
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`At this stage of the proceeding, however, we conclude that
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`Petitioner’s evidence is sufficient to demonstrate a reasonable likelihood that
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`Angles teaches a request signal with information intended to prevent the
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`signal from being blocked. Petitioner states that in Angles, consumer
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`computer 12 sends advertisement request 26, which references content
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`provider CGI script 64, to advertisement provider computer 18. See Pet. 18–
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`19, 25 (citing Ex. 1012, 13:24, 7:658:1). Thus, according to Petitioner,
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`Angles does not block advertisement request 26 from reaching
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`advertisement provider computer 18. Id. Petitioner submits evidence to
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`show why it believes the use of a CGI request in Angles prevents such
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`blocking. See Pet. 56; 18–19; Ex. 1001, 18:23–19:11; Ex. 1003 ¶¶ 16, 62–
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`63; Ex. 1017, 7–8. Based on the current record, Petitioner’s evidence is
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`sufficient to demonstrate a reasonable likelihood of prevailing, but the
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`ultimate assessment of that evidence will be based on the complete record at
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`the end of trial.
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`We recognize that Patent Owner has casted doubt regarding
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`Petitioner’s assertion that a CGI script, without more, prevents blocking as
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`required by the claims. The Preliminary Response cites evidence supporting
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`the assertion that a browser will cache (and thus block the request for) a
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`document resulting from a CGI script. Prelim. Resp. 22 (citing Ex. 2007).
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`Furthermore, we note that Patent Owner has presented evidence supporting
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`the allegation that a mere reference to a CGI script, such as that described in
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`Angles, is insufficient to render the signal containing the reference
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`“unblockable.” Prelim. Resp. 23 (citing Ex. 2009). Considering this
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`evidence together with Petitioner’s evidence, however, we lack an
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`explanation of how Angles’s advertisement request is not an “unblockable”
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`signal. That is, notwithstanding the evidence from Patent Owner that not all
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`references to a CGI script block caching, we have not been shown yet that
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`Angles’s reference to a CGI script would be blocked. On this point, we note
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`that Petitioner expressly argues that one embodiment of the ’045 patent
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`supports the assertion that a CGI script would be “unblockable.” Pet. 19.
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`And although we need not rely on this argument to render our decision, there
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`is some indication that dynamically generated content through a CGI script
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`was known to prevent caching. Ex. 1017.
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`As we see it, considering the evidence presented by both parties, one
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`inference that may be drawn from Angles’s disclosure is that the reference to
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`the CGI script in the advertisement request is not blocked because Angles
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`utilizes one of the “cache-busting” techniques known at the time, i.e., URL
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`requesting dynamically generated content. However, another potential
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`inference is that Angles’s system, although requesting dynamic content, does
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`not involve URL requests that prevent caching of the resulting request
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`because either caching is not utilized or, if caching, Angles’s system
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`includes the same accounting inaccuracies known in the art. Resolving the
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`reasonableness and likelihood of these (or other later arising) inferences is a
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`fact-finding issue that we will undertake at the conclusion of the trial.
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`Patent Owner has presented further arguments challenging the
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`Petition. We have considered those arguments and determine that the
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`Petition has presented sufficient information to institute trial. For example,
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`Patent Owner argues that none of the asserted references teaches or suggests
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`the use of two or more requests to retrieve a banner. Prelim. Resp. 2529.
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`These arguments are not persuasive because they are not responsive to
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`Petitioner’s assertions regarding claims 49 and 64 that the disclosures in the
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`Angles, Merriman, and HTTP1.0 are combined to teach or suggest the
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`recited requests. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed.
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`Cir. 1986) (“Non–obviousness cannot be established by attacking references
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`individually where the rejection is based upon the teachings of a
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`combination of references.”). Furthermore, although Angles appears to
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`disclose that local storage of banners is a solution to transmission delays in
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`the communication network, Patent Owner has not shown sufficiently, at
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`this time, that the disclosure teaches away from the combination of Angles
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`and Merriman. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340,
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`1349 n. 8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the
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`expense of another benefit, however, should not nullify its use as a basis to
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`modify the disclosure of one reference with the teachings of another.
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`Instead, the benefits, both lost and gained, should be weighed against one
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`another.”). Finally, we are not persuaded at this time by the argument that
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`Angles’s embodiment of local storage of banners serves a “primary
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`purpose.” Prelim. Resp. 30. Although Angles may disclose a benefit
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`associated with local storage of banners, it does not discredit or repudiate the
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`delivery of those banners via the communication network because Angles
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`discloses embodiments that deliver a customized advertisement (“banner”)
`
`to the consumer via the communication medium. See Ex. 1012, 8:56-61;
`
`20:64-21:6.
`
`
`
`With regards to dependent claims 50 and 69, Petitioner has presented
`
`evidence and argument that Davis teaches or suggests the limitations further
`
`recited in these dependent claims, and that the claims would have been
`
`obvious over the combination of Angles, Merriman, and HTTP1.0. Pet.
`
`35-36. Patent Owner argues that Petitioner did not present a reasonable
`
`rationale that would motivate a person of ordinary skill in the art to modify
`
`the references. Prelim. Resp. 32-33. The argument is not persuasive at this
`
`time as Petitioner does not allege a modification of Angles or Merriman in
`
`view of Davis, but rather that known elements are combined according to
`
`known methods to yield predictable results. Pet. 35-36.
`
`Consequently, having reviewed all the arguments and evidence
`
`presented, we determine that, on the present record, Petitioner has shown a
`
`reasonable likelihood of prevailing in the contention that claims 4953,
`
`5558, 6467, and 6971 of the ’045 patent would have been obvious over
`
`the asserted grounds based on Angles, Merriman, HTTP1.0, and (for
`
`dependent claims 50 and 69) Davis.
`
`17
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`IPR2015–00657
`Patent 6,286,045 B1
`
`
`
`C. OBVIOUSNESS GROUNDS BASED ON WEXLER, HTTP1.0, AND
`MEEKER
`
`Petitioner asserts two grounds predicated on, at a minimum, the
`
`combination of Wexler and HTTP1.0.
`
`6. Overview of Wexler (Ex. 1007)
`
`Wexler is directed to providing on-line third party accounting and
`
`statistical information. Ex. 1007, Abstract. A third party accounting service
`
`receives download request signals intended for an advertiser Web site. Id.
`
`The download request signal results from a user clicking on a banner
`
`displayed on a Web page, because the banner is configured to point to the
`
`third party Web site, rather than pointing to the advertiser’s Web site. Id.
`
`The third party Web site maintains a count of the received download request
`
`signals generated by clicking on the banner, and sends a redirect signal to
`
`the user’s Web browser causing the advertiser Web site to send the
`
`information originally sought by the user. Id.
`
`7. Discussion
`
`Wexler describes a third party accounting and statistical service that
`
`redirects a user’s web browser to request a web page from an advertiser after
`
`the user clicks on a banner. Ex. 1007, 2:38–56. Petitioner relies on
`
`Wexler’s advertiser’s web page as disclosing the “banner.” Pet. 37. That is,
`
`although Wexler discloses banner 9 displayed with web page 7, Petitioner
`
`alleges that the claimed “banner” is, instead, the web page displayed after
`
`the user clicks on banner 9. Id. at 37-38. Patent Owner has challenged this
`
`assertion as insufficient to show unpatentability of claims 49 and 64.
`
`18
`
`
`
`
`
`IPR2015–00657
`Patent 6,286,045 B1
`
`
`
`According to Patent Owner, the advertiser’s web page is not a
`
`“banner.” Prelim. Resp. 33-37. We agree with Patent Owner that the two
`
`separate web pages served in Wexler are not a “banner.” Particularly, we
`
`have construed “banner” to require, at a minimum, that the information is
`
`displayed in conjunction with a web page. Notwithstanding the conclusory
`
`assertion of the Kent Declaration at paragraph 120, two web pages are not
`
`displayed in conjunction with each other, they are displayed separately. One
`
`web page is displayed first, the advertiser’s web page is displayed
`
`separately, and only after the user has clicked through the banner’s
`
`advertisement. Therefore, Wexler’s advertiser’s web page is not a “banner”
`
`that is displayed in conjunction with a web page. The Kent Declaration is
`
`conclusory on this point, particularly on the assertion that a web page would
`
`have been displayed in a frame or an iframe within another web page. See
`
`Ex. 1003 ¶ 120. There is insufficient factual support for this assertion,
`
`especially in light of Patent Owner’s argument (and evidence) that such
`
`features were not in existence in the HTML specification until after the time
`
`of the invention. See Prelim. Resp. 37 (citing Ex. 2011). Accordingly, we
`
`are persuaded by Patent Owner’s argument that Petitioner’s contentions of
`
`unpatentability with regard to claims 49 and 64 are insufficient to institute
`
`inter partes review.
`
`Accordingly, we are not persuaded that Petitioner has shown a
`
`reasonable likelihood of prevailing in its contention that independent claims
`
`49 and 64 are unpatentable as obvious over Wexler and HTTP1.0. Petitioner
`
`does not assert that Meeker makes up for the deficiencies noted above with
`
`regard to the remaining challenged claims. Therefore, we determine that
`
`19
`
`
`
`
`
`IPR2015–00657
`Patent 6,286,045 B1
`
`
`
`Petitioner has not shown a reasonable likelihood of prevailing in its
`
`contention that claims 4953, 5558, 6467, and 6971 are unpatentable
`
`based on the asserted Wexler-based grounds.
`
`III. CONCLUSION
`
`For the foregoing reasons, we institute inter partes review of the
`
`’045 patent on the following grounds:
`
`Reference[s]
`
`Basis
`
`Claims challenged
`
`Angles, Merriman, and HTTP1.0
`
`§ 103
`
`49, 51-53, 55-58, 64-67,
`and 70-71
`
`Angles, Merriman, HTTP1.0, and
`Davis
`
`
`§ 103
`
`50 and 69
`
`The grounds asserting obviousness relying on Wexler as disclosing a
`
`“banner” are denied.
`
`The Board has not made a final determination on the patentability of
`
`any challenged claim.
`
`
`
`20
`
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`
`
`
`IPR2015–00657
`Patent 6,286,045 B1
`
`
`
`IV. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that we institute inter partes review as to claims 4953,
`
`5558, 6467, and 6971 of the ’045 patent;
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`
`partes review of the ’045 patent is hereby instituted with trial commencing
`
`on the entry date of this decision, and pursuant to 35 U.S.C. § 314(c) and 37
`
`C.F.R. § 42.4, notice is hereby given of the institution of trial;
`
`FURTHER ORDERED that the trial is limited to the grounds for
`
`which we institute inter partes review as identified in the Conclusion;
`
`FURTHER ORDERED that the instant case is consolidated with Case
`
`IPR2015-00657, and all further filings in the consolidated proceeding shall
`
`be made in Case IPR2015-00657;
`
`FURTHER ORDERED that the case caption of all future filings shall
`
`be changed to reflect the consolidation in accordance with the attached
`
`example;
`
`FURTHER ORDERED that a copy of this Decision be entered into
`
`the files of Cases IPR2015-00657 and IPR2015-00660; and
`
`FURTHER ORDERED that, within five business days of this
`
`Decision, the parties shall refile any exhibits filed only in this Case
`
`IPR2015-00660 (but not filed in Case 2015-00657) in the consolidated
`
`proceeding, using unique sequential numbers as required by 37 C.F.R.
`
`§ 42.63(c), and file updated exhibit lists pursuant to 37 C.F.R. § 42.63(e);
`
`21
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`
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`
`
`Trials@uspto.gov
`571-272-7822
`
`Paper __
`Entered: ____
`
`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 IPR2015-006577
`Patent 6,286,045 B1
`____________
`
`
`
`
`
`
`
` Case IPR2015-00660 has been consolidated with this proceeding.
`
` 7
`
`
`
`IPR2015-00660
`Patent 6,286,045 B1
`
`
`
`
`
`PETITIONER:
`
`Michelle Holoubek (Lead Counsel)
`Michael Messinger (Back-up Counsel)
`mhoubek-PTAB@skgf.com
`mikem-PTAB@skgf.com
`Sterne, Kessler, Goldstein & Fox
`1100 New York Ave., N.W.
`Washington DC 20005
`
`PATENT OWNER:
`
`Garland Stephens (Lead Counsel)
`Justin Constant (Back-up Counsel)
`Jared Bobrow (Back-up Counsel, admitted pro hac vice)
`at.home.google@weil.com
`garland.stephens@weil.com
`justin.constant@weil.com
`Weil, Gotshal & Manges LLP
`
`
`23
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