UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRJAL AND APPEAL BOARD
`
`GOOGLEINC.
`Petitioner
`
`v.
`
`AT HOME BONDHOLDERS' LIQUIDATING TRUST
`Patent Owner
`
`Case IPR No. Unassigned
`U.S. Patent 6,286,045
`
`Petition for Inter Partes 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
`
`

`

`Page i
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`Inter Partes Review of
`U.S. Patent No. 6,286,045
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`TABLE OF CONTENTS
`
`I.
`II.
`
`III.
`
`V.
`
`VI.
`VII.
`
`INTRODUCTION ............................................................... ........................... 1
`GROUNDS FOR STANDING (37 C.F.R. § 42. 104(a)); PROCEDURAL
`STATEMENTS ............................................................................................... 1
`STATEMENT OF THE PRECISE RELIEF REQUESTED AND THE
`REASONS THEREFOR (37 C.F.R. § 42.22(a)) ............................................ 2
`IV. OVERVIEW ....................................................................... ............................ 2
`A.
`The '045 Patent ..................................................................................... 2
`B.
`Prosecution History .............................................................................. 3
`C.
`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 ........................... 7
`Advertisement Targeting based on Demographics was
`Well-Known ............................................................................... 8
`Fault Tolerance and Reliability Were Well Known .................. 9
`4.
`HTTP Redirect was Well-Known ............................................ 10
`5.
`CLAIM CONSTRUCTION .......................................................................... 11
`A.
`"Banner" .. .............................................. ............................................. 12
`B.
`"Best Suited" ....................................................................................... 12
`C.
`"Content General Request Signal" ..................................................... 13
`D.
`"Content Specific Request Signal" ..................................................... 15
`PERSON OF SKILL IN THE ART & STATE OF THE ART .................... 16
`IDENTIFICATION OF PRIOR ART AND CHALLENGE (37 C.F.R. §
`42.1 04(b )) ...................................................................................................... 16
`A.
`Prior art ............................................................................................... 16
`B.
`Challenge ............................................................................................ 17
`Ground 1: Claims 1-6,12, 14, 15,17-19,34,35, and
`40 Would Have Been Obvious Over Angles in view
`ofMerriman .............................................................................. 18
`
`1.
`2.
`
`3.
`
`1.
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`Inter Partes Review of
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`2.
`
`3.
`
`4.
`
`Ground 2: Claims 7-11, 16, and 39 would have been
`obvious over Angles in view of Merriman and further
`in view of Garland .................................................................... 33
`Ground 3: Claim 42 would have been obvious over
`Angles in view of Merriman and further in view of
`Davis ......................................................................................... 38
`Ground 4: Claims 36-38 and 41 would have been
`obvious over Angles in view of Merriman and further
`in view ofHTTP1.0 .................................................................. 40
`Ground 5: Claims 1-6, 12, 14-18, and 34-42 would
`have been obvious over Wexler in view ofHTTPl.O .............. 41
`Ground 6: Claim 19 would have been obvious over
`Wexler in view ofHTTPl.O and further in view of
`Meeker ...................................................................................... 55
`Ground 7: Claims 7-11 would have been obvious over
`Wexler in view ofHTTPl.O and further in view of
`Garland ..................................................................................... 56
`VIII. CONCLUSION .. ...... .......... .................. ... ... ....... ... .. ..... ............ ...... ............ .... 59
`IX. MANDATORY NOTICES (37 C.F.R. § 42.8(a)(l)) ................................... 59
`
`5.
`
`6.
`
`7.
`
`

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`Page 1
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`I.
`
`INTRODUCTION
`
`Inter Partes Review of
`U.S. Patent No. 6,286,045
`
`Google Inc. ("Petitioner") petitions for Inter Partes Review, seeking
`
`cancellation of claims 1-12, 14-19, and 34-42 ("challenged claims") ofU.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. Petitioner further
`
`certifies that it is not barred or estopped from requesting IPR of claims 1-12, 14-
`
`19, and 34-42 on the grounds identified in this petition, as Petitioner was first
`
`served less than a year ago with a complaint for infringement on Feb. 20, 2014, in
`
`U.S. District Court for the District ofDelaware (1:14-cv-00216) 1
`
`• (GOOG 1015.)
`
`Concurrently filed herewith are Powers of Attorney and an Exhibit List per §
`
`42.10(b) and§ 42.63(e), respectively. The required fee is paid via online credit
`
`card payment. The Office is authorized to charge fee deficiencies and credit
`
`overpayments to Deposit Acct. No. 19-0036 (Customer 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. (IPR2012-00004, Paper No. 18.)
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`Inter Partes Review of
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`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 1-12, 14-19, and 34-42 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
`
`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.
`
`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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`Inter Partes Review of
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`advertisement is displayed to a user, while reducing heavy Internet traffic. In
`
`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
`
`computer. Rather than sending the request directly to an advertiser's web site, the
`
`request is sent to another server that counts the request and redirects the request to
`
`the desired advertiser's web site. The redirected address is sent to the user's
`
`computer and a request from the user's computer is then sent to the selected
`
`advertising web site.
`
`B.
`
`Prosecution History
`
`In arguments made during prosecution, Patent Owner emphasized four
`
`"fundamental principles" of the alleged invention that the Examiner was to keep in
`
`mind when analyzing the prior art. (GOOG 1002, p. 149.) First, "Applicants'
`
`invention reduces the inaccurate display counting caused by caching of the banners
`
`by making or causing request signals generated or transmitted by a client device
`
`unblockable by the client device or proxy server, even though the banners may
`
`have been previously stored on the client device or proxy server." (I d., p. 150.)
`
`"Second, applicants' invention allows such serving and counting to occur without
`
`significantly increasing data traffic on the computer network or unnecessarily
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`delaying the display of the banners or other information on the client device." (Id.,
`
`p. 151.) "Third, applicants' invention allows banners or advertisements to be
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`Inter Partes Review of
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`targeted to users to increase the banners' or advertisements' effectiveness." (!d.)
`
`"Fourth, applicants'
`
`invention
`
`increases fault
`
`tolerance and reliability for
`
`information and banner delivery and storage systems." (!d.) Such arguments were
`
`apparently persuasive to the Examiner in overcoming the cited prior art. Yet each
`
`of these "fundamental principles," along with the mechanisms described in the '045
`
`patent as embodying those principles, were well known in the industry before the
`
`'045 patent was filed.
`
`C.
`
`State of the Art
`Serving and Counting of Banners was Well-Known
`1.
`
`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
`
`the protocols by which Web traffic was govemed. 2 (GOOG 1005, ~ 8.) In his
`
`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
`
`cause an underreporting of the counting of banners ... . 'A request is a connection to
`
`2 Mr. Leach was a contributor to both the HTTP 1.0 and HTTP 1.1 specifications.
`
`(GOOG 1008, pp. 41-42; GOOG 1026, pp. 99-100.)
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`Inter Partes Review of
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`an Internet site (i.e. , hit) that successfully retrieves content,' but counting such
`
`requests accurately was a known issue 'because browser software and many
`
`Internet gateways intercept some requests before reaching the server, and these
`
`cached requests are never logged."' (GOOG 1005, 'tl 21 (quoting GOOG 1022, p.
`
`13).)
`
`Not only was the problem a known issue, but Patent Owner's solution was
`
`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
`
`providers want to be able to collect information on the frequency with which their
`
`content is accessed. This desire leads to some of the 'cache-busting' done by
`
`existing servers. ('Cache-busting' is the use by servers of techniques intended to
`
`prevent caching of responses ... )" (GOOG 1024, pp. 2-3.) Further, as discussed in
`
`an earlier version of the same Working Group paper, "[s]ome cache-busting is also
`
`done to provide different advertising images to appear on the same page (i.e., each
`
`retrieval of the page sees a different ad) .... HTTP/1.1 already allows origin servers
`
`to prevent caching of responses, and we have evidence that at least some of the
`
`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.)
`
`Peter Kent is another expert in the field, having been involved in Internet
`
`advertising from the early days of the Web. (GOOG 1003, ~~ 5-8.) Mr. Kent
`
`agrees that:
`
`[ c ]ounting accuracy for delivered content was a widely known issue at
`
`the time the '045 patent was filed, and the proposed solution in the
`
`'045 patent was also already widely known. In fact, attempting to
`
`improve counting accuracy via cache avoidance was such a burden on
`
`the Web's bandwidth that by early 1997, other proposals were already
`
`being made to move advertisers away from the use of cache(cid:173)
`
`avoidance. At any rate, such cache avoidance was already widely
`
`known before the alleged invention. (GOOG 1003, ~15.)
`
`Further,
`
`the cache avoidance methods described
`
`in the
`
`'045 patent
`
`specification ("HTTP no-cache pragma, appending a random segment to the URL,
`
`and using a cgi script to generate dynamic pages") were already known before the
`
`patent's filing date. (GOOG 1003, ~16.) Mr. Kent also describes additional known
`
`cache avoidance methods, including modifying URLs and the use of third party
`
`products such as PageMeter. (GOOG 1003, ~17.)
`
`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
`
`3 Emphasis added throughout unless otherwise noted.
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`Inter Partes Review of
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`display of advertising banners and web pages and that there were known 'cache-
`
`busting' methods that could be used to prevent caching and thus allow for a more
`
`accurate method of counting the delivery and display of Internet based
`
`advertisements." (GOOG 1005, ,-r 27.)
`
`2.
`
`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
`
`recognized in the industry at the time that cache-busting "also resulted in increased
`
`loads on servers." (GOOG 1005, ~ 28.) "Not only was this method expensive
`
`computationally to the sever, but it defeated intem1ediary caching and did not
`
`correctly handle the exchanging of URLs between people." (GOOG 1005, ~ 28,
`
`GOOG 1023, p. 2.) So, methodologies to allow for the serving and counting of
`
`banner advertisements without significantly increasing data traffic through the use
`
`of cache-busting were also "well known at the time of the filing of the '045 patent
`
`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
`
`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
`
`requested information if that information existed in cache." (GOOG 1005, ~32, see
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`

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`Page8
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`also GOOG 1005, ~~33-34.)
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`Inter Partes Review of
`U.S. Patent No. 6,286,045
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`Mr. Leach's declaration also discusses a "hit-metering" approach that he and
`
`Jeffrey Mogul developed. That approach "outlines a method of counting requests,
`
`or 'hit counts' without defeating the use of cache where appropriate." (GOOG 1005,
`
`~ 35 .) As Mr. Leach puts it, "[o]ur hit-metering approach allowed content
`
`providers to be able to collect information on the frequency with which their
`
`content is accessed, but without resorting to 'cache-busting' techniques discussed
`
`above that defeat the use of cache." (!d.; see also, GOOG 1024.)
`
`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
`
`also allows for the efficient use of cache." (GOOG 1005, ~36.)
`
`3.
`
`Advertisement Targeting based on Demographics was Well(cid:173)
`Known
`
`Mr. Leach explains that "[t]he concept of targeting advertisements to
`
`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'
`
`to 'collect demographic information' so that advertising images could be tailored
`
`and targeted to those demographics, e.g., 'each retrieval of the page sees a different
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`Inter Partes Review of
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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
`
`1997, noted, "the Internet offers the ability to target and deliver messages to an
`
`audience with specific demographics and interests." (GOOG 1010, p. 3-13.)
`
`"Targeting gives advertisers the opportunity to filter messages to
`
`selected audiences based on certain criteria. This may be the most
`
`powerful aspect of the Internet as an advertising medium -
`
`the
`
`ability to dictate the exact composition of an advertisement's
`
`audience ... each individual delivery can be tailored, based on user
`
`information. The power of the second aspect is increased substantially
`
`with more detailed user data, potentially collected through registration
`
`or in the course ofusing 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
`
`advertising effectiveness." (GOOG 1005, ~ 39.)
`
`4.
`
`Fault Tolerance and Reliability Were Well Known
`
`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
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`Inter Partes Review of
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`and redundancy were common fault tolerant methods at the time." (Jd.) 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." (GOOG 1005, ~ 41.)
`
`5.
`
`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
`
`points to prior art including "Wexler [that] describes a third party accounting and
`
`statistical service 'configured to issue a '302' redirect response when a specific
`
`URL is requested."' (GOOG 1003, -J 18 (quoting GOOG 1007, 5:16-17).) Mr. Kent
`
`further notes that "Merriman describes an advertisement server for 'send[ing] the
`
`redirect message causing the user's browser to receive the URL for the advertiser's
`
`web site based upon data stored in the server."' (GOOG 1003, -J 18 (quoting GOOG
`
`1013, 7:22-26).)
`
`Indeed, Mr. Kent explains that "[o]ne well-known use of HTTP redirect
`
`messages was to refer a client computer to a server located in the close
`
`geographical proximity of the client for reducing latency .... HTTP redirect
`
`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
`
`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
`
`references are discussed in detail below in Sec. VII. Each applied reference is
`
`analogous art to the claimed invention at least because it (1) falls within the '045
`
`patent's stated field of "storage, management, and delivery of information on a
`
`computer network" (GOOG 1001, 1:9-11 ), and/or (2) is reasonably pertinent to one
`
`of the apparent problems allegedly solved.
`
`As such, the challenged claims are 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 1-12, 14-19, 34-38, and 40-42 of the '045 patent is unpatentable.
`
`V.
`
`CLAIM CONSTRUCTION
`
`In accordance with 3 7 C.F .R. § 42.1 OO(b ), the challenged claims must be
`
`given their broadest reasonable interpretations ("BRI") in light of the specification
`
`of the '045 patent. The following terms and phrases from the claims of the '045
`
`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
`
`constructions under different standards applicable in other forums.
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`A.
`
`"Banner"
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`Inter Partes Review of
`U.S. Patent No. 6,286,045
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`Claims 18 and 34-41 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
`
`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. (GOOG 1001, 2:28-37.)
`
`Under BRI, and given the explicit definition in the specification, a POSA
`
`would have understood the term "banner" to mean "information displayed in
`
`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,
`
`video, audio, animation, and links to other computer sites, web sites, web pages, or
`
`banners. (GOOG 1003, ~ 39.)
`
`B.
`
`"Best Suited"
`
`Claims 7 and 9 recite a determining a server that is "best suited" to serve a
`
`banner. The '045 patent specification states:
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`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
`
`information servers, the bandwidth of the information servers, or the
`
`round trip times for a message between the terminal 36 and the
`
`information servers. (GOOG 1001, 20:62-21:7.)
`
`Based on these examples, under BRI, a POSA would have understood the a
`
`"best suited" 4 server to at least include a server that can serve a banner based on
`
`one of the criteria including shortest period of time, network topological distance,
`
`geographical distance, bandwidth of the server, and round trip times. (GOOG
`
`1003, ~ 41.)
`
`C.
`
`"Content General Request Signal"
`
`Claim 4 recites a "content general request signal." The '045 patent
`
`specification states:
`
`4 The term "best suited" is relative and subjective, and is arguably indefinite under
`
`MPEP § 2173.05(b). Despite this defect, Petitioner makes a good-faith attempt to
`
`apply the claims.
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`In other words, the initial banner request signal generated by terminal
`
`3 6 during the step 112 can be a content general signal and may
`
`contain only the minimum amount of information needed to tell a
`
`designated computer site, information server, or other device which
`
`receives the initial banner request signal and on which a banner may
`
`or may not be stored or located, only that the tenninal 36 desires that
`
`an unspecified banner be served to the terminal. (GOOG 1001, 15:8-
`
`16.)
`
`Further, "[i]fthe optional selection step 113 is used with the method 110, the
`
`terminal 36 will only request during step 112 that a banner be served to the
`
`terminal36, but the terminal36 will not specify which banner is to be served to the
`
`terminal36." (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
`
`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
`
`displayed during the selection step 113. A general content URL
`
`address
`
`for
`
`a
`
`banner
`
`could
`
`be
`
`of
`
`the
`
`form
`
`http://www. bannersite 1.com/image; spacedesc=contentsitename.
`
`(GOOG 1001, 16:50-58.)
`
`Further, "[t]he space descriptor field in the general content URL address can
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`reference different groups of banners such as, for example, a collection of car
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`advertisements, a collection of detergent advertisements, etc., depending on the
`
`web page providing the general content URL 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 BRl, 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.
`
`"Content Specific Request Signal"
`
`Claim 5 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 terminal36." (GOOG 1001, 15:23-25.) Additionally:
`
`In order to speed up the process of downloading, transmitting, or
`
`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 (TP) address of the requested or selected banner. For
`
`example, instead of providing the specific content URL address for
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`the banner 62 as http://www.bannersitel.com/bannerl.gif, the specific
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`content URL address for the banner 62 could be provided as, for
`
`example, http:/1236.45.78.190/bannerl.gif,
`
`thereby removing any
`
`need to use the Domain Name System (DNS) to convert the
`
`alphanumeric address "www.bannersite1.com" of the information
`
`server to its exact IP address. (GOOG 1001, 18:62-19:8.)
`
`Under BRI, a POSA would have understood the term "content specific
`
`request signal" to mean "a request containing a content specific URL address with
`
`the location ofthe 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, ~~ 13-14; GOOG 1005, ~l~ 12-13.)
`
`VII. IDENTIFICATION OF PRIOR ART AND CHALLENGE (37 C.F.R. §
`42.104(b))
`
`A.
`
`Prior art
`
`(1) U.S. Patent No. 5,933,811 to Angles et al. was filed Aug. 20, 1996, and
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`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 al. 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 al., "HTTP Working Group Internet Draft
`
`Hypertext Transfer Protocol - HTTP/1.0" ("HTTPl.O") was published Feb. 20,
`
`1996. HTTPl.O 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 al. 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 1996. Meeker is prior art under 102(a).
`
`B.
`
`Challenge
`
`IPR is requested for claims 1-12, 14-19, and 34-42 on the grounds for
`
`unpatentability listed in the index below. Per 37 C.P.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),
`
`5 All references to Title 35 of the U.S. Code are to the pre-AlA version.
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`which explains what the art would have conveyed to a POSA.
`
`Ground
`
`1
`
`2
`3
`4
`5
`6
`7
`
`35 usc
`§103(a) Angles, Merriman
`
`Index ofReference(s)
`
`Claims
`
`1-6,12, 14, 15,17-19,34,35,
`40
`7-11, 16, 39
`§ 1 03(a) Angles, Merriman, Garland
`42
`§103(a) Angles, Merriman, Davis
`§103(a) Angles, Merriman, HTTP1.0 36-38, 41
`1-6, 12, 14-18,34-42
`§103(a) Wexler, HTTP1.0
`19
`§103(a) Wexler, HTTP1.0, Meeker
`§103(a) Wexler, HTTPl.O, Garland
`7-11
`
`1.
`
`Ground 1: Claims 1-6, 12, 14, 15, 17-19, 34, 35, and 40
`Would Have Been Obvious Over Angles
`in view of
`Merriman
`
`a)
`
`Independent Claim 1
`
`Claim 1 does no more than add a few limitations to a conventional method
`
`of delivering "a second portion of information" (e.g., a banner) referenced in "a
`
`first portion of information" (e.g., a web page). The added limitations include a
`
`non-cache-blockable "first request signal" and a redirecting "location signal"
`
`providing an address of the second portion of information. These added limitations
`
`themselves were also well known in the art well before the '045 patent's filing date.
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`consumer's computer displays the electronic document, the embedded
`
`advertisement request directs the consumer computer to communicate
`
`with an advertisement provider. In response, the advertisement
`
`provider provides a customized advertisement. The advertisement
`
`provider then tracks the consumer's response to the customized
`
`advertisement." (GOOG 1012, 2:59-3:5.) "The consumer computer
`
`the merges the content provider's electronic document with the
`
`advertisement provided by the advertisement provider to create a
`
`single displayed document to the consumer." (Id., 3:58-65.)
`
`The advertisement request in Angles is an unblockable signal. (GOOG 1003,
`
`~ 64.) In fact, Angles uses one of the exact same types of request that is described
`
`in the '045 patent - a CGI request. (I d.) This means that the signal is dynamic and
`
`the resulting content would not be cached. (I d.) Because the request identifies
`
`dynamic content that would not have previously been cached, a POSA would also
`
`have recognized that referencing a CGI script in the advertisement request prevents
`
`the advertisement request from being "cache-blocked" from reaching
`
`the
`
`advertisement provider computer 18. (Jd., ~~ 64-65.)
`
`Instead of the advertisement provider actually providing a copy of the
`
`advertisement, the advertisement provider will provide a r