UNITED STATES PATENT AND TRADE孔1AR玉OFFICE
`
`BEFORE THE P ATENT TRIAL 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 ofU.S. Patent No. 6，286，045 UNDER 35
`U.S.c. ~~ 311・319and 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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`

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`Pα!ge i
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`Inter Partes Review of
`U.S. Patent No. 6ラ286，045
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`T ABLE OF CONTENTS
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`INTRODUCTION… … ...・ H ・...........・ H ・..…...・H ・..……...・H ・.....・ H ・......・H ・....・ H ・H ・H ・.1
`1.
`II. GROUNDS FOR STANDING (37 C.F.R. S 42.104(a)); PROCEDURAL
`STATEMENTS...・H ・..…...・ H ・..…...・ H ・.....・ H ・.....・ H ・..…...・ H ・..…...・ H ・.....・ H ・.....・ H ・....1
`
`II1. STATEMENT OF THE PRECISE RELIEF REQTA STED AND THE
`REASONS THEREFOR (37 C.F.R. S 42.22(a))……...・ H ・.....・ H ・.....・ H ・..…...・ H ・.2
`IV. OVERVIEW………...・ H ・.....・ H ・..… ...・H ・..…...・ H ・..…...・ H ・-・… … .，.・ H ・.....・H ・..………… 2
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`A. The '045 Patent ...・ H ・.....・ H ・.....・ H ・.....・ H ・H ・H ・..…'"・ H ・.....・ H ・.....・ H ・.....・ H ・..… .2
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`B. Prosecution History …・ ..........................................................................3
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`C. State ofthe A目......................................................................................4
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`1. Serving and Counting ofBanners was Well-Known.....・H ・........4
`
`2. Serving and Counting Banners without Significantly
`Increasing Network Traffic was Well-Known....・H ・...・ H ・-… H ・H ・..7
`
`3. Advertisement Targeting based on Demographics was
`W ell-Known ...・ H ・.....・ H ・H ・H ・..…...・ H ・.....・ H ・.....・ H ・.....・ H ・.....・ H ・.....・ H ・8
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`4. Fault Tolerance and Reliability Were Well-Known....・H ・H ・H ・-… 9
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`5. HTTP Redirect was Well-Known … H ・H ・-…....・ H ・-… H ・H ・.....・ H ・-… 10
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`V. CLAIM CONSTRUCTION...…・ H ・H ・.....・ H ・..…...・ H ・.....・ H ・.....・ H ・.....・ H ・.....・ H ・....11
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`A. "Banner"…'"・ H ・.....・ H ・..…...・ H ・.....・ H ・H ・H ・.....・ H ・.....・ H ・..… ...・ H ・..…...・ H ・..… 12
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`B. "Content General Request Signal"…...・ H ・.....・ H ・H ・H ・.....・ H ・.....・ H ・.....・ H ・.12
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`C. "Content Specific Request Signal" '"・ H ・..…...・ H ・..………...・ H ・.....・ H ・H ・H ・.14
`V1. PERSON OF SKILL IN THE ART & STATE OF TI王EART… H ・H ・-… H ・H ・.15
`VI1. IDENTIFICATION OF PRIOR ART AND CHALLENGE (37 C.F.R. S
`42.1 04(b ))...................................................................................................... 15
`
`A. Prior art.…….い…….日…….日…….い…….日……..…….口…….リ…….日…….日…….口…….日…….日…….日…….口……..…….一……..…….υ…….υ…….υ…….. …….日…….口…….日…….日…….口…….日…….日……..…….日…….日…….口…….口…….υ……..…….日…….日…….日…….口…….日…….口…….日…….日…….日…….日…….υ…….日…….日…….口…….日……..…….υ…….日…….口…….υ…….口……"…….一…….口…….日…….口…….日…….日…….日…….日…….日…….口…….日…….日…….日…….日…….日…….日…….川……..…….日…….口…….日…….日…….日…….日…….日…….口…….日…….日…….日…….日…….日…….日…….υ…….口….日.1行5
`B. Challenge.….リ..….日..….日.，….口..…...….日..い….リ..….口..….日..….口..….日..….一..….口..….口..….日..…...….一..…...….日..…...….い..….日..….日..….υ..….日..….日..口….口..….日..口….日..….リ...16
`1. Ground 1上:Claims 49， 51ト-づ53ラ 55-づ58，64-67，and 70-71
`would have been obvious over Angles in view of
`孔M化er打rimanand further in view ofHTTP1.0.…….日….日.……..…….日…….口……..…….日…….日…….υ…….υ…….日…….日…….日…….日…….日…….日…….日…….υ……..…….υ……..…….日…….日…….日…….い…….日….日.17
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`Pαge ii
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`lnter Partes Review of
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`2.
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`Ground 2: Claims 50 and 69 would have been obvious
`over Angles in view ofMerriman and HTTPl.O and
`further in view of Davis ........................................................... 35
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`3. Ground 3: Claims 49-53 and 55-57 would have been
`obvious over Wexler in view ofHTTP1.0...・H ・...・ H ・...t・H ・...・ H ・..36
`
`4. Ground 4: Claims 58， 64-67， and 69-71 would have
`been obvious over -Wexler in view ofHTTP1.0 and
`further in view of Meeker ........................................................ 45
`
`VIII. CONCLUSION ...・ H ・.....・ H ・.....・ H ・.....・ H ・H ・H ・.....・ H ・H ・H ・.....・ H ・.....・ H ・H ・H ・..…...・ H ・..50
`IX. MANDATORY NOTICES (37 C.F.R. S 42.8(a)(l))….....・ H ・-…....・ H ・t...・H ・...50
`
`•
`-1
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`

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`Pαge 1
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`1. INTRODUCTION
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`Inter Pαrtes Review of
`U.S. Patent No. 6，286，045
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`Google Inc. ("Petitioner") petitions for Inter Pαrtes Review， seeking
`
`cancellation of claims 49-53， 55-58， 64-67， and 69-71 ("challenged claims") of
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`U.S. Patent No. 6，286，045 to Griffiths et al. ("the '045 patent") (GOOO 1001)，
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`which is owned by At Home Bondholders' Liquidating Trust ("Patent Owner").
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`11. GROUNDS FOR STANDING (37 C.F.R. ~ 42.104(a)); PROCEDURAL
`STATEMENTS
`
`Petitioner certifies that the '045 patent is available for IPR. Petitioner further
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`certifies that it is not barred or estopped from requesting IPR of claims 49-53， 55-
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`58， 64-67， and 69-71 on the grounds identified in this petition， as Petitioner was
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`自rstserved less than a year ago with a complaint for infringement on Feb. 20，
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`2014， in U.S. District Court for the District ofDelaware (1 :14-cv-00216)1. (0000
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`1015.) Concurrently filed herewith are Powers of Attomey and an Exhibit List per
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`S 42.1 O(b) and S 42.63( e)， respectively. The required fee is paid via online credit
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`card payment. The Office is authorized to charge fee deficiencies and credit
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`overpayments to Deposit Acct. No. 19-0036 (Customer ID No. 45324).
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`1 Petitioner notes that it was also served with a complaint based on the '045 patent
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`on Feb. 10，2014. However， that complaint was dismissed without prejudice， and is
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`therefore not relevant to the IPR bar date. (IPR2012-00004， Paper No. 18.)
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`

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`111. 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， 34・-38，and
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`40-42 of the '045 patent. A detailed statement of the reasons for the relief requested
`
`is set forth in SS IV and VII below.
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`IV. OVERVIE W
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`Inter partes review ("IPR") was created to improve patent quality and， if
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`warranted， cancel unpatentable claims. That core purpose is furthered by this
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`Petition， as the challenged claims of the '045 patent should never have been issued.
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`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
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`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
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`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.
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`The '045 patent claims nothing more than a well-known method of Intemet
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`advertising and the ability to accurately account for the number of times an
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`

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`Pαge3
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`Inter Pαrtes Review of
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`advertisement is displayed to a user， while reducing heavy Intemet traffic. In
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`general， the '045 patent's claims describe distributing a banner advertisement over a
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`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.
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`B. Prosecution History
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`In arguments made during prosecution， Patent Owner emphasized four
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`"fundamental principles" ofthe alleged invention that the Examiner was to keep in
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`mind when analyzing the prior art. (GOOG 1002， p. 149.) First， "Applicants'
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`invention reduces the inaccurate display counting caused by caching of the banners
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`by making or causing request signals generated or transmitted by a client device
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`unblockable by the client device or proxy server， even though the banners may
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`have been previously stored on the client device or proxy server." (Id.， p. 150.)
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`"Second， applicants' invention allows such serving and counting to occur without
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`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.)
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`"F ourth， applicants' invention increases fault tolerance and reliability for
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`information and banner deliv町 andstorage systems." (Id.) Such arguments were
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`apparently persuasive to the Examiner in overcoming the cited prior art. Yet each
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`ofthese "fundamental principles，" along with the mechanisms described in the '045
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`patent as embodying those principles， were well known in the industry before the
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`'045 patent was filed.
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`C. State of the Art
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`1. Serving and Counting of Banners was Well明 Known
`
`Paul Leach was an early member of the HTTP W orking Group of the W orld
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`Wide Web Consortium and， in the mid-1990s， was heavily involved in developing
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`the protocols by which Web traffic was govemed.2 (GOOG 1005，市 8.)In his
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`declaration， Mr. Leach explains that "[t]he concept and concem for accurately
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`counting the number of times a banner was displayed on a client device was a well
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`known issue at the time of the filing of the '045 patent." (GOOG 1005，市 20.)Mr.
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`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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`2 Mr. Leach was a contributor to both the 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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`an Intemet 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.'" (0000 1005， ~ 21 (quoting 0000 1022， p.
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`13).)
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`Not only was the problem a known issue， but Patent Owner's solution was
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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
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`his co-authored HTTP Working Oroup paper， "[司ora 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 ofresponses...)" (0000 1024， pp. 2-3.) Further， as discussed in
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`an earlier version ofthe same Working Oroup paper， "[s]ome cache-busting is also
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`done to provide different advertising images to appear on the same page (i. e.， each
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`retrieval of the page sees a different ad).. ..HTTP/l.l 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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`Pαge6
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`lnter Partes Review of
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`ofaccesses ofspecific pages.，，3 (GOOG 1016， pp. 2-3.)
`
`Peter Kent is another expert in the field， having been involved in Intemet
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`advertising企omthe early days of the Web. (GOOG 1003，柄 5-8.) Mr. Kent
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`agrees that:
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`[c]ounting accuracy for delivered content was a widely known issue剖
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`the time the '045 patent was filed， and the proposed solution in the
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`'045 patent was also already widely known. In fact， attempting to
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`improve counting accuracy via cache avoidance was such a burden on
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`the Web's bandwidth that by early 1997， other proposals were already
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`being made to move advertisers away from the use of cache-
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`avoidance. At any rate， such cache avoidance was already widely
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`known before the alleged invention. (GOOG 1003，司15.)
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`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
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`patent's filing date. (GOOG 1003，司16.)Mr. Kent also describes additional known
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`cache avoidance methods， including modifシingURLs and the use of third party
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`products such as PageMeter. (GOOG 1003， ，-r17.)
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`Thus， it was well-known by a person of ordinary skill in the art ("POSA")
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`when the '045 patent was filed "that caching distorted the accurate counting of the
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`3 Emphasis added throughout unless otherwise noted.
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`Pαge 7
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`Inter Pαrtes Review of
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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 Intemet based
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`advertisements." (GOOG 1005，市 27.)
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`2. Serving and Counting Banners without Significantly
`Increasing Network Traffic was Well-Known
`
`While cache-busting allowed for a more accurate counting ofbanners， 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，市 28.)"Not only was this method expensive
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`computational1y to the sever， but it defeated intermediary caching and did not
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`correctly handle the exchanging of URLs between people." (GOOG 1005，需28，
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`GOOG 1023， p. 2.) So， methodologies to allow for the serving and counting of
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`banner advertisements without significantly increasing data traffic through the use
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`of cache田 bustingwere also "well known at the time of the filing of the '045 patent
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`application." (GOOG 1005， ，-r29.)
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`Mr. Leach declares that "[o]ne of ordinary skill in the art at the time of the
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`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企omreaching the intended server， but avoiding a refetch of the
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`requested information ifthat information existed in cache." (GOOG 1005，市32，see
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`Pαge8
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`αIso GOOG 1 005， ~~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
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`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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`市 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七usting'techniques discussed
`
`above that defeat the use of cache." (1d.; seeαIso， GOOG 1024.)
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`Thus， "it was well known by a POSA at the time of the filing of the '045
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`patent that multiple methods existed that would allow for the accurate counting of
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`banner advertisement requests without significantly increasing data traffic and that
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`also allows for the efficient use of cache." (GOOG 1005，市36.)
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`3. Advertisement Targeting based on Demographics was Well-
`Known
`
`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
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`time of the filing of the '045 patent." (GOOG 1005，市37.)As discussed in Mr.
`
`Leach's Hit-Metering paper， "some advertisers employed the use of 'cache-busting'
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`to 'col1ect 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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`Pαge9
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`lnter p，αrtes Review of
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`ad.'" (GOOG 1005，司 37(quoting GOOG 1024， p. 3).)
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`And Mary Meeker， in her detailed analysis of Intemet advertising in early
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`1997， noted， "the Intemet 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 Intemet 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
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`with more detailed user data， potentially collected through regis甘ation
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`or in the course ofusing the site." (GOOG 1010， p. 6-3.)
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`Thus， "it was well-known by a POSA at the time of the filing of the '045
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`patent that advertisers were developing methods using demographics to increase
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`advertising effectiveness." (GOOG 1005，司 39.)
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`4. Fault Tolerance and Reliability Were Well-Known
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`Based on Mr. Leach's extensive experience in "ACM conferences and
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`committees directed to distributed computing， replication and fault tolerance as
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`early as 1985" and his "published papers on the theories and principles of
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`distributed computing in 1982， 1985 and 1987，" he explains that the "concept of
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`fault tolerant computing for increased reliability was a well-known concept at the
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`time of the filing of the '045 patent."(GOOG 1005，市40ふ Indeed，“[m]irroring
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`Pαrge 10
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`Inter Partes Review of
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`and redundancy were common fault tolerant methods at the time." (Id.) Thus， a
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`POSA at the time of the '045 patent would have understood "that fault tolerant
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`solutions in distributed computing existed and provided increased reliability in
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`computer delivery and storage systems." (GOOG 1005，市 41.)
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`5. HTTP Redirect was Well-Known
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`Mr. Kent explains that "HTTP redirect was also widely employed in the
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`field of information delivery (inc1uding delivery of online advertisements)，" and
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`points to prior art inc1uding "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，司 18(quoting GOOG 1007， 5:16-17).) Mr. Kent
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`further notes that "Merriman describes an advertisement server for 'send[ing] the
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`redirect message causing the user's browser to receive the URL for the advertiser's
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`web site based upon data stored in the server.'" (GOOG 1003，明 18(quoting GOOG
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`1013，7:22-26).)
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`Indeed， Mr. Kent explains that "[0 ]ne well-known use of HTTP redirect
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`messages was to refer a c1ient computer to a server located in the c10se
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`geographical proximity of the c1ient 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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`Pαrge 11
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`Inter Pαrtes Review of
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`least loaded web server." (GOOG 1003，明 19.)
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`A POSA， considering the '045 patent's claims in light of the prior art， would
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`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. V1I. 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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`ofthe apparent problems allegedly solved.
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`As such， the challenged claims are well known and should not have been
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`issued. 1nstead they should be cancelled. 1n view of the showings of obviousness
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`provided below， Petitioner is reasonably likely to prevail in establishing that each
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`of claims 49-53， 55-58， 64-67， and 69・71ofthe '045 patent is unpatentable.
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`v. CLAIM CONSTRUCTION
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`1n accordance with 37 C.F.R. S 42.100(b)， the challenged claims must be
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`given their broadest reasonable interpretations ("BRI") in light of the specification
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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 pu中 oseof
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`this 1PR. The plain and ordinary meaning should be applied to any claim terms that
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`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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`

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`Pαrge 12
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`A. "Banner"
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`Inter Pαrtes Review of
`U.S. Patent No. 6，286，045
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`Claims 49， 53， 58， 64， 79， and 71 recite a "banner." Patent Owner has acted
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`as its own lexicographer and makes it clear that this term is to be construed "very
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`broadly." Specifically， the '045 patent specification states:
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`For purposes of the present invention， the term守banner'is meant to
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`be construed veηr broadly and includes any information displayed in
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`conjunction with a web page wherein the information is not part ofthe
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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 1001，2:28-37.)
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`Under BRl， and given the explicit definition in the specification， a POSA
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`would have understood the term "banner" to mean吋nformationdisplayed in
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`conjunction with a web page wherein the infonnation is not part of the same file as
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`the web page." This would include one or more of graphics， textual information，
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`video， audio， animation， and links to other computer sites， web sites， web pages， or
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`banners. (GOOG 1003，可 39.)
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`B. "Content General Request Signal"
`
`Claim 51 recites a "content general request signal." The '045 patent
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`specification states:
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`Pαge 13
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`Inter Partes Review of
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`In other words， the initial banner request signal generated by terminal
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`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]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
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`termina136， but the terminal 36 will not speci命 whichbanner is to be served to the
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`termina136." (GOOG 1001， 15:25-29.)
`
`The '045 patent specification additional1y 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
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`displayed during the selection step 113. A general content URL
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`address for a banner could be of the form
`
`http://羽 川 市 .bannersite 1.com/image; spacedesc=contentsitename.
`
`(GOOG 1001，16:50-58.)
`
`Further， "[t]he space descriptor field in the general content URL address can
`
`

`
`Pαrge 14
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`Inter Pαrtes Review of
`U.S. Patent No. 6，286，045
`
`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
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`web page providing the general content URL address." (0000 1001， 17:3-8.)
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`Accordingly， the content general request signal can still contain general
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`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
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`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."
`
`(0000 1003， para 46.)
`
`C. "Content Specific Request Signal"
`
`Claim 52 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 termina136." (0000 1001， 15:23-25.) Additionally:
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`In order to speed up the process of downloading， transmitting， or
`
`serving a specific banner from an information server to the terminal
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`56， the content specific URL address of the requested or selected
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`banner sent to the terminal during step 114 can contain the exact
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`Intemet Protocol (IP) address of the requested or selected banner. For
`
`example， instead of providing the specific content URL address for
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`

`
`Pαge 15
`
`Inter Partes Review of
`U.S. Patent No. 6，286，045
`
`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
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`example， httゆp://236.4“5.78.190/沿banner叶.1.gif，thereby removing a佃ny
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`need tωo us臼e the Domain Name System (DNS) to convert the
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`alphanumeric address
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`S印erve位rtωoits 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
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`the location ofthe information." (GOOG 1003，市 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
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`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，有明 13・14;GOOG 1005，有司 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
`
`issued Aug. 3， 1999. Titled， "System and Method for Delivering Customized
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`Advertisements Within Interactive Communication Systems，" Angles is prior art
`
`

`
`Pαge 16
`
`under 35 U.S.C. 102(e)4.
`
`lnter Partes Review of
`U.S. Patent No. 6，286，045
`
`(2) U.S. Patent No. 5，948，061 to Merriman et al. was filed Oct. 29， 1996，
`
`and issued Sept. 7， 1999. Titled "Method of Delivery， Targeting， and Measuring
`
`Advertising Over N etworks， "恥1errimanis 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. Titled "Third-Party On-Line Accounting System and Method
`
`Therefor，" Wexler is prior art under 35 U.S.C. 102(e).
`
`(4) Fielding et al.， "HTTP W orking Group Internet Draft Hypertext Transfer
`
`Protocol -HTTP/l.O，" ("HTTPl.O") was published Feb. 20， 1996. HTTPl.O is
`
`prior art under 35 U.S.C. 1 02(b).
`
`(5) Meeker， Mary， "Technology: Intemet!New Media The Intemet
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`Advertising Report" was published by Morgan Stanley， U.S. Investment Research
`
`in January 1997. Meeker is prior art under 102(a).
`
`(6) U.S. Patent No. 5，796，952 to Davis et al. was filed Mar. 21， 1997， and
`
`issued Aug. 18， 1998. Titled， "Method and Apparatus for Tracking Client
`
`Interaction with a Network Resource and Creating Client Profiles and Resource
`
`Database，" Davis is prior art under 35 U.S.C. 102(e).
`
`B. ChaIlenge
`
`4 All references to Title 35 ofthe U.S. Code are to the pre回 AIAversion.
`
`

`
`Pαge 17
`
`Inter Pαrtes Review of
`U.S. Patent No. 6，286，045
`
`IPR is requested for claims 49-53， 55・58，64-67， and 69・71on the grounds
`
`for unpatentability listed in the index below. Per 37 C.F.R. ~ 42.6(d)， copies ofthe
`
`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
`
`~ 103(a) Angles，孔1erriman，HTTP 1.0
`
`2
`
`3
`
`~ 103(a) Angles， Merriman， HTTP1.0， Davis
`~ 103(a) Wexler， HTTP1.0
`
`4
`
`~ 103(a) Wexler， HTTP1.0， Meeker
`
`49， 51-53， 55-
`58，64-67，
`and 70-71
`
`50 and 69
`
`49-53 and 55-
`57
`
`58，64-67，
`and 69-71
`
`1. Ground 1: Claims 49， 51-53， 55-58， 64・67，and 70-71 would
`have been obvious over Angles in view of Merriman and
`further in view of HTTPl.O
`
`αr) Independent Claim 49
`
`Claim 49 does no more than add a few limitations to a conventional method
`
`of delivering a "banner" referenced in "a document served to a device" (e.g.， a web
`
`page). The added limitations include a non-cache-blockable "first banner request
`
`signal" and a redirecting "banner location signal" providing an address of the
`
`second portion of information. These added limitations themselves were also well
`
`

`
`Pαge 18
`
`Inter Partes Review of
`U.S. Patent No. 6，286，045
`
`known in the art well before the '045 patent's filing date.
`
`FIG. 4 of Angles (annotated below) illustrates the requesting and ultimate
`
`delivery of a customized advertisement to a consumer computer.
`
`First server
`
`|D… |
`
`d T A M
`E 陪 e d
`mEmvn-
`h M m ・叫
`
`，<\ -CON$V\1CR .Rf.CJ宰iRATh)N
`(SEE 引G. 5)
`8 申 CONTENTPRO'VJOER
`REC!ST民ATlON (St:E 利G. o)
`C 品 CONSlIMERAGCESSES
`j
`CON TENT PROVl.DER
`!
`i
`(SE.ξflC 7)
`1) -ELECTRONiC PAGE SSNT !
`τo CONSUMER
`j
`($EE nc. 7)
`E -C0NSUMER MEMSE'R COOE /
`SENT TO ADVERTlS[MENT，I
`PROVIOER (SEE flG. 7i .'
`f -CUSTOMIZEO AI)VERnSE.MtNT
`SENT TO C<)NSl)MER !
`{吉Et:no. 7)
`，1
`，;:-;c 4 l
`
`F
`
`Ba.nner
`location Si!rnal
`
`Angles' "Summary ofthe 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 Intemet. Preferably， when a
`
`consumer accesses a content provider， the content provider transmits
`
`an electronic document to the consumer. Embedded within the
`
`

`
`Pαge 19
`
`Inter Partes Review of
`U.S. Patent No. 6，286，045
`
`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 provider. In response， the advertisement
`
`provider provides a customized advertisement. The advertisement
`
`provider then tracks the consumer's response to the customized
`
`advertisement." (0000 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. (0000 1003，
`
`司62.)In fact， Angles uses one ofthe exact same types ofrequest that is described
`
`in the '045 patent -a COI request. (Id.)百lIsmeans that the signal is dynamic and
`
`the resulting content would not be cached. (1d.) Because the request identifies
`
`dynamic content that would not have previously been cached， a POSA would also
`
`have recognized that referencing a COI script in the advertisement request prevents
`
`the advertisement request 企om being "cache-blocked" 企om reaching the
`
`advertisement provider computer 18. (Id..)
`
`Instead of the advertisement provider actually providing a copy of the
`
`advertisement， the advertisement provider wiU provide a redirect signal which
`
`directs the consumer computer to another location. For example， "the consumer
`
`computer 12 receives an advertisement command which directs the consumer
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`

`
`Pα:ge20
`
`Inter Partes Review of
`U.S. Patent No. 6，286，045
`
`computer 12 to retrieve and display one of the advertisements stored on the
`
`advertising storage medium 44." (GOOG 1012， 11 :61-65.)
`
`While the redirect signal企omthe advertisement computer is described in
`
`Angles as pointing to a location in local storage， it would have been obvious to a
`
`POSA that the redirect signal could just as easily point to a location on an extemal
`
`storage device， such as another server. (GOOG 1003，町司 65-67.)Angles delivers
`
`advertisement information using HTTP. (See， e.g.， GOOG 1