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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`GOOGLE INC.
`Petitioner
`
`v.
`
`Patent of AT HOME BONDHOLDERS’ LIQUIDATING TRUST
`Patent Owner
`______________________
`
`Case IPR2015-00660
`U.S. Patent No. 6,286,045
`Title: INFORMATION STORAGE AND DELIVERY OVER A COMPUTER
`NETWORK USING CENTRALIZED INTELLIGENCE TO MONITOR AND
`CONTROL THE INFORMATION BEING DELIVERED
`______________________
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. §§ 42.107
`
`
`
`

`

`
`
`I.
`
`II.
`
`III.
`IV.
`
`Patent Owner’s Preliminary Response
`IPR2015-00660 (U.S. Patent No. 6,286,045)
`
`Table of Contents
`
`The invention of the 045 Patent was acknowledged as a
`
`Petitioner’s declarations do not make a prima facie case of
`
`Patent Owner’s definition of a person of ordinary skill in the art
`
`Introduction ...................................................................................................... 1
`A.
`Summary of U.S. Patent No. 6,286,045 ................................................ 1
`B.
`solution to a long-felt, but poorly understood, problem ....................... 6
`C.
`The invention of the 045 Patent was widely adopted by industry ...... 10
`D.
`invalidity .............................................................................................. 11
`Patent Owner’s claim constructions should be adopted ................................ 14
`A.
`“banner” (claims 49, 53, 58, 64, 69 and 71) ....................................... 15
`“content general request signal” (claim 51) ........................................ 16
`B.
`C.
`“content specific request signal” (claim 52) ....................................... 17
`should be adopted .......................................................................................... 18
`Merriman (GOOG 1013), and HTTP1.0 (GOOG 1008) ............................... 19
`A. Angles, Merriman, and HTTP1.0 do not disclose all of the
`elements of independent claims 49 and 64 ......................................... 19
`(i)
`prevent the signal from being blocked due to caching ............. 19
`(ii) Angles, Merriman, and HTTP1.0 do not teach or suggest
`the use of two or more requests to retrieve a banner ................ 25
`results in the claimed invention ........................................................... 30
`
`[GROUND 1] The Petition fails to show that claims 49, 51-53, 55-58,
`64-67 and 70-71 are unpatentable based on Angles (GOOG 1012),
`
`Angles, Merriman, and HTTP1.0 do not disclose the
`claimed request signal that includes information to
`
`B.
`
`A POSA would not modify Angles and Merriman in a way that
`
`–i–
`
`

`

`Patent Owner’s Preliminary Response
`IPR2015-00660 (U.S. Patent No. 6,286,045)
`The Petition fails to demonstrate that dependent claims 51-53,
`
`[GROUND 2] The Petition Fails To Show That Claims 50 and 69 Are
`Unpatentable Based On Angles (GOOG 1012), Merriman (GOOG
`
`[GROUND 3] The Petition Fails To Demonstrate That Claims 49-53
`and 55-57 Are Unpatentable Based On Wexler (Ex. 1007) and HTTP
`
`Neither Wexler nor HTTP 1.0 teach or suggest the use of
`
`first banner request signal to be transmitted from the
`
`A POSA would not modify Wexler and HTTP1.0 in a way that
`
`The Petition fails to demonstrate that dependent Claims 50-53
`
`[GROUND 4] The Petition Fails To Demonstrate That Claims 58, 64-
`67, and 69-71 Are Unpatentable Based On Wexler (GOOG 1007),
`
`V.
`VI.
`
`VII.
`
`C.
`55-58, 65-67, and 70-71 are obvious .................................................. 31
`1013), HTTP1.0 (GOOG 1008), and Davis (GOOG 1014) .......................... 32
`1.0 (Ex. 1008) ................................................................................................ 33
`A. Wexler and HTTP1.0 do not disclose all the elements of
`independent claim 49 .......................................................................... 33
`(i)
`two requests to retrieve a banner .............................................. 33
`(ii) Neither Wexler nor HTTP1.0 teach or suggest “causing a
`device to a first server” of Claim 49 ......................................... 37
`B.
`results in the claimed invention ........................................................... 38
`C.
`and 55-57 are obvious ......................................................................... 39
`HTTP1.0 (GOOG 1008), and Meeker (GOOG 1010) ................................... 41
`A. Wexler, HTTP1.0, and Meeker do not disclose all of the
`elements of independent claim 64 ....................................................... 41
`B.
`way that results in the claimed invention ............................................ 42
`C.
`67, and 69-71 are obvious ................................................................... 43
`VIII. CONCLUSION .............................................................................................. 45
`
`A POSA would not modify Wexler, HTTP1.0, and Meeker in a
`
`The Petition fails to demonstrate that dependent claims 58, 65-
`
`
`
`–ii–
`
`

`

`Patent Owner’s Preliminary Response
`IPR2015-00660 (U.S. Patent No. 6,286,045)
`Table of Exhibits
`
`AHBLT-(Exhibit #)
`
`Description
`
`AHBLT-2001
`
`Jason Fry, Network Caching Catches Flak From Some
`Content Providers, WALL ST. J. (Nov. 21, 1997),
`http://www.wsj.com/articles/SB876847891653286000
`
`AHBLT-2002
`
`AHBLT-2003
`
`Seth Schiesel, Updates/Media and Technology; Software to
`Track Business Prospects By Web Visits, N.Y.TIMES (Oct. 6,
`1997),
`http://www.nytimes.com/1997/10/06/business/updates-
`media-and-technology-software-to-track-business-prospects-
`by-web-visits.html
`
`Rick E. Bruner, Interactive: Media & Marketing: Matchlogic
`Service Solves Cache Problem, Advertising Age (Oct. 13,
`1997), http://adage.com/article/news/interactive-media-
`marketing-matchlogic-service-solves-cache-problem/70523/
`
`AHBLT-2004
`
`What is ABC, Audit Bureau of Circulations,
`http://www.auditbureau.org/about-what-is-abc.html (last
`visited May 17, 2015)
`
`AHBLT-2005
`
`AHBLT-2006
`
`Tom Shields, Internet Advertising Banner Counting
`Methodology (Oct. 23, 1998),
`https://web.archive.org/web/19990819024111/http:/www.net
`gravity.com/standards/WD-countmethod-19981023.html
`
`Interactive Audience Measurement and Advertising
`Campaign Reporting and Audit Guidelines, Interactive
`Advertising Bureau (Sep. 2004),
`http://www.iab.net/media/file/US_meas_guidelines.pdf
`
`AHBLT-2007
`
`CGI Programming Guide on the World Wide Web, Shishir
`Gundavaram, (1st Ed., March 1996),
`http://www.oreilly.com/openbook/cgi/
`
`–iii–
`
`

`

`Patent Owner’s Preliminary Response
`IPR2015-00660 (U.S. Patent No. 6,286,045)
`
`AHBLT-2008
`
`DART White Paper Counting Methodologies, DoubleClick,
`July 12, 2001
`
`AHBLT-2009
`
`AHBLT-2010
`
`AHBLT-2011
`
`AHBLT-2012
`
`W3C httpd CGI/1.1 Script Support, World Wide Web
`Consortium (W3C) (July 1995),
`http://www.w3.org/Daemon/User/CGI/Overview.html
`
`“conjunction” Merriam-Webster Online,
`http://www.merriam-webster.com/dictionary/conjunction
`(last visited May 17, 2015)
`
`HTML 4.0 Specification, Dave Raggett et. al. eds. (Dec.
`1997), World Wide Web Consortium (W3C),
`http://www.w3.org/TR/REC-html40-971218/
`
`We’ve officially acquired DoubleClick, Official Google Blog
`(Mar. 11, 2008),
`http://googleblog.blogspot.com/2008/03/weve-officially-
`acquired-doubleclick.html
`
`AHBLT-2013
`
`Duane Wessels, Web Caching, O’Reilly & Associates, Inc.
`(June 2001)
`
`
`
`
`
`–iv–
`
`

`

`Patent Owner’s Preliminary Response
`IPR2015-00660 (U.S. Patent No. 6,286,045)
`Table of Authorities
`
` Page(s)
`
`Federal Cases
`
`CFMT, Inc. v. Yieldup Int’l. Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) .................................................................... 25, 29
`
`In re Fine,
`837 F.2d 1071 (Fed. Cir. 1988) .................................................................... 31, 44
`
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) .............................................................. 31, 39, 44
`
`In re Gurley,
`27 F.3d 551 (Fed. Cir. 1994) .............................................................................. 29
`
`In re Khan,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................ 14
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 14, 44
`
`In re Kubin,
`561 F.3d 1351 (Fed. Cir. 2009) .......................................................................... 29
`
`PAR Pharm., Inc. v. TWI Pharm., Inc.,
`773 F.3d 1186 (Fed. Cir. 2014) .......................................................................... 21
`
`Plas-Pak Industries, Inc. v. Sulzer Mixpac AG,
`2015 WL 328222 (Fed. Cir. Jan 27, 2015) ......................................................... 30
`
`In re Royka,
`490 F.2d 981 (CCPA 1974) ................................................................................ 29
`
`Santarus, Inc. v. Par Pharm., Inc.,
`694 F.3d 1344 (Fed. Cir. 2012) .......................................................................... 27
`
`Regulatory Cases
`Ariosa Diagnostics, Inc. v. Illumina, Inc.,
`IPR2014-01093, Paper 14 ................................................................................... 44
`
`–v–
`
`

`

`Patent Owner’s Preliminary Response
`IPR2015-00660 (U.S. Patent No. 6,286,045)
`Cisco Systems, Inc. v. C-Cation Techs, Inc.,
`IPR2014-00454, Paper 12 ............................................................................. 14, 22
`
`Ex parte Gunasekar,
`No. 2009-008345, 2011 WL 3872007 (B.P.A.I Aug. 29, 2011) ........................ 42
`
`Kinetic Techs., Inc. v. SkyWorks Solutions, Inc.,
`IPR2014-00529, Paper 8 ............................................................................... 14, 40
`
`Federal Statutes
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`Regulations
`
`37 C.F.R. § 42.65(a) ................................................................................................. 40
`
`37 C.F.R. § 42.100(b) .............................................................................................. 14
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`
`
`
`
`–vi–
`
`

`

`Patent Owner’s Preliminary Response
`IPR2015-00660 (U.S. Patent No. 6,286,045)
`
`I.
`
`Introduction
`
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107, Richard A.
`
`Williamson, on behalf of and as Trustee for At Home Bondholders’ Liquidating
`
`Trust (“Williamson” or “Patent Owner”) hereby submits his Preliminary Response
`
`to the Petition for Inter Partes Review of U.S. Patent No. 6,286,045 (“045 Patent”)
`
`(GOOG 1001), (“Petition,” Paper 2) filed on February 2, 2015 by Google Inc.
`
`(“Petitioner”).
`
` On February 2, 2015, Petitioner filed five petitions for Inter Partes Review
`
`against the 045 Patent and a related patent. The present Petition seeks cancelation
`
`of claims 49-53, 55-58, 64-67 and 69-71 on four different obviousness grounds. In
`
`this preliminary response, Williamson respectfully requests that the Board decline
`
`to institute Inter Partes Review of the 045 Patent because the obviousness
`
`combinations identified by the Petitioner do not contain all of the claimed elements
`
`and a person of ordinary skill in the art (“POSA”) would not have modified the
`
`identified references in a way that would result in the claimed invention.
`
`A.
`
`Summary of U.S. Patent No. 6,286,045
`
`The 045 Patent was filed May 19, 1997, by MatchLogic, Inc. and describes
`
`and claims a new way to serve banners for display in conjunction with web pages.
`
`Many web pages are configured to include banner advertisements, as shown in
`
`Figure 2 of the 045 Patent at 62, 64 and 66. (GOOG 1001 at 5:64-6:4).
`
`–1–
`
`

`

`Patent Owner’s Preliminary Response
`IPR2015-00660 (U.S. Patent No. 6,286,045)
`Web pages and associated banners are frequently cached by web browsers
`
`and by intermediate caching devices such as proxy servers, so that if a web page or
`
`advertising banner is requested again, the request will be satisfied from the cache
`
`without reconnecting to the servers from which the web page or banner was
`
`originally served. This reduces the load on the network and the time needed to
`
`display the web page.
`
`Unfortunately, caching made it difficult for advertisers to count how many
`
`times advertisements were displayed on users’ computers:
`
`Since the web page, and the banners to be displayed with the web
`page, selected by the user can be stored in either the user's terminal or
`the proxy server connected to the user's terminal, not all requests for
`the banner information are forwarded by the user's terminal or
`respective proxy server and transmitted over the computer network
`30. While this result may appear to be beneficial in that the amount of
`data traffic on the computer network 30 is reduced, in fact, this result
`prevents the accurate count of banner displays.
`
`(GOOG 1001 at 12:60-13:2).
`
`The 045 Patent explains that techniques were available to prevent caching,
`
`but preventing caching caused other significant problems:
`
`One solution to the problem is to prevent banner information from
`being stored or cached on either the user's terminal or the proxy server
`to which the user's terminal is attached…. For example, the HTTP
`and HTML protocols allow banners to be tagged or indicated as being
`
`–2–
`
`

`

`Patent Owner’s Preliminary Response
`IPR2015-00660 (U.S. Patent No. 6,286,045)
`uncachable…..[This solution] creates a significant problem, however,
`that creates even more significant consequences, thereby making its
`use for accurately counting advertisement and banner displays highly
`impractical and undesirable. More specifically, the storage of web
`pages and banner information at the user's terminal or in the proxy
`server conn[ect]ed to the user's terminal provides several important
`benefits that will be eliminated by this simple solution.
`
`(GOOG 1001 at 13:28-54).
`
`The invention disclosed and claimed in the 045 Patent solves the problem of
`
`accurately counting banner displays on users’ terminals while avoiding the
`
`problems created by requiring the banner information to be retransmitted across the
`
`network each time the banner is requested by a user's terminal. (Id. at 14:33-39).
`
`The invention uses a first request signal containing information intended to prevent
`
`the signal from being blocked by a caching device. Instead of responding to the
`
`first banner request signal with the banner, the claimed invention responds with a
`
`banner signal indicating the location of the banner on a server. The user’s
`
`computer then requests the banner in response to the banner location signal. Claim
`
`1 recites:
`
`1. A method for storing information on a primary server and one or
`more secondary servers and on computer sites connected to a
`computer network, wherein
`information delivered over
`the
`computer network to a terminal or a group of terminals may
`
`–3–
`
`

`

`Patent Owner’s Preliminary Response
`IPR2015-00660 (U.S. Patent No. 6,286,045)
`contain references to other information to be delivered to the
`terminal, comprising:
`
`serving a first portion of information to a terminal, wherein said first
`portion of information contains a reference to a second portion of
`information;
`
`causing a first request signal to be transmitted from the terminal to a
`primary server requesting a location address for said second
`portion of information from which said second portion of
`information can be served to the terminal, wherein said first
`request signal includes information intended to prevent said first
`request signal from being blocked from reaching said primary
`server by either the terminal or any intermediary device located
`topologically between the terminal and the primary server as a
`result of previous caching of said first portion of information or
`said second portion of information in the terminal or said
`intermediary device;
`
`sending a location signal from the primary server to the terminal
`providing said location address of said second portion of
`information;
`
`causing a second request signal to be transmitted from the terminal
`containing said location address of said second portion of
`information and requesting said second portion of information be
`served to the terminal; and
`
`serving said second portion of information to the terminal.
`
`(GOOG 1001 at 27:24-54).
`
`–4–
`
`

`

`Patent Owner’s Preliminary Response
`IPR2015-00660 (U.S. Patent No. 6,286,045)
`The first request signal should always be received by the server, because it
`
`includes information intended to prevent blocking by a cache. The display of the
`
`banner should therefore always be counted. The second request signal is a
`
`conventional request signal that may be satisfied from a cache.
`
`The first request signal and the location signal contain very little information
`
`compared to the banner. These signals thus impose a negligible burden on the
`
`network compared to transmitting the banner from the originating ad server to the
`
`requesting device:
`
`[T]he initial banner request signal and the banner location signal are
`both extremely small, often comprising no more than a single packet
`or one-hundred to two-hundred bytes. Therefore, the overhead created
`by the additional banner signal during the step 112 and the banner
`location signal during step 114 is negligible. More importantly, since
`the method 110 still allows the web pages and the banner information
`to be cached or stored in the terminals and proxy servers, there is no
`unnecessary retransmission of the web pages or banners from the
`computer or web sites or the information or ad servers to the terminals
`which would significantly increase the data traffic and overhead on
`the computer network 30.
`
`(GOOG 1001 at 20:24-36). The invention thus solves the counting problem
`
`without giving up the benefits of caching. (Id. at 15:30-65).
`
`–5–
`
`

`

`Patent Owner’s Preliminary Response
`IPR2015-00660 (U.S. Patent No. 6,286,045)
`The invention of the 045 Patent was acknowledged as a solution
`to a long-felt, but poorly understood, problem
`
`B.
`
`In a November 21, 1997 article about companies developing web caching
`
`appliances, the Wall Street Journal Interactive Edition noted that caching was
`
`essential to the growth of the web but a problem for on-line advertisers:
`
`Analysts say that a new era is dawning in which network caching will
`become an integral--and ultimately invisible--part of the Internet's
`infrastructure…. But as it stands, network caching also creates
`headaches for content providers and online advertisers, both of which
`are regarding new developments with some degree of nervousness….
`Since requests for information are intercepted by caches, content
`providers don't know the answers to basic questions about traffic to
`their sites…. The online industry has understood for some time that
`the problem exists, but estimates of its magnitude have varied. But
`earlier this year, MatchLogic Inc., a Louisville, Colo., provider of on-
`line advertising management services, conducted a study that appears
`to shed some light on the issue.
`
`(AHBLT-2001.001-.003). The Wall Street Journal then noted that some
`
`companies had attempted to solve the problem by marking pages “uncacheable,”
`
`but that made pages slower for users:
`
`Already, some sites' Webmasters mark their pages as "uncacheable" to
`perform an endrun around caches. That ensures that people get fresh
`material, but it also means slower response time, which surfers don't
`like. Meanwhile, some network administrators have countered with
`
`–6–
`
`

`

`Patent Owner’s Preliminary Response
`IPR2015-00660 (U.S. Patent No. 6,286,045)
`their own tricks to foil cache-busting, or have simply denied access to
`uncacheable sites.
`
`(AHBLT-2001.005).
`
`This problem was also recognized in an October 6, 1997 article in the New
`
`York Times, which explained that “[o]ne of the biggest fetters on the growth of
`
`advertising on the World Wide Web has been advertisers’ uncertainty about how
`
`many people are actually seeing the banners and other visual gadgets they are
`
`spending to promote.” (AHBLT-2002). The article explains that MatchLogic
`
`“plans to introduce software that it says will solve the problem, allowing accurate
`
`counts of how many people see a Web ad.” (Id.). The article noted that the
`
`software solution was backed by “a giant advertiser, General Motors, and the Audit
`
`Bureau of Circulations, which certifies the reliability of circulation figures of
`
`printed publications and now of Web sites.” (Id.).
`
`On October 13, 1997, the industry journal Advertising Age published an
`
`article entitled “Interactive: Media & Marketing: Matchlogic Service Solves Cache
`
`Problem.” (AHBLT-2003). In the article, Advertising Age noted that the Audit
`
`–7–
`
`

`

`Patent Owner’s Preliminary Response
`IPR2015-00660 (U.S. Patent No. 6,286,045)
`Bureau of Circulations1 had reviewed MatchLogic’s technology and found that it
`
`“’raises the bar in terms of providing more complete activity reporting’”:
`
`"This raises the bar in terms of providing more complete activity
`reporting" for online advertising, said Michael Lavery, president and
`managing director of the Audit Bureau of Circulations. "We have
`reviewed [TrueCount], and it works as [MatchLogic] says it does. . . .
`It allows for accounting of [online ad] activity heretofore not
`accounted [for]," he said.
`
`(AHBLT-2003.001 (brackets in original)). The article also quoted an analyst at
`
`Jupiter Communications who felt that MatchLogic’s technology had “vast”
`
`implications for the market:
`
`"The implications for the market are vast," said Evan Neufeld, an
`analyst at Jupiter Communications. He believes if TrueCount is
`widely adopted and if competitors like Focalink and Imgis implement
`similar technology, the cost-per-thousand rates of banners should
`drop.
`
`
`
` 1
`
` AHBLT-2004 (“The ABC founded in 1948 is a not for profit, voluntary
`organization consisting of Publishers, Advertisers and Advertising Agencies. It has
`done pioneering work in developing audit procedures to verify the circulation data
`published by those newspapers and periodicals which have earned the right to
`display its emblem.”).
`
`–8–
`
`

`

`Patent Owner’s Preliminary Response
`IPR2015-00660 (U.S. Patent No. 6,286,045)
`(AHBLT-2003.002). Like the Wall Street Journal, the Advertising Age article
`
`noted that caching had “long confounded commercial sites and advertisers” and
`
`that “cache-busting” techniques to simply prevent caching slowed delivery times
`
`and harmed the viability of the Web:
`
`Institutions with many Internet users, such as large companies,
`universities and Internet service providers, regularly use proxies to
`cache Web content from popular sites so their users don't download
`the same files repeatedly across the networks. While the caches
`improve bandwidth, they have long confounded commercial sites and
`advertisers, which lose control of both the targeting and counting of
`ads behind the proxy firewalls….
`
`Presently, many sites employ "cache-busting" techniques that force
`the delivery of ads and other content through the proxy servers for
`each user who requests a page. The down side of cache-busting,
`however, is it slows the delivery time for users, which harms the
`viability of the Web medium.
`
`(AHBLT-2003.001-.002). Advertising Age noted that MatchLogic’s solution
`
`“delivers the best of both worlds”:
`
`TrueCount - which MatchLogic built at the behest of its largest client,
`General Motors Corp. - delivers the best of both worlds.
`
`It works in harmony with proxy servers to help manage bandwidth
`while keeping control of the ads' distribution. Where possible, it
`serves ads out of the institution's local cache or from the nearest of
`TrueCount's 12 worldwide mirror sites. Thus, it not only counts the
`
`–9–
`
`

`

`Patent Owner’s Preliminary Response
`IPR2015-00660 (U.S. Patent No. 6,286,045)
`total number of impressions shown behind proxies, but it continues to
`manage the ad frequency and other targeting issues to individual
`surfers behind the firewalls.
`
`(AHBLT-2003 at .002).
`
`C. The invention of the 045 Patent was widely adopted by industry
`
`Eighteen months after MatchLogic filed the application for the 045 Patent,
`
`an engineer for a MatchLogic competitor, NetGravity, published a draft guideline
`
`that suggested using the invention of the 045 Patent. (AHBLT-2005). This
`
`“working draft” describes the invention of the 045 Patent in detail and thanks the
`
`inventor, Mike Griffiths. (Id. at .005).
`
`Several years later, in November 2004, the NetGravity proposal was adapted
`
`by the Internet Advertising Bureau into a set of guidelines for its members to
`
`follow. (AHBLT-2006). These members included Google, Doubleclick, AOL,
`
`Yahoo!, Accipiter, and NY Times Digital among others. (Id. at .004).
`
`Before the proposal was adapted into a set of guidelines, DoubleClick2
`
`adopted the invention of the 045 Patent by at least 2001 when it published a white
`
`paper describing its impression counting method. (AHBLT-2008). The white
`
`paper describes combining techniques to defeat caching including using “Random,
`
`
` DoubleClick was acquired by Petitioner Google in March of 2008. (AHBLT-
`2012)
`
` 2
`
`–10–
`
`

`

`Patent Owner’s Preliminary Response
`IPR2015-00660 (U.S. Patent No. 6,286,045)
`or unique, numbers [] appended to the end of each DART HTML tag,” “HTTP 302
`
`commands,” and question marks “appended to the end of each ad request URL in
`
`the DART HTML tags.” (Id. at .007-.008).
`
`D.
`
`Petitioner’s declarations do not make a prima facie case of
`invalidity
`
`Petitioner submits two declarations in support of the 660 Petition. GOOG
`
`1005 is the declaration of Mr. Leach, a contributor to the HTTP 1.0 and HTTP 1.1
`
`specifications. GOOG 1003 is the declaration of Mr. Kent, an author of books on
`
`how to promote yourself on the Internet (Poor Richard's Internet Marketing and
`
`Promotions: How to Promote Yourself, Your Business, Your Ideas Online, GOOG
`
`1003, at ¶ 8); how to make money on the Internet (How to Make Money Online
`
`with eBay, Yahoo!, and Google, id.); and a professional “Internet Expert Witness”
`
`with a degree in Geography/Geology. (GOOG 1004 at 1, 5).
`
`Mr. Leach never expresses an opinion that the claimed invention was
`
`anticipated or obvious in his declaration. In fact, Mr. Leach is completely silent
`
`concerning the combination of a first request including information intended to
`
`prevent the request from being blocked due to caching, a location signal and a
`
`second request. Further, Mr. Leach’s declaration establishes that persons involved
`
`with development of the HTTP specification believed that caching posed a
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`problem for advertising and considered schemes to disable caching a “’resource
`
`intensive solution.’” (GOOG 1005 at ¶25). It also establishes that the extent of
`
`–11–
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`

`

`Patent Owner’s Preliminary Response
`IPR2015-00660 (U.S. Patent No. 6,286,045)
`their use was not well understood. (“'Cache-busting' is the use by servers of
`
`techniques intended to prevent caching of responses; it is unknown exactly how
`
`common this is.”) (Id. at ¶24 (emphasis added)).
`
`Mr. Leach’s declaration also shows that identifiers had previously been used
`
`in URLs to track visitors, but was considered a bad idea precisely because it
`
`defeated caching, and because it was computationally expensive and did not permit
`
`people to exchange URLs:
`
`As discussed at the International World Wide Web conference in
`April 1997, “[i]n the earlier days of the Web, the tracking of visitors
`was often accomplished by inserting identifiers into the URLs issued
`by the server and channeling all subsequent requests through a CGI
`script" and "[n]ot only was this method expensive computationally to
`the server, but it defeated intermediary caching and did not correctly
`handle the exchanging of URLs between people…These days, this
`form of identification is typically accomplished by setting the
`expiration of an issued cookie into the far future.”
`
`(Id. at ¶ 28), see also (GOOG 1023 at 2).
`
`
`
`Mr. Leach goes on to say that persons of ordinary skill in the art would have
`
`known that the HTTP 1.0 specification and HTTP 1.1 draft specification provided
`
`for headers (if-modified-since and if-not-match) that would prevent a request
`
`containing those headers from being blocked by a cache. However, Mr. Leach
`
`explains that requests containing these headers would either return the requested
`
`–12–
`
`

`

`Patent Owner’s Preliminary Response
`IPR2015-00660 (U.S. Patent No. 6,286,045)
`content or a 304 (not modified) response. Neither Mr. Leach nor the HTTP 1.0
`
`and 1.1 documents he cites suggest that a request containing these headers could
`
`return a location signal in response or that such a location signal would be
`
`advantageous. The understanding of those of skill in the art that the if-modified-
`
`since and if-not-match headers were better choices for preventing caching thus
`
`teaches away from the claimed invention.
`
`Mr. Leach also discusses a proposal he made with Jeffrey Mogul in 1997
`
`concerning “hit metering.” Mr. Leach explains that his “hit metering” approach
`
`did not use any of the “cache busting” techniques he discusses in his declaration.
`
`(Id. at ¶ 35). His hit metering proposal itself specifies a new “Meter” HTTP header
`
`to meet this goal. (GOOG 1024 at 4 §1.2). Neither Mr. Leach nor the Petitioner
`
`suggests that Mr. Leach’s hit metering proposal discloses or renders obvious any
`
`claim of the 045 Patent. This confirms that Mr. Leach himself was actively
`
`teaching the community of protocol designers in a direction away from the claimed
`
`invention of the 045 Patent.
`
`Mr. Leach’s declaration therefore shows that the knowledge of persons
`
`skilled in the art at the time of the invention taught away from the claimed
`
`combination of a banner request signal including information intended to prevent
`
`blocking by a cache with a banner location signal.
`
`–13–
`
`

`

`Patent Owner’s Preliminary Response
`IPR2015-00660 (U.S. Patent No. 6,286,045)
`Further, as explained below, Mr. Kent’s opinions and the Petition as a whole
`
`do not set forth a prima facie case of obviousness for any of the claims of the 045
`
`Patent. In order to sustain a successful petition for inter partes review, Petitioner
`
`was required to provide “articulated reasoning with some rational underpinning to
`
`support the legal conclusion of obviousness.” Cisco Systems, Inc. v. C-Cation
`
`Techs, Inc., IPR2014-00454, Paper 12 at 13 (citing KSR Int’l Co. v. Teleflex Inc.,
`
`550 U.S. 398, 418 (2007) (quoting In re Khan, 441 F.3d 977, 998 (Fed. Cir.
`
`2006))). It did not. Petitioner’s and Mr. Kent’s statements—statements that are
`
`made throughout the Petition—of general principles from the case law that “a
`
`proposed combination ‘involves nothing more than a combination of known
`
`elements,’ or that a proposed combination is ‘the predictable use of such elements
`
`according to their established functions,’ or that a proposed combination yields
`
`‘predicable results’ are conclusions, they are not a substitute for a fact-based
`
`analysis of the proposed combination of references necessary to support those
`
`conclusions.” Kinetic Techs., Inc. v. SkyWorks Solutions, Inc., IPR2014-00529,
`
`Paper 8 at 15. This is fatal to the Petition.
`
`II.
`
`Patent Owner’s claim constructions should be adopted
`
`The Patent Trial and Appeal Board interprets claims using the broadest
`
`reasonable construction in light of the specification of the patent in which it
`
`appears. 37 C.F.R. § 42.100(b). Petitioner has proposed specific constructions for
`
`–14–
`
`

`

`Patent Owner’s Preliminary Response
`IPR2015-00660 (U.S. Patent No. 6,286,045)
`three of the terms found within the challenged claims; Patent Owner’s response
`
`and counter-proposal to each construction is provided below.
`
`A.
`
` “banner” (claims 49, 53, 58, 64, 69 and 71)
`
`Petitioner’s Proposed
`Construction
`
`Patent Owner’s Proposed
`Construction
`
`information displayed in conjunction
`with a webpage wherein the information
`is not part of the same file as the
`webpage
`
`information displayed 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
`
`Petitioner proposes t