UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GOOGLE INC.
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`Petitioner
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`v.
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`Patent of AT HOME BONDHOLDERS’ LIQUIDATING TRUST
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`Patent Owner
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`
`
`Case IPR2015-006621
`U.S. Patent No. 6,014,698
`Title: SYSTEM USING FIRST BANNER REQUEST THAT CAN NOT BE
`BLOCKED FROM REACHING A SERVER FOR ACCURATELY COUNTING
`DISPLAYS OF BANNERS ON NETWORK TERMINALS
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`PATENT OWNER’S RESPONSE
`UNDER 37 C.F.R. § 42.120
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`
`
`
`1 Case IPR2015-00666 has been consolidated with this proceeding.
`
`
`
`

`
`Patent Owner’s Response
`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`
`Table of Contents
`
`I. 
`
`Introduction ...................................................................................................... 1 
`
`A. 
`
`B. 
`
`C. 
`
`The 698 Patent ....................................................................................... 1 
`
`Instituted Grounds ................................................................................. 5 
`
`The Prior Art ......................................................................................... 5 
`
`1. 
`
`Angles ......................................................................................... 5 
`
`2.  Merriman ..................................................................................... 6 
`
`3. 
`
`4. 
`
`HTTP1.0 ...................................................................................... 7 
`
`Davis ........................................................................................... 8 
`
`D.  Google’s proposed combination............................................................ 8 
`
`II. 
`
`A POSA would not combine Angles, Merriman, and HTTP1.0 in the
`way Google contends ....................................................................................... 9 
`
`A. 
`
`B. 
`
`The combination of Angles, Merriman, and HTTP1.0 teaches
`that Angles advertisement request should not be used with the
`Merriman redirect (698 claims 1, 17, 30, 39, 44) ................................. 9 
`
`Google’s substitution of the Merriman redirect for the Angles
`advertisement command would eliminate the only described
`benefit of the Angles advertisement command without
`providing any other benefits (698 claims 1, 17, 30, 39, 44) ............... 11 
`
`III.  The combination of Angles, Merriman, and HTTP1.0 does not teach
`or render obvious all of the claim elements ................................................... 16 
`
`A. 
`
`B. 
`
`The combination of Angles, Merriman, and HTTP1.0 teaches
`that the substituted Merriman redirect would cause a request
`that would not be blocked by a cache ................................................. 16 
`
`The combination of Angles, Merriman, and HTTP1.0 does not
`teach a banner location signal for a banner stored on a server
`(698 claims 17, 30, 39, 44) .................................................................. 17 
`
`-i-
`
`

`
`Patent Owner’s Response
`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`The Angles advertisement request would be blockable by a
`cache if it was a GET request (698 claims 1, 17, 30, 39, 44) ............. 21 
`
`The combination of Angles, Merriman, and HTTP1.0 does not
`teach a URL that includes “cgi-bin” and “?” (698 claims 1, 17,
`30, 39, 44) ............................................................................................ 26 
`
`C. 
`
`D. 
`
`IV.  The combination of Angles, Merriman, and HTTP1.0 does not teach a
`“second [banner] request signal that is a “content specific request
`signal” (698 claims 7, 20) .............................................................................. 32 
`
`V. 
`
`The combination of Angles, Merriman, HTTP1.0, and Davis does not
`teach an advertisement provider computer sending a redirect back to
`itself (698 claims 31, 49) ............................................................................... 34 
`
`VI.  Objective indicia of non-obviousness show the claims are not invalid. ....... 36 
`
`A.  MatchLogic’s TrueCount Technology practiced the claims of
`the 698 Patent ...................................................................................... 37 
`
`B.  MatchLogic’s TrueCount Technology met a long-felt but unmet
`need ...................................................................................................... 38 
`
`1. 
`
`The industry recognized that efficiently delivering
`advertisements while accurately counting the display of
`those advertisements was a problem ......................................... 38 
`
`2.  MatchLogic’s TrueCount Technology solved the
`problem. .................................................................................... 39 
`
`C.  MatchLogic’s patented solution, embodied in TrueCount, was
`praised by the industry ........................................................................ 41 
`
`D.  Widespread adoption of MatchLogic’s TrueCount Technology
`by the industry provides further evidence of nonobviousness ............ 43 
`
`VII.  Conclusion ..................................................................................................... 44 
`
`-ii-
`
`

`
`Patent Owner’s Response
`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`
`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
`
`AHBLT-2004
`
`AHBLT-2005
`
`AHBLT-2006
`
`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/updatesmed
`ia- and-technology-software-to-track-business-prospects-
`by-web-visits.html
`
`Rick E. Bruner, Interactive: Media & Marketing:
`MatchLogic Service Solves Cache Problem,
`AdvertisingAge (Oct. 13, 1997),
`http://adage.com/article/news/interactive-media-
`marketing-matchlogic-service-solves-cache-
`problem/70523/
`
`What is ABC, Audit Bureau of Circulations,
`http://www.auditbureau.org/about-what-is-abc.html (last
`visited May 17, 2015)
`
`Tom Shields, Internet Advertising Banner Counting
`Methodology (Oct. 23, 1998),
`https://web.archive.org/web/19990819024111/http:/www.
`netgravity.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-
`
`

`
`AHBLT-(Exhibit #)
`
`Patent Owner’s Response
`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`
`Description
`
`AHBLT-2008
`
`AHBLT-2009
`
`AHBLT-2010
`
`AHBLT-2011
`
`AHBLT-2012
`
`DART White Paper Counting Methodologies,
`DoubleClick,
`July 12, 2001
`
`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-
`officiallyacquired-doubleclick.html
`
`AHBLT-2013
`
`Duane Wessels, Web Caching, O’Reilly & Associates, Inc.
`(June 2001)
`
`AHBLT-2014
`
`Excerpt of File History for U.S. Patent No. 6,286,045
`
`AHBLT-2015
`
`Declaration of Kevin C. Almeroth
`
`AHBLT-2016
`
`Declaration of Michael Griffiths
`
`AHBLT-2017
`
`Excerpts of the Deposition Transcript of Peter Kent
`
`AHBLT-2018
`
`AHBLT-2019
`
`Additional excerpts from CGI Programming Guide on the
`World Wide Web, Shishir
`Gundavaram, (1st Ed., March 1996),
`http://www.oreilly.com/openbook/cgi/
`
`HTML Sourcebook, A Complete Guide to HTML by Ian
`S. Graham (1995)
`
`
`-iv-
`
`

`
`AHBLT-(Exhibit #)
`
`Patent Owner’s Response
`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`
`Description
`
`AHBLT-2020
`
`Curriculum Vitae of Professor Kevin C. Almeroth
`
`-v-
`
`

`
`Patent Owner’s Response
`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`
`Table of Authorities
`
` Page(s)
`
`Federal Cases
`Custom Accessories, Inc. v. Jeffery-Allen Indus., Inc.,
`807 F.2d 955 (Fed. Cir. 1986) ....................................................................... 36
`
`In re Gurley,
`27 F.3d 551 (Fed. Cir. 1994) ......................................................................... 19
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) ..................................................................... 43
`
`In re Kubin,
`561 F.3d 1351 (Fed. Cir. 2009) ......................................................... 19, 20, 23
`
`Leo Pharm. Prods., Ltd. v. Rea,
`726 F.3d 1346 (Fed. Cir. 2013) ............................................................... 36, 38
`
`Plantronics, Inc. v. Aliph, Inc.,
`724 F.3d 1343 (Fed. Cir. 2013) ..................................................................... 11
`
`Proctor and Gamble Co. v. Teva Pharms., USA,
`566 F.3d 989 (Fed. Cir. 2009) ....................................................................... 38
`
`Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530 (Fed. Cir. 1983) ..................................................................... 36
`
`Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc.,
`699 F.3d 1340 (Fed. Cir. 2012) ............................................................... 42, 43
`
`Federal Statutes
`
`35 U.S.C. § 103(a) ..................................................................................................... 5
`
`Regulations
`
`37 C.F.R. § 42.120 ..................................................................................................... 1
`
`-vi-
`
`

`
`I.
`
`Introduction
`
`Patent Owner’s Response
`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`
`Pursuant to 37 C.F.R. § 42.120, Richard A. Williamson, on behalf of and as
`
`Trustee for At Home Bondholders’ Liquidating Trust (“Williamson” or “Patent
`
`Owner”) hereby submits his Response to the above-captioned Petitions for Inter
`
`Partes Review, (IPR2015-00662, -666), of U.S. Patent No. 6,014,698 (“698
`
`Patent”) (GOOG 1001), filed on February 2, 2015 by Google Inc. (“Google”).
`
`A. The 698 Patent
`The 698 Patent was filed June 11, 1997, by MatchLogic, Inc. and describes
`
`and claims a new way to serve banners for display in conjunction with web pages.
`
`Many web pages then were configured to include banner advertisements, as shown
`
`in Figure 2 of the 698 Patent at 62, 64 and 66. (GOOG 1001 at 6:10-17).
`
`Web pages and associated banners were frequently cached by web browsers
`
`and by intermediate caching devices such as proxy servers, so that if a web page or
`
`advertising banner was requested again, the request would be satisfied from the
`
`cache without reconnecting to the servers from which the web page or banner was
`
`originally served. This reduced 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:
`
`-1-
`
`

`
`Patent Owner’s Response
`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`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 13:5-14).
`
`The 698 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 uncacheable…..[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 13:40-66).
`
`-2-
`
`

`
`Patent Owner’s Response
`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`The invention disclosed and claimed in the 698 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 14:45-51).
`
`The invention uses a first request signal containing information that prevents the
`
`signal from being blocked by a caching device. Then, 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
`
`17 recites:
`
`17. A method for distributing a banner over a computer network to a
`client device, wherein the banner is stored in one or more servers
`connected to the computer network and referenced in a hypertext
`document served to the client device, and for counting the number of
`times a banner is displayed on the client device, comprising:
`
`sending a first banner request signal from the device to a server
`requesting that a banner be served to the client device, wherein said
`first banner request signal cannot be blocked from reaching said
`server by either the client device or any intermediary device located
`topologically between the client device and the server as a result of
`previous caching or storing of said banner by the client device or said
`intermediary device;
`
`-3-
`
`

`
`Patent Owner’s Response
`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`sending a banner location signal from said server to the client device,
`wherein said banner location signal includes location information for
`a specified banner to be displayed on the client device;
`
`determining if said specified banner is stored on the client device and,
`if said specified banner is stored on the client device, displaying said
`specified banner on the client device, and if said specified banner is
`not stored on the client device,
`
`sending a second banner request signal from the client device
`requesting that said specified banner be served to the client device for
`display on the client device; and
`
`counting each display of said specified banner on the client device.
`
`(GOOG 1001 at 29:7-34).
`
`The first request signal should always be received by the server, because it
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`includes information that prevents blocking by a cache. The display of the banner
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`should therefore always be counted. The second request signal is a conventional
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`request signal that may be satisfied from a cache.
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`The first request signal and the location signal contain very little information
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`compared to the banner. These signals thus impose a negligible burden on the
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`network compared to transmitting the banner from the originating ad server to the
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`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
`
`-4-
`
`

`
`Patent Owner’s Response
`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`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 21:3-15). The invention thus solves the counting problem without
`
`giving up the benefits of caching. (Id. at 15:42-16:10).
`
`B.
`
`Instituted Grounds
`
`Claims
`1–3, 5–7,
`9, 11–20,
`22, 24–30,
`34–39, and
`41–47
`
`31 and 49
`
`Grounds and References
`35 U.S.C. § 103(a);
`U.S. Patent No. 5,933,811 (“Angles,” GOOG 1012),
`U.S. Patent No. 5,948,061 (“Merriman,” GOOG 1013),
`and T. Berners-Lee et al., HYPERTEXT TRANSFER
`PROTOCOL – HTTP/1.0, HTTP Working Group
`INTERNET-DRAFT, (“HTTP1.0”, GOOG 1008)
`35 U.S.C. § 103(a);
`Angles,
`Merriman,
`HTTP1.0, and
`U.S. Patent No. 5,796,952 (“Davis,” GOOG 1014)
`
`C. The Prior Art
`1.
`Angles
`
`
`
`Angles describes a method and system for “delivering customized electronic
`
`advertisements in an interactive communication system.” (GOOG 1012, Abstract).
`
`-5-
`
`

`
`Patent Owner’s Response
`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`With reference to Angles Figure 4, after receiving a web page, consumer computer
`
`12 sends a request for an advertisement to advertisement provider computer 18 in
`
`event E. (Id. at 18:44-60). In event F, “[t]he advertisement provider computer 18
`
`then sends the customized advertisement 30 directly to the consumer computer.”
`
`(Id. at 18:66-19:1). Thus, Angles discloses only a single request to a single server
`
`to retrieve a banner advertisement and does not disclose the claimed second
`
`request or second server of the 698 Patent. Angles also does not disclose any kind
`
`of redirect signal.
`
`In conjunction with the advertisement provider computer 18, Angles
`
`discloses an optional advertising storage medium 44 in the consumer computer.
`
`The advertising provider computer can send an advertisement command to the
`
`consumer computer that identifies a physical location, such as a track and sector,
`
`on the consumer computer’s advertising storage medium. (GOOG 1012 at 11:50-
`
`12:11). The sole reason disclosed in Angles for the optional local storage medium
`
`is to avoid retrieving an advertisement from the server because the network is slow
`
`relative to local storage. (Id. at 11:66-12:11; AHBLT-2017 at 92:18-93:2).
`
`2. Merriman
`
`Merriman describes a method and system for “targeting the delivery of
`
`advertisements over a network such as the Internet.” (GOOG 1013, Abstract).
`
`With reference to Figure 1, a user’s browser downloads a web page from affiliate
`
`-6-
`
`

`
`Patent Owner’s Response
`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`web site 12 in messages 20 and 22. (Id. at 3:24-34). The browser sends a single
`
`request for an advertisement in message 23. (Id. at 3:41-51). “Upon receiving the
`
`request in the message 23, the advertising server process 19 determines which
`
`advertisement or other object to provide the user’s browser and transmits the
`
`messages 24 containing the object such as a banner advertisement to the user’s
`
`browser 16 using the HTTP protocol.” (Id. at 3:52-57). Thus, Merriman discloses
`
`only a single request to a single server to retrieve a banner advertisement and does
`
`not disclose a location signal or second request for a banner as claimed in the 698
`
`Patent.
`
`Merriman describes using an HTTP redirect for a third-party advertiser’s
`
`web page when a user “clicks through” an advertisement to visit the web site of the
`
`third-party that paid for the advertisement. (Id. at 3:64-4:5). Merriman explicitly
`
`distinguishes between a “banner” displayed in conjunction with a web page
`
`transmitted in message 24, (id. at 3:30-41; 3:52-57), and the advertiser’s web page
`
`returned by advertiser’s web site 18 when the user “clicks through” the banner,
`
`(id. at 3:64-4:5). Merriman does not disclose the use of a redirect to retrieve a
`
`banner.
`
`3.
`
`HTTP1.0
`
`HTTP1.0 is a document created by the Hypertext Transfer Protocol (HTTP)
`
`Working Group that specifies the protocol referred to as “HTTP/1.0.” (GOOG
`
`-7-
`
`

`
`Patent Owner’s Response
`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`1008 at 1). HTTP1.0 contains relatively little discussion of web pages or displays,
`
`and none concerning advertising or banners. It describes the various kinds of
`
`HTTP requests and responses, Uniform Resource Locators (URLs), headers, and
`
`describes situations in which each may be appropriately used.
`
`4.
`
`Davis
`
`Davis describes a method and apparatus “for monitoring client use of and
`
`interaction with a resource downloaded from a server on a computer network, for
`
`storing monitored data, for creating a database including profiles indexed by user
`
`and/or resource identity and for generating customized resources based upon client
`
`profiles.” (GOOG 1014 at 1:8-14). The focus of Davis is on monitoring user
`
`actions with resources downloaded from a server.
`
`D. Google’s proposed combination
`Google relies on Angles for the majority of the limitations of the
`
`independent claims. (IPR2015-00662, Paper 14 at 18, 23, Paper 2 at 16-31).
`
`Google argues that Angles teaches sending an unblockable “first [banner] request
`
`signal” (the Angles advertisement request) from a consumer computer 12 to an
`
`advertisement provider computer 18, returning a “[banner] location signal” (the
`
`Angles advertisement command) that allows the consumer computer 12 to
`
`retrieve the advertisement from advertising storage medium 44. Google argues
`
`that it would have been obvious to replace the Angles advertisement command
`
`-8-
`
`

`
`Patent Owner’s Response
`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`with the HTTP redirect disclosed in Angles (the Merriman Redirect), and first
`
`determine if the advertisement had been locally cached as disclosed in HTTP1.0
`
`before sending a second request.
`
`II. A POSA would not combine Angles, Merriman, and HTTP1.0 in the
`way Google contends
`A. The combination of Angles, Merriman, and HTTP1.0 teaches that
`Angles advertisement request should not be used with the
`Merriman redirect (698 claims 1, 17, 30, 39, 44)
`
`HTTP1.0 teaches that the user would have to confirm he or she wanted each
`
`advertisement
`
`if
`
`the Merriman redirect were substituted for
`
`the Angles
`
`advertisement command—an unacceptable behavior in an advertising system.
`
`HTTP1.0 recommends only three HTTP request types:2 GET, HEAD, and
`
`POST, and states that “the convention has been established that the GET and
`
`HEAD methods should never have the significance of taking an action other than
`
`
`2 HTTP1.0 Appendix D documents “protocol elements used by some existing
`
`HTTP implementations, but not consistently and correctly…. Implementors…
`
`cannot rely upon their presence in, or interoperability with, other HTTP/1.0
`
`applications.” A few additional, non-standard, request methods are described in
`
`Appendix D. HTTP1.0 thus teaches against using the request methods in
`
`Appendix D.
`
`-9-
`
`

`
`Patent Owner’s Response
`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`retrieval.” (GOOG 1008 §§ 8, 12. 2 at 25, 40). The Angles advertisement request
`
`causes actions other than retrieval, including debiting an advertiser account and
`
`crediting content provider and consumer accounts. (GOOG 1012 at 21:7-10).
`
`Thus, HTTP1.0 teaches that the Angles advertisement request should not be either
`
`GET or HEAD.3
`
`HTTP1.0 also states that an HTTP redirect response “indicates that further
`
`action needs to be taken by the user agent in order to fulfill the request. The action
`
`required may be carried out by the user agent without interaction with the user if
`
`and only if the method used in the subsequent request is GET or HEAD.”
`
`(GOOG 1008 § 9.3 at 27) (emphasis added). For a 302 redirect, HTTP1.0 states
`
`that “[i]f the 302 status code is received in response to a request using the POST
`
`method, the user agent [browser] must not automatically redirect the request unless
`
`it can be confirmed by the user.” (GOOG 1008 § 9.3 at 28).
`
`3 HTTP1.0 also teaches away from using HEAD requests because the server “must
`
`not return any Entity-Body in the response” and that “[t]his method is often used
`
`for testing hypertext links for validity, accessibility, and recent modification”
`
`(GOOG 1008 at 25). Thus, a POSA would understand that the Angles advertising
`
`request should not be HEAD because it could not return an advertisement.
`
`(AHBLT-2015 at fn. 4).
`
`-10-
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`

`
`Patent Owner’s Response
`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`Thus, HTTP1.0 teaches that using a redirect in response to the Angles
`
`advertisement request would require the user to confirm that he or she wanted the
`
`advertisement before it was retrieved by the redirect. A person of ordinary skill
`
`would understand that this would be unacceptable in an advertising system.
`
`(AHBLT-2015 at ¶ 54). The combination of HTTP1.0 with Angles and Merriman
`
`therefore teaches away from the substitution of the Merriman redirect for the
`
`Angles advertisement command, because it would require the user to confirm he or
`
`she wanted each advertisement.
`
`B. Google’s substitution of the Merriman redirect for the Angles
`advertisement command would eliminate the only described
`benefit of the Angles advertisement command without providing
`any other benefits (698 claims 1, 17, 30, 39, 44)
`
`Even if Angles, Merriman, and HTTP1.0 collectively taught all of the
`
`elements of claim 1—which they do not—Google provides no legitimate reason
`
`why a person of ordinary skill in the art would have modified these references in
`
`the manner that Google claims. Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343,
`
`1354 (Fed. Cir. 2013) (“Where, as here, the necessary reasoning is absent, we
`
`cannot simply assume that an ordinary artisan would be awakened to modify prior
`
`art....” (internal quotation marks omitted)).
`
`Google argues that it “would have been obvious to a POSA to replace
`
`Angles advertisement command identifying a location of an advertisement on local
`
`-11-
`
`

`
`Patent Owner’s Response
`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`storage with Merriman’s HTTP redirect message identifying a location of an
`
`advertisement on networked storage.” (IPR2015-00662, Paper 2 at 19-20).
`
`Google also argues that “[s]uch replacement would have been nothing more than a
`
`simple substitution of one known element (Merriman’s HTTP redirect message)
`
`for another (Angles advertisement command) to obtain predictable results (an
`
`advertisement command from an advertisement server that identifies a URL at
`
`which the advertisement can be obtained).” (Id. at 20).
`
`However, this “simple substitution” would have defeated the sole disclosed
`
`benefit of the Angles advertisement command and a local Advertising Storage
`
`Medium 44—speed. (See GOOG 1012 at 11:66-12:11 (explaining that the reason
`
`for the advertisement command and local storage medium 44 in Angles is that
`
`“current communications systems transfer data at much slower rates than local
`
`storage devices”)); (AHBLT-2015 at ¶ 57). Google’s expert, Mr. Kent, has
`
`confirmed that this is the sole disclosed benefit of the Angles advertisement
`
`command and a local Advertising Storage Medium 44. (AHBLT-2017 at 92:18-
`
`93:2). Google’s proposed substitution of the Merriman redirect for the Angles
`
`advertisement command would eliminate the only benefit attributed to the
`
`advertisement command and a local Advertising Storage Medium 44, and would
`
`not provide any benefit that was not already provided by the preferred
`
`embodiment. (AHBLT-2015 at ¶ 57).
`
`-12-
`
`

`
`Patent Owner’s Response
`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`Google identifies “scalability reasons” as the reason a POSA would have
`
`been motivated to replace the Angles advertisement command with the Merriman
`
`redirect. (IPR2015-00662, Paper 2 at 20). The only textual support Google and
`
`Mr. Kent cite to show this alleged motivation is a single remark that the
`
`“advertisement database 70” may contain “numerous” advertisements. (GOOG
`
`1003 at ¶ 63). However, this reference to “numerous” advertisements in Angles
`
`advertisement database 70 shows that the embodiment on which Google relies
`
`already provided scalability. Figure 4 shows that Angles preferred embodiment
`
`employed both the local Advertising Storage Medium 44 on the Consumer
`
`Computer 12 and the Advertisement Database 70 in the Advertisement Provider
`
`Computer.
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`-13-
`
`

`
`Patent Owner’s Response
`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`
`
`Although Angles describes the Advertising Storage Medium 44 as
`
`“optional,” Advertisement Database 70 is not. Thus, while an “advertisement
`
`command can be sent which specifically retrieves a particular advertisement from
`
`the advertising storage medium,” if a particular advertisement was selected that
`
`was not present in the advertising storage medium, it could be supplied from
`
`Advertisement Database 70. (GOOG 1012 at 12:7-9) (emphasis added). The
`
`combination of the local advertising storage medium 44 (which can deliver the
`
`advertisements quickly) with the Advertisement Database 70 (a scalable and
`
`manageable SQL server system) already provides the scalability benefits Google
`
`argues would motivate the substitution of the Merriman redirect for the Angles
`
`-14-
`
`

`
`Patent Owner’s Response
`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`advertisement command. (AHBLT-2015 at ¶ 59). The proposed substitution
`
`therefore would eliminate the speed benefits provided by the local advertising
`
`storage medium 44, without providing any new benefit.
`
`Further, moving the advertisements from local Advertising Storage Medium
`
`44 to a remote server identified by a HTTP redirect would result in slower
`
`performance than simply eliminating local Advertising Storage Medium 44 and
`
`serving all advertisements directly from the Advertisement Database 70, because
`
`an additional network round-trip request would be required for each such
`
`advertisement. Google’s proposed substitution would thus actually reduce
`
`performance without providing any new benefit at all. (AHBLT-2015 at ¶ 60).
`
`If “maintaining advertisements on a local cache would have presented a
`
`management/overhead inefficiency as the number of advertisement options
`
`increased” as Google argues, then a POSA would have simply eliminated the
`
`optional Advertising Storage Medium 44 and the advertisement command and
`
`served all advertisements directly from the Advertisement Database 70. (AHBLT-
`
`2015 at ¶ 61).
`
`-15-
`
`

`
`Patent Owner’s Response
`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`III. The combination of Angles, Merriman, and HTTP1.0 does not teach or
`render obvious all of the claim elements
`A. The combination of Angles, Merriman, and HTTP1.0 teaches that
`the substituted Merriman redirect would cause a request that
`would not be blocked by a cache
`
`Even if a POSA combined Angles and the Merriman redirect, HTTP1.0
`
`teaches that the resulting redirect would cause a POST request that would not be
`
`blocked by a cache. Thus, the combination could not determine if the specified
`
`banner is stored on the client device as required by the 698 Patent claims.
`
`As explained above in Section II.A, HTTP1.0 teaches that the Angles
`
`advertisement request would be an HTTP POST request. A redirect in response
`
`the POST Angles advertisement request would direct the Consumer Computer 12
`
`to send a second request that would also be a POST. (AHBLT-2015 at ¶ 63).
`
`Because this second request is a POST request, HTTP1.0 teaches that it would not
`
`be blocked by a cache. (GOOG 1008 at 26 (“Applications must not cache
`
`responses to a POST request because the application has no way of knowing that
`
`the server would return an equivalent response on some future request.”). Thus,
`
`the Consumer Computer 12 would not determine if said specified banner is stored
`
`on the client device as required.
`
`-16-
`
`

`
`Paten