UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`META PLATFORMS, INC.
`Petitioner,
`
`v.
`
`ALMONDNET, INC. and INTENT IQ, LLC,
`Patent Owner
`______________
`
`IPR2022-01064
`Patent 9,830,615 B2
`
`____________
`
`
`DECLARATION OF ROBERT SHERWOOD IN SUPPORT OF PATENT
`OWNER’S RESPONSE TO THE PETITION
`
`
`
`
`
`
`
`
`AlmondNet, Inc.
`IPR2022-01064
`Ex. 2002
`Page 1 of 68
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ......................................................................................... 1
`
`BACKGROUND AND QUALIFICATIONS ............................................... 2
`
`LEGAL PRINCIPLES .................................................................................. 6
`
`III.
`A. Claim Construction ....................................................................................... 6
`B. Burden of Proof ............................................................................................. 7
`C. Anticipation ................................................................................................... 7
`D. Obviousness .................................................................................................. 8
`PERSON OF ORDINARY SKILL IN THE ART ........................................ 9
`
`IV.
`
`V.
`
`BACKGROUND OF THE ’615 PATENT ................................................... 9
`
`CLAIM CONSTRUCTION ........................................................................ 14
`
`VI.
`A. “profile information” ................................................................................... 14
`B. “arranging for a third party computer system . . . to electronically tag a
`first computer . . . , without transferring to the third party computer
`system any profile information” .................................................................. 15
`C. “automatically with the BT computer system” ........................................... 19
`VII. MEYER DOES NOT DISCLOSE OR RENDER OBVIOUS LIMITATION
`9(A). 21
`A. Overview of the Petition’s mapping of Meyer to claim limitation 9(a) ...... 23
`B. The alleged “arranging for a third party computer system . . . to
`electronically tag a first computer” transfers profile information to the
`service provider computer in the form of the member ID. .......................... 31
`C. The alleged “arranging for a third party computer system . . . to
`electronically tag a first computer” does not occur “without
`transferring . . . any profile information” to the service provider
`computer, because “member information” is transferred in Meyer as a
`direct result of the arrangement for tagging. ............................................... 35
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`D. The Petition’s theories regarding modifications to Meyer also fail. ........... 40
`VIII. THE PETITION FAILS TO MOTIVATE OR SHOW A REASONABLE
`EXPECTATION OF SUCCESS IN MODIFYING MEYER TO INCORPORATE
`AUTOMATIC DUTCH OR PROXY BIDDING. .................................................. 47
`CLAIM 12 WOULD NOT HAVE BEEN OBVIOUS, BECAUSE
`IX.
`MEYER’S ACCOUNT PROVIDER COMPUTER DOESN’T SELECT OR
`SERVE ADVERTISEMENTS, AND A POSITA WOULD NOT HAVE
`MODIFIED IT TO DO SO. .................................................................................... 58
`
`
`AlmondNet, Inc.
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`I, Robert Sherwood, hereby declare as follows:
`
`I.
`
`Introduction
`1.
`I am over the age of eighteen (18) years and otherwise competent to
`
`make this declaration.
`
`2.
`
`I have been retained as an expert witness on behalf of Patent Owner
`
`for the above-captioned inter partes review (“IPR”). I understand that the petition
`
`for inter partes review involves U.S. Patent No. 9,830,615 (“the ’615 Patent”).
`
`3.
`
`I make this declaration based on my personal knowledge, educational
`
`background and training, consideration of the materials I discuss herein, and my
`
`expert opinions.
`
`4.
`
`The consulting firm with which I work is being compensated at a rate
`
`of $595 per hour for my time in this matter. My compensation does not depend on
`
`the outcome of this proceeding, and I have no financial interest in its outcome.
`
`5.
`
`In preparing this Declaration, I have reviewed and considered the ’615
`
`Patent, the ’615 Patent’s prosecution history, the Petition, the declaration submitted
`
`by Christopher M. Schmandt in this proceeding, the deposition transcript of Mr.
`
`Schmandt in this proceeding, and each document cited in my declaration.
`
`
`
`
`1
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`II. Background and Qualifications
`6. My qualifications for forming the opinions given in this declaration
`
`are summarized here and are addressed more fully in my curriculum vitae, which is
`
`submitted as Exhibit 2003.
`
`7.
`
`I currently serve as president of Identimap, Inc. a software developer.
`
`The company develops software for personality and culture analysis for talent
`
`identification and management.
`
`8.
`
`I earned an MS from the University of Kansas and an MBA with a
`
`major in operations research from California State College, Hayward. I have taught
`
`technology management courses at the University of Kansas, University of
`
`Missouri and Stanford University. I have an honorary doctorate from DeVry
`
`University.
`I have been professionally involved with computer and software
`9.
`technology for more than 40 years. My computer science education began when I
`was assigned a project to develop a financial and engineering computer model that
`would run on a computer in Mountain View, California. As a part of this project, I
`hired a computer science professor from Brigham Young University to move to
`California for two years and assist me by teaching me everything he taught his
`college students on computer science.
`
`
`
`
`2
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`I developed my first software program with FORTRAN and later used
`10.
`C++ and HTML. I was the first professional to design a software program that
`accessed a mainframe computer in Mountain View, California via telephone
`connection with an acoustic coupler from an office in London, England. This
`program was a client mainframe computer model that integrated complex
`engineering product designs from more than 30 different companies. I designed,
`directed and approved all the source code development for this computer program
`that integrated more than 50 products into a single program that used more than
`2,700 computer aided design variables.
`
`11. By way of experience, I am an expert on advertising on the Internet,
`
`advertising analytics, and the financial economics associated with advertising
`
`spending. I was one of the early adopters of website advertising. In 1998, I
`
`designed, purchased, placed and analyzed more than 30 million ad impressions for
`
`a video mail company based in Saratoga, California.
`12. As early as 1990, as Vice President of RasterOps, Inc., I developed
`and posted ads on the Internet to more than 5,000 retail computer dealers. When
`browsers were launched in approximately 1995, I developed and posted ads on
`dozens of websites. When pay-for-view and pay-per-click advertising was
`launched in 1998, I developed and purchased more than 10 million ad views and
`click throughs.
`
`
`
`
`3
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`13.
`
`In 2007 when Yahoo! sued Google and other firms for violation of the
`
`pay-per-click advertising patent, which was owned by Yahoo!, Yahoo! engaged
`
`me to analyze and report on the success of Internet advertising and testify at trial.
`14. The American Management Association engaged me to develop
`content and conduct a two-day seminar on Internet advertising including fraud
`detection. I presented this seminar to more than 2,500 professionals from more
`than 50 different companies.
`I designed and developed electronic commerce systems for tracking
`15.
`sales at multiple websites with secure servers for credit card acceptance and a
`confidential system for secure sales transactions. This includes developing
`algorithms located on websites for tracking on-line sales.
`I have been active in developing systems for integrating ads with
`16.
`websites for my own software development and deployment, as well as acting as a
`consultant to other firms. I have evaluated complex bidding algorithms for the real-
`time selection and placement of ads for both impressions and pay-per-click ad
`placement on numerous websites.
`In one particular engagement, I examined more than 100 different
`17.
`publisher’s websites where pay-for-click advertising or cost-per-impression
`advertising schemes were implemented. In another instance, I examined the
`matching of more than 300 publishers’ website content with a related advertiser’s
`4
`
`
`
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`products and/or services for $20 million of on-line impression and cost-per-click
`advertising methods. The websites included popular website publishers such as
`CNN and The Wall Street Journal.
`
`18.
`
`I have been engaged by prominent firms, such as Toyota, Lowe’s,
`
`Harley Davidson, Google, Facebook, Yahoo! and Amazon to testify on online
`
`advertising matters including search technologies.
`
`19.
`
`I was founder and President of SmartText Corporation. I directed an
`
`18-person programmer development team in the introduction of an on-line
`
`software program to process large business document files. The company
`
`developed commercial software retail products under such names as LegalPoint,
`
`Kiplinger Small Business Attorney and Kiplinger Home Legal Advisor. The
`
`products were licensed to prominent firms such as H&R Block and Intuit
`
`Corporation. The products sold more than 2 million copies.
`
`20.
`
`I have been a board member and consulted with dozens of companies,
`
`both startups and Fortune 500 companies. For my work, I was awarded the
`
`Entrepreneur of The Year Award, which is sponsored by the Kauffman
`
`Foundation, NASDAQ, Ernst and Young and INC magazine.
`
`21.
`
`I was president and co-founder of EDC, Inc., a company backed by
`
`Kleiner Perkins, a leading San Francisco Bay Area venture capital firm. The
`
`
`
`
`5
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`company was highlighted in Business Week and Fortune Magazine and was
`
`selected as one of the ten most innovative companies in California.
`I have consulted for both plaintiffs and defendants in litigation matters
`22.
`regarding software development, patents and related technology issues. I have
`written more than 50 expert reports and have testified at trial or depositions on
`approximately 30 occasions. I provide consulting services to private and public
`corporations, law firms, venture capital firms, and government institutions. A copy
`of my curriculum vitae is provided in Exhibit 2003.
`
`III. Legal Principles
`A. Claim Construction
`23.
`I understand that the first step in performing a validity analysis of the
`
`patent claims is to interpret the meaning and scope of the claims by construing the
`
`terms and phrases found in those claims. I understand that the appropriate
`
`construction of a claim term is its ordinary and accustomed meaning as understood
`
`by one of ordinary skill in the art at the time of the invention in the context of the
`
`entire patent and the prosecution history.
`
`24.
`
`I understand that standard for claim construction in an inter partes
`
`review is the same standard as is applied in district court proceedings.
`
`25.
`
`I understand that a determination of the meaning and scope of the
`
`claims is a matter of law. I have been informed that to determine the meaning of
`
`
`
`
`6
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`the claims, one should consider the intrinsic evidence, which includes the patent’s
`
`claims, written description, and prosecution history.
`
`26.
`
`I further understand that under the legal principle of claim
`
`differentiation, a dependent claim should be construed, where possible, to have
`
`additional limitations beyond those recited by the independent claim from which
`
`the dependent claim depends. Otherwise, the dependent claim would have no
`
`meaning beyond the independent claim from which it depends.
`
`B.
`27.
`
`Burden of Proof
`I understand that in an inter partes review, the petitioner has the
`
`burden of proving unpatentability by a preponderance of the evidence.
`
`C. Anticipation
`28.
`I have been instructed by counsel and understand that a reference is
`
`anticipated if a single prior art reference discloses each and every claim element,
`
`either explicitly or inherently, as arranged in the same way as in the claim. I
`
`understand that where even one claim element is not disclosed in a reference, a
`
`contention of anticipation fails.
`
`29.
`
`I further understand that when a reference fails to explicitly disclose a
`
`claim element, that reference inherently discloses that element only if the reference
`
`must necessarily include the undisclosed claim element.
`
`
`
`
`7
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`D. Obviousness
`30.
`I have been instructed by counsel and understand that a combination
`
`of prior art references may render a claim obvious if, at the time of the invention, a
`
`person of ordinary skill in the art would have selected and combined those prior-art
`
`elements in the normal course of research and development to yield the claimed
`
`invention.
`
`31.
`
`I understand that in an obviousness analysis, one should consider the
`
`Graham factors, including: the scope and content of the prior art; the differences
`
`between the claimed inventions and the prior art; and the level of ordinary skill in
`
`the art. I further understand the obviousness analysis is to be performed on a claim-
`
`by-claim basis. I understand that a person of ordinary skill in the art is a person of
`
`ordinary creativity, not an automaton.
`
`32.
`
`I have been instructed by counsel and understand that obviousness
`
`requires more than a mere showing that the prior art includes separate references
`
`covering each separate limitation in a claim under examination. I understand
`
`obviousness requires the additional showing that a person of ordinary skill at the
`
`time of the invention would have been motivated to combine those references in a
`
`manner that would include all limitations of the challenged claim, and, in making
`
`that combination, a person of ordinary skill in the art would have had a reasonable
`
`expectation of success.
`
`
`
`
`8
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`33.
`
`I also understand that an obviousness analysis must be conducted with
`
`awareness of the distortion caused by hindsight bias and with caution of arguments
`
`reliant upon ex post reasoning. For instance, I understand that when considering
`
`obviousness, I should put myself in the position of a person of ordinary skill in the
`
`field at the time of the invention, rather than considering new information that is
`
`known today, but was not known before the priority date of the challenged patent.
`
`IV. Person of Ordinary Skill in the Art
`34. The Petition alleges that a person of ordinary skill in the art, as of the
`
`priority date of the ’615 Patent, “would have possessed a bachelor’s degree in
`
`electrical engineering or computer science, and two years of work experience in
`
`the field of network-based computer systems, such as systems for sending and
`
`receiving information over local networks and wide area networks (such as the
`
`Internet or World Wide Web). A person could also have qualified with more
`
`formal education and less technical experience, or vice versa.” Pet. at 4-5. For
`
`purposes of this declaration, I adopt the Petition’s proposed level of skill in the art.
`
`V.
`
`Background of the ’615 Patent
`35. The ’615 Patent is directed to a novel system for performing profile-
`
`based behavioral targeting advertisement placement methods. The ’615 Patent
`
`states that “[a]n ad network ad server . . . or a site’s ad server . . . can place their
`
`own cookies on the computers of visitors that are redirected to them by [] BT
`
`
`
`
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`companies, for the purpose of later recognizing those visitors within their own ad
`
`space.” Ex. 1001 (“’615 Patent”) at 5:25-31.
`
`36. However, the inventor of the ’615 Patent recognized that the above-
`
`described process was inefficient for the following reasons: (1) media properties’
`
`ad space prices vary; (2) profiles of media properties’ visitors are worth different
`
`amounts to advertisers depending on the profiles; and (3) the same person might
`
`have several profile attributes in his or her profile. Id. at 5:56-6:14. Addressing
`
`those inefficiencies, the ’615 Patent teaches “electronic advertisement placement
`
`based on expected profit from the placement.” Id. at 1:30-32.
`
`37. A POSITA would recognize that a critical aspect of the ’615 Patent is
`
`that the BT company shields profile information collected about the visitor from
`
`the third-party system. Specifically, the specification teaches that “[a]lthough the
`
`BT company 30 stores the visitor’ collected profile, . . . it does not transfer the
`
`collected profile to the second media property 40, 50 but simply asks the second
`
`media property 40, 50 to tag the visitor as a BT company visitor or arrange for a
`
`tag to be placed (620) that is readable by the second media property 40 and that
`
`marks the visitor as a BT company visitor.” Ex. 1001 at 9:47-54.1 In the context of
`
`the specification, “a media property . . . can . . . be defined as any equipment that
`
`
` All emphases in this declaration are added, unless otherwise specified.
`10
`
` 1
`
`
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`controls an ad apace viewed by a visitor,” such as the “ad network computer” of
`
`the challenged claims. See id. at 3:45-53. Thus, the specification makes clear that
`
`the BT computer system does not transfer visitor profile information to the third-
`
`party ad network in connection with the arrangement for tagging.
`
`38. The benefit of shielding profile information from the third-party ad
`
`network was emphasized by the applicant in prosecution of a parent application:
`
`A significant benefit [of the claimed invention] is that a BT
`company does not need to disclose to the ad network whatever profile
`information the BT company has collected about the visitor, which
`the BT company can keep as its private property. This allows the BT
`company both to maintain control over a valuable asset despite
`monetizing it, and to avoid running afoul of privacy concerns or
`restrictions that may apply.
`
`Ex. 2004 (’089 Patent prosecution history) at 138. Applicant contrasted this
`
`arrangement with “[c]onventional systems for distributing advertisements,”
`
`which “did not keep valuable profile data about a visitor … confidential and
`
`undisclosed from an ad network or other system facilitating delivery of the
`
`ad.” Id. at 139.
`
`39. Consistent with the concept that profile information is not transmitted
`
`to the ad network, “[a]s the BT company 30 buys ad space from the proprietor of
`
`the second media property 40 and delivers therein an ad based on the collected
`
`
`
`
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`profile, the BT company 30 has no economic incentive to transfer the profile
`
`information itself . . . to the second media property.” Id. at 9:54-59. “The second
`
`media company’s proprietor is being paid for the ad space and therefore just needs
`
`to know that the visitor 10 has been profiled by the BT company 30, which will
`
`pay the second media property’s proprietor for an opportunity to deliver an ad to
`
`this visitor 10 within the ad space of the second media property 40.” Id. at 9:59-65.
`
`40. The sole independent claim 9 challenged in the Petition recites as
`
`follows:
`
`9. A computer system controlled by a behavioral targeting
`company (BT company), which computer system (BT computer
`system) is comprised of one or more computers and is structured and
`programmed
`to perform a method of directing electronic
`advertisements, the method comprising:
`
`automatically with the BT computer system:
`
`(a) at a first time, arranging for a third party computer system
`controlling advertising space on a plurality of third party media
`properties to electronically tag a first computer of a first visitor visiting
`a first website, without transferring to the third party computer system
`any profile information related to the first visitor, which tag is readable
`by computers operating under a domain of the third party computer
`system and identifies the visitor computer as associated with the BT
`company;
`
`
`
`
`12
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`(b) recording, in a profile of the first visitor maintained by the
`BT computer system, profile information collected during the first
`computer’s visit to the first website;
`
`(c) electronically transferring to the computer system a price cap
`that the BT company is willing to pay for allowing delivery of an
`advertisement within media property advertising space controlled by
`the third party computer system controlling advertising space on the
`plurality of third party media properties; and
`
`(d) at a second time, later than the first time, upon receiving a
`redirection of the first computer while the first computer is visiting one
`of the plurality of third party media properties, causing a selected
`advertisement to be served to the first computer, which advertisement
`is based on the profile information collected during the first computer’s
`visit to the first website, which profile information is in the profile of
`the first visitor maintained by the BT computer system, in exchange for
`a price less than the price cap.
`
`41. Dependent claim 12 imposes further requirements on claim limitation
`
`9(d), making clear that the BT computer system must not only “caus[e] a selected
`
`advertisement to be served” (as already required by claim limitation 9(d)) but must
`
`actually “select[] an advertisement” and “serv[e] the selected advertisement.”
`
`12. The system of claim 9 further comprising a storage
`containing visitor profile information and wherein, in the method
`performed by the system, the act in part (d) of causing a selected
`
`
`
`
`13
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`advertisement to be served to the first computer comprises (i) selecting
`an advertisement based on the visitor profile information in the storage,
`and (ii) serving the selected advertisement to the first computer.
`
`VI. Claim Construction
`42.
`I am informed that claim construction is an exercise of interpreting
`
`disputed terms, to the extent needed to resolve any controversy between the
`
`parties. Below I address the meaning of several claim limitations, construction of
`
`which I believe are helpful in resolving the arguments raised by the Petition.
`
`A.
`43.
`
`“profile information”
`In my opinion, “profile information” should be construed to include at
`
`least “the observed behavior of a visitor to a media property and demographic
`
`information about a visitor to a media property.” This derives directly from the
`
`specification of the ’615 Patent, which teaches that a “visitor’s profile” can include
`
`“the observed behavior of the visitor on the media property, demographic
`
`information collected on the media property, profile information provided by the
`
`visitor to the media property, etc.” Ex. 1001 at 3:37-44; see also id. at 2:33-43 (“A
`
`publisher may also be referred to as a ‘profile supplier’ when it transfers profile
`
`information, such as behavioral information, demographic information, etc., to a
`
`BT company.”). Observed behavior can include “taking any . . . kind of action” on
`
`a media property, including “reading a specific content, searching, clicking an ad
`
`
`
`
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`or content, making a phone call, asking for product information, [or] acquiring a
`
`product.” Id. at 4:16-21; see also id. at 6:65-7:6 (discussing “profile information
`
`(e.g., actions) of an electronic visitor with respect to a first media property”).
`
`44. Accordingly, a POSITA would thus understand “profile information”
`
`to include at least the above information in the context of the ’615 Patent.
`
`B.
`
`“arranging for a third party computer system . . . to electronically
`tag a first computer . . . , without transferring to the third party
`computer system any profile information”
`45. As claim 9 of the ’615 Patent makes clear, the BT computer system of
`
`the preamble must “arrang[e] for a third party computer system . . . to
`
`electronically tag a first computer of a first visitor,” and must do so “without
`
`transferring to the third party computer system any profile information related to
`
`the visitor.” Id. (emphases added). In my opinion, it is clear from the claim
`
`language itself that the arrangement for the third party computer system to tag the
`
`first computer must not result in transfer of visitor profile information to the third
`
`party computer system.
`
`46. By way of analogy, one would not say that a pool player “hit the cue
`
`ball without sinking the 8 ball” if the player struck the cue ball, which proceeded to
`
`hit the 8 ball, which in turn sank into the corner pocket. That is because sinking the
`
`8 ball was a direct result of hitting the cue ball, even though the 8-ball did not sink
`
`at the exact moment the cue ball was hit.
`
`
`
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`47. This plain meaning of the claim language is supported by the
`
`specification. As the specification explains, “[a]lthough the BT company 30 stores
`
`the visitor’s collected profile, . . . it does not transfer the collected profile to the
`
`second media property 40, 50 but simply asks the second media property 40, 50 to
`
`tag the visitor as a BT company visitor or arrange for a tag to be placed (620)
`
`that is readable by the second media property 40 and that marks the visitor as a BT
`
`company visitor.” Id. at 9:47-54 (emphases added). In the context of the
`
`specification, “a media property . . . can . . . be defined as any equipment that
`
`controls an ad space viewed by a visitor” (see id. at 3:45-53), such as the “third
`
`party computer system controlling advertising space” of the challenged claims. See
`
`also id. at 4:9-15 (“[T]he ad network’s equipment is considered a media property,
`
`as it controls an ad space viewed by a visitor.”). Thus, the specification, like the
`
`claims, makes clear that the BT computer system arranges for the tag to be placed
`
`as an alternative to transferring profile information to the third party computer
`
`system, and thus the arrangement for tagging does not result in the transfer of
`
`visitor profile information to the third party computer system.
`
`48. The specification further explains why such profile information is not
`
`transferred from the BT computer system to the “second media property” (e.g., the
`
`claimed “third party computer system”) as a result of the arrangement for tagging:
`
`
`
`
`16
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`Ex. 2002
`Page 19 of 68
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`As the BT company 30 buys ad space from the proprietor of the second
`media property 40 and delivers therein an ad based on the collected
`profile, the BT company has no economic incentive to transfer the
`profile information (such as the fact that the visitor searched for “car
`insurance”) to the second media property 40. The second media
`company’s proprietor is being paid for the ad and therefore just needs
`to know that the visitor 10 has been profiled by the BT company 30,
`which will pay for the second media company’s proprietor for an
`opportunity to deliver an ad to this visitor 10 within the ad space of the
`second media property 40.
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`Id. at 9:54-65.
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`49. Applicant provided similar explanations during prosecution. For
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`example, during prosecution of the parent application to the ’615 Patent, the
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`applicant explained:
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`A significant benefit [of the claimed invention] is that a BT
`company does not need to disclose to the ad network whatever profile
`information the BT company has collected about the visitor, which
`the BT company can keep as its private property. This allows the BT
`company both to maintain control over a valuable asset despite
`monetizing it, and to avoid running afoul of privacy concerns or
`restrictions that may apply.
`
`Ex. 2004 (’089 Patent prosecution history) at 138; see also Ex. 2001 at cover (listing
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`the ’615 Patent as a “[c]ontinuation of application No. 14/960,237, . . . now Pat. No.
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`Page 20 of 68
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`9,508,089.”). Applicant contrasted that arrangement with “[c]onventional systems
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`for distributing advertisements,” which “did not keep valuable profile data about a
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`visitor . . . confidential and undisclosed from an ad network or other system
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`facilitating delivery of the ad.” Ex. 2004 at 139.
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`50. Additionally, in describing the pending claims during prosecution of
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`the ’615 Patent, applicant explained:
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`The pending claims refer to tangible computer equipment of a
`BT (behavioral targeting) company that automatically arranges for a
`‘computer system controlling advertising space on a plurality of third
`party media properties’ to electronically tag the visitor computer. The
`BT computer system records profile information of the visitor but
`does not transfer such visitor profile information. When the BT
`computer system receives a redirection of the first computer while the
`visitor is visiting one of the media properties, it causes an ad to be
`served to the visitor’s computer. . . . A significant benefit is that a BT
`company does not need to disclose to the party controlling the ad
`space whatever profile data the BT company has collected about the
`visitor, which the BT company can keep as its private property.
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`Ex. 1013 at 286. Applicant went on to distinguish the prior art on the basis that the
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`prior art “did not keep valuable profile data about a visitor . . . confidential and
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`undisclosed from an ad network or other system facilitating delivery of the ad”:
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`Conventional systems for distributing advertisements at the
`time further did not keep valuable profile data about a visitor—which
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`IPR2022-01064
`Ex. 2002
`Page 21 of 68
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`information was used to determine that the visitor was a desired
`recipient of an ad—confidential and undisclosed from an ad network
`or other system facilitating delivery of the ad.
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`Id. at 287.
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`51. For all the reasons set forth above, it’s my opinion that the intrinsic
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`record makes clear that arrangement for tagging of the visitor computer to the ad
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`network computer does not result in transmission of any visitor profile information
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`from the BT computer system to the ad network computer, and that the system
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`keeps the profile data confidential and undisclosed from an ad network or other
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`system facilitating delivery of the ad.
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`C.
`“automatically with the BT computer system”
`52. A POSITA would recognize that the “automatically with the BT
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`computer system” language of claim 9 (which modifies all recited method steps)
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`indicates two requirements. First, the language indicates that each of the steps of
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`the recited method occur “automatically.” Second, the language requires that the
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`BT computer system performs each step of the recited method. A POSITA would
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`recognize that the BT computer system need not perform each of the steps alone,
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`but the BT computer system must nevertheless perform them. For example, if a
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`step is performed solely by the “third party computer system” of the claims, that
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`would not meet the claim language.
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`Ex. 2002
`Page 22 of 68
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`53. Specifically, the “automatically with the BT computer system”
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`language does not exclude other computers from assisting the BT computer system
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`in performing the claimed method steps. For example, if a third party computer
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`system were to instruct the BT computer system to serve an ad, but the BT
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`computer system actually served the ad, the BT computer system itself still
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`“cause[s] the advertisement to be served” because serving the advertisement causes
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`the advertisement to be served.
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`54. The specific acts that are performed “automatically