Trials@uspto.gov
`571-272-7822
`
` Paper 14
`Entered: August 14, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`AT HOME BONDHOLDERS’ LIQUIDATING TRUST,
`Patent Owner.
`____________
`
`Cases IPR2015-00662 and IPR2015-00666
`Patent 6,014,698
`____________
`
`
`Before KARL D. EASTHOM, JUSTIN T. ARBES, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
` Paper 14
`Entered: August 14, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`AT HOME BONDHOLDERS’ LIQUIDATING TRUST,
`Patent Owner.
`____________
`
`Cases IPR2015-00662 and IPR2015-00666
`Patent 6,014,698
`____________
`
`
`Before KARL D. EASTHOM, JUSTIN T. ARBES, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`
`
`Petitioner Google Inc. filed two Petitions requesting inter partes
`
`review of claims 1–3, 5–7, 9, 11–20, 22–31, 34–39, 41–47, and 49 of
`
`U.S. Patent No. 6,014,698 (Ex. 1001, “the ’698 patent”)1 pursuant to
`
`35 U.S.C. §§ 311–19. Patent Owner At Home Bondholders’ Liquidating
`
`Trust filed a Preliminary Response in each proceeding, as listed in the
`
`following chart.
`
`Case Number
`
`Challenged
`Claims
`
`Petition
`
`Preliminary
`Response
`
`IPR2015-00662 1–3, 5–7, 9,
`11–16, and 23
`
`Paper 2
`(“Pet.”)
`
`Paper 10
`(“Prelim. Resp.”)
`
`IPR2015-00666 17–20, 22–31,
`34–39, 41–47,
`and 49
`
`Paper 2
`(“-666 Pet.”)
`
`Paper 12 (“-666
`Prelim. Resp.”)
`
`We have jurisdiction under 35 U.S.C. § 314. Pursuant to 35 U.S.C.
`
`§ 314(a), the Director may not authorize an inter partes review unless the
`
`information in the petition and preliminary response “shows that there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at
`
`least 1 of the claims challenged in the petition.” For the reasons that follow,
`
`we institute an inter partes review as to claims 1–3, 5–7, 9, 11–20, 22,
`
`24–31, 34–39, 41–47, and 49 of the ’698 patent on certain grounds of
`
`unpatentability. To administer the proceedings more efficiently, we also
`
`exercise our authority under 35 U.S.C. § 315(d) to consolidate the two
`
`proceedings and conduct the proceedings as one trial.
`
`
`
`
`1 Unless otherwise specified, references to exhibits are to those filed in
`Case IPR2015-00662.
`
`
`
`2
`
`
`
`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`
`
`I. BACKGROUND
`
`A. The ’698 Patent2
`
`The ’698 patent describes a “system for the storage, management, and
`
`delivery of information on a computer network” that provides for the
`
`“efficient and accurate counting of advertising information displayed on
`
`terminals connected to the computer network.” Ex. 1001, col. 1, ll. 19–23.
`
`According to the ’698 patent, prior art systems could not count accurately
`
`the number of times a banner (e.g., a graphic of an advertisement) is
`
`displayed to users due to the use of caching. Id. at col. 3, ll. 16–37, col. 6,
`
`ll. 22–29, col. 7, ll. 9–20. For example, when a web page and associated
`
`banner are stored on a user’s terminal or an intermediary proxy server
`
`connected to the user’s terminal, a subsequent request for the information
`
`may be satisfied from the cache, such that no request is forwarded over the
`
`computer network to a server and the server cannot obtain an accurate count
`
`of banner displays. Id. at col. 13, ll. 1–14, Fig. 3. Prior art systems
`
`attempted to overcome this problem by prohibiting caching on the user’s
`
`terminal or proxy server, but doing so introduced other problems, such as
`
`increased network traffic and increased retrieval time due to the need to
`
`retransmit the information over the network every time it is requested. Id.
`
`at col. 13, l. 40–col. 14, l. 44.
`
`The ’698 patent states that its disclosed system is able to count
`
`accurately banner displays while at the same time taking advantage of the
`
`performance gains obtained from caching. Id. at col. 14, ll. 45–57. The
`
`user’s terminal first requests and receives a web page that has an associated
`
`2 The ’698 patent is a continuation-in-part of U.S. Patent No. 6,286,045 B1,
`which is being challenged in Cases IPR2015-00657, IPR2015-00658, and
`IPR2015-00660.
`
`
`
`3
`
`
`
`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`
`banner. Id. at col. 9, ll. 38–49. The terminal then sends an initial banner
`
`request signal, which may include a general content Uniform Resource
`
`Locator (“URL”) address that does not specify which banner is to be
`
`displayed. Id. at col. 17, ll. 34–38, Fig. 4 (step 112). Because software on
`
`the user’s terminal (e.g., web browser) or a proxy server might block the
`
`initial banner request signal if the banner had been cached previously, the
`
`strings “cgi-bin” and “?” may be included in the signal to “prevent[] the
`
`terminal from blocking” the signal. Id. at col. 19, ll. 24–57. Then, rather
`
`than returning the banner itself (as in the prior art), the recipient of the initial
`
`banner request signal selects which banner is to be displayed on the terminal,
`
`increments the count of displays, and returns a banner address to the user’s
`
`terminal. Id. at col. 15, ll. 42–56, Fig. 4 (steps 113 and 114). The return
`
`information may be, for example, a specific content URL address in the
`
`form of a “Status HTTP 302 Redirect (temporary) signal” indicating where
`
`the selected banner is stored. Id. at col. 17, ll. 38–49. The user’s terminal
`
`then retrieves the banner, either from a local cache or proxy server cache, or
`
`a remote server if the banner had not been cached. Id. at col. 15, l. 60–col.
`
`16, l. 34. In that way, the disclosed system is able to maintain an accurate
`
`count of banner displays, while also retaining the performance benefits of
`
`caching. Id. at col. 14, ll. 45–57.
`
`
`
`B. Illustrative Claim
`
`Claim 1 of the ’698 patent recites:
`
`1. A method for delivering information to a terminal
`connected
`to a computer network, wherein
`information
`delivered over the computer network from a primary server to
`the terminal contains references to other information to be
`delivered to the terminal from the primary server or from one or
`
`
`
`4
`
`
`
`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`
`
`more other servers connected to the computer network,
`comprising:
`
`serving a first portion of information to the terminal,
`wherein said first portion of information contains a reference to
`a second portion of information;
`
`sending a first request signal from the terminal to the
`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 cannot be 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 or storing of said first portion of
`information or said second portion of information by 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; and
`
`determining if said second portion of information is
`already stored on the terminal and, if said second portion of
`information is not already stored on the terminal, sending a
`second request signal from the terminal containing said location
`address of said second portion of information and requesting
`that said second portion of information be served to the
`terminal for display on the terminal, and, if said second portion
`of information is already stored on the terminal, displaying said
`second portion of information on the terminal.
`
`
`
`C. The Prior Art
`
`Petitioner relies on the following prior art:
`
`U.S. Patent No. 5,796,952, filed Mar. 21, 1997, issued
`Aug. 18, 1998 (Ex. 1014, “Davis”);
`
`U.S. Patent No. 5,933,811, filed Aug. 20, 1996, issued
`Aug. 3, 1999 (Ex. 1012, “Angles”);
`
`
`
`5
`
`
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`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`
`
`U.S. Patent No. 5,948,061, filed Oct. 29, 1996, issued
`Sept. 7, 1999 (Ex. 1013, “Merriman”);
`
`U.S. Patent No. 5,960,409, filed Oct. 11, 1996, issued
`Sept. 28, 1999 (Ex. 1007, “Wexler”);
`
`T. Berners-Lee et al., HYPERTEXT TRANSFER PROTOCOL –
`HTTP/1.0, HTTP Working Group INTERNET-DRAFT, Feb.
`19, 1996 (Ex. 1008, “HTTP1.0”); and
`
`Mary Meeker, THE INTERNET ADVERTISING REPORT,
`Morgan Stanley, U.S. Investment Research, Dec. 1996
`(Ex. 1010, “Meeker”).3
`
`
`
`D. The Asserted Grounds
`
`Petitioner challenges claims 1–3, 5–7, 9, 11–20, 22–31, 34–39, 41–47,
`
`and 49 of the ’698 patent as unpatentable under 35 U.S.C. § 103(a) on the
`
`following grounds:
`
`Case Number(s) References
`
`Claims Challenged
`
`IPR2015-00662
`and
`IPR2015-00666
`
`Angles, Merriman, and
`HTTP1.0
`
`IPR2015-00666 Angles, Merriman,
`HTTP1.0, and Davis
`
`IPR2015-00662 Wexler and HTTP1.0
`
`1–3, 5–7, 9, 11–20,
`22–30, 34–39, and
`41–47
`
`31 and 49
`
`1, 6, 7, 9, 11–16,
`and 23
`
`IPR2015-00662
`and
`IPR2015-00666
`
`Wexler, HTTP1.0, and
`Meeker
`
`2, 3, 5, 17–20, 22–31,
`34–39, 41–47, and 49
`
`
`
`
`3 When citing HTTP1.0 and Meeker, we refer to the page numbers at the
`bottom of each page.
`
`
`
`6
`
`
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`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`
`
`E. Claim Interpretation
`
`The Board interprets claims using the “broadest reasonable
`
`construction in light of the specification of the patent in which [they]
`
`appear[].” 37 C.F.R. § 42.100(b); see Office Patent Trial Practice Guide,
`
`77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); In re Cuozzo Speed Techs.,
`
`LLC, No. 2014-1301, 2015 WL 4097949, at *7–8 (Fed. Cir. July 8, 2015).
`
`Under this standard, we interpret claim terms using “the broadest reasonable
`
`meaning of the words in their ordinary usage as they would be understood
`
`by one of ordinary skill in the art, taking into account whatever
`
`enlightenment by way of definitions or otherwise that may be afforded by
`
`the written description contained in the applicant’s specification.” In re
`
`Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). We presume that claim terms
`
`have their ordinary and customary meaning. See In re Translogic Tech.,
`
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary
`
`meaning is the meaning that the term would have to a person of ordinary
`
`skill in the art in question.”) (internal quotation marks omitted). A patentee,
`
`however, may rebut this presumption by acting as his own lexicographer,
`
`providing a definition of the term in the specification with “reasonable
`
`clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480
`
`(Fed. Cir. 1994). For purposes of this Decision, we interpret certain claim
`
`limitations as follows.
`
`
`
`1. “Banner” (Claims 17, 30, 39, and 44)
`
`Both parties agree that “banner” means “information displayed in
`
`conjunction with a web page.” See -666 Pet. 11–12; -666 Prelim. Resp.
`
`
`
`7
`
`
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`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`
`15–16. The parties disagree, however, on whether additional explanations
`
`should be included in the definition. Petitioner asserts that the information
`
`“is not part of the same file as the web page,” whereas Patent Owner asserts
`
`that the information “can exist separately from the web page or . . . can be
`
`used in conjunction with many web pages.” See -666 Pet. 11–12;
`
`-666 Prelim. Resp. 15. The parties rely on different portions of the
`
`Specification of the ’698 patent to support their respective proposed
`
`interpretations. Thus, two issues are presented: (1) whether the
`
`Specification provides an express definition of the term as alleged by
`
`Petitioner, and (2) whether the Specification supports an interpretation
`
`broader than Petitioner argues. These issues arise because the Specification
`
`states that
`
`[f]or purposes of the present invention, the term “banner” is
`meant
`to be construed very broadly and
`includes any
`information displayed in conjunction with a web page wherein
`the information is not part of the same file as the web page.
`That is, a banner includes anything that is displayed or used in
`conjunction with a web page, but which can exist separately
`from the web page or which can be used in conjunction with
`many web pages. Banners can include graphics, textual
`information, video, audio, animation, and links to other
`computer sites, web sites, web pages, or banners.
`
`Ex. 1001, col. 2, ll. 36–46. Patent Owner also points to additional
`
`statements in the Specification where the banner information may be served
`
`with the web page. See -666 Prelim. Resp. 1516 (citing Ex. 1001, col. 10,
`
`ll. 36–38 (“banner information may be served with the webpage or, more
`
`commonly, the banner information may reside in separate files”)).
`
`We agree with the parties that the Specification describes a “banner”
`
`as information displayed in conjunction with a web page. It is unnecessary
`
`
`
`8
`
`
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`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`
`for us to decide at this time, however, whether a banner may comprise
`
`information that may be part of the “same file” as the web page or served
`
`with the web page. The Specification states the applicant’s intent that
`
`“banner” be interpreted broadly and, therefore, we may not limit the
`
`interpretation of “banner” to how it may be served or stored vis-à-vis a web
`
`page. The claims provide sufficient detail regarding the location and
`
`operation of the banner such that we do not need to define the term further
`
`than how the information is displayed. On this record, applying the broadest
`
`reasonable interpretation of the claims in light of the Specification, we
`
`interpret “banner” to mean information displayed in conjunction with a web
`
`page.
`
`
`
`2. “Content Specific Request Signal” (Claims 7 and 20)
`
`Petitioner argues that the term “content specific request signal” should
`
`be interpreted to mean “a request containing a content specific URL address
`
`with the location of the information.” See Pet. 13; -666 Pet. 13–14. As
`
`support for its proposed interpretation, Petitioner cites various portions of
`
`the Specification, including the following:
`
`In order to speed up the process of downloading,
`transmitting, or serving a specific banner from an information
`server to the terminal 56, the content specific URL address of
`the requested or selected banner sent to the terminal during step
`114 can contain the exact Internet Protocol (IP) address of the
`requested or selected banner. For example, instead of providing
`the specific content URL address for the banner 62 as
`http://www.bannersite1.com/banner1.gif, the specific content
`URL address for the banner 62 could be provided as, for
`example, http://236.45.78.190/banner1.gif, thereby removing
`any need to use the Domain Name System (DNS) to convert the
`alphanumeric
`address
`“www.bannersite1.com”
`of
`the
`
`
`
`9
`
`
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`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`
`
`information server to its exact IP address. The use of content
`general and content specific URL addresses and IP addressing
`is well known to people of ordinary skill in the art and need not
`be explained in any further detail for purposes of the present
`invention.
`
`Ex. 1001, col. 19, ll. 7–23 (emphases added). Patent Owner, relying on
`
`other portions of the Specification with broader language, responds that
`
`Petitioner’s proposed interpretation improperly limits the “content specific
`
`request signal” to contain a URL address. See Prelim. Resp. 16;
`
`-666 Prelim. Resp. 17–18. We agree with Patent Owner, particularly
`
`because the cited portions above refer to a “content specific URL address,”
`
`not to a “content specific request signal” as recited in the claims.
`
`Accordingly, on this record, applying the broadest reasonable interpretation
`
`of the claims in light of the Specification, we interpret “content specific
`
`request signal” to mean a request signal that specifies particular content
`
`and/or the location of content.
`
`
`
`3. Antecedent Basis Issues in Claims 9 and 23
`
`Claim 9 depends from claim 1 and recites that “said banner location
`
`signal includes an HTTP 302 redirect signal.” Claim 1, however, recites a
`
`“location signal,” not a “banner location signal.” Petitioner argues that “said
`
`banner location signal” in claim 9 lacks antecedent basis, but assumes for
`
`purposes of its analysis that the term refers to the “location signal” of claim
`
`1. Pet. 34 n.7. Patent Owner does not explain how it believes claim 9
`
`should be interpreted. Claim 1 recites “sending a location signal from the
`
`primary server to the terminal providing said location address of said second
`
`portion of information.” The Specification indicates that an HTTP 302
`
`redirect signal is one example of such a signal. See Ex. 1001, col. 17,
`
`
`
`10
`
`
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`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`
`ll. 38–62. A person of ordinary skill in the art would read the claim
`
`language in light of that disclosure in the Specification. Also, dependent
`
`claim 14, which depends from claim 1, recites “said location signal.” At this
`
`stage of the proceeding, and based on the current record, we agree with
`
`Petitioner and conclude that a person of ordinary skill in the art would have
`
`understood “said banner location signal” in claim 9 to refer to the “location
`
`signal” recited in claim 1.
`
`Claim 23, however, presents a slightly different situation. Claim 23
`
`depends from claim 13 and recites that “said banner includes an
`
`advertisement.” Claim 13 and its parent claim 1, however, do not recite a
`
`“banner.” In its first Petition, Petitioner argues that claim 23 contains a
`
`drafting error and instead should depend from claim 17, but assumes for
`
`purposes of its analysis that the claim depends from claim 13 as written and
`
`that “said banner” in claim 23 refers to the “second portion of information”
`
`recited in claim 13. Pet. 38 n.8. In its second Petition, by contrast,
`
`Petitioner assumes for purposes of its analysis that claim 23 depends from
`
`claim 17, which recites a “banner.” -666 Pet. 34 n.6. Patent Owner
`
`contends that claim 23 depends from claim 13 as written, but otherwise does
`
`not explain how it believes claim 23 should be interpreted. -666 Prelim.
`
`Resp. 34.
`
`As an initial matter, claim 23 depends from claim 13, and we see no
`
`basis on which to interpret it to depend from a different claim. The issue
`
`then is how “said banner” in the claim should be interpreted, given that there
`
`is no antecedent basis for the term. See Energizer Holdings, Inc. v. ITC,
`
`435 F.3d 1366, 1370–71 (Fed. Cir. 2006) (holding that a lack of antecedent
`
`basis can render a claim indefinite if the claim language would not have a
`
`
`
`11
`
`
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`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`
`“reasonably ascertainable meaning” to a person of ordinary skill in the art).
`
`We are not persuaded that a person of ordinary skill in the art readily would
`
`have understood “said banner” to refer to the “second portion of
`
`information” recited in parent claims 1 and 13, as Petitioner suggests.
`
`Unlike the situation with claim 9, which involves two similarly worded
`
`terms “location signal” and “banner location signal,” the terms “banner” and
`
`“second portion of information” are substantially different with different
`
`scope. Further, there are a number of limitations in claim 1 to which “said
`
`banner” potentially could refer, such as the “information,” the “first portion
`
`of information,” or the “second portion of information,” and Petitioner does
`
`not explain why a person of ordinary skill in the art would have understood
`
`it to refer to the “second portion of information” (a term that does not appear
`
`in the written description of the ’698 patent). Also, claim 11, which depends
`
`directly from claim 1, recites that “said second portion of information
`
`includes an advertisement.” It is unclear whether the scope of this language
`
`is any different from “said banner includes an advertisement” in claim 23,
`
`other than the difference in the claims’ dependencies. As we are unable to
`
`determine the scope of claim 23, we cannot undertake the necessary factual
`
`inquiry for evaluating obviousness with respect to differences between the
`
`claimed subject matter and the prior art. See In re Aoyama, 656 F.3d 1293,
`
`1296 (Fed. Cir. 2011) (holding that the “first step” in any application of the
`
`prior art is a proper interpretation of the claim at issue). The information
`
`presented in the Petitions, therefore, does not demonstrate a reasonable
`
`likelihood that Petitioner would prevail in showing claim 23 to be
`
`unpatentable on any of the asserted grounds.
`
`
`
`
`
`12
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`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`
`
`II. DISCUSSION
`
`A. Obviousness Ground Based on Angles, Merriman, and HTTP1.0
`(Claims 1–3, 5–7, 9, 11–20, 22–30, 34–39, and 41–47)
`
`Petitioner contends that claims 1–3, 5–7, 9, 11–20, 22–30, 34–39, and
`
`41–47 are unpatentable over Angles, Merriman, and HTTP1.0 under
`
`35 U.S.C. § 103(a), relying on the supporting testimony of Peter Kent
`
`(Ex. 1003) and Paul J. Leach (Ex. 1005). See Pet. 16–39; -666 Pet. 16–38.
`
`We are persuaded that Petitioner has established a reasonable likelihood of
`
`prevailing on its asserted ground as to claims 1–3, 5–7, 9, 11–20, 22, 24–30,
`
`34–39, and 41–47 for the reasons explained below.
`
`
`
`1. Angles
`
`Angles describes a method and system for “delivering customized
`
`electronic advertisements in an interactive communication system.”
`
`Ex. 1012, Abstract. Angles’s system interconnects multiple consumer
`
`computers, content provider computers, and Internet provider computers
`
`with an advertisement provider computer. Id.
`
`
`
`13
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`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
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`Figure 4 of Angles is reproduced below.
`
`
`
`Figure 4 depicts content provider computer 14 that includes electronic pages
`
`32 for presenting information to the consumer. Id. at col. 12, ll. 5160.
`
`Each electronic page 32 contains advertising insert 56, which is a
`
`place-holder configured to contain customized advertisement 30 generated
`
`by advertisement provider computer 18. Id. at col. 12, ll. 54–58.
`
`Advertising insert 56 contains advertisement request 26, which references a
`
`content provider Common Gateway Interface (CGI) script 64 that exists on
`
`advertisement provider computer 18. Id. at col. 12, l. 67–col. 13, l. 4.
`
`“When the advertisement provider computer 18 executes the content
`
`provider script 64, the advertisement provider computer 18 identifies which
`
`content provider computer 14 is being accessed by a consumer computer
`
`12.” Id. at col. 13, ll. 16–19. Advertisement provider computer 18 selects
`
`and sends customized advertisement 30 to consumer computer 12. Id. at
`
`
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`14
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`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
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`col. 8, ll. 56–61. Electronic page 32 and customized advertisement 30 are
`
`combined into a displayable page. Id. at col. 8, ll. 62–65.
`
`Angles further describes an embodiment in which consumer computer
`
`12 includes advertising storage medium 44, which can be a compact disk
`
`drive and compact disk, to store a variety of advertisements that can be
`
`retrieved and displayed by consumer computer 12. Id. at col. 11, ll. 5055.
`
`In this embodiment, “the advertisement command identifies a particular
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`location on the advertising storage medium 44, such as the particular track
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`and sector where an advertisement is located.” Id. at col. 11, l. 66–col. 12,
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`l. 2.
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`
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`2. Merriman
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`Merriman describes a method and system for “targeting the delivery
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`of advertisements over a network such as the Internet.” Ex. 1013, Abstract.
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`Figure 1 of Merriman is reproduced below.
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`15
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`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
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`Figure 1 depicts affiliate web site 12, advertisement (“ad”) server web site
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`19, and advertiser web site 18. Id. at col. 2, ll. 59–62. A user operates a web
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`browser to generate request 20 directed to affiliate web site 12. Id. at col. 3,
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`ll. 24–28. Affiliate web site 12 sends messages 22 containing the
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`information available at the particular web site for the requested page to be
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`displayed by user browser 16, except for one or more advertising objects,
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`such as banner advertisements. Id. at col. 3, ll. 30–34. Instead of sending
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`the advertising objects, affiliate web site 12 sends a link to the node running
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`advertising server process 19, where the link refers to an inline image, such
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`as a banner. Id. at col. 3, ll. 34–41. User browser 16 sends message 23 to
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`advertising server process 19 to access the object. Id. at col. 3, ll. 41–52.
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`Upon receiving message 23, advertising server process 19 determines which
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`advertisement or other object to provide to user browser 16 and transmits
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`message 24 containing the object. Id. at col. 3, ll. 52–57. The advertisement
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`object then is displayed “as a composite of the received affiliate’s web page
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`plus the object transmitted back by the advertising web server.” Id. at col. 3,
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`ll. 59–63. “As part of the ‘click through’ process, when the user clicks on
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`the banner or other advertising object displayed by the user’s browser 16, the
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`user’s browser again transmits a message [23] to the ad server.” Id. at col. 3,
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`ll. 64–67. Advertising server process 19 notes the address of the computer
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`that generated message 23 and transmits back the URL of the advertiser’s
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`web page so that user browser 16 can generate message 26 to contact
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`advertiser web site 18. Id. at col. 3, l. 67–col. 4, l. 5.
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`
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`
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`16
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`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
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`3. HTTP1.0
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`HTTP1.0 is a working document of the Hypertext Transfer Protocol
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`(HTTP) Working Group. Ex. 1008, 1. The document describes
`
`specifications for the protocol referred to as “HTTP/1.0,” and describes a
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`cache as a “program’s local store of response messages and the subsystem
`
`that controls its message storage, retrieval, and deletion,” which “stores
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`cachable responses in order to reduce the response time and network
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`bandwidth consumption on future, equivalent requests.” Id. at 1, 5.
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`HTTP1.0 states that “[a]ny client or server may include a cache.” Id. at 5.
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`HTTP1.0 further discloses the use of a “Pragma general-header field.”
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`Id. at 35. “All pragma directives specify optional behavior from the
`
`viewpoint of the protocol; however, some systems may require that behavior
`
`be consistent with the directives.” Id. One pragma directive is a “no-cache”
`
`directive, which is described as follows:
`
`When the “no-cache” directive is present in a request message,
`an application should forward the request toward the origin
`server even if it has a cached copy of what is being requested.
`This allows a client to insist upon receiving an authoritative
`response to its request. It also allows a client to refresh a
`cached copy which is known to be corrupted or stale.
`
`Id. at 35–36.
`
`
`
`4. Level of Ordinary Skill in the Art
`
`“Section 103(a) forbids issuance of a patent when ‘the differences
`
`between the subject matter sought to be patented and the prior art are such
`
`that the subject matter as a whole would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 405
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`
`
`17
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`
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`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
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`(2007). Petitioner argues that a person of ordinary skill in the art would
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`have had “at least (a) a Bachelor of Science degree in computer science
`
`and/or a similar field or (b) at least 3 years of experience in web-based
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`information management and delivery systems.” Pet. 14 (citing Ex. 1003
`
`¶¶ 13–14, Ex. 1005 ¶ 13). Patent Owner disputes this definition because it
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`would encompass “a person with 3 years of experience designing web
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`pages,” and instead proposes a person with “at least (a) a Bachelor of
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`Science degree in computer science or a similar field or (b) 3 years of
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`experience in programming web-based information management and
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`delivery systems.” Prelim. Resp. 17. Based on the current record, including
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`our review of the ’698 patent and the types of problems and solutions
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`described in the ’698 patent and cited prior art, we agree with Patent
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`Owner’s assessment of the level of ordinary skill in the art and apply it for
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`purposes of this Decision.
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`
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`5. Claim 1
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`Petitioner relies on Angles for the majority of the limitations of claim
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`1. Pet. 16–31. For example, Petitioner argues that Angles teaches serving a
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`“first portion of information” (i.e., web page) to consumer computer 12 that
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`includes a reference to a “second portion of information” (i.e., banner
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`advertisement), sending an unblockable “first request signal” (i.e., a request
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`to execute a CGI script) from consumer computer 12 to advertisement
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`provider computer 18, and returning a “location signal” (i.e., advertisement
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`command) that allows consumer computer 12 to retrieve the advertisement
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`from advertising storage medium 44. Id. at 16–18, 23–28. Although Angles
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`retrieves the advertisement from local storage, Petitioner argues that it would
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`
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`18
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`
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`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
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`have been obvious to (1) instead have the location signal point to an external
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`storage device, such as another server, as taught by Merriman, and
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`(2) determine whether the advertisement is cached locally prior to requesting
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`it from another server, if necessary, as taught by HTTP1.0. Id. at 18–23.
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`Petitioner provides reasons why a person of ordinary skill in the art would
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`have combined the teachings of the references in that manner, and cites
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`supporting testimony from Mr. Kent. Id. at 16–31 (citing Ex. 1003). Upon
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`review of the parties’ papers, we are persuaded that Petitioner has shown a
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`reasonable likelihood of prevailing.
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`Patent Owner argues that Angles does not teach a first request signal
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`that “cannot be blocked from reaching said primary server by either the
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`terminal or any intermediary device located topologically between the
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`terminal and the primary server as a result of previous caching or storing of
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`said first portion of information or said second portion of information by the
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`terminal or said intermediary device,” as recited in claim 1, for two reasons.
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`First, Patent Owner contends that Angles does not mention caching
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`specifically. Prelim. Resp. 17–18. Petitioner’s position, however, is that
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`claim 1 would have been obvious over the combined teachings of Angles,
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`Merriman, and HTTP1.0, where HTTP1.0 teaches the use of a cache and
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`Angles teaches an unblockable first request signal. See Pet. 16–18, 21–26;
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`Prelim. Resp. 19 n.4 (acknowledging that HTTP1.0 “discuss[es] caching in
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`general terms”). Thus, Patent Owner’s argument based on Angles alone is
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`not persuasive. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
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`1986) (“Non-obviousness cannot be established by attacking references
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`individually where the rejection is based upon the teachings of a
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`combination of references.”).
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`
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`19
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`
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`IPR2015-00662, IPR2015-00666
`Patent 6,014,698
`
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`Second, Patent Owner argues that the use of a CGI script alone does
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`not prevent caching necessarily. Prelim. Resp. 19–23. According to Patent
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`Owner, Angles does not disclose, other than a reference to a CGI script,
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`what strings are included in the URL of the advertisement request. Id. at
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`22–23. Patent Owner argues that there is a reason the ’698 patent discloses
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`specific characters included in the URL for prevention of blocking as a
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`result of previous caching. Id. at 23.
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`At this stage of the proceeding, however, we conclude that
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`Petitioner’s evidence is sufficient to demonstrate a reasonable likelihood that
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`Angles teaches an unblockable first request signal. Petitioner argues that in
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`Angles, consumer computer 12 sends advertisement request 26, which
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`references content provider CGI script 64, to advertisement provider
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`computer 18, which executes the script, selects an advertisement appropriate
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`for the requesting user, and returns to consumer computer 12 an
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`advertisement command identifying a particular location on advertising
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`storage medium 44 where the advertisement may be retrieved. Pet. 17–18,
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`24–27. Thus, according to Petitioner, Angles does not block advertisement
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`request 26 from reaching advertisement provider computer 18. Id.
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`Petitioner submits evidence to show why it believes the use of a CGI request
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`in Angles prevents such blocking. See Pet. 6, 17–18; Ex. 10
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