Google Inc.v.B.E. Technology, L.L.C.

Patent Trials and Appeals Board

Mar 31, 2015

09699705 - (D) (P.T.A.B. Mar. 31, 2015)

Trials@uspto.gov Paper 10
Tel: 571-272-7822 Entered: March 31, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
MICROSOFT CORPORATION and GOOGLE, INC.,
Petitioner,
v.
B.E. TECHNOLOGY, LLC,
Patent Owner.
_______________

Case IPR2014–00039
Case IPR2014–00738
Patent 6,628,314
_______________

Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a); 37 C.F.R. § 42.73

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I. INTRODUCTION
A. Background
Microsoft Corporation (“Microsoft”) filed a corrected Petition to institute
inter partes review of claims 11–22 of U.S. Patent No. 6,628,314 (Ex. 1001, “the
’314 patent”). Paper 5 (“Pet.”). B.E. Technology, LLC (“Patent Owner”) did not
file a preliminary response. Pursuant to 35 U.S.C. § 314, we instituted inter partes
review on April 9, 2014, as to claims 11–22 of the ʼ314 patent—claims 11–14 and
16–19 under 35 U.S.C. § 102 as anticipated by Guyot,
1
claim 15 under 35 U.S.C.
§ 103 as obvious over Guyot and Robinson,
2
and claims 20–22 under 35 U.S.C.
§ 103 as obvious over Guyot and RFC 1635.
3
Paper 13 (“Dec.”).
After institution of the inter partes review, Google, Inc. (“Google”) filed a
Petition and a Motion to Join the inter partes review. IPR2014-00738, Papers 1, 3.
We granted the motion and joined Google and Microsoft (collectively,
“Petitioner”) in the inter partes review. Paper 27.
Patent Owner filed a Response (Paper 30, “PO Resp.”) and Petitioner filed a
Reply (Paper 33, “Pet. Reply”). Patent Owner filed a Motion to Amend (Paper 31,
“Mot. to Amend”), Petitioner filed an Opposition to Patent Owner’s Motion to
Amend, and Patent Owner filed a Reply to Petitioner’s Opposition.
Oral hearing was held on December 10, 2014, and the hearing transcript has
been entered in the record as Paper 42 (“Tr.”).
The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the

1
U.S. Patent No. 6,119,098 (Ex. 1006) (“Guyot”).
2
U.S. Patent No. 5,918,014 (Ex. 1007) (“Robinson”).
3
Deutsch et al., How to Use Anonymous FTP, IAFA Working Group, 1-13
(May 1994) (Ex. 1022) (“RFC 1635”).
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reasons discussed below, we determine that Petitioner has shown by a
preponderance of the evidence that claims 11–22 of the ʼ314 patent are
unpatentable. Patent Owner’s contingent Motion to Amend is denied.
B. Related Proceedings
Petitioner indicates that the ’314 patent is the subject of several district court
cases: B.E. Technology, L.L.C. v. Microsoft Corp., No. 2:12-cv-02829-JPM (W.D.
Tenn.), where Petitioner was served on October 10, 2012, and B.E. Technology,
L.L.C. v. Google, Inc., No. 2:12-cv-2830-JPM (W.D. Tenn.), filed on October 9,
2012. Pet. 4–5; IPR2014-00738, Paper 1, 2–3.
The ’314 patent is also the subject of Google, Inc. v. B.E. Technology,
L.L.C., IPR2014-00038 (PTAB Apr. 9, 2014), Facebook, Inc. v. B.E. Technology,
L.L.C., IPR2014-00052 (PTAB Apr. 9, 2014), Facebook, Inc. v. B.E. Technology,
L.L.C., IPR2014-00053 (PTAB Apr. 9, 2014), Match.com LLC and People Media,
Inc. v. B.E. Technology, L.L.C., IPR2014-00698 (PTAB June 13, 2014),
Match.com LLC v. B.E. Technology, L.L.C., IPR2014-00699 (PTAB June 13,
2014), Google, Inc. v. B.E. Technology, L.L.C., IPR2014-00738 (PTAB June 18,
2014), Google, Inc. v. B.E. Technology, L.L.C., IPR2014-00743 (PTAB June 18,
2014), and Google, Inc. v. B.E. Technology, L.L.C., IPR2014-00744 (PTAB June
18, 2014). IPR2014-00699 has been joined with IPR2014-00038, IPR2014-00743
has been joined with IPR2014-00052, and IPR2014-00698 and IPR2014-00744
have been joined with IPR2014-00053.
C. The ʼ314 Patent
The ’314 patent relates to user interfaces that provide advertising obtained
over a global computer network. Ex. 1001, col. 1, ll. 12–16. The ’314 patent
discloses a client software application that comprises a graphical user interface
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(GUI) program module and an advertising and data management (ADM) module.
Id. at col. 6, ll. 64–67. The GUI comprises multiple regions, including a first
region comprising a number of user selectable items and a second region
comprising an information display region, such as banner advertisements. Id. at
col. 4, ll. 24–37. Program modules associated with the GUI store statistical data
regarding the display of the selected informational data, allowing the targeting of
banner advertisements based upon the type of link selected by the user. Id. at col.
4, ll. 43–51. The system for selecting and providing advertisements is set forth in
Figure 3 as follows:

Figure 3 illustrates a block diagram of a system distributing advertisements
over the Internet. Id. at col. 6, ll. 21–22. ADM server 22 is accessible by client
computers 40 over Internet 20, where client computers 40 have the client software
application installed. Id. at col. 8, ll. 32–35. ADM server has associated with it
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Ad Database 44 and User/Demographics Database 46. Id. at col. 8, ll. 38–43. Ad
Database 44 stores banner advertising that is provided to client computers 40. Id.
User/Demographics Database 46 stores demographic information used in targeting
advertising downloaded to individual client computers 40. Id. at col. 8, ll. 55–57.
When a user first accesses the client software application for the purposes of
downloading and installing the application, the user submits demographic
information that is used to determine what advertising is provided to the user. Id.
at col. 8, ll. 57–62. The demographic information is submitted by the user by
entering the information into a form provided to the user, and ADM server 22
checks the completeness of the form. Id. at col. 16, l. 60 – col. 17, l. 2. ADM
server 22 then assigns a unique ID to the user and stores the unique ID with the
received user demographic information. Id. at col. 17, ll. 11–15. An initial set of
advertisements is selected, and the client software application is downloaded to
client computer 40 for installation. Id. at col. 17, ll. 17–23. The client software
application monitors user interaction with the computer, whether with the client
software application or with other applications, and later reports this information to
the ADM server. Id. at col. 12, ll. 55–59, col. 13, ll. 1–2. Advertising banners are
displayed in response to some user input or periodically at timed intervals. Id. at
col. 14, ll. 40–43. The client software application targets the banner advertising
displayed, based on the user’s inputs, so that it relates to what the user is doing. Id.
at col. 14, ll. 43–46.
D. Illustrative Claims
Petitioner challenges claims 11–22 of the ’314 patent. Independent claim 11
and dependent claims 15 and 20 are illustrative of the claims at issue and follow:
11. A method of providing demographically-targeted
advertising to a computer user, comprising the steps of:
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providing a server that is accessible via a computer network,
permitting a computer user to access said server via said
computer network,
acquiring demographic information about the user, said
demographic information including information specifically provided
by the user in response to a request for said demographic information,
providing the user with download access to computer software
that, when run on a computer, displays advertising content, records
computer usage information concerning the user’s utilization of the
computer, and periodically requests additional advertising content,
transferring a copy of said software to the computer in response
to a download request by the user,
providing a unique identifier to the computer, wherein said
identifier uniquely identifies information sent over said computer
network from the computer to said server,
associating said unique identifier with demographic information
in a database,
selecting advertising content for transfer to the computer in
accordance with the demographic information associated with said
unique identifier;
transferring said advertising content from said server to the
computer for display by said program,
periodically acquiring said unique identifier and said computer
usage information recorded by said software from the computer via
said computer network, and
associating said computer usage information with said
demographic information using said unique identifier.
15. The method of claim 11, wherein said providing a unique
identifier step further comprises storing a cookie on the computer.
20. The method of claim 11, wherein said acquiring step
further comprises requesting said demographic information in
response to a request from the user to download said software and
receiving said demographic information from the user prior to
providing the user with access to said software.
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E. Claim Construction
The Board will interpret claims of an unexpired patent using the broadest
reasonable construction in light of the specification of the patent in which they
appear. See 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, No.
2014-1301, 2015 WL 448667, at *7–8 (Fed. Cir. Feb. 4, 2015) (“Congress
implicitly adopted the broadest reasonable interpretation standard in enacting the
AIA,” and “the standard was properly adopted by PTO regulation.”). Under the
broadest reasonable construction standard, claim terms are given their ordinary and
customary meaning, as would be understood by one of ordinary skill in the art in
the context of the entire disclosure. In re Translogic Tech. Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007).
1. “demographic information”
Petitioner proposes that the term “demographic information” means
“information collected about end user characteristics that does not identify the end
user.” Pet. 10 (citing Ex. 1003 ¶¶ 105–106). Petitioner points to the context of
“demographic information” as used in the ʼ314 patent specification to include time
zone, locale, and client hardware. Id. (citing Ex. 1001, col. 3, ll. 8–11). Petitioner
further argues that the ʼ314 patent specification specifically describes
“demographic information” to exclude information that identifies an end-user for
privacy concerns. Id. (citing Ex. 1001, col. 2, ll. 40–48). Patent Owner has not
provided a construction for “demographic information,” and Patent Owner agrees
with this claim construction proposed by Petitioner. Tr. 23:1–6. We agree that
Petitioner’s proposed meaning for “demographic information” is both reasonable
and consistent with its usage in the ʼ314 patent specification. Accordingly, we
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construe “demographic information” to mean “collected characteristic information
about a user that does not identify the user.”
2. “download request by the user”
Patent Owner proposes that the plain and ordinary meaning of “request” is
“to ask for something.” PO Resp. 17. Patent Owner also proposes that the term
“user,” within the meaning of claim 11, means “the person using the computer.”
Id. Patent Owner determines that “download request by the user” means that “a
user knowingly asks for a copy of software to be downloaded from a server to the
user’s computer.” Id. (citing Ex. 1001, col. 8, ll. 58–59, col. 16, ll. 54–56). Patent
Owner specifically argues that upon a download request from a user, the user is
presented with a form and “[o]nly once the form is completely filled out, does the
server transmit the application to the client.” Id. at 18–19 (citing Ex. 1001, col. 16,
ll. 60–63). Because the user is required to complete the form, Patent Owner argues
that the user is “conscious of the request and purposefully makes the request.” Id.
at 19.
Petitioner argues that the “intention of the user” when a copy of the software
is downloaded is “illusory and legally irrelevant.” Pet. Reply 6, 9–10. Petitioner
further argues that a “download request” involves “sending data from a user’s
computer based on a user’s ‘request,’ which is received by and triggers actions by
the server (e.g. downloading of the updated software).” Id. at 8–9 (emphasis
omitted).
We agree with Petitioner that the broadest reasonable interpretation of
“download request by the user” does not require the “intent” of the user. We are
not persuaded by Patent Owner’s argument that because a user completes a form,
the user “knowingly” asks for a copy of software. Patent Owner fails to direct us
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to any factual basis to draw this conclusion. Furthermore, we are not persuaded
that the feature must be incorporated into the claims. Patent Owner does not direct
us to persuasive evidence or rationale that demonstrates that the claims require this
feature. Thus, we are not persuaded by Patent Owner that the “intent” of the user
is required under the broadest reasonable construction of “download request by the
user.” We are also persuaded by Petitioner that a “download request,” under the
broadest reasonable interpretation, involves sending a request from the user’s
computer to a server. Accordingly, we construe “download request by the user,”
under the broadest reasonable interpretation, to mean sending a request for
downloading data from a user’s computer to the server.
3. “providing a unique identifier to the computer”
Independent claim 11 recites the limitation “providing a unique identifier to
the computer.” Patent Owner argues that “the unique identifier be ‘provided’ to
the computer by the server.” PO Resp. 23. Patent Owner argues that the claims
require the unique identifier is provided to the computer and the ʼ314 patent
specification states that “‘[o]nce all required information has been provided, flow
moves to block 164 where the application reports demographic data back to server
22, receives an assigned ID from the server, and stores the new user data at the
client computer in user data storage 34.’” Id. at 23–24 (quoting Ex. 1001, col. 18,
ll. 11–16) (emphasis omitted). Patent Owner further argues that the “unique
identifier” must identify the computer, and not the subscriber. Id. at 24–25.
Petitioner responds that the scopes of the claims are not limited to require that the
unique identifier is provided by the server. Pet. Reply 12.
We are not persuaded by Patent Owner that the limitation “providing a
unique identifier to the computer” requires that (1) the unique identifier is provided
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by the server and (2) the unique identifier identifies the computer and not the user.
Claim 11 recites “providing a unique identifier to the computer” and the “identifier
uniquely identifies information sent over said computer network.” Claim 11 does
not limit the system, process, or entity that “provides” the unique identifier. Claim
11 further only requires that the “unique identifier” identifies “information” that is
sent over the computer network. The “information” identified by the “unique
identifier” can include any information, including user information or computer
information. This construction is consistent with the several examples provided in
the ʼ314 patent specification. See Ex. 1001, col. 17, ll. 13–14, 29–41, col. 18, ll. 1–
20. Therefore, we determine that the limitations of “providing a unique identifier
to the computer” and the “identifier uniquely identifies information sent over said
computer network” mean any system, process, or entity that provides a unique
identifier to the computer, where the unique identifier identifies any information
that is sent over the computer network.
II. ANALYSIS
A. Anticipation of Claims 11–14 and 16–19 by Guyot
1. Guyot (Ex. 1006)
Guyot discloses a system and method for targeting and distributing
advertisements over a distributed information network, such as the Internet. Ex.
1006, col. 1, ll. 9–11. The distributed information network allows for information
to be exchanged between a server and multiple subscriber systems. Id. at col. 3, ll.
13-16; col. 3, ll. 44–47. The advertisement targeting system is set forth in Figure 1
as follows:
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The system includes server 200 and multiple subscriber systems 300. Id. at
col. 3, ll. 15–16. Information is exchanged between server 200 and subscriber
systems 300 over communication links 400. Id. at col. 3, ll. 17–18. Each
subscriber system has a unique proprietary identifier. Id. at col. 3, ll. 21–22.
Server 200 stores and manages an advertisement database. Id. at col. 3, ll. 24–25.
Subscriber systems 300 periodically access server 200 to download advertisements
that are targeted specifically to a subscriber based on a subscriber’s personal
profile stored on server 200. Id. at col. 3, ll. 26–29. Subscriber systems 300 then
display the targeted advertisements. Id. at col. 3, ll. 29–30.
The advertisement database stores, for each subscriber, subscriber data that
includes the subscriber’s identification information, the subscriber’s password, and
the subscriber’s personal profile. Id. at col. 3, ll. 55–60. The subscriber’s personal
profile is obtained by having the subscriber provide answers to a questionnaire. Id.
at col. 3, ll. 60–65. The subscriber’s personal profile is used to target specific
advertisements to the subscriber. Id. at col. 3, ll. 60–61.
The subscriber system includes a memory, which stores a client application,
and a processor which executes the client application. Id. at col. 3, ll. 30–36. The
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client application establishes a connection between the subscriber system and the
server and the client application uploads subscriber statistics to the server, and
downloads, if necessary, the latest version of the client application software from
the server. Id. at col. 5, ll. 18–27. The subscriber statistics preferably include
information related to the advertisements displayed on the subscriber’s system and
information on the Internet sites that the subscriber has accessed over a
predetermined period of time. Id. at col. 4, ll. 15–24. This information is utilized
to refine the subscriber’s personal profile. Id.
2. Analysis
Petitioner contends that claims 11–14 and 16–19 are anticipated by Guyot.
Pet. 27–36. Petitioner has provided an analysis illustrating where each of the
limitations of the claims is disclosed by Guyot. Id.
Patent Owner argues that (a) Guyot fails to disclose a “method of providing
demographically-targeted advertising to a computer user,” (b) Guyot fails to
disclose “transferring a copy of the software ‘in response to a download request by
the user,’” and (c) Guyot fails to disclose “providing a unique identifier to the
computer.” PO Resp. 9–28.
a. “method of providing demographically-targeted advertising to a
computer user”
Claim 11 recites, in the preamble, a “method of providing demographically-
targeted advertising to a computer user.” Petitioner argues that Guyot discloses a
system and method for targeting and distributing advertisements over a distributed
network. Pet. 27–28. Dr. Houh, Petitioner’s expert, states that Guyot discloses
subscriber data that includes a personal profile and subscriber statistics. Ex. 1003
¶¶ 273–275. The personal profile information is generated from a questionnaire,
similar to the technique described by the ʼ314 patent specification. Id. ¶¶ 273–274
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(citing Ex. 1001, 2:29–34). Dr. Houh further explains that Guyot discloses that the
subscriber statistics contain information on which Internet sites the user has visited
and the advertisements viewed by the user, and are further used to update the
personal profile. Id.¶ 275 (citing Ex. 1006, 4:22–23).
Patent Owner first argues that “Guyot does not use any form of the word
‘demographic’ in the reference” and, therefore, fails to disclose a method of
providing demographically targeted advertising. PO Resp. 11. We are not
persuaded by this argument because a prior art reference need not disclose the
exact terminology used in the claim. See In re Bond, 910 F.2d 831, 832 (Fed. Cir.
1990) (holding that whether a reference teaches a claim limitation “is not an
‘ipsissimis verbis’ test”).
Patent Owner further argues that Guyot discloses that advertisements are
provided to subscribers based on a personal profile provided by the subscriber,
where the personal profile is obtained by having the subscriber provide answers to
a questionnaire and then is updated and refined by tracking Internet sites accessed
by the subscriber. PO Resp. 11 (citing Ex. 1006, col 1, ll. 63–65, col. 3, ll. 61–63,
col. 4, ll. 19–23). Patent Owner argues that Guyot does not identify the questions
included in the questionnaire, and, therefore, Guyot does not explicitly disclose
that demographic information is included in the personal profile. Id. at 11–13.
Petitioner responds that “demographic information” means “collected
characteristic information about a user,” and Dr. Houh explains that a person with
ordinary skill in the art would have understood that information collected by the
user profile questionnaire to establish and update the user’s personal profile is
“demographic information.” Pet Reply 1–2 (citing Ex. 1003 ¶¶ 266, 273–275, 278,
300–301). Petitioner further argues that Mr. Goldstein, Patent Owner’s expert,
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agrees that “demographic information,” under the broadest reasonable
interpretation, includes web browsing history that documents that a user has visited
a particular website, the frequency of the visit to the website, and the time of the
visit to the website. Pet. Reply 2–3 (citing Ex. 2015, 54:5–23).
We agree with Petitioner. Guyot discloses a database that includes
Subscriber Data and Subscriber Statistics, where the Subscriber Data includes a
subscriber’s identification information, password, and the personal profile of the
subscriber that is used to target specific advertisements to the subscriber. Ex.
1006, col. 3, ll. 55–61. The personal profile is obtained by having the subscriber
provide answers to a questionnaire. Id. at col. 3, ll. 61–63. The Subscriber
Statistics include the advertisements distributed to the subscriber, the number of
times each advertisement has been displayed to the subscriber, and further includes
information on Internet sites that the subscriber has accessed over a predetermined
period of time. Id. at col. 4, ll. 15–21. This information is utilized to define further
a subscriber’s personal profile. Id. at col. 4, ll. 21–23.
As discussed in our claim construction, “demographic information” means
“collected characteristic information about a user that does not identify the user.”
Section I.E.1. This construction was provided by Petitioner and Patent Owner has
agreed this claim construction is correct. Pet. 10 (citing Ex. 1003 ¶¶ 105–106); Tr.
23:1–6. Accordingly, we agree with Petitioner that Guyot’s disclosure that
Subscriber Statistics that include information on Internet sites accessed by a
subscriber is within the broadest reasonable interpretation of “demographic
information.” The Subscriber Statistics are collected information about a
subscriber, such as Internet sites accessed, and this information does not identify
the subscriber. The Internet sites accessed by a subscriber describe a behavior
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characteristic of a user. This collected behavior characteristic of the user is within
the broadest reasonable interpretation of “demographic information.” Guyot
further describes that this information is used to define the subscriber’s profile that
is used to target advertisements for the user. Ex. 1006, col. 3, ll. 55–61, col. 4, 21–
23. Accordingly, we agree with Petitioner that Guyot discloses a “method of
providing demographically-targeted advertising to a computer user.”
b. “transferring a copy of said software to the computer in response
to a download request by the user”
Claim 11 recites “transferring a copy of said software to the computer in
response to a download request by the user.” Petitioner argues that Guyot
discloses downloading an updated version of a client application in response to an
automatic or manual connection by a user, and, therefore, describes “transferring a
copy of said software to the computer in response to a download request by the
user.” Pet. 30 (citing Ex. 1003 ¶¶ 307, 309).
Patent Owner argues that, in Guyot, the subscriber “has no information that
would cause him or her to perceive even the potential that a new version of
software will be downloaded” and the subscriber “is not even aware that ‘the
control system determines if the latest version of the client application software
needs to be downloaded.’” PO Resp. 22 (quoting Ex. 1006, col. 8, ll. 38–40).
Patent Owner argues that because the subscriber is not aware that a new version is
available, it cannot be a “request by the user.” Accordingly, Patent Owner argues
that Guyot fails to disclose “transferring a copy of said software to the computer in
response to a download request by the user.”
Petitioner responds that Patent Owner acknowledges that in Guyot software
is downloaded in response to a user’s action, and the intent of the user is irrelevant.
Pet. Reply 6. Petitioner further responds that Guyot discloses that a “user
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manually connects to the server, and in response to that action, the server
downloads an updated version of the software to the user’s computer.” Id. at 7
(citing Ex. 1003 ¶¶ 285–292; Ex. 1006, col. 6, ll. 44–56). Petitioner argues that a
user manually “clicking the ‘connection button’ is an action taken by the user that
causes the user’s computer to send a request to the server,” which responds by
providing a software to download. Id. at 9.
As discussed above in our claim construction, the limitation “download
request by the user,” under the broadest reasonable interpretation, does not require
a specific intent of the user. Section I.E.2. As also discussed above, we are
persuaded by Petitioner that “download request by the user,” under the broadest
reasonable interpretation, involves the sending of a request, to download data, from
a user’s computer to the server. Id. Guyot discloses that a subscriber can select a
“connection button” that establishes a connection to the server. Ex. 1006, col. 6,
ll. 43–46. A control system determines if the latest version of the client application
software needs to be downloaded. Id. at col. 8, ll. 38–41. If it is determined that
the latest version needs to be downloaded, a URL address pointing to the Internet
site that contains the latest client application software is provided to the subscriber
computer, and the latest client application software is downloaded. Id. at col. 8,
ll. 44–49. Therefore, the manual selection of the “connection button,” by the
subscriber, triggers the subscriber’s computer to request the downloading of the
latest software from the server. Accordingly, we are persuaded by Petitioner that
Guyot discloses “transferring a copy of said software to the computer in response
to a download request by the user.”
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c. “providing a unique identifier to the computer”
Claim 11 recites “providing a unique identifier to the computer.” Petitioner
argues that Guyot discloses that each computer is identified to the server via a
“unique proprietary identifier.” Pet. 30. Petitioner alternatively argues Guyot
discloses Subscriber Data and Subscriber Statistics for each user, where Subscriber
Data includes a user’s identification, password, and personal profile and Subscriber
Statistics include usage information for each user. Id. This information is sent to
the server to update the information stored by the server. Id. Petitioner argues that
this disclosure in Guyot meets the limitation “providing a unique identifier to the
computer, wherein said identifier uniquely identifies information sent over said
computer network from the computer to said server.” Id. at 30–31.
Patent Owner argues that the claims require that the “unique identifier” is
provided to the computer by the server. PO Resp. 23. Patent Owner further argues
that Guyot discloses Subscriber Data that identifies the subscriber, not the
computer, and, therefore, does not identify information sent from the computer to
the server because multiple subscribers may utilize the client application. Id. at
24–25. Petitioner responds that the claims do not require that the unique identifier
is sent by the server to the user’s computer.
As discussed in our claim construction above, we are not persuaded by
Patent Owner’s arguments that the claims require that the server provides the
unique identifier to the computer and the unique identifier identifies the computer,
not the user. Section I.E.3. We determine that the limitations of “providing a
unique identifier to the computer” and the “identifier uniquely identifies
information sent over said computer network” mean that any system, process, or
entity provides a unique identifier to the computer, where the unique identifier
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identifies any information that is sent over the computer network. Id. Guyot
discloses a database that includes Subscriber Data and Subscriber Statistics, where
the Subscriber Data include a subscriber’s identification information, a password,
and a personal profile of the subscriber that is used to target specific
advertisements to the subscriber. Ex. 1006, col. 3, ll. 55–61. The Subscriber
Statistics include the advertisements distributed to the subscriber, the number of
times each advertisement has been displayed to the subscriber, and information on
Internet sites that the subscriber has accessed over a predetermined period of time.
Id. at col. 4, ll. 15–21. This information is utilized to further define a subscriber’s
personal profile. Id. at col. 4, ll. 21–23. Accordingly, we are persuaded by
Petitioner that Guyot discloses Subscriber Data or a unique identifier that uniquely
identifies Subscriber Statistics or information sent over the computer network.
3. Conclusion
Petitioner contends that claims 11–14 and 16–19 are anticipated by Guyot.
Pet. 27–36. Petitioner has provided an analysis illustrating where each of the
limitations of the claims is disclosed by Guyot. Id. We determine that Petitioner
has demonstrated, by a preponderance of the evidence, that claim 11 is anticipated
by Guyot. Similarly, we determine that Petitioner has demonstrated, by a
preponderance of the evidence, that claims 12–14 and 16–19 are anticipated by
Guyot.
B. Obviousness of Claim 15 over Guyot and Robinson
1. Robinson (Ex. 1007)
Robinson discloses a system for the display of advertising to users of an
interactive communications medium. Ex. 1007, col. 1, ll. 12–13. The system
tracks activities of a subject in an interactive communications medium, derives
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information from the activities, determines a community for the subject based on
the derived information, and determines which advertisements to present to the
subject based on the determined community. Id. at col. 3, l. 62 – col. 4, l. 6.
Tracking data can be stored locally on a user’s local computer. Id. at col. 7,
ll. 26–28. A cookie can be generated and stored on the user’s computer. Id. at
col. 8, ll. 42–44. The cookie is the only way to associate information stored on the
central server with that particular user. Id. The cookie contains the identifier of
the user, and the user ID in a central database is updated with tracking information
from the cookie. Id. at col. 10, ll. 11–14.
2. Analysis
Claim 15 depends from claim 11 and further recites that the limitation of
“providing a unique identifier” comprises “storing a cookie on the computer.”
Petitioner agrees that Guyot does not disclose this limitation and argues that
Robinson discloses this limitation. Pet. 37; See Ex. 1003 ¶ 341. Petitioner argues
that Robinson describes the use of “cookies to track user activity in the context of
targeted advertising systems.” Id. (citing Ex. 1003 ¶ 345 (citing Ex. 1007, col. 2,
ll. 49–53)). Petitioner further argues that a person with ordinary skill in the art
would have been motivated to combine Robinson’s disclosure of a cookie
mechanism that stores a cookie locally on the user’s computer with Guyot for
“uniquely identifying a user to enable targeted delivery of advertising.” Pet. 37.
Patent Owner argues that claim 15 is not unpatentable for the same reasons
discussed above with respect to claim 11. See Section II.A.2. We are not
persuaded by Patent Owner’s arguments regarding claim 11. We similarly are not
persuaded by Patent Owner’s arguments regarding claim 15 for the same reasons.
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3. Conclusion
We determine that Petitioner has demonstrated, by a preponderance of the
evidence, that claim 15 would have been obvious over Guyot and Robinson.
C. Obviousness of claims 20–22 over Guyot and RFC 1635
1. RFC 1635 (Ex. 1022)
RFC 1635 provides information about how to use the File Transfer Protocol
(FTP). Ex. 1022, 1. RFC 1635 discloses that FTP is a protocol used on the
Internet to transfer files from one computer (host) on the Internet to another. Id. A
user of an FTP program must log into both hosts using an account and password in
order to transfer a file from one host to the other. Id.
RFC 1635 further describes the use of anonymous FTP. Id. at 2. An archive
site is a host that acts as a repository for a wealth of information, much like a
conventional library. Id. The information stored on these Internet hosts is made
available for external users to transfer to their local sites. Id. To provide general
access, a special user account called “anonymous” is created for the archive site.
Id. The user account “anonymous” has limited access rights to the archive host.
Id. The anonymous user account allows a user to log in using FTP, list the
contents of a limited set of directories, and retrieve files from the archive site. Id.
2. Analysis
Petitioner argues that claims 20–22 would have been obvious over Guyot
and RFC 1635. Pet. 37–42. In support of this asserted ground of unpatentability,
Petitioner provides detailed explanations as to how each claim limitation is
disclosed or suggested by a combination of Guyot and RFC 1635. Id. Petitioner
further argues that a person with ordinary skill in the art would have found it
obvious to prompt the user for information prior to providing the user access to
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other information, as demonstrated by RFC 1635, prior to providing the client
application software of Guyot, and that such a modification would have been an
obvious design choice. Pet. 39–40 (citing Ex. 1003 ¶ 369).
Patent Owner argues that Petitioner fails to set forth sufficient evidence to
support a finding of obviousness and a person with ordinary skill in the art would
not have combined Guyot and RFC 1635. PO Resp. 26–28. Patent Owner argues
that a person with ordinary skill in the art would not have considered the FTP
protocol when looking for a solution to obtaining answers to a user questionnaire.
Id. at 27. In other words, according to Patent Owner, a person with ordinary skill
in the art “interested in designing a system to induce users to provide demographic
information would not be concerned with how to permit files to be retrieved. The
person would be looking in another direction entirely.” Id. at 27–28. Patent
Owner also argues that the anonymous FTP technique of RFC 1635 would render
Guyot inoperable. Id. at 3.
Petitioner responds that “‘[p]rompting a user for certain information before
providing a user download access to a server would have been an obvious design
choice based on knowledge of this broadly-used technique.’” Pet. Reply 14
(quoting Ex. 1003 ¶ 365). Petitioner further responds that it would have been
trivial to alter Guyot with RFC 1635, and would not have required any special
skill, and, therefore, such a combination would not have rendered Guyot
inoperable. Pet. Reply 13–14 (citing Ex. 2015, 80:9–18).
We disagree with Patent Owner. First, we are not persuaded by Patent
Owner’s argument that the combination of features of RFC 1635 with Guyot
would have rendered Guyot inoperable because Patent Owner fails to direct us to
persuasive evidence to demonstrate that such a combination would render Guyot
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inoperable. Patent Owner’s conclusory assertion is tantamount to attorney
arguments that cannot take the place of evidence lacking in the record. Meitzner v.
Mindick, 549 F.2d 775, 782 (CCPA 1977).
Second, we also are not persuaded that Petitioner has failed to provide
sufficient evidence to support a finding of obviousness. Petitioner provides the
rationale, supported by expert testimony, that the modification of Guyot to include
the features of RFC 1635 would have been an obvious design choice. Pet. 39–40
(citing Ex. 1003 ¶ 369). Accordingly, we determine that Petitioner has provided
sufficient evidence, in the form of expert testimony, to support a finding of
obviousness.
Third, we further are not persuaded that a person with ordinary skill in the
art would not have looked to the anonymous FTP, as disclosed by RFC 1635, when
concerned with collecting demographic information. Patent Owner does not direct
us to persuasive evidence on the record to support its argument. Accordingly,
Patent Owner’s argument is merely a conclusory attorney argument that is afforded
little weight. Furthermore, Petitioner’s expert testifies that the technique of
collecting information in response to a user requesting to download access was
common in the art at the time. Ex. 1003 ¶ 366. Accordingly, we are persuaded by
Petitioner and Petitioner’s expert that a person with ordinary skill in the art would
have found it to be an obvious design choice to combine the feature of prompting a
user for information prior to providing download access from RFC 1635 to Guyot.
Id. ¶¶ 365–369.
3. Conclusion
We determine that Petitioner has demonstrated, by a preponderance of the
evidence, that claims 20–22 would have been obvious over Guyot and RFC 1635.
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D. Adoption of the “Broadest Reasonable Interpretation” Standard
Patent Owner argues that the United States Patent and Trademark Office
(“PTO”) does not have substantive rule-making authority and, accordingly, Patent
Owner contends that the broadest reasonable construction standard should not
apply and claim construction should be carried out in the same manner as applied
in a judicial proceeding. PO Resp. 28–30. Patent Owner has not provided a claim
construction as would have been carried out in a judicial proceeding or alleged any
distinctions between the claim construction that would have been carried out in a
judicial proceeding and the broadest reasonable construction. As such, Patent
Owner’s argument does not articulate clearly how our determinations would be
different based on a different claim construction standard. Accordingly, Patent
Owner’s argument is tantamount to a request for an advisory opinion.
In any event, we disagree with Patent Owner. Our reviewing court has held
that “Congress implicitly adopted the broadest reasonable interpretation standard in
enacting the AIA,” and “§ 316 provides authority to the PTO to conduct
rulemaking.” In re Cuozzo Speed Techs., LLC, No. 2014-1301, 2015 WL 448667,
at *7–8 (Fed. Cir. Feb. 4, 2015). Accordingly, the “broadest reasonable
interpretation standard affects both the PTO’s determination of whether to institute
IPR proceedings and the proceedings after institution and is within the PTO’s
authority under the statute.” Id.

E. Patent Owner’s Motion to Amend
Patent Owner proposes substitute claims 23–34, contingent in the “event that
original claim 11 is found to be not patentable.” Mot. to Amend 1. As discussed
above, Petitioner has demonstrated by a preponderance of the evidence, that all of
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the challenged claims are unpatentable. Therefore, Patent Owner’s contingent
Motion to Amend is before us for consideration.
As the moving party, Patent Owner bears the burden of proof to establish
that it is entitled to the relief requested. 37 C.F.R. § 42.20(c). Entry of the
proposed amendment is not automatic, but only upon Patent Owner’s having
demonstrated the patentability of those claims.
1. Substitute Claims 23–34
Independent claim 23, proposed substitute for independent claim 11, is
reproduced below:
23. (Proposed substitute for original claim 11) A method of providing
demographically-targeted advertising to a computer user, comprising
the steps of:
providing a server that is accessible via a computer network,
permitting a computer user to access said server via said
computer network,
acquiring demographic information about the user, said
demographic information including information specifically provided
by the user in response to a request for said demographic information,
providing the user with download access to computer software
that, when run on a computer, displays advertising content, records
computer usage information concerning the user’s utilization of the
computer, and periodically requests additional advertising content,
wherein the computer usage information comprises information about
the user’s interactions with said computer software displaying
advertising content and at least one other program,
transferring a copy of said software to the computer in response
to a download request by the user,
providing a unique identifier to the computer, wherein said
identifier uniquely identifies information sent over said computer
network from the computer to said server,
associating said unique identifier with demographic information
in a database,
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selecting advertising content for transfer to the computer in
accordance with demographic information associated with said unique
identifier;
transferring said advertising content from said server to the
computer for display by said program,
periodically acquiring said unique identifier and said computer
usage information recorded by said software from the computer via
said computer network, and
associating said computer usage information with said
demographic information using said unique identifier,
selecting advertising content for transfer to the computer in
accordance with real-time and other computer usage information and
demographic information associated with said unique identifier, and
transferring said advertising content from said server to the
computer for display by said program.
Substitute claims 24–34, recite the same limitations as original claims 12–22
but depend from substitute claim 23.
2. Claim Construction
Claim construction is an important step in a patentability determination.
Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1339 (Fed. Cir. 2003);
Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) (“Both
anticipation under § 102 and obviousness under § 103 are two-step inquiries. The
first step in both analyses is a proper construction of the claims . . . . The second
step in the analyses requires a comparison of the properly construed claim to the
prior art.” (internal citations omitted)). A motion to amend claims must identify
how the proposed substitute claims are to be construed, especially when the
proposed substitute claims introduce new claim terms. See Idle Free Sys., Inc. v.
Bergstrom, Inc., Case IPR2012-00027, slip op. at 7 (PTAB June 11, 2013) (Paper
26) (informative).
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Patent Owner discusses that substitute claim 23 introduces the additional
elements of “wherein the computer usage information comprises information about
the user’s interactions with said computer software displaying advertising content
and at least one other program” and the selecting of advertising content step is in
accordance with “real-time and other computer usage information.” Mot. to
Amend 6 (emphasis omitted). Patent Owner argues that these features distinguish
the proposed substitute claims from all of the cited prior art. Id. at 13.
Patent Owner, however, does not provide claim constructions for how the
new claim terms should be construed. For example, Patent Owner does not
provide any discussion or explanation as to how the limitation “selecting
advertising content for transfer to the computer in accordance with real-time” is to
be construed. Absent a proposed claim construction for this limitation, it is unclear
as to whether the “selecting” or “transfer” is in accordance with “real-time.”
Accordingly, Patent Owner’s Motion to Amend does not provide adequate
information for us to determine whether the substitute claims are patentable over
the prior art. Therefore, we are not persuaded that Patent Owner has met its burden
to demonstrate the patentability of the propose substitute claims under 37 C.F.R.
§ 42.20(c).
3. Written Description
A motion to amend claims must identify clearly the written description
support for each proposed substitute claim. 37 C.F.R. § 42.121(b). The
requirement that the motion to amend must set forth the support in the original
disclosure of the patent is with respect to each claim, not for a particular feature of
a proposed substitute claim. The written description test is whether the original
disclosure of the application relied upon reasonably conveys to a person of
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ordinary skill in the art that the inventor had possession of the claimed subject
matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en banc). Thus, the motion should account for the claimed
subject matter as a whole, i.e., the entire proposed substitute claim, when showing
where there is sufficient written description support for each claim feature. See
Nichia Corp. v. Emcore Corp., Case IPR2012-00005, slip op. at 4 (PTAB June 3,
2013) (Paper 27) (representative).
Patent Owner points to several passages of the “as-filed version” of the ʼ314
patent application for support for substitute claim 23. Mot. to Amend 6–7. Patent
Owner, however, fails to point out with any particularity or explanation as to where
in the several cited passages the additional limitations are supported. Patent Owner
further fails to provide citations and explanations for support for substitute claims
24–34. For example, it is unclear from Patent Owner’s discussion in which
passage there is support for the limitation “selecting advertising content for transfer
to the computer in accordance with real-time.” We have reviewed the passages
cited by Patent Owner and are unable to discern readily where support for this
limitation is found. Accordingly, we are not persuaded that Patent Owner has met
its burden to demonstrate written description support for each proposed substitute
claim as required by 37 C.F.R. § 42.121(b)(1) and § 42.121(b)(2).
4. Conclusion
For the foregoing reasons, Patent Owner has not satisfied its burden of proof
and, accordingly, Patent Owner’s Motion to Amend is denied.
III. CONCLUSION
We conclude that Petitioner has demonstrated by a preponderance of the
evidence that (1) claims 11–14 and 16–19 are anticipated by Guyot, (2) claim 15
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would have been obvious over Guyot and Robinson, and (3) claims 20–22 would
have been obvious over Guyot and RFC 1635.
This is a final written decision of the Board under 35 U.S.C. § 318(a).
Parties to the proceeding seeking judicial review of this decision must comply with
the notice and service requirements of 37 C.F.R. § 90.2.
IV. ORDER
Accordingly, it is hereby:
ORDERED that claims 11–22 of U.S. Patent No. 6,628,314 are held
unpatentable; and
FURTHER ORDERED that Patent Owner’s Motion to Amend is
denied.

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For PETITIONER:

Clinton H. Brannon
Mayer Brown, LLP
cbrannon@mayerbrown.com

FOR PATENT OWNER:

Jason S. Angell
Freitas Angell & Weinberg LLP
jangell@fawlaw.com