IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Robert M. Cezar
`In re Patent of:
`6,128,651 C1
`U.S. Pat. No.:
`Oct. 3, 2000
`Issue Date:
`App. Serial No.: 09/291,785
`Filing Date:
`April 14, 1999
`Title:
`INTERNET ADVERTISING WITH CONTROLLED AND
`TIMED DISPLAY OF AD CONTENT FROM
`CENTRALIZED SYSTEM CONTROLLER
`
`Atty Docket No.: 19473-0342CP1
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`PETITION FOR COVERED BUSINESS METHOD REVIEW
`OF UNITED STATES PATENT NO. 6,128,651
`PURSUANT TO 35 USC § 321, AIA § 18, AND 37 C.F.R. §§ 42.300 – 42.304
`
`
`
`
`
`
`

`

`Attorney Docket No. 19473-0342CP1
`US Patent No. 6,128,651
`
`TABLE OF CONTENTS
`
`I. 
`
`INTRODUCTION ........................................................................................... 1 
`
`II.  MANDATORY NOTICES AND FEES ......................................................... 2 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`Real Parties-In-Interest Under 37 C.F.R. § 42.8(b)(1) .......................... 2 
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2) ..................................... 2 
`
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) .................. 4 
`
`Service Information ............................................................................... 4 
`
`Payment Of Fees Under 37 C.F.R.§42.103 ........................................... 4 
`
`III.  SUMMARY OF THE ’651 PATENT ............................................................. 4 
`
`A. 
`
`B. 
`
`Brief Description ................................................................................... 4 
`
`Summary of the Prosecution History .................................................... 5 
`
`1. 
`
`2. 
`
`Original Prosecution ................................................................... 5 
`
`Ex Parte Reexamination History ................................................ 6 
`
`IV.  REQUIREMENTS FOR CBM UNDER 37 C.F.R § 42.104 .......................... 7 
`
`A. 
`
`B. 
`
`C. 
`
`Statement Of The Precise Relief Requested For Each Claim
`Challenged ............................................................................................. 7 
`
`The ’651 Patent Is A Covered Business Method Patent Because
`Claims 20 And 25 Are Directed to “Performing Data Processing
`or Other Operations Used in the Practice, Administration, or
`Management of a Financial Product or Service” .................................. 9 
`
`Claims 20 and 25 Are Not Directed to a Technological Invention
` ............................................................................................................. 18 
`Claims 20 and 25 are directed to solving business
`problems, rather than technical problems. ................................ 19 
`
`1. 
`
`2. 
`
`The ’651 patent background asserts that a search engine
`indexing problem exists and then identifies which
`
`i
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`

`

`Attorney Docket No. 19473-0342CP1
`US Patent No. 6,128,651
`essential element is “important” to solving this alleged
`problem, but Patent Owner now admits in court that the
`“important” element is not required by claims 20 and 25. ....... 23 
`
`3. 
`
`Claims 20 and 25 recite traditional hardware/components
`that were known before the time of the ’651 patent. ................ 28 
`
`D. 
`
`Petitioner Has Been Sued For Infringement Of The ’651 Patent
`And Is Not Estopped ........................................................................... 34 
`
`V. 
`
`CLAIM CONSTRUCTIONS ........................................................................ 34 
`
`A. 
`
`“non-scrolling ad display” (claims 20-21, 23-26, and 28-29) ............ 35 
`
`VI.  LEVEL OF ORDINARY SKILL IN THE ART ........................................... 36 
`
`VII.  IT IS MORE LIKELY THAN NOT THAT AT LEAST ONE CLAIM
`OF THE ’651 PATENT IS UNPATENTABLE ........................................... 36 
`
`A. 
`
`[GROUND 1] – Claims 20-21, 23-26, and 28-29 Fail to Recite a
`Statutory Claim Category Under 35 U.S.C. § 101 .............................. 36 
`
`1. 
`
`A “non-scrolling ad display” is not a “process, machine,
`manufacture, or composition of matter” as required by 35
`U.S.C. § 101. ............................................................................. 36 
`
`B. 
`
`[GROUND 2] – Claims 20-21, 23-26, and 28-29 Recite an
`Improper Hybrid of Claim Categories Under 35 U.S.C. § 112 .......... 41 
`
`1. 
`
`Even If the Claimed “Non-Scrolling Ad Display” did fit
`Within a Statutory Category Under 35 U.S.C. § 101,
`Claims 20-21, 23-26, and 28-29 Are Indefinite Under 35
`U.S.C. § 112, ¶2 For Being Directed To An Improper
`“Hybrid” of Mixed Apparatus/Method Elements ..................... 42 
`
`C. 
`
`[GROUND 3] – Claims 20-21, 23-26, and 28-29 Are Directed to
`Patent-Ineligible Subject Matter Under 35 U.S.C. § 101 and Alice
` ............................................................................................................. 45 
`
`1. 
`
`2. 
`
`Claims 20-21, 23-26, and 28-29 are directed to an abstract
`idea under the first prong of Alice’s two-part test. ................... 46 
`
`Claims 20-21, 23-26, and 28-29 do not amount to
`
`ii
`
`

`

`Attorney Docket No. 19473-0342CP1
`US Patent No. 6,128,651
`significantly more than the abstract idea under the second
`prong of Alice’s two-part test. ................................................... 48 
`
`3. 
`
`Patent Owner changed its position regarding the technical
`nature/solution for claims 20 and 25 after the district court
`made a preliminary ruling on the pleadings. ............................. 53 
`
`D. 
`
`[GROUND 4] – Claims 20-21, 23-26, and 28-29 Are
`Unpatentable Under 35 U.S.C. § 112, ¶ 1 For Reciting The “Non-
`Scrolling Ad Frame” In A Way That Is Never Contemplated In
`the Specification and That Contradicts The “Important”
`Requirements Of The Specification .................................................... 57 
`
`1. 
`
`2. 
`
`Claims 20-21, 23-26, and 28-29 improperly omit an
`essential step for providing the “non-scrolling ad frame”
`and therefore fails the written description requirement. ........... 59 
`
`The specification fails to provide written description
`support for any embodiment in which the “non-scrolling
`ad frame” is provided together with a page transmitted
`from the website, as claims 20-21, 23-26, and 28-29
`permit. ....................................................................................... 72 
`
`E. 
`
`[GROUND 5] – Claims 20-21, 23-26, and 28-29 Are
`Unpatentable Under 35 U.S.C. § 112, ¶ 1 For Reciting The “Non-
`Scrolling Ad Frame” In A Way That Is Not Enabled By The
`Specification ........................................................................................ 74 
`
`1. 
`
`The specification fails to describe how the “non-scrolling
`ad frame” is provided together with a page transmitted
`from the website, as claims 20-21, 23-26, and 28-29
`permit, “in such full clear, concise, and exact terms” that
`would enable a POSITA to make and use the claimed
`subject matter. ........................................................................... 74 
`
`F. 
`
`G. 
`
`[GROUND 6] - Claims 20-21, 23-26, and 28-29 Are
`Unpatentable Under 35 U.S.C. § 112, ¶ 2 For Failing To Claim
`What Applicant Regards As His Invention. ........................................ 77 
`
`[GROUND 7] - Claims 20-21, 23-26, and 28-29 Are Indefinite
`Under 35 U.S.C. § 112, ¶ 2. ................................................................ 79 
`
`iii
`
`

`

`Attorney Docket No. 19473-0342CP1
`US Patent No. 6,128,651
`The Term ‘Timer Timeout Report’ Recited in Claims 20
`and 25 Lacks Antecedent Basis and Prevents Clarity. ............. 79 
`
`The Multiple Recitations of ‘a Website’ and ‘a Browser’
`in Claims 20 and 25 are Ambiguous and Unclear. ................... 81 
`
`The Multiple Recitations of ‘an Internet Address’ in
`Claims 23 and 28 are Ambiguous and Unclear. ....................... 82 
`
`1. 
`
`2. 
`
`3. 
`
`VIII.  CONCLUSION .............................................................................................. 83 
`
`
`
`
`
`iv
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`

`

`Attorney Docket No. 19473-0342CP1
`US Patent No. 6,128,651
`
`EXHIBITS
`
`GOOGLE1001 U.S. Patent No. 6,128,651 C1 to Cezar (“the ’651 patent”)
`
`GOOGLE1002 Prosecution History of the ’651 Patent (Serial No. 09/291,785)
`
`GOOGLE1003 Declaration of Drew Schulz
`
`GOOGLE1004 Ex Parte Reexamination History of the ’651 Patent (Control
`No. 90/011,303)
`
`GOOGLE1005 Ex Parte Reexamination History of the ’651 Patent (Control
`No. 90/012,831)
`
`GOOGLE1006 Patent Owner’s Complaint for KlausTech Inc. v. Admob, Inc.,
`Case No. 4:10-cv-05899-JSW (N.D. Cal.)
`
`GOOGLE1007 Patent Owner’s Claim Construction Brief for KlausTech Inc.
`v. Admob, Inc., Case No. 4:10-cv-05899-JSW (N.D. Cal.)
`
`GOOGLE1008 Transcript of Claim Construction Hearing on April 28, 2016,
`for KlausTech Inc. v. Admob, Inc., Case No. 4:10-cv-05899-
`JSW (N.D. Cal.)
`
`GOOGLE1009 Patent Owner’s Response in Opposition to Defendant’s
`Motion for Judgment on the Pleadings of Invalidity of the ’651
`Patent for KlausTech Inc. v. Admob, Inc., Case No. 4:10-cv-
`05899-JSW (N.D. Cal.)
`
`GOOGLE1010 Patent Owner’s Reply Claim Construction Brief for KlausTech
`Inc. v. Admob, Inc., Case No. 4:10-cv-05899-JSW (N.D. Cal.)
`
`GOOGLE 1011 Claim Construction Order for KlausTech Inc. v. Google, Inc.,
`Case No. 4:10-cv-05899-JSW (N.D. Cal.)
`
`GOOGLE1012 Patent Owner’s Complaint for KlausTech Inc. v. Admob, Inc.,
`Case No. 6:10-cv-00039-LED (E.D. Tex.)
`
`GOOGLE1013 AdMob’s Motion for Transfer of Venue to the Northern
`District of California for KlausTech Inc. v. Admob, Inc., Case
`No. 6:10-cv-00039-LED (E.D. Tex.)
`
`v
`
`

`

`Attorney Docket No. 19473-0342CP1
`US Patent No. 6,128,651
`GOOGLE1014 Order Granting Change of Venue to the Northern District of
`California for KlausTech Inc. v. Admob, Inc., Case No. 6:10-
`cv-00039-LED (E.D. Tex.)
`
`GOOGLE1015 Order Setting Initial Case Management Conference and ADR
`Deadlines for KlausTech Inc. v. Admob, Inc., Case No. 3:10-
`cv-00039-MEJ (N.D. Cal.)
`
`GOOGLE1016 Reassignment Order for KlausTech Inc. v. Admob, Inc., Case
`No. 3:10-cv-00039-MEJ (N.D. Cal.)
`
`GOOGLE1017
`
`Joint Stipulation and Order for KlausTech Inc. v. Admob, Inc.,
`Case No. 4:10-cv-00039-JSW (N.D. Cal.)
`
`GOOGLE1018 Transcript of Deposition of Robert Cezar on June 18, 2015, for
`KlausTech Inc. v. Admob, Inc., Case No. 4:10-cv-05899-JSW
`(N.D. Cal.)
`
`GOOGLE1019 Defendant AdMob, Inc.’s Answer and Counterclaims to
`KlausTech, Inc.’s Original Complaint for KlausTech Inc. v.
`Admob, Inc., Case No. 6:10-cv-05899-JSW (E.D. Tex.)
`
`GOOGLE1020 Order Denying Motion for Judgment on the Pleadings for
`KlausTech Inc. v. Admob, Inc., Case No. Case No. 4:10-cv-
`05899-JSW (N.D. Cal.)
`
`GOOGLE1021 Defendant’s Notice of Motion and Motion for Judgment on the
`Pleadings of Invalidity for KlausTech Inc. v. Admob, Inc.,
`Case No. 4:10-cv-05899-JSW (N.D. Cal.)
`
`GOOGLE1022 Defendant’s Claim Construction Brief for KlausTech Inc. v.
`Admob, Inc., Case No. 4:10-cv-05899-JSW (N.D. Cal.)
`
`vi
`
`

`

`Attorney Docket No. 19473-0342CP1
`US Patent No. 6,128,651
`
`I.
`
`INTRODUCTION
`
`Google Inc. (“Petitioner”) petitions for Covered Business Method Review
`
`(“CBM”) under 35 U.S.C. § 321 and 37 C.F.R. § 42.300 et seq. of claims 20-21,
`
`23-26, and 28-29 of U.S. Patent 6,128,651C1 (“the ’651 patent”). The ’651 patent
`
`was subject to an ex parte reexamination years ago, and all of the claims being
`
`challenged here appear only in the reexamination certificate for the ’651 patent.
`
`Notably, all grounds raised in this Petition fall under 35 U.S.C. §§ 101 and
`
`112—none of which could have been raised in the earlier ex parte reexamination
`
`requests (refer to Section III.B.2 below). This Petition reflects Petitioner’s first
`
`opportunity to raise to the Patent Office the significant defects in the challenged
`
`claims that give rise to these new grounds under 35 U.S.C. §§ 101 and 112, and
`
`Patent Owner’s more recent statements in the pending litigation further crystallize
`
`the severity of these defects and their harmful effects.
`
`Patent Owner admits the ’651 patent relates to presenting and monetizing
`
`advertisements on websites. GOOGLE1007 at p. 2. In particular, the challenged
`
`claims describe traditional options for a fundamental business practice—“Internet
`
`advertising”—that is at least incidental or complementary to a financial product or
`
`service, and thus satisfies the “financial product or service” test for CBM.
`
`GOOGLE1001 at 1:6; see, infra, Section IV.
`
`The challenged claims are invalid on multiple grounds under 35 U.S.C. §§
`
`1
`
`

`

`Attorney Docket No. 19473-0342CP1
`US Patent No. 6,128,651
`101 and 112—again, none of which could have been raised in either of the earlier
`
`reexamination requests against the ’651 patent. The defects in claims 20 and 25
`
`deprive the public of certainty as to the boundaries of the claim scope and
`
`introduce ambiguities that Patent Owner now exploits by asserting a claim scope
`
`directly opposite from the patent’s admitted “important” requirements (e.g.,
`
`GOOGLE1001 at 2:60-62). Likewise, the claims fail to satisfy the statutory
`
`requirements for patent-eligible subject matter. Such defects must be scrutinized
`
`by the Patent Office to prevent Patent Owner from exploiting them against the
`
`public. A review of these selected claims (claims 20-21, 23-26, and 28-29) is just
`
`and ripe.
`
`II. MANDATORY NOTICES AND FEES
`A. Real Parties-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Google Inc. and AdMob, Inc (which was acquired by Google Inc.) are the
`
`real parties-in-interest. No other parties had access to the Petition, and no other
`
`parties had any control over, or contributed to any funding of, the preparation or
`
`filing of the present Petition.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`Google Inc. is currently a defendant in a pending litigation involving the
`
`’651 patent. See KlausTech, Inc. v. Google Inc., No. 4:10-cv-05899 JSW (N.D.
`
`Cal.). This case was originally filed against AdMob, Inc. in the Eastern District of
`
`Texas on February 17, 2010, and was assigned Case No. 6:10-cv-00039.
`2
`
`

`

`Attorney Docket No. 19473-0342CP1
`US Patent No. 6,128,651
`GOOGLE1012 at pp. 1-4. On July 8, 2010, AdMob filed a motion to transfer to
`
`the Northern District of California. GOOGLE1013 at pp. 1-14. On November 30,
`
`2010, the district court granted the motion to transfer. GOOGLE1014 at p. 1. The
`
`docket was transferred to the Northern District of California on December 27, 2010
`
`and was assigned Case No. 3:10-cv-05899. GOOGLE1015 at p. 1. On January 25,
`
`2011, the case was reassigned to a different judge. GOOGLE1016 at p. 1.
`
`In 2014, the case number for this litigation was changed from Case No.
`
`3:10-cv-05899 to Case No. 4:10-cv-05899 when Judge White moved from the San
`
`Francisco to the Oakland Division of the Northern District of California. On
`
`August 31, 2015, the District Court denied AdMob’s motion for judgment on the
`
`pleadings, which asserted that the challenged claims of the ’651 patent were
`
`ineligible under § 101. GOOGLE1020. As will be explained, during this pleading
`
`stage, Patent Owner urged a first claim scope for claims 20 and 25 so that the
`
`motion regarding patent ineligibility would be denied. But, after the Court’s initial
`
`ruling, Patent Owner asserted a contradictory broader claim scope during the claim
`
`construction stage, which eliminated the key technical feature on which the District
`
`Court relied in denying the patent eligibility motion. See, infra, Section VIII.C.3.
`
`On April 19, 2016, the Court dismissed AdMob, Inc. and added Google Inc.
`
`to the suit. GOOGLE1017 at p. 5. Although the suit was originally captioned
`
`KlausTech, Inc. v. AdMob, Inc., it is now currently captioned KlausTech, Inc. v.
`
`3
`
`

`

`Attorney Docket No. 19473-0342CP1
`US Patent No. 6,128,651
`Google Inc. See, e.g., GOOGLE1011 at p. 1. The Court issued a claim
`
`construction order on May 23, 2016. Id.
`
`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Petitioners provide the following designation of counsel.
`
`LEAD COUNSEL
`Michael T. Hawkins, Reg. No. 57,867
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 612-337-2569 / Fax 612-288-9696
`
`BACK-UP COUNSEL
`Christopher C. Hoff, Reg. No. 67,738
`Tel: 612-766-2066
`John C. Phillips, Reg. No. 35,322
`Tel: 858-678-4304
`
`Service Information
`
`D.
`Please address all correspondence and service to the address listed above.
`
`
`
`Petitioner consents to electronic service by email at CBM19473-0342CP1@fr.com
`
`(referencing No. 19473-0342CP1 and cc’ing hawkins@fr.com, hoff@fr.com and
`
`phillips@fr.com).
`
`Payment Of Fees Under 37 C.F.R. § 42.103
`
`E.
`Pursuant to 37 C.F.R. § 42.203(a), Petitioner authorizes the Office to charge
`
`Deposit Account No. 06-1050 for the petition fee set forth in 37 C.F.R. § 42.15(b)
`
`and for any other required fees.
`
`III. SUMMARY OF THE ’651 PATENT
`A. Brief Description
`The ’651 patent is generally directed to business methods for displaying
`
`advertisements on a web page at a user’s browser and recording proof of
`
`advertisement display so that billing records can be processed and payments to
`4
`
`

`

`Attorney Docket No. 19473-0342CP1
`US Patent No. 6,128,651
`websites generated. GOOGLE1001 at 3:49-61. The ’651 patent describes
`
`presenting ads in a browser using a “non-scrolling ad frame,” which the ’651
`
`patent describes in the background section as “[a] known solution to scrolling” so
`
`that “the ad content is constantly located with respect to the viewed screen of the
`
`browser.” Id. at 1:41-44. The ’651 patent also describes generating and using an
`
`“audit trail” to process payments for ad placements on websites. Id. at Abstract
`
`(describing “an audit trail from which websites can be compensated for ad display
`
`and advertisers billed for the ad display”); 3:49-61 (describing a “central system
`
`controller” that “generates an audit trail, which can be used for compensation of
`
`the website and a billing record for the controlled and distributed advertising”).
`
`Summary of the Prosecution History
`
`B.
`The ’651 patent is the result of a brief original prosecution before the Office,
`
`a first ex parte reexamination, and a subsequently denied ex parte reexamination
`
`request.
`
`1. Original Prosecution
`The ’651 patent was filed on April 14, 1999, with claims 1-19.
`
`GOOGLE1002 at pp. 47, 105-113. Prosecution was brief, with original claims 1-
`
`19 being allowed in a first action Notice of Allowance on May 22, 2000. Id. at pp.
`
`28-30. No prior art references were specifically analyzed or otherwise compared
`
`to the claim elements. Rather, the Reasons for Allowance stated that “the art of
`
`5
`
`

`

`Attorney Docket No. 19473-0342CP1
`US Patent No. 6,128,651
`record fails to teach, remotely suggest, or render obvious a non-scrolling ad display
`
`from a website for causing a browser hitting the website to undertake centrally
`
`controlled and recorded ad display for guaranteed minimum timed intervals as
`
`currently claimed.” Id. at 30. The ’651 patent issued with claims 1-19 on October
`
`3, 2000. GOOGLE1001 at cover page; 10:32-16:21.
`
`2.
`Ex Parte Reexamination History
`Petitioner filed two requests for ex parte reexamination of the ’651 patent,
`
`with the first request being granted and the second request being denied.
`
`GOOGLE1004 at pp. 1370-1397; GOOGLE1005 at pp. 3-24.
`
`The first reexam request challenged the validity of original claims 1-19 on
`
`§103 grounds, and the ex parte reexamination was granted. GOOGLE1004 at
`
`1370-1397. The reexamination included three Office Actions and four Patent
`
`Owner responses with claim amendments, remarks, and inventor declarations and
`
`affidavits. Id. at 16-28; 32-96; 107-278; 283-394; 426-555; 775-850; 865-972.
`
`Through this reexamination proceeding, original claims 1-8 and 11-19 were
`
`cancelled; original claims 9 and 10 were amended and allowed; new claims 20-37
`
`were added; new claims 20-23, 29, and 31 were cancelled; and new claims 24-28,
`
`30, and 32-37 (renumbered as 20-31, respectively) were amended and allowed. Id.
`
`at 11, 13-16. A reexamination certificate issued on April 12, 2013, for claims 9,
`
`10, and 20-31. Id. at 1-3.
`
`6
`
`

`

`Attorney Docket No. 19473-0342CP1
`US Patent No. 6,128,651
`Issued independent claims 20 and 25 (renumbered from new claims 24 and
`
`30 that were added by amendment during the first reexamination) were found to be
`
`allowable over the prior art because the asserted prior art reference allegedly did
`
`not teach “that transmitting the next ad address is ‘in response to receipt of the
`
`timer timeout report at the central controller,’ as required by the claim language.”
`
`Id. at 5.
`
`The second reexam request was filed on April 8, 2013, shortly before the
`
`reexamination certification issued from the first reexamination petition.
`
`GOOGLE1004 at 1-3; GOOGLE1005 at 60-221. The second petition challenged
`
`the allowed claims from the first reexamination based on newly discovered prior
`
`art material to the new claim scope. GOOGLE1005 at 60-221. The second
`
`reexamination request was denied. Id. at 3-24.
`
`Importantly, none of the grounds raised in this present CBM proceeding
`
`could have been raised in the earlier reexamination requests.
`
`IV. REQUIREMENTS FOR CBM UNDER 37 C.F.R § 42.104
`A.
`Statement Of The Precise Relief Requested For Each Claim
`Challenged
`
`Petitioner request review of claims 20-21, 23-26, and 28-29 of the ’651
`
`patent under 35 U.S.C. § 321 because these claims are unpatentable as follows:
`
`7
`
`

`

`Ground
`Ground
`
`Claims
`20-21, 23-26,
`
`Attorney Docket No. 19473-0342CP1
`US Patent No. 6,128,651
`Basis for Rejection
`Invalid under 35 U.S.C. § 101 for failure to claim
`
`1
`
`and 28-29
`
`statutory claim category.
`
`Ground
`
`20-21, 23-26,
`
`2
`
`and 28-29
`
`Ground
`
`20-21, 23-26,
`
`3
`
`and 28-29
`
`Invalid under 35 U.S.C. § 112, ¶ 2 for improperly
`
`claiming a hybrid of claim categories (mixed
`
`apparatus/method steps).
`
`Invalid under 35 U.S.C. § 101 for claiming patent
`
`ineligible subject matter under 35 U.S.C. § 101 and
`
`Alice
`
`Ground
`
`20-21, 23-26,
`
`Invalid under 35 U.S.C. § 112, ¶ 1 for failing to satisfy
`
`4
`
`and 28-29
`
`the written description requirement.
`
`Ground
`
`20-21, 23-26,
`
`Invalid under 35 U.S.C. § 112, ¶ 1 for failing to satisfy
`
`5
`
`and 28-29
`
`the enablement requirement.
`
`Ground
`
`20-21, 23-26,
`
`Invalid under 35 U.S.C. § 112, ¶ 2 for failing to claim
`
`6
`
`and 28-29
`
`what the applicant regards as his invention.
`
`Ground
`
`20-21, 23-26,
`
`Invalid under 35 U.S.C § 112, ¶ 2 as being indefinite
`
`7
`
`and 28-29
`
`for multiple defects in the claim language.
`
`As shown above, all of the grounds set forth in this Petition fall under 35
`
`U.S.C. §§ 101 and 112. At a high level, the first two grounds (Grounds 1-2) relate
`
`to the readily noticeable defect that the challenged claims are not limited to any of
`
`8
`
`

`

`Attorney Docket No. 19473-0342CP1
`US Patent No. 6,128,651
`the four statutory categories (“process, machine, manufacture, or composition of
`
`matter”) as required by 35 U.S.C. § 101, or are an improperly confusing mixture of
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`statutory categories (hybrid apparatus and method steps). The third ground
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`(Ground 3) raises the §101 ground that the challenged claims are directed to
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`unpatentable abstract ideas without significantly more. The next set of grounds
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`(Grounds 4-6) related to an entirely different defect—namely, the Patent Owner’s
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`new assertions (raised recently in the corresponding litigation) that claims 20 and
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`25 should encompass embodiments directly opposite from the inventor’s
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`“important” requirement (as expressed in GOOGLE1001 at 2:60-62 and repeated
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`at 3:29-32, 5:18-26, and 6:36-41). Finally, the last ground (Ground 7) highlights
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`ambiguous language in the challenged claims that induce a lack of clarity for the
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`claim scope in a manner now being exploited by the Patent Owner in the
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`corresponding litigation.
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`None of these grounds were raised during the original prosecution of the
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`’651 patent nor were they available during the above-mentioned reexamination
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`requests.
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`B.
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`The ’651 Patent Is A Covered Business Method Patent Because
`Claims 20 And 25 Are Directed to “Performing Data Processing
`or Other Operations Used in the Practice, Administration, or
`Management of a Financial Product or Service”
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`As explained in further detail below, claims 20 and 25 recite features
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`relating to the presentation and monetization of advertisements (“ad content”). For
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`Attorney Docket No. 19473-0342CP1
`US Patent No. 6,128,651
`example, each of claims 20 and 25 includes steps for “providing ad content for [a]
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`non-scrolling ad frame,” and “placing the ad content in the non-scrolling ad frame .
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`. . to display the ad content.” Similarly, for the express business purpose of billing
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`advertisers and maintaining an audit trail, claims 20 and 25 provide a step of
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`“retaining . . . a record of [] browser identity, [] ad identity, and the timer timeout
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`of the ad content at the browser.” GOOGLE1001 at 2:46-48 (describing that “[t]he
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`data base provides an audit trail from which websites can be compensated for ad
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`display and advertisers billed for the ad display”). Each of these “advertising” and
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`audit/billing “record” elements are addressed in turn below.
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`Because advertising is a “fundamental business practice,” the subject matter
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`of claims 20 and 25 is at least incidental or complementary to a financial product
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`or service and thus satisfies the “financial product or service” test. Google Inc. v.
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`Network-1 Techs., Inc., CBM2015-00113, Paper No. 7 at p. 7 (PTAB Oct. 19,
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`2015); see also Google Inc. v. Unwired Planet, LLC, CBM2014-00004, Paper No.
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`8 at p. 10 (PTAB April 8, 2014) [hereinafter Unwired Planet I] (“Advertising is an
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`activity that is incidental or complementary to the financial activity of product
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`sales.”); Google Inc. v. Patrick Zuili, CBM2016-00008, Paper No. 18 at p. 10
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`(PTAB April 26, 2016) (finding that a patent for detecting click fraud in an
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`advertisement system was a covered business method); Google Inc. v. Unwired
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`Planet, LLC, CBM2014-00006, Paper No. 11 at p. 11 (PTAB April 8, 2014)
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`Attorney Docket No. 19473-0342CP1
`US Patent No. 6,128,651
`[hereinafter Unwired Planet II] (finding that a patent having a “client application”
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`associated with providers who could transmit advertisements to users’ wireless
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`devices was a covered business method); Allscripts Healthcare Solutions, Inc. v.
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`MyMedicalRecords, Inc., CBM2015-00022, Paper No. 10 at p. 11 (PTAB May 5,
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`2015) (finding that a patent having a claim that encompassed an embodiment in the
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`specification that allowed for display of “promotional material” to be a covered
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`business method, because “[a]dvertising is an activity that is incidental or
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`complementary to the financial activity of product sales”).
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`Indeed, the Patent Owner has defended claims 20 and 25 in the district court
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`as being directed to a business method incidental or complementary to a financial
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`product or service—stating that “[t]he invention taught and claimed in the ’651
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`Patent is an internet advertising system that allowed site owners to simply and
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`easily monetize their traffic and allowed advertisers a greater ability to track their
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`impressions.” GOOGLE1007 at p. 2 (emphasis added). Patent Owner’s financial
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`characterization of the patent is consistent with the language of claims 20 and 25,
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`as well as the specification. The specification extensively discusses the financial
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`context of the purported invention, including compensating websites for ad
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`displays and charging advertisers for the same:
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` Describing “an audit trail from which websites can be compensated for ad
`display and advertisers billed for the ad display.” (GOOGLE1001 at
`Abstract; see also 2:46-48.)
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`Attorney Docket No. 19473-0342CP1
`US Patent No. 6,128,651
` Discussing “[t]he system enable[ing] . . . accurate advertising budgeting and
`programming from the central controller” so that “advertising can be
`monitored and upgraded to meet marketing needs.” (Id. at 2:28-33.)
` Describing “the central system controller enables precision targeted
`advertising with accountability to the website and proof of advertisement
`display to the paying advertiser” through a database that “generates an audit
`trail, which can be used for compensation of the website and a billing record
`for the controlled and distributed advertising.” (Id. at 3:49-61.)
` Illustrating advertiser ad pricing “according to the group into which they are
`categorized.” (Id. at 9:10-12.)
` Discussing “advertising sales of this system” as space that is “‘rented’ from
`the operator of each advertiser webserver C” and that “each website is
`compensated for ‘making available’ placement of the non-scrolling frame.”
`(Id. at 5:10-16.)
`Also, some of these fundamental business practices of the claimed “system
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`controller S” are plainly illustrated in FIG. 1 of the patent, which is again
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`consistent with the language of claims 20 and 25:
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`Attorney Docket No. 19473-0342CP1
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`
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`Id. at FIG. 1; id. at 2:5-9 (discussing a website’s objective to generate “a larger
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`number of revenue earning hits”) (emphasis added); GOOGLE1003 at ¶ 29.
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`Similarly, in a deposition the inventor (Mr. Cezar) characterized the ’651
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`patent as merely providing a way for “the person who wanted to run this so that he
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`could gain revenue from an advertiser.” GOOGLE1018 at 30:19-21 (emphasis
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`added). The inventor went on to describe that the main objective of the ’651 patent
`
`is the underlying “business model.” Id. at 31:25-32:7 (describing the ’651 patent
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`Attorney Docket No. 19473-0342CP1
`US Patent No. 6,128,651
`as being different from one of the inventor’s earlier advertising products because it
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`is based “on a completely different business model, achiev[ing] the same end but
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`through different technology”); GOOGLE1003 at ¶ 30.
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`The fact that claims 20 and 25 relate to advertising activities incidental or
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`complementary to a “financial product or service” is made further apparent by the
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`various claim limitations relating to the control and recording of advertisement
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`presentation times. Claim 20, for example, recites that “each ad content” has “an
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`individual timer for timing out commencing with display [of the ad content] at the
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`browser” and that advertisement timeouts are “report[ed]” to and retained in
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`“record[s]” by the “central controller.” GOOGLE1001 at Cl. 20. The sole
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`disclosed reason for retaining these claimed “records” of the displayed
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`advertisements, as the specification explains, is to provide a mechanism for
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`“compensating” publisher websites and for “billing” advertisers on the basis of ad
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`content presentation times. See id. at 4:32-37 (the “system controller” maintains a
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`“site accounting 18” as “a record of total time interval of the many ad contents 16
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`that may be displayed through advertiser webservers C,” and “[t]his record may be
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`used to compensate each of the advertiser webservers C for the total time of ad
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`display to particular browsers B”); id. at 3:32-35 (“Second, the browser initiates
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`timer running as each ad is displayed. Thus, the advertiser is assured that his
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`particular ad content is displayed for the required minimum time interval”); 2:28-
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`14
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`Attorney Docket No. 19473-0342CP1
`US Patent No. 6,128,651
`33 (“The system enables precise controlled advertising to each web page viewing
`
`browser and accurate advertising budgeting and programming from the central
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`controller. As a consequence, browser advertising is generated which advertising
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`can be monitored and upgraded to meet marketing needs.”); 3:40-43 (“Fourth, the
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`browser reports to the system controller the time out of displayed ad content,
`
`enabling a precise record of advertising control to be maintained.”); Abst.
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`(“records” stored in the database of the central controller provide an “audit trail” so
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`that “websites can be compensated” and “advertisers billed”); FIG. 1 (“site
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`accounting,” and “advertiser billing”); GOOGLE1003 at ¶¶ 26, 28, 31, 37, 40.
`
`Simply put, the patent discloses “retaining” of records for the purpose of
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`“compensating” publisher websites and “billing” advertisers on the basis of ad
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`content presentation times. GOOGLE1003 at ¶ 31. As a result, the patent is
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`necessarily directed to advertisements and the corresponding movement of money,
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`and cannot be regarded as being merely “tangential” to a financial product or
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`service. AT&T Mobility v. Intellectual Ven