BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`GOOGLE INC.,
`Petitioner
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`v.
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`KLAUSTECH, INC.
`Patent Owner
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`Case CBM2016-00096
`Patent 6,128,651 C1
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`______________________
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`
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`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`GOOGLE INC.,
`Petitioner
`
`v.
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`KLAUSTECH, INC.
`Patent Owner
`
`
`
`
`
`
`
`
`
`Case CBM2016-00096
`Patent 6,128,651 C1
`
`______________________
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE
`
`
`
`
`
`Case CBM2016-00096
`Attorney Docket No. 19473-0342CP1
`US Patent No. 6,128,651
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`The challenged claims remain CBM-eligible under the Federal Circuit’s new
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`guidance that tethers CBM-eligibility to the text of AIA § 18(d)(1). Unwired
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`Planet, LLC v. Google Inc., 841 F.3d 1376, 1382 (Fed. Cir. 2016) [hereinafter
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`Unwired Planet III]. Under Unwired Planet III, a patent is CBM-eligible if it
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`claims a method for performing “operations used in the practice, administration, or
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`management of a financial product or service.” Id. at 1378; 1380 n.5 (endorsing
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`the test of whether the patent claims “activities that are financial in nature” while
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`rejecting the “incidental to”/“complementary to” inquiry).
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`The challenged claims satisfy the requirements from AIA § 18(d)(1) and are
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`distinct from the claims at issue in Unwired Planet III. As the Petition explains,
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`the challenged claims expressly recite financial-related activities—including
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`operations used in the practice, administration, or management of a financial
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`product or service, such as online advertising. Petition at pp. 9-18. For example,
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`the Petition notes the challenged independent claims 20 and 25 each recite:
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` “providing ad content for [a] non-scrolling ad frame,”
` “placing the ad content in the non-scrolling ad frame . . . to display
`the ad content,” and
` “retaining . . . a record of [] browser identity, [] ad identity, and
`the timer timeout of the ad content at the browser.”
`GOOGLE1001 at Claims 20, 25 (emphasis added); Petition at pp. 9-10.
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`1
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`Case CBM2016-00096
`Attorney Docket No. 19473-0342CP1
`US Patent No. 6,128,651
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`The first two of these steps (“providing ad content” and “placing the ad
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`content”) expressly require transmitting and displaying “ad content” in a
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`browser—operations used in the practice, administration, or management of a
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`financial product or service, such as online advertising. Unlike the claims at issue
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`in Unwired Planet III, which were directed to location information for wireless
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`devices and did not include any explicit recitations about a financial product or
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`service (see 841 F.3d 1378), the claims of the ’651 patent are explicitly directed to
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`the practice, administration, or management of an online advertising system—
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`subject matter that, as cited in the Petition, was deemed to be “financial in nature”
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`and “a financial product or service” in previous CBM cases. Petition at pp. 10-11;
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`Google Inc. v. Network-1 Techs., Inc., CBM2015-00113, Paper No. 7 at p. 7
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`(PTAB Oct. 19, 2015) (finding that “[a]dvertising is a fundamental business
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`practice”); Google Inc. v. Patrick Zuili, CBM2016-00008, Paper No. 18 at p. 10
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`(PTAB April 26, 2016) (“providing and selling Internet advertising, which is a
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`‘financial product or service’,” and citing Blue Calypso, LLC v. Groupon, Inc., 815
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`F.3d 1331, 1337-39 (Fed. Cir. 2016)).
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`The Federal Circuit’s recent ruling in Unwired Planet III did not disturb
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`these earlier holdings of what subject matter qualifies as a “financial product or
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`service,” and indeed cited approvingly to both Versata and Blue Calypso. Unwired
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`2
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`Planet III, 841 F.3d at 1379-80 (citing Versata Dev. Grp., Inc. v. SAP Am., Inc.,
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`Case CBM2016-00096
`Attorney Docket No. 19473-0342CP1
`US Patent No. 6,128,651
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`793 F.3d 1306 (Fed. Cir. 2015)) and 1381 (citing Blue Calypso’s holding that
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`claims to an advertising program satisfied the financial prong); see also Kayak
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`Software Corp. v. IBM Corp., CBM2016-00077, Paper No. 15 at p. 11 (PTAB Dec.
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`15, 2016) (an application “presenting advertising to the user” was “financial in
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`nature”). As already quoted in the Petition here, Versata decision made clear that:
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`the definition of ‘covered business method patent’ is not limited to
`products and services of only the financial industry, or to patents owned
`by or directly affecting the activities of financial institutions such as
`banks and brokerage houses. The plain text of the statutory definition ...
`on its face covers a wide range of finance-related activities.
`Versata, 793 F.3d at 1325 (Fed. Cir. 2015) (emphasis added); Petition at p. 16.
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`Thus, online advertising qualifies as a “financial product or service” even after
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`Unwired Planet III—and here, the claims expressly recite it.
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`The third of these steps (“retaining a record”) is certainly “financial in
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`nature” because the sole function for retaining these claimed “records” of the
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`advertisements is for the financial use of “compensating” websites and “billing”
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`advertisers—thereby claiming an inherent limitation to a finance-related activity.
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`Petition at pp. 13-15 (citing GOOGLE1001 at 4:32-37; 3:32-35; 2:28-33; 3:40-43;
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`Abst.; and Fig. 1). Again, Unwired Planet III discusses and endorses the broad
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`3
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`Case CBM2016-00096
`Attorney Docket No. 19473-0342CP1
`US Patent No. 6,128,651
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`nature of “financial products and services” as previously articulated by the Versata
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`case. Unwired Planet III, 841 F.3d at 1379. Here, the claimed “retaining . . . a
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`record” operation is used in the practice, administration, or management of a
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`financial product or service—namely, online advertising.
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`Accordingly, the challenged claims expressly recite operations used in the
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`practice, administration, and management of online advertising, and, as
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`summarized in the Petition, are “necessarily directed to advertisements and the
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`corresponding movement of money, and cannot be regarded as merely ‘tangential’
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`to a financial product or service.” Petition at p. 15. Indeed, as cited in the Petition,
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`both Patent Owner and the inventor (Mr. Cezar) previously agreed that the ’651
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`patent claimed activities that are financial in nature. Petition at pp. 11 (Patent
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`Owner stating in district court 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”) (quoting GOOGLE1007 at p. 2); 13 (inventor agreeing that the ’651
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`patent claims provide a way for “the person who wanted to run this so that he
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`could gain revenue from an advertiser”) (quoting GOOGLE1018 at 30:19-21).
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`The Unwired Planet III decision did not change these facts/claim elements
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`showing that the challenged claims are eligible for CBM Review.
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`4
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`Dated: December 23, 2016
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`Case CBM2016-00096
`Attorney Docket No. 19473-0342CP1
`US Patent No. 6,128,651
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`Respectfully submitted,
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`
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`
` /Michael T. Hawkins/
`Michael T. Hawkins, Reg. No. 57,867
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`Fish & Richardson P.C.
`Attorney for Petitioner
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`5
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`Case CBM2016-00096
`Attorney Docket No. 19473-0342CP1
`US Patent No. 6,128,651
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`CERTIFICATE OF SERVICE
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`
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on December 23, 2016, a complete and entire copy of this Petitioner’s
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`Reply to Patent Owner’s Preliminary Response was provided by email to the
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`Patent Owner by serving the correspondence address of record as follows:
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`aferraro@martinferraro.com
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`docketing@martinferraro.com
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`/Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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