Trials@uspto.gov
`571-272-7822
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`Paper 15
`Entered: August 10, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`AT HOME BONDHOLDERS’ LIQUIDATING TRUST,
`Patent Owner.
`____________
`
`Case IPR2015-00657
`Case IPR2015-00660
`Patent 6,286,045 B1
`
`____________
`
`
`
`Before, KARL D. EASTHOM, JUSTIN T. ARBES, and
`MIRIAM L. QUINN Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`571-272-7822
`
`
`Paper 15
`Entered: August 10, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`AT HOME BONDHOLDERS’ LIQUIDATING TRUST,
`Patent Owner.
`____________
`
`Case IPR2015-00657
`Case IPR2015-00660
`Patent 6,286,045 B1
`
`____________
`
`
`
`Before, KARL D. EASTHOM, JUSTIN T. ARBES, and
`MIRIAM L. QUINN Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
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`IPR2015-00657
`IPR2015-00660
`Patent 6,286,045 B1
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`Google Inc. (“Petitioner”) filed two Petitions requesting inter partes
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`review of certain claims of U.S. Patent No. 6,286,045 B1 (“the ’045
`patent”). The Petition filed in IPR2015-00657 requested inter partes review
`of claims 20−31, 33, 43−44, 47−48, 59, 61−63, 72−73, 75, and 77−78.
`IPR2015-00657 (“’657 IPR”), Paper 2 (“’657 Pet.”). The Petition filed in
`IPR2015-00660 requested inter partes review of claims 49−53, 55−58,
`64−67, and 69−71. IPR2015-00660 (“’660 IPR”), Paper 2 (“’660 Pet.”). At
`Home Bondholders’ Liquidating Trust (“Patent Owner”) filed a Preliminary
`Response in each of the proceedings. ’657 IPR, Paper 10 (“Prelim. Resp.”);
`’660 IPR, Paper 10. Upon consideration of both Petitions and the
`Preliminary Responses, we instituted trial as to claims 49−53, 55−59, 61−67,
`and 69–73 of the ’045 patent on August 14, 2015. ’657 IPR, Paper 14
`(“’657 Dec.”); ’660 IPR, Paper 14 (“’660 Dec.”). We consolidated the ’660
`IPR with the ’657 IPR, and ordered all evidence and papers to be filed in the
`record of the ’657 IPR proceeding. ’660 Dec. 21.
`Subsequent to institution, and in accordance with our order
`consolidating the two proceedings, Patent Owner filed a Patent Owner
`Response (Paper 24, “PO Resp.”); and Petitioner filed a Reply (Paper 35,
`“Reply”). Oral argument was heard on April 7, 2016.1
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons discussed
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` A transcript of the oral argument is entered in the record as Paper 41
`(“Tr.”).
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`herein, and in view of the record in this trial, we determine that Petitioner
`has not shown by a preponderance of the evidence that claims 49−53,
`55−59, 61−67, and 69–73 of the ’045 patent (“the challenged claims”) are
`unpatentable.
`
`I.
`
`BACKGROUND
`
`A. RELATED MATTERS
`
`Petitioner identifies that the patent-at-issue is the subject matter of a
`district court case filed in the U.S. District Court for the District of Delaware
`(Case No. 1:14-cv-00216), and transferred to the U.S. District Court for the
`Northern District of California (Case No. 3:15-cv-00966). Paper 37.
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`B. INSTITUTED GROUNDS OF UNPATENTABILITY
`
`We instituted trial based on the following grounds (’657 Dec. 23−24;
`’660 Dec. 20):
`Reference[s]
`
`Basis
`
`§ 103
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`§ 103
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`Claims challenged
`49, 51−53, 55−59,
`61−67, and 70−73
`50 and 69
`
`Angles,2 Merriman,3 HTTP 1.04
`Angles, Merriman, HTTP 1.0, and
`Davis5
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` 2
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` U.S. Patent No. 5,933,811 (Exhibit 1012) (“Angles”).
`3 U.S. Patent No. 5,948,061 (Exhibit 1013) (“Merriman”).
`4 Fielding et al., HTTP Working Group Internet Draft Hypertext Transfer
`Protocol−HTTP/1.0, (Feb. 20, 1996) (Exhibit 1008) (“HTTP 1.0”).
`5 U.S. Patent No. 5,796,952 (Exhibit 1014) (“Davis”).
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`C. THE ’045 PATENT (EX. 1001)
`
`The ’045 patent is directed to a system for storing information on a
`computer network and allowing the information to be accessed by terminals
`connected to the computer network, either directly, or through an
`intermediary device such as a local or proxy server. Ex. 1001, Abstract.
`The system includes computers or web sites that store pages, which may
`include references to banners to be displayed in conjunction with the web
`pages on the terminal. Id. The ’045 patent also discloses a method that
`“solves the initial problem of how to create accurate counts of banner
`information displays on user terminals while avoiding the problems created
`by requiring the banner information to be retransmitted across the computer
`network each time the banner information is requested by a user or a user’s
`terminal.” Id. at 14:33−40. In one embodiment, the ’045 patent describes
`the use of an initial banner request signal that is a general content Uniform
`Resource Locator (“URL”) address generated by the terminal, where the
`URL does not specify which banner is to be displayed. Id. at 17:22−26. The
`recipient of the initial banner request signal selects which banner is to be
`displayed on the terminal, and returns a specific content URL address to the
`terminal, using a “Status HTTP 302 Redirect signal,” indicating the address
`of the selected banner. Id. at 17:26−36. Therefore, even though the banner
`may be cached or stored on the user’s terminal or on a proxy server, the
`specific content URL address signal is not cached, preventing the initial
`banner request signal from being blocked by either the terminal or the proxy
`server. Id. at 17:42−50.
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`D. ILLUSTRATIVE CLAIMS
`
`Of the challenged claims, claims 49, 59, 64, and 72 are independent.
`The remaining challenged claims depend directly or indirectly from a
`challenged independent claim. Claims 49 and 59, reproduced below, are
`illustrative of the challenged claims.
`49. A method for enabling distribution of a banner over
`a computer network to a device when the banner is
`referenced in a document served to the device, wherein the
`banner is stored in one or more servers connected to the
`computer network, and the device is connected to the
`computer network via an intermediary server, comprising:
`causing a first banner request signal to be transmitted
`from the device to a first server requesting that a banner be
`served to the device, wherein said first banner request signal
`includes information intended to make said first banner
`request signal not blockable by the device or the
`intermediary server as a result of a storage in the device or
`the intermediary server of said requested banner prior to the
`generation of said first banner signal by the device;
`sending a banner location signal from said first server
`to the device, wherein said banner location signal includes
`location information for said requested banner stored on a
`second server; and
`determining if said requested banner is stored on the
`device and, if said requested banner is not stored on the
`device, then causing a second banner request signal to be
`transmitted from the device to the intermediary server and
`determining if said requested banner is stored on the
`intermediary server, wherein if said requested banner is not
`stored on the intermediary server, causing at least a portion
`of said second banner request signal to be sent to said
`second server requesting that said second server serve said
`requested banner to said device.
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`59. A method for serving a banner to a client device,
`comprising:
`receiving at a primary server a first request for a
`banner, said first request containing at least a portion of an
`initial URL, wherein said first request includes information
`intended to prevent said first request from being blocked
`from the primary server despite previous storage of the
`banner on the client device;
`sending a signal from the primary server to the client
`device that includes at least a portion of a second URL
`associated with the banner’s location;
`receiving at the primary server a second TCP/IP
`compliant request requesting that the banner be served to the
`client device if the banner is not stored on the client device;
`serving the banner to the client device; and
`counting at least one display of the banner on the client
`device.
`
`II. ANALYSIS
`
`
`
`A. CLAIM INTERPRETATION
`
`The Board interprets claims using the “broadest reasonable
`construction in light of the specification of the patent in which [they]
`appear[].” 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S.
`Ct. 2131, 2144–46 (2016). We presume that claim terms have their ordinary
`and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is the meaning
`that the term would have to a person of ordinary skill in the art in question.”
`(quotation omitted)).
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`In our Decisions on Institution, we construed the term “banner”
`because it was determinative of whether to institute trial based on certain
`asserted grounds. ’657 Dec. 6−7; ’660 Dec. 6−8. Our analysis relied on the
`claim language and the Specification, which states, in particular that,
`the term “banner” is meant to be construed very broadly
`and includes any information displayed in conjunction
`with a web page wherein the information is not part of the
`same file as the web page. That is, a banner includes
`anything that is displayed or used in conjunction with a
`web page, but which can exist separately from the web
`page or which can be used in conjunction with many web
`pages. Banners can include graphics, textual information,
`video, audio, animation, and links to other computer sites,
`web sites, web pages, or banners.
`
`Ex. 1001, 2:28−37. Therefore, guided by the Specification and the plain
`language of the claims, we construed “banner” as “information displayed in
`conjunction with a web page.” ’657 Dec. 6−7; ’660 Dec. 6−8. Neither
`Petitioner nor Patent Owner challenges our analysis and construction.
`Accordingly, we conclude that the term “banner,” under the broadest
`reasonable interpretation in the context of the Specification means
`“information displayed in conjunction with a web page.”
`No other terms are disputed or require construction for us to decide
`the issues presented in these proceedings.
`
`B. PRINCIPLES OF LAW
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`
`differences between the claimed subject matter and the prior art are such that
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`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art; (3)
`the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`C. THE LEVEL OF SKILL IN THE ART
`
`In determining the level of ordinary skill in the art at the time of the
`
`invention, we note that various factors may be considered, including “type of
`problems encountered in the art; prior art solutions to those problems;
`rapidity with which innovations are made; sophistication of the technology;
`and educational level of active workers in the field.” In re GPAC, Inc., 57
`F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-
`Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)).
`
`Petitioner asserts, through its declarant, Mr. Peter Kent, that a person
`of ordinary skill in the art would have had at least “(a) a Bachelor of Science
`degree in computer science and/or a similar field or (b) at least 3 years of
`experience in web-based information management and delivery systems.”
`Ex. 1003 ¶ 14. In its Preliminary Response, Patent Owner argued that
`Petitioner’s definition was inappropriate “because it would include a person
`with 3 years of experience designing web pages . . . which would not be
`particularly relevant to the subject matter of the ’045 patent.” Prelim. Resp.
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`20. Patent Owner proffered that a person of ordinary skill in the art would
`have had at least “(a) a Bachelor of Science degree in computer science or a
`similar field or (b) 3 years of experience in programming web-based
`information management and delivery systems.” Id.; see also Ex. 2015 ¶ 22.
`
`Although we did not resolve the level of ordinary skill in the art when
`deciding whether to institute the present trial, the panel did decide the issue
`in a related inter partes review, upon review of the subject matter described
`in the specification, and the types of problems and solutions described. We
`concluded that Patent Owner’s assessment of the level of ordinary skill in
`the art was appropriate. See Google Inc. v. At Home Bondholders’
`Liquidating Trust, Cases IPR2015-00662 and IPR2015-000666, slip op. at
`18 (PTAB Aug. 14, 2015) (Paper 14).
`During trial, Petitioner maintains its initial position that programming
`
`is not part of the level of ordinary skill. Reply 19−20. The level of ordinary
`skill in the art has been put at issue during trial by Patent Owner who argues
`that Petitioner’s declarant would not meet Patent Owner’s definition. PO
`Resp. 31.6
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` We are not persuaded that Mr. Kent’s testimony is entitled to little or no
`weight, as Patent Owner argues, merely because Mr. Kent “admits that he
`has little experience programming web servers.” PO Resp. 31. Rather, we
`are persuaded by Petitioner’s arguments that Mr. Kent has been
`programming web sites (including e-commerce sites) since 1993, worked
`with scripting languages, and has authored books on programming
`JavaScript—all of which fall under the rubric of experience in programming
`web-based information management and delivery systems. See Reply 19.
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`The parties dispute whether “programming” is part of the level of
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`ordinary skill, and we find that it is. First, the ’045 patent refers to
`“centralized intelligence to monitor and control the information being
`delivered.” Ex. 1001, (54). It also describes that when receiving a banner
`signal, the recipient can select which banner is to be displayed during the
`selection step 113 shown in Figure 4. Id. at 17:26−37. Figure 4 shows
`additional steps and determinations that, although part of HTTP operations,
`are to be manipulated in the manner described. See, e.g., Steps 92 and 116,
`Fig. 4 (“Banner previously stored in terminal?” and “Send second request
`for banner from terminal”). The described selection of a banner and
`manipulations of HTTP operations occur in the coding of web pages in
`conjunction with the design, e.g., programming, of the information system
`that serves the banners. Therefore, we find that the ’045 patent’s
`specification and description of the problems and solutions are addressed
`through programming web-based information management and delivery
`systems.
`
`We are guided also in our determination by the well-settled principle
`that the level of ordinary skill in the art may be reflected by the prior art of
`record, as here. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
`2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich,
`579 F.2d 86, 91 (CCPA 1978). Further, one of ordinary skill is presumed to
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`Nevertheless, whether an expert’s opinion is entitled to any particular weight
`is an inquiry we exercise on an issue-by-issue basis.
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`be aware of all pertinent prior art. Standard Oil Co. v. American Cyanamid
`Co., 774 F.2d 448, 454 (Fed. Cir. 1985). The cited prior art discloses
`problems and potential solutions pertaining to how web-based information
`management and delivery systems are programmed to operate. See, e.g., Ex.
`1012, 7:43–16:44; Ex. 1013, 2:59–4:43.
`
`Accordingly, we find that the level of ordinary skill in the art does
`include at least 3 years of experience in programming web-based
`information management and delivery systems. We agree with Patent
`Owner that a person of ordinary skill in the art would have had at least a
`bachelor’s degree in computer science or a similar field, or three years of
`experience in programming web-based information management and
`delivery systems, and apply this level of ordinary skill in the art for purposes
`of this Decision.
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`D. ANALYSIS OF ASSERTED OBVIOUSNESS GROUNDS
`
`Petitioner asserts two grounds predicated on, at a minimum, the
`combination of Angles, Merriman, and HTTP 1.0. ’657 Pet. 36–40;
`’660 Pet. 17–36. We have reviewed the Petitions, Patent Owner Response,
`and Reply, as well as the evidence discussed in each of those papers, and are
`not persuaded, by a preponderance of the evidence, that the challenged
`claims are unpatentable based on the asserted grounds.
`1. Overview of Angles (Ex. 1012)
`Angles describes a system and method for delivering customized
`electronic advertisements in an interactive communication system. Ex.
`1012, Abstract. Angles’s system interconnects multiple consumer
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`computers, multiple content provider computers, and multiple Internet
`provider computers with an advertisement provider computer. Id. Figure 4,
`reproduced below, illustrates Angles’s system and shows the flow of
`information among these computers. See id. at 4:61:65.
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`Figure 4 depicts content provider computer 14 that includes electronic
`pages 32 for presenting information to the consumer. See id. at 12:51−60.
`Each electronic page 32 contains advertising insert 56 which is a place-
`holder configured to contain customized advertisement 30 generated by
`advertisement provider computer 18. Id. Advertising insert 56 contains
`advertisement request 26, which references a content provider Common
`Gateway Interface (CGI) script 64 that exists on advertisement provider
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`computer 18. Id. at 13:1−4. “When the advertisement provider computer 18
`executes the content provider script 64, the advertisement provider computer
`18 identifies which content provider computer 14 is being accessed by a
`consumer computer 12.” Id. at 13:16−19. Advertisement provider computer
`18 sends customized advertisement 30 to consumer computer 12. Id. at
`8:56−61. Electronic page 32 and customized advertisement 30 are combined
`into a displayable page. Id. at 8:62−65.
`Angles further describes an embodiment in which consumer computer
`12 includes advertising storage medium 44, which can be a compact disk
`drive and a compact disk, to store a variety of advertisements that can be
`retrieved and displayed by consumer computer 12. Id. at 11:50−55. In this
`embodiment, the advertisement command identifies a particular location on
`advertising storage medium 44, such as the particular track and sector where
`an advertisement is located. Id. at 11:66−12:2.
`2. Overview of Merriman (Ex. 1013)
`Merriman describes targeting the delivery of advertisements over a
`network, such as the Internet. Ex. 1013, Abstract. Figure 1, reproduced
`below, illustrates an affiliate’s web site 12, an advertisement (“ad”) server
`web site 19, and an advertiser’s web site 18. See id. at 2:59−62.
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`In Figure 1, above, a user operates a web browser to generate
`request 20 directed to affiliate web site 12. Id. at 3:24−28. The affiliate web
`site sends messages 22 containing the information available at the particular
`web site 12 for the requested page to be displayed by the user’s browser 16,
`except for one or more advertising objects such as banner advertisements.
`Id. at 3:30−34. Instead of sending the advertising objects, affiliate web
`server sends a link to the node running advertiser server process 19, where
`the link refers to an inline image, such as a banner. Id. at 3:34−41. User
`browser 16 sends message 23 to advertising server process 19 to access the
`object. Id. at 3:41−52. Upon receiving message 23, advertising server
`process 19 determines which advertisement or other object to provide to user
`browser 16 and transmits message 24 containing the object. Id. at 3:52−57.
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`The advertisement object is then displayed “as a composite of the received
`affiliate’s web page plus the image transmitted back by the advertising web
`server.” Id. at 3:59−63. “As part of the ‘click through’ process, when the
`user clicks on the banner or other advertising object displayed by the user’s
`browser 16, the user’s browser again transmits a message [23] to the ad
`server.” Id. at 3:64−67. Advertising server 19 notes the address of the
`computer that generated message 23 and transmits back the URL of the
`advertiser’s web page so that user browser 16 generate a message 26 to
`contact advertiser web site 18. Id. at 3:67−4:5.
`3. Overview of Davis (Ex. 1014)
`Davis is directed to monitoring client use of and interaction with a
`resource downloaded from a server on a computer network. Ex. 1014,
`1:8−10. In particular, Davis describes the access and display of an ad banner
`that is embedded inside a Web page located in a server through the use of an
`“HTML <IMG> tag” by stating that
`[w]hen a client machine passes a TCP/IP request for the Web page
`to the first server, the Web page is downloaded to the client,
`including the ad banner embedded using the <IMG> tag. The
`<IMG> tag is used to reference a resource (i.e., the “ad banner”)
`stored on the same or a different server which captures the user’s
`ID (via the HTTP request header) and dynamically returns an ad
`related image to the client for display within the Web page.
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`Ex. 1014, 3:35−42.
`4. Overview of HTTP1.0 (Ex. 1008)
`HTTP1.0 is a working document of the Hypertext Transfer Protocol
`(HTTP) Working Group. Ex. 1008, 1. The document describes
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`specifications for the protocol referred to as “HTTP/1.0.” Id. The document
`describes specifications for the protocol referred to as “HTTP/1.0,” and
`describes a cache as a “program’s local store of response messages and the
`subsystem that controls its message storage, retrieval, and deletion,” which
`“stores cachable responses in order to reduce the response time and network
`bandwidth consumption on future, equivalent requests.” Id. at 1, 5.
`HTTP1.0 states that “[a]ny client or server may include a cache.” Id. at 5.
`HTTP1.0 further discloses the use of a “Pragma general-header field.”
`Id. at 35. “All pragma directives specify optional behavior from the
`viewpoint of the protocol; however, some systems may require that behavior
`be consistent with the directives.” Id. One pragma directive is a “no-cache”
`directive, which is described as follows:
`[w]hen the “no-cache” directive is present in a request message,
`an application should forward the request toward the origin
`server even if it has a cached copy of what is being requested.
`This allows a client to insist upon receiving an authoritative
`response to its request. It also allows a client to refresh a
`cached copy which is known to be corrupted or stale.
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`Id. at 35–36.
`5. Whether the Cited References Teach All Limitations of the
`Challenged Claims
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`a. Petitioner’s Contentions
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`Petitioner argues that independent claims 49, 59, 64, and 72 would
`have been obvious over Angles, Merriman, and HTTP1.0, relying on Angles
`for the majority of the limitations of these claims. See ’660 Pet. 17−30 (for
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`claims 49 and 64); ’657 Pet. 36−38 (for claims 59 and 72).7 Petitioner
`argues that Angles teaches “a document served to a device” (i.e., a web
`page) to consumer computer 12 that includes a reference to a banner,
`sending a non-blockable “first banner request signal” (i.e., a CGI request)
`from consumer computer 12 to advertisement provider computer 18, and
`returning a “banner location signal” (i.e., advertisement command) that
`allows consumer computer 12 to retrieve the advertisement from advertising
`storage medium 44. ’660 Pet. 17−20.
`Although Angles retrieves the advertisement from local storage,
`Petitioner argues that it would have been obvious instead to have the
`location signal point to an external storage device, such as another server.
`Id. at 20. Specifically, Petitioner contends that it would have been obvious
`to “replace [Angles’s] advertising command identifying a location of an
`advertisement on local storage with Merriman’s HTTP redirect message
`identifying a location of an advertisement on networked storage,” such that
`consumer computer 12 would send a “second banner request signal” to a
`second advertisement provider computer to retrieve the advertisement. Id. at
`21−22, 26, Petitioner also argues that, before sending the HTTP request to
`retrieve the advertisement from the second provider computer, “the HTTP
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` The arguments presented in the ’657 Petition and the ’660 Petition do not
`differ materially with regard to Angles and the limitations discussed
`hereunder. For ease of reference, citations are all to the ’660 Petition
`notwithstanding that, for claims 59 and 72, the presented arguments appear
`in the ’657 Petition.
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`protocol dictates determining whether the advertisement has already been
`cached locally on the consumer computer,” and that based on HTTP1.0,
`“[t]his determination is simply a standard cache function.” Id. at 22−23.
`Thus, Petitioner’s obviousness theory is premised on Angles teaching most
`of the limitations of the independent claims, and a person of ordinary skill in
`the art having reason to modify Angles’s system to (1) use an HTTP redirect
`message pointing to an external device, as taught by Merriman, instead of
`Angles’s advertisement command pointing to local storage, and
`(2) determining if the advertisement is stored locally in a cache, as taught by
`HTTP1.0, prior to sending a request to the external device to retrieve the
`advertisement.
`We focus on the following limitation of claim 49 in particular, which
`we refer to generally as “the non-blockable first request limitation,” because
`in this case it is dispositive:
`causing a first banner request signal to be transmitted
`from the device to a first server requesting that a banner be
`served to the device, wherein said first banner request signal
`includes information intended to make said first banner request
`signal not blockable by the device or the intermediary server as
`a result of a storage in the device or the intermediary server of
`said requested banner prior to the generation of said first banner
`signal by the device.
`The challenged independent claims all recite, in similar terms, that the
`information included in the “first banner request signal” (claims 49 and 64),
`“first request” (claim 59), or “first request signal” (claim 72), is intended to
`prevent said signal from being blocked, even though there was previous
`caching or storing of the banner. Ex. 1001, 30:47−52; 31:23−26, 55−59;
`18
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`32:28−32. Petitioner argues that Angles teaches the non-blockable first
`request limitation by describing the use of an advertisement request.
`’660 Pet. 18–20 (“The advertisement request in Angles is an unblockable
`signal”), 25. In particular, Petitioner argues that Angles’s consumer
`computer 12 sends a request to invoke content provider CGI script 64 (event
`E in Figure 4) to advertisement provider computer 18, which executes the
`script, selects an advertisement appropriate for the requesting user, and
`returns to consumer computer 12 an advertisement command (event F in
`Figure 4) that identifies a particular location on advertising storage medium
`44 where the advertisement may be retrieved. Id. As support for its position
`that the use of a CGI request in Angles prevents blocking as a result of
`previous caching or storing, Petitioner cites the following disclosures in
`Angles:
`the
`request 26 directs
`[T]he embedded advertisement
`advertisement provider computer 18 to execute a content
`provider script (not shown). . . .
`. . . The advertisement request 26 references a content provider
`CGI script 64 which exists on the advertisement provider
`computer 18.
`Ex. 1012, 7:65–8:1, 13:2–4; see ’660 Pet. 25. According to Petitioner, the
`CGI request in Angles is “one of the exact same types of request that is
`described in the ’045 patent.” ’660 Pet. 19. Petitioner also relies on the
`following testimony from its declarant, Peter Kent:
`[A person of ordinary skill in the art] would have understood
`that a server (such as the advertisement provider computer in
`Angles) executes a requested CGI script to dynamically
`generate content (e.g., the redirecting advertisement command
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`identifying a customized advertisement) and the resulting
`content would not be cached by the consumer computer or by
`the intermediate proxy.
`Because the consumer computer or the proxy would not
`maintain copies of the requested dynamic content (e.g., the
`redirecting advertisement command), a [person of ordinary skill
`in the art] would also have recognized that referencing a CGI
`script in the advertising request prevents the advertising request
`“cache-blocked”—i.e.,
`from being
`from
`reaching
`the
`advertisement provider computer 18.
`
`Ex. 1028 ¶¶ 62−63.
`b. Petitioner Has Not Shown That the Cited References
`Teach the Non-Blockable First Request Limitation
`
`For the reasons explained below, we conclude that Petitioner has not
`shown, by a preponderance of the evidence, that the cited references teach
`the non-blockable first request limitation of claim 49. We begin by noting
`that Angles does not state expressly that the advertisement request to execute
`the CGI script, which is sent by the consumer computer, cannot be
`“blocked” from reaching the advertisement provider computer due to
`previous caching or storing of the electronic page or advertisement. See,
`e.g., Ex. 1012, 13:2–4. Thus, the dispositive issue is whether a person of
`ordinary skill in the art reading the disclosure of Angles would have
`understood the advertisement request to be non-blockable. See Tr. 36:1–9
`(Petitioner acknowledging that its position is not that the advertisement
`request “must” operate in such a way as to be non-blockable, but rather that
`“a person of ordinary skill in the art reading [Angles] would have
`understood it to be that way”). We are not persuaded that an ordinarily
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`skilled artisan would have understood Angles’s advertisement request to be
`non-blockable.
`Angles merely discloses that advertisement request 26, which is sent
`to the consumer computer with the electronic page, references a “CGI
`script.” Ex. 1012, 12:54−13:4. As both parties acknowledge, not all
`requests to execute a CGI script are non-blockable due to previous caching.
`See PO Resp. 25–27; Tr. 28:5–10, 44:23–45:18. Whether such a request is
`non-blockable depends on the particular syntax used for the request. See PO
`Resp. 26−28; Tr. 45:3−13. Patent Owner’s declarant, Kevin C. Almeroth,
`Ph.D., explains that applications use certain heuristics to designate whether a
`response will be cacheable or not, one of which is the set of strings “cgi-bin”
`and “?”. Ex. 2015 ¶¶ 87–88 (citing Ex. 1008, 7). This is consistent with the
`’045 patent, which discloses that including variable components in the
`request, such as a random number or the strings “cgi-bin” and “?”, prevents
`the request from being blocked due to caching. See Ex. 1001, 18:23–61
`(“variable components URL addresses are, by definition, different every
`time, . . . ther
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