`Entered: August 10, 2016
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`Trials@uspto.gov
`571-272-7822
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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 IPR2015-006621
`Patent 6,014,698
`____________
`
`
`
`Before KARL D. EASTHOM, JUSTIN T. ARBES, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`1 Case IPR2015-00666 has been consolidated with this proceeding.
`
`
`
`IPR2015-00662
`Patent 6,014,698
`
`
`I. BACKGROUND
`
`Petitioner Google Inc. filed two Petitions requesting inter partes
`
`review of claims 1–3, 5–7, 9, 11–20, 22–31, 34–39, 41–47, and 49 of
`
`U.S. Patent No. 6,014,698 (Ex. 1001, “the ’698 patent”)2 pursuant to
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`35 U.S.C. §§ 311–19, as listed in the following chart.
`
`Case Number
`
`Challenged Claims
`
`Petition
`
`IPR2015-00662 1–3, 5–7, 9, 11–16,
`and 23
`
`Paper 2
`(“Pet.”)
`
`IPR2015-00666 17–20, 22–31, 34–39,
`41–47, and 49
`
`Paper 2
`(“-666 Pet.”)
`
`On August 14, 2015, we instituted an inter partes review of claims 1–3,
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`5–7, 9, 11–20, 22, 24–31, 34–39, 41–47, and 49 on two grounds of
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`unpatentability and consolidated Case IPR2015-00666 with Case
`
`IPR2015-00662 (Paper 14, “Dec. on Inst.”). Patent Owner At Home
`
`Bondholders’ Liquidating Trust filed a Patent Owner Response (Paper 22,
`
`“PO Resp.”), and Petitioner filed a Reply (Paper 34, “Reply”). A combined
`
`oral hearing for this proceeding and Case IPR2015-00657 was held on April
`
`7, 2016, and a transcript of the hearing is included in the record (Paper 39,
`
`“Tr.”).
`
`We have 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 reasons that follow, we determine that Petitioner has not shown by a
`
`preponderance of the evidence that claims 1–3, 5–7, 9, 11–20, 22, 24–31,
`
`34–39, 41–47, and 49 are unpatentable.
`
`
`2 Unless otherwise specified, references to papers and exhibits are to those
`filed in Case IPR2015-00662.
`
`
`
`2
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`
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`IPR2015-00662
`Patent 6,014,698
`
`
`A. The ’698 Patent3
`
`The ’698 patent describes a “system for the storage, management, and
`
`delivery of information on a computer network” that provides for the
`
`“efficient and accurate counting of advertising information displayed on
`
`terminals connected to the computer network.” Ex. 1001, col. 1, ll. 19–23.
`
`According to the ’698 patent, prior art systems could not count accurately
`
`the number of times a banner (e.g., a graphic of an advertisement) is
`
`displayed to users due to the use of caching. Id. at col. 3, ll. 16–37, col. 6,
`
`ll. 22–29, col. 7, ll. 9–20. For example, when a web page and associated
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`banner are stored on a user’s terminal or an intermediary proxy server
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`connected to the user’s terminal, a subsequent request for the information
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`may be satisfied from the cache, such that no request is forwarded over the
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`computer network to a server and the server cannot obtain an accurate count
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`of banner displays. Id. at col. 13, ll. 1–14, Fig. 3. Prior art systems
`
`attempted to overcome this problem by prohibiting caching on the user’s
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`terminal or proxy server, but doing so introduced other problems, such as
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`increased network traffic and increased retrieval time due to the need to
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`retransmit the information over the network every time it is requested. Id.
`
`at col. 13, l. 40–col. 14, l. 44.
`
`The ’698 patent states that its disclosed system is able to count
`
`accurately banner displays while at the same time taking advantage of the
`
`performance gains obtained from caching. Id. at col. 14, ll. 45–57. The
`
`user’s terminal first requests and receives a web page that has an associated
`
`banner. Id. at col. 9, ll. 38–49. The terminal then sends an initial banner
`
`
`3 The ’698 patent is a continuation-in-part of U.S. Patent No. 6,286,045 B1
`(“the ’045 patent”), which is being challenged in Case IPR2015-00657.
`
`
`
`3
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`
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`IPR2015-00662
`Patent 6,014,698
`
`request signal, which may include a general content Uniform Resource
`
`Locator (“URL”) address that does not specify which banner is to be
`
`displayed. Id. at col. 17, ll. 34–38, Fig. 4 (step 112). Because software on
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`the user’s terminal (e.g., web browser) or a proxy server might block the
`
`initial banner request signal if the banner had been cached previously, the
`
`strings “cgi-bin” and “?” may be included in the signal to “prevent[] the
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`terminal from blocking” the signal. Id. at col. 19, ll. 24–57. Then, rather
`
`than returning the banner itself (as in the prior art), the recipient of the initial
`
`banner request signal selects which banner is to be displayed on the terminal,
`
`increments the count of displays, and returns a banner address to the user’s
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`terminal. Id. at col. 15, ll. 42–56, Fig. 4 (steps 113 and 114). The return
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`information may be, for example, a specific content URL address in the
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`form of a “Status HTTP 302 Redirect (temporary) signal” indicating where
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`the selected banner is stored. Id. at col. 17, ll. 38–49. The user’s terminal
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`then retrieves the banner, either from a local cache or proxy server cache, or
`
`a remote server if the banner had not been cached. Id. at col. 15, l. 60–col.
`
`16, l. 34. In that way, the disclosed system is able to maintain an accurate
`
`count of banner displays, while also retaining the performance benefits of
`
`caching. Id. at col. 14, ll. 45–57.
`
`
`
`B. Illustrative Claim
`
`Claim 1 of the ’698 patent recites:
`
`1. A method for delivering information to a terminal
`connected
`to a computer network, wherein
`information
`delivered over the computer network from a primary server to
`the terminal contains references to other information to be
`delivered to the terminal from the primary server or from one or
`
`
`
`4
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`
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`IPR2015-00662
`Patent 6,014,698
`
`
`more other servers connected to the computer network,
`comprising:
`
`serving a first portion of information to the terminal,
`wherein said first portion of information contains a reference to
`a second portion of information;
`
`sending a first request signal from the terminal to the
`primary server requesting a location address for said second
`portion of information from which said second portion of
`information can be served to the terminal, wherein said first
`request signal cannot be blocked from reaching said primary
`server by either the terminal or any intermediary device located
`topologically between the terminal and the primary server as a
`result of previous caching or storing of said first portion of
`information or said second portion of information by the
`terminal or said intermediary device;
`
`sending a location signal from the primary server to the
`terminal providing said location address of said second portion
`of information; and
`
`determining if said second portion of information is
`already stored on the terminal and, if said second portion of
`information is not already stored on the terminal, sending a
`second request signal from the terminal containing said location
`address of said second portion of information and requesting
`that said second portion of information be served to the
`terminal for display on the terminal, and, if said second portion
`of information is already stored on the terminal, displaying said
`second portion of information on the terminal.
`
`
`
`C. Prior Art
`
`The pending grounds of unpatentability in the instant inter partes
`
`review are based on the following prior art:
`
`U.S. Patent No. 5,796,952, filed Mar. 21, 1997, issued
`Aug. 18, 1998 (Ex. 1014, “Davis”);
`
`U.S. Patent No. 5,933,811, filed Aug. 20, 1996, issued
`Aug. 3, 1999 (Ex. 1012, “Angles”);
`
`
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`5
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`IPR2015-00662
`Patent 6,014,698
`
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`U.S. Patent No. 5,948,061, filed Oct. 29, 1996, issued
`Sept. 7, 1999 (Ex. 1013, “Merriman”); and
`
`T. Berners-Lee et al., HYPERTEXT TRANSFER PROTOCOL –
`HTTP/1.0, HTTP Working Group INTERNET-DRAFT, Feb.
`19, 1996 (Ex. 1008, “HTTP1.0”).4
`
`
`
`D. Pending Grounds of Unpatentability
`
`The instant inter partes review involves the following grounds of
`
`unpatentability:
`
`References
`
`Basis
`
`Claims
`
`Angles, Merriman, and
`HTTP1.0
`
`Angles, Merriman,
`HTTP1.0, and Davis
`
`35 U.S.C. § 103(a) 1–3, 5–7, 9, 11–20,
`22, 24–30, 34–39,
`and 41–47
`
`35 U.S.C. § 103(a) 31 and 49
`
`
`
`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,
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`136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`
`reasonable interpretation standard as the claim interpretation standard to be
`
`applied in inter partes reviews). Under this standard, we interpret claim
`
`terms using “the broadest reasonable meaning of the words in their ordinary
`
`usage as they would be understood by one of ordinary skill in the art, taking
`
`
`4 When citing HTTP1.0, we refer to the page numbers at the bottom of each
`page. See 37 C.F.R. § 42.63(d)(2).
`
`
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`6
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`IPR2015-00662
`Patent 6,014,698
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`into account whatever enlightenment by way of definitions or otherwise that
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`may be afforded by the written description contained in the applicant’s
`
`specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
`
`We presume that claim terms have their ordinary and customary meaning.
`
`See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016)
`
`(“Under a broadest reasonable interpretation, words of the claim must be
`
`given their plain meaning, unless such meaning is inconsistent with the
`
`specification and prosecution history.”); In re Translogic Tech., Inc., 504
`
`F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is
`
`the meaning that the term would have to a person of ordinary skill in the art
`
`in question.” (internal quotation marks omitted)). A patentee, however, may
`
`rebut this presumption by acting as his or her own lexicographer, providing a
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`definition of the term in the specification with “reasonable clarity,
`
`deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`
`1994).
`
`In the Decision on Institution, we interpreted the term “banner” in the
`
`challenged claims to mean information displayed in conjunction with a web
`
`page, and concluded that no further interpretation was necessary.5 Dec. on
`
`Inst. 7–9. The parties do not dispute this interpretation in their Patent Owner
`
`Response and Reply, and we do not perceive any reason or evidence that
`
`
`5 We also interpreted “content specific request signal” in dependent claims 7
`and 20, and resolved various antecedent basis issues in dependent claims 9
`and 23. Dec. on Inst. 9–12. Because Petitioner has not shown, by a
`preponderance of the evidence, that the challenged independent claims are
`unpatentable for the reasons explained herein, we need not revisit the
`interpretation of the dependent claims.
`
`
`
`7
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`IPR2015-00662
`Patent 6,014,698
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`compels any deviation from the earlier interpretation. Accordingly, we
`
`adopt our previous analysis for purposes of this Decision.
`
`
`
`B. Level of Ordinary Skill in the Art
`
`Section 103(a) forbids issuance of a patent when “the
`differences between the subject matter sought to be patented
`and the prior art are such that the subject matter as a whole
`would have been obvious at the time the invention was made to
`a person having ordinary skill in the art to which said subject
`matter pertains.”
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C.
`
`§ 103(a)). Petitioner argued in its Petition 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.” Pet. 14
`
`(citing Ex. 1003 ¶¶ 13–14, Ex. 1005 ¶ 13). In its Preliminary Responses,
`
`Patent Owner disputed this definition because it would encompass “a person
`
`with 3 years of experience designing web pages,” and instead proposed a
`
`person with “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.” Paper 10, 17. We agreed
`
`with Patent Owner for purposes of the Decision on Institution. Dec. on Inst.
`
`17–18.
`
`During trial, the parties continued to dispute whether “programming”
`
`web-based information management and delivery systems is part of the level
`
`of ordinary skill in the art. See PO Resp. 32; Reply 19–20. We conclude
`
`that it is. The ’698 patent describes a “system for the storage, management,
`
`and delivery of information on a computer network,” in particular a system
`
`
`
`8
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`
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`IPR2015-00662
`Patent 6,014,698
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`that provides for “efficient and accurate counting of advertising information
`
`displayed on terminals connected to the computer network.” Ex. 1001,
`
`col. 1, ll. 18–22. It discloses an exemplary computer network with
`
`terminals, web servers, and proxy servers that communicate with each other,
`
`and describes various problems and solutions, all of which pertain to how
`
`the system components are programmed to facilitate the accurate counting of
`
`advertising information. Id. at col. 5, l. 16–col. 14, l. 44, Figs. 1, 3, 4. For
`
`example, the ’698 patent discloses that in prior art systems, “not all requests
`
`for . . . banner information are forwarded by the user’s terminal or respective
`
`proxy server,” resulting in the inaccurate counting of banner displays, and
`
`one potential solution is to program the system to “prevent banner
`
`information from being stored or cached on either the user’s terminal or the
`
`proxy server.” Id. at col. 13, ll. 1–57. Doing so, however, increases network
`
`traffic and reduces the “speed at which the information is displayed on the
`
`user’s terminal.” Id. at col. 13, l. 58–col. 14, l. 31. The disclosed method
`
`purports to solves the problems in the prior art by accurately counting
`
`banner displays while at the same time “taking advantage of the performance
`
`gains possible with caching proxy servers.” Id. at col. 14, ll. 45–57. The
`
`cited prior art similarly discloses problems and potential solutions that
`
`pertain to how web-based information management and delivery systems are
`
`programmed to operate. See, e.g., Ex. 1012, col. 7, l. 43–col. 16, l. 44;
`
`Ex. 1013, col. 2, l. 59–col. 4, l. 43.
`
`Based on our review of the ’698 patent, the types of problems and
`
`solutions described in the ’698 patent and cited prior art, and the testimony
`
`of the parties’ declarants, we conclude that a person of ordinary skill in the
`
`art would have had at least a bachelor’s degree in computer science or a
`
`
`
`9
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`IPR2015-00662
`Patent 6,014,698
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`similar field, or three years of experience in programming web-based
`
`information management and delivery systems. We apply this level of
`
`ordinary skill in the art for purposes of this Decision.6
`
`
`
`C. Obviousness Ground Based on Angles, Merriman, and HTTP1.0
`
`Petitioner argues that claims 1–3, 5–7, 9, 11–20, 22, 24–30, 34–39,
`
`and 41–47 are unpatentable over Angles, Merriman, and HTTP1.0 under
`
`35 U.S.C. § 103(a). See Pet. 16–39; -666 Pet. 16–38. 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 ground.
`
`
`
`1. Angles
`
`Angles describes a method and system for “delivering customized
`
`electronic advertisements in an interactive communication system.”
`
`Ex. 1012, Abstract. Angles’s system interconnects multiple consumer
`
`computers, content provider computers, and Internet provider computers
`
`
`6 Given the level of ordinary skill in the art set forth above, we are not
`persuaded that the testimony of Petitioner’s declarant, Peter Kent, is entitled
`to little or no weight, as Patent Owner argues, merely because Mr. Kent
`“admits that he has little experience programming web servers.” See
`PO Resp. 32. 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. 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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`10
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`IPR2015-00662
`Patent 6,014,698
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`with an advertisement provider computer. Id. Figure 4 of Angles is
`
`reproduced below.
`
`
`
`As depicted in Figure 4, consumer computer 12 registers with advertisement
`
`provider computer 18 (event A), which assigns the consumer a consumer
`
`member code 22, content provider computer 14 registers with advertisement
`
`provider computer 18 (event B), and consumer computer 12 establishes a
`
`communication link with content provider computer 14 (event C) to request
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`information. Id. at col. 16, l. 56–col. 18, l. 41.
`
`Content provider computer 14 sends electronic page 32 to consumer
`
`computer 12 (event D). Id. at col. 12, ll. 5160, col. 18, l. 41–43. Electronic
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`page 32 contains advertising insert 56, which is a place-holder configured to
`
`contain customized advertisement 30 generated by advertisement provider
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`computer 18. Id. at col. 12, ll. 54–58. Advertising insert 56 contains
`
`advertisement request 26, which references a content provider Common
`
`Gateway Interface (CGI) script 64 that exists on advertisement provider
`
`
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`11
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`IPR2015-00662
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`computer 18. Id. at col. 12, l. 67–col. 13, l. 4. “Preferably, the advertising
`
`request 26 is an HTML [HyperText Markup Language] tag which identifies
`
`1) the content provider script and 2) the content provider member code and
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`3) the Internet address or URL of the advertisement provider computer 18.”
`
`Id. at col. 13, ll. 4–7. Consumer computer 12 processes advertising insert 56
`
`and, based on the HTML tag, sends a signal to advertisement provider
`
`computer 18 requesting execution of the CGI script (event E). Id. at col. 3,
`
`ll. 39–51, col. 18, l. 44–57, col. 19, ll. 31–40. Consumer computer 12 also
`
`provides consumer member code 22 to advertisement provider computer 18.
`
`Id. at col. 18, l. 59–60.
`
`Advertisement provider computer 18 executes content provider
`
`script 64, identifies the consumer, identifies the content provider being
`
`accessed by the consumer, selects a particular advertisement for the
`
`consumer, and sends customized advertisement 30 to consumer computer 12
`
`(event F). Id. at col. 8, ll. 56–61, col. 13, ll. 16–19, col. 18, l. 61–col. 19,
`
`l. 1. Consumer computer 12 merges and displays electronic page 32 with
`
`customized advertisement 30. Id. at col. 8, ll. 62–65, col. 19, ll. 1–3.
`
`Angles further describes an embodiment in which consumer computer
`
`12 includes advertising storage medium 44, which can be a compact disk
`
`drive and compact disk, to store a variety of advertisements that can be
`
`retrieved and displayed by consumer computer 12. Id. at col. 11, ll. 5055.
`
`In this embodiment, an “advertisement command” is returned in event F,
`
`rather than customized advertisement 30. Id. at col. 11, l. 66–col. 12, l. 2,
`
`col. 23, ll. 28–56. The advertisement command “identifies a particular
`
`location on the advertising storage medium 44, such as the particular track
`
`
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`12
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`IPR2015-00662
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`and sector where an advertisement is located,” and consumer computer 12
`
`retrieves the advertisement from advertising storage medium 44. Id.
`
`
`
`2. Merriman
`
`Merriman describes a method and system for “targeting the delivery
`
`of advertisements over a network such as the Internet.” Ex. 1013, Abstract.
`
`Figure 1 of Merriman is reproduced below.
`
`
`
`Figure 1 depicts affiliate web site 12, advertisement (“ad”) server web site
`
`19, and advertiser web site 18. Id. at col. 2, ll. 59–62. A user operates a web
`
`browser to generate request 20 directed to affiliate web site 12. Id. at col. 3,
`
`ll. 24–28. Affiliate web site 12 sends messages 22 containing the
`
`information available at the particular web site for the requested page to be
`
`displayed by user browser 16, except for one or more advertising objects,
`
`such as banner advertisements. Id. at col. 3, ll. 30–34. Instead of sending
`
`the advertising objects, affiliate web site 12 sends a link to the node running
`
`advertising server process 19, where the link refers to an inline image, such
`
`
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`13
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`IPR2015-00662
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`as a banner. Id. at col. 3, ll. 34–41. User browser 16 sends message 23 to
`
`advertising server process 19 to access the object. Id. at col. 3, ll. 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 col. 3, ll. 52–57. The
`
`advertisement object then is displayed “as a composite of the received
`
`affiliate’s web page plus the object transmitted back by the advertising web
`
`server.” Id. at col. 3, ll. 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 col. 3, ll. 64–67. Advertising server process 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 can generate
`
`message 26 to contact advertiser web site 18. Id. at col. 3, l. 67–col. 4, l. 5.
`
`
`
`3. HTTP1.0
`
`HTTP1.0 is a working document of the Hypertext Transfer Protocol
`
`(HTTP) Working Group. Ex. 1008, 1. 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
`
`
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`14
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`IPR2015-00662
`Patent 6,014,698
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`viewpoint of the protocol; however, some systems may require that behavior
`
`be consistent with the directives.” Id. One pragma directive is a “no-cache”
`
`directive, which is described as follows:
`
`When the “no-cache” directive is present in a request message,
`an application should forward the request toward the origin
`server even if it has a cached copy of what is being requested.
`This allows a client to insist upon receiving an authoritative
`response to its request. It also allows a client to refresh a
`cached copy which is known to be corrupted or stale.
`
`Id. at 35–36.
`
`
`
`4. Whether the Cited References Teach All Limitations of
`the Challenged Claims
`
`a. Claim 1
`
`i. Petitioner’s Contentions
`
`Petitioner argues that claim 1 would have been obvious over Angles,
`
`Merriman, and HTTP1.0, relying on Angles for the majority of the
`
`limitations in the claim. Pet. 16–31. Petitioner argues that Angles teaches
`
`serving a “first portion of information” (i.e., web page) to consumer
`
`computer 12 that includes a reference to a “second portion of information”
`
`(i.e., banner advertisement), sending a non-blockable “first request signal”
`
`(i.e., a CGI request) from consumer computer 12 to advertisement provider
`
`computer 18, and returning a “location signal” (i.e., advertisement
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`command) that allows consumer computer 12 to retrieve the advertisement
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`from advertising storage medium 44. Id. at 16–18, 23–28.
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`Although Angles retrieves the advertisement from local storage,
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`Petitioner argues that it would have been obvious instead to have the
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`location signal point to an external storage device, such as another server.
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`Id. at 18–21, 26–30. Specifically, Petitioner contends that it would have
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`been obvious to “replace [Angles’s] advertising command identifying a
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`location of an advertisement on local storage with Merriman’s HTTP
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`redirect message identifying a location of an advertisement on networked
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`storage,” such that consumer computer 12 would send a “second request
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`signal” to a second advertisement provider computer to retrieve the
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`advertisement. Id. at 18–21. Petitioner also argues that, before doing so,
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`“a determination must be made regarding whether the advertisement has
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`already been cached locally on the consumer computer,” and it would have
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`been obvious to use a “standard cache function” based on HTTP1.0. Id. at
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`21–23, 28–30. Thus, Petitioner’s obviousness theory is premised on Angles
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`teaching most of the limitations of claim 1, and a person of ordinary skill in
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`the art having reason to modify Angles’s system to (1) use an HTTP redirect
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`message pointing to an external device, as taught by Merriman, instead of
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`Angles’s advertisement command pointing to local storage, and
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`(2) determining if the advertisement is stored locally in a cache, as taught by
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`HTTP1.0, prior to sending a request to the external device to retrieve the
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`advertisement.7
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`7 We note that Petitioner incorrectly recites the last limitation of claim 1 as
`“serving said second portion of information to the terminal,” rather than “if
`said second portion of information is already stored on the terminal,
`displaying said second portion of information on the terminal.” See Pet.
`30–31. Petitioner explains elsewhere in its Petition, however, how the
`advertisement would be displayed in the modified Angles system. See id. at
`18, 21–23 (arguing that “if there is a cached local copy of the customized
`advertisement in the consumer computer, . . . the cached customized
`advertisement is served and displayed on the consumer’s computer”).
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`We focus on the following limitation of claim 1 in particular, which
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`we refer to generally as “the non-blockable first request limitation,” because
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`in this case it is dispositive:
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`sending a first request signal from the terminal to the
`primary server requesting a location address for said second
`portion of information from which said second portion of
`information can be served to the terminal, wherein said first
`request signal cannot be blocked from reaching said primary
`server by either the terminal or any intermediary device located
`topologically between the terminal and the primary server as a
`result of previous caching or storing of said first portion of
`information or said second portion of information by the
`terminal or said intermediary device.
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`Petitioner argues that Angles teaches the non-blockable first request
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`limitation by describing the use of an advertisement request. Pet. 17–18
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`(“The advertisement request in Angles is an unblockable signal.”), 24–27.
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`In particular, Petitioner argues that Angles’s consumer computer 12 sends a
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`request to invoke content provider CGI script 64 (event E in Figure 4) to
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`advertisement provider computer 18, which executes the script, selects an
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`advertisement appropriate for the requesting user, and returns to consumer
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`computer 12 an advertisement command (event F in Figure 4) that identifies
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`a particular location on advertising storage medium 44 where the
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`advertisement may be retrieved. Id. As support for its position that the use
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`of a CGI request in Angles prevents blocking as a result of previous caching
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`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). . . .
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`. . . The advertisement request 26 references a content provider
`CGI script 64 which exists on the advertisement provider
`computer 18.
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`Ex. 1012, col. 7, l. 65–col. 8, l. 1, col. 13, ll. 2–4; see Pet. 26. According to
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`Petitioner, the CGI request in Angles is “one of the exact same types of
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`request that is described in the ’698 patent.” Pet. 17. Petitioner also relies
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`on the following testimony from its declarant, Mr. Kent:
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`[A person of ordinary skill in the art] would have recognized
`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
`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—i.e., from being “cache-blocked” from reaching the
`advertisement provider computer 18.
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`Ex. 1003 ¶¶ 58–59.8
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`
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`ii. Petitioner Has Not Shown That the Cited References Teach
`the Non-Blockable First Request Limitation
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`For the reasons explained below, we conclude that Petitioner has not
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`shown, by a preponderance of the evidence, that the cited references teach
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`the non-blockable first request limitation of claim 1. We begin by noting
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`that Angles does not state expressly that the advertisement request to execute
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`the CGI script, which is sent by the consumer computer, cannot be
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`“blocked” from reaching the advertisement provider computer due to
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`8 Some of Petitioner’s citations to Mr. Kent’s declaration appear to be
`incorrect. See, e.g., Pet. 17–18, 26 (citing Ex. 1003 ¶¶ 60–61).
`Nevertheless, we are able to identify the relevant portions, as stated herein.
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`previous caching or storing of the electronic page or advertisement. See,
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`e.g., Ex. 1012, col. 13, ll. 2–4. Thus, the dispositive issue is whether a
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`person of ordinary skill in the art reading the disclosure of Angles would
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`have understood the advertisement request to be non-blockable. See
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`Tr. 36:1–9 (Petitioner acknowledging that its position is not that the
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`advertisement request “must” operate in such a way as to be non-blockable,
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`but rather that “a person of ordinary skill in the art reading [Angles] would
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`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
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`non-blockable.
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`Angles merely discloses that advertisement request 26, which is sent
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`to the consumer computer with the electronic page, references a “CGI
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`script.” Ex. 1012, col. 12, l. 54–col. 13, l. 4. As both parties acknowledge,
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`not all requests to execute a CGI script are non-blockable due to previous
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`caching. See PO Resp. 26–27; Tr. 28:5–10, 44:23–45:18. Whether such a
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`request is non-blockable depends on the particular syntax used for the
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`request. See PO Resp. 26–27; Tr. 45:3–13. Patent Owner’s declarant, Kevin
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`C. Almeroth, Ph.D., explains that applications use certain heuristics to
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`designate whether a response will be cacheable or not, one of which is the
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`set of strings “cgi-bin” and “?”. Ex. 2015 ¶¶ 87–88 (citing Ex. 1008, 7).
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`This is consistent with the ’698 patent, which discloses that including
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`variable components in the request (e.g., a random number) or the strings
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`“cgi-bin” and “?” will prevent the request from being blocked due to
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`caching. See Ex. 1001, col. 18, l. 30–col. 19, l. 6, col. 19, ll. 49–53 (“the use
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`of ‘cgi-bin’ and ‘?’ strings in the signal sent by