Trials@uspto.gov
`571-272-7822
`
`Paper 29
`Entered: September 1, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TWITTER, INC. and GOOGLE LLC,
`Petitioner,
`v.
`B.E. TECHNOLOGY, L.L.C.,
`Patent Owner.
`
`IPR2021-00482
`IPR2021-00483
`Patent 8,769,440 B2
`
`
`
`
`
`
`
`
`
`Before NEIL T. POWELL, MIRIAM L. QUINN, and IFTIKHAR AHMED,
`Administrative Patent Judges.
`QUINN, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 29
`Entered: September 1, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TWITTER, INC. and GOOGLE LLC,
`Petitioner,
`v.
`B.E. TECHNOLOGY, L.L.C.,
`Patent Owner.
`
`IPR2021-00482
`IPR2021-00483
`Patent 8,769,440 B2
`
`
`
`
`
`
`
`
`
`Before NEIL T. POWELL, MIRIAM L. QUINN, and IFTIKHAR AHMED,
`Administrative Patent Judges.
`QUINN, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`IPR2021-00482
`IPR2021-00483
`Patent 8,769,440 B2
`
`
`
`INTRODUCTION
`I.
`We instituted inter partes review pursuant to 35 U.S.C. § 314 to
`review claims 1−37 of U.S. Patent No. 8,769,440 B2 (“the ’440 patent”)
`owned by B.E. Technology, L.L.C. We have jurisdiction under 35 U.S.C.
`§ 6(c). This Final Written Decision is entered pursuant to 35 U.S.C.
`§ 318(a) and 37 C.F.R. § 47.73. For the reasons discussed below, Petitioner
`has shown by a preponderance of the evidence that claims 1−24 and
`26−27of the ’440 patent are unpatentable. And Petitioner has not shown by
`a preponderance of the evidence that claim 25 is unpatentable.
`II. CONSOLIDATION OF PROCEEDINGS
`The two captioned proceedings (IPR2021-004821 and IPR2021-
`004832) involve the ’440 patent. The 482 IPR challenges the sole
`independent claim of the ’440 patent (claim 1) together with a subset of
`dependent claims. The 483 IPR challenges only dependent claims. The
`proceedings have a substantial overlap of asserted prior art, present the same
`expert testimony, and involve the same threshold issues. For instance, the
`arguments presented by Patent Owner for both proceedings are identical as
`they primarily focus on the sole independent claim of the ’440 patent. In our
`Decision on Institution we determined that under the circumstances
`presented, consolidation is appropriate because the Board can more
`efficiently handle the common issues and evidence, and also remain
`consistent across proceedings. 482 IPR, Paper 9, 2−3; 483 IPR, Paper 9,
`
`
`
` 1
`
` Hereinafter referred to as “the 482 IPR.”
`2 Hereinafter referred to as “the 483 IPR.”
`2
`
`
`
`
`
`IPR2021-00482
`IPR2021-00483
`Patent 8,769,440 B2
`
`
`2−3 (“Decision” or “Dec. on Inst.”).3 Under 35 U.S.C. § 315(d), the
`Director may determine the manner in which these pending proceedings may
`proceed, including “providing for stay, transfer, consolidation, or
`termination of any such matter or proceeding.” See also 37 C.F.R. § 42.4(a)
`(“The Board institutes the trial on behalf of the Director.”). And more
`specifically Rule 122(a) specifically authorizes the Board to consolidate
`multiple proceedings involving the patent that is before the Office. 37
`C.F.R. § 122(a). Therefore, for a more efficient disposition of these
`proceedings, we consolidate the 482 IPR and 483 IPR for rendering this
`consolidated Final Written Decision.
`III. PROCEDURAL BACKGROUND
`Twitter, Inc. and Google LLC (“Petitioner”) filed two Petitions
`requesting inter partes review of different set of claims of the ’440 patent:
`(a) in the 482 IPR, Petitioner requested review of 1, 5−12, and 25−27
`(482 IPR, Paper 3 (“482 Pet.” or “Pet.”)); and
`(b) in the 483 IPR, Petitioner requested review of claims 2−4, 13−24,
`and 28−37 (483 IPR, Paper 4 (“483 Pet.”)).
`B.E. Technology, L.L.C. (“Patent Owner”) timely filed a Preliminary
`Response in both proceedings, presenting essentially the same arguments in
`both papers. IPR2021-00482, Paper 8 (“482 Prelim. Resp.” or “Prelim.
`Resp.”); IPR2021-00483, Paper 8 (“483 Prelim. Resp.”). After considering
`the merits of the Petition and the arguments against institution by Patent
`
`
`
` 3
`
` The consolidated Decision on Institution was entered into the record of
`each proceeding.
`
`
`
`3
`
`
`
`IPR2021-00482
`IPR2021-00483
`Patent 8,769,440 B2
`
`
`Owner, we consolidated the proceedings for purposes of institution and
`instituted inter partes review. 482 IPR, Paper 9 and 483 IPR, Paper 9.
`During the trial phase, Patent Owner filed a substantially identical
`Response in each proceeding, except for the arguments directed to claim 25,
`which is only challenged in the 482 IPR.4 Petitioner filed a Reply in each
`proceeding, addressing substantially the same argument on both briefs,
`except for the discussion of claim 25, challenge only in the 482 IPR.5 Patent
`Owner filed a Sur-reply.6 We held Oral Argument on June 6, 2022, the
`transcript of which is filed in the record of both captioned proceedings.7
`Because the record in the captioned proceedings is substantially
`similar, hereinafter we cite to the record in the 482 IPR unless specifically
`stated otherwise.
`
`A. Related Matters
`The ’440 patent is involved in two district court matters pending in the
`District of Delaware: B.E. Technology, L.L.C. v. Twitter, Inc., Case No.
`1:20-cv-00621, and B.E. Technology, L.L.C. v. Google LLC, Case No. 1:20-
`cv-00622. 482 Pet. 1; 483 Pet. 1.
`
`
`
` 4
`
`
`
` 482 IPR, Paper 18 (“482 PO Resp.” or “PO Resp.”); 483 IPR, Paper 22
`(“483 PO Resp.”).
`5 482 IPR, Paper 20 (“482 Reply” or “Reply”); 483 IPR, Paper 24 (“483
`Reply”).
`6 482 IPR, Paper 21 (“482 Sur-reply” or “Sur-reply”); 483 IPR, Paper 25
`(“483 Sur-reply”).
`7 482 IPR, Paper 28 (“Tr.”); 483 IPR, Paper 32.
`4
`
`
`
`IPR2021-00482
`IPR2021-00483
`Patent 8,769,440 B2
`
`
`
`In addition to the two concurrent proceedings, Petitioner has filed
`petitions challenging patents related to the ’440 patent. See IPR2021-00484
`and IPR2021-00485.
`The parties also identify various inter partes reviews that involved
`patents related to the ’440 patent, including IPR2014-00038, IPR2014-
`00699, IPR2014-00039, IPR2014-00738, IPR2014-00052, IPR2014-00053,
`IPR2014-00698, IPR2014-00743, IPR2014-00744, all of which involved
`U.S. Patent No. 6,628,314 (“the ’314 patent”). See Exs. 1036−1038. The
`Board issued Final Written Decisions in all of the above identified
`proceedings and the appeals from those decisions to the Federal Circuit have
`been completed, resulting in an opinion affirming the Board’s
`determinations, for instance, that certain claims of the ’314 patent were
`anticipated by U.S. Patent No. 6,119,098 (“Guyot”). See Ex. 1037; Ex. 1039
`(B.E. Technology, L.L.C., v. Google, Inc., et al., 2016 WL 6803057 (Fed.
`Cir. 2016) (“the Federal Circuit Decision”)).
`B. Real Parties in Interest
`Patent Owner asserts that B.E. Technology L.L.C. is the owner of the
`entire interest in the ’440 patent and is the real party in interest. Prelim.
`Resp. 1. Petitioner identifies Twitter, Inc. and Google LLC as the sole real
`parties in interest. 482 Pet. 1; 483 Pet. 1. There is no dispute as to whether
`the identified parties are real parties-in-interest.
`IV. THE ’440 PATENT AND PRESENTED CHALLENGES
`A. The ’440 Patent, Exhibit 1001
`The ’440 patent relates to user interfaces that provide advertising
`obtained over a global computer network. Ex. 1001, 1:22−25. The
`
`
`
`5
`
`
`
`IPR2021-00482
`IPR2021-00483
`Patent 8,769,440 B2
`
`
`’440 patent discloses a client software application that comprises a graphical
`user interface (GUI) program module and an advertising and data
`management (ADM) module. Id. at 6:13−16. The GUI generates an
`application window that includes multiple regions, one of which is a banner
`region for advertisements and other messages processed by the ADM
`module. Id. at 7:4−9. The GUI module also reports computer usage
`information to the ADM server, accesses new banner advertising from the
`server, and, when available, downloads a new ADM module. Id. at
`7:64−8:2. The system for selecting and providing advertisements is set forth
`in Figure 3 as follows:
`
`
`
`6
`
`
`
`
`
`IPR2021-00482
`IPR2021-00483
`Patent 8,769,440 B2
`
`
`
`Figure 3 illustrates a block diagram of a system distributing
`advertisements over the Internet. Id. at 8:9−20. ADM server 22 is
`accessible by client computers 40 over Internet 20, where client
`computers 40 have the client software application installed. Id. ADM
`server 22 has associated with it Ad Database 44 and User/Demographics
`Database 46. Id. at 8:15−16. Ad Database 44 stores banner advertising that
`is provided to client computers 40. Id. at 8:16−20. User/Demographics
`Database 46 stores demographic information used in targeting advertising
`downloaded to individual client computers 40. Id. at 8:32−34.
`When a user first accesses the client software application for the
`purposes of downloading and installing the application, the user submits
`demographic information that is used to determine what advertising is
`provided to the user. Id. at 8:34−38. Advertisement, however, can be based
`on user activities, such as is determined by supplied user information,
`determination of applications used, recognition of files opened, and
`observation of URLs visited. Id. at 8:53−56. ADM server 22 then assigns a
`unique ID to the user and stores the unique ID with the received user
`demographic information. Id. at 21:25−28. Upon installing the client
`software application, the application declares itself a new installation and the
`server provides an identifier for subsequent identifications between the
`application and the server. Id. at 21:62−65. However, user identification
`provides individual users with the ability to receive advertising banners that
`are specifically targeted to a specific user from among multiple users that
`may be registered to a particular computer or through a client software
`application. Id. at 21:65−22:2.
`
`
`
`7
`
`
`
`IPR2021-00482
`IPR2021-00483
`Patent 8,769,440 B2
`
`
`
`B. Illustrative Claim
`Claim 1 is the sole independent claim of the ’440 patent. All of the
`remaining challenged claims depend directly or indirectly from claim 1,
`which is reproduced below.
`1. A method comprising:
`permitting a computer user to access one or more servers
`via a network;
`transferring a copy of software to a computer associated
`with the computer user, the software being configured to run on
`the computer to display advertising content and record computer
`usage information associated with utilization of the computer,
`wherein the computer usage information includes data regarding
`one or more programs run on the computer;
`determining a unique identifier associated with the
`computer, wherein the identifier uniquely identifies information
`sent from the computer to the one or more servers;
`selecting an advertisement to be displayed on the
`computer, the selection based at least on information associated
`with the unique identifier identifying the computer;
`receiving a request for an advertisement from the
`computer; and
`providing the selected advertisement for display on the
`computer in response to the request.
`Ex. 1001, 34:21−41.
`
`
`
`8
`
`
`
`IPR2021-00482
`IPR2021-00483
`Patent 8,769,440 B2
`
`
`
`C. Asserted Prior Art and Grounds of Unpatentability
`The prior art references Petitioner relies on in the challenge of
`unpatentability is filed in both proceedings using consistent Exhibit numbers
`as follows:
`
`a) Guyot: US 6,119,098, filed on October 14, 1997 and issued
`September 12, 2000, filed as Exhibit 1041;
`
`b) Robinson: US 5,918,014, filed on December 26, 1996 and issued
`June 29, 1999, filed as Exhibit 1004;
`
`c) Kobata: US 6,058,418, filed on February 18, 1997 and issued
`May 2, 2000, filed as Exhibit 1005;
`
`d) Angles: US 5,933,811, filed on August 20, 1996 and issued
`August 3, 1999, filed as Exhibit 1006;
`
`e) Lazarus: US 6,134,532, filed on November 14, 1997 and issued
`October 17, 2000, filed as Exhibit 1019;
`
`f) Kikinis: WO 97/09682, published March 13, 1997, filed as
`Exhibit 1025;
`
`g) Apte: US 7,225,142 B1, filed August 1, 1996 and issued
`May 29, 2007, filed as Exhibit 1008;
`
`h) Cheng: US 6,151,643, filed June 7, 1996 and issued
`November 21, 2000, filed as Exhibit 1014;
`
`i) Ellsworth: “Using Compuserve” book with copyright notice dated
`1994, filed as Exhibit 1026;
`
`
`
`9
`
`
`
`IPR2021-00482
`IPR2021-00483
`Patent 8,769,440 B2
`
`
`
`j) Blumenau: US 7,680,889 B2, filed March 30, 2005 and issued
`March 16, 2010, filed as Exhibit 1030.
`
`The following grounds of unpatentability are asserted across the two
`proceedings as follows:
`
`
`
`
`10
`
`
`
`IPR2021-00482
`IPR2021-00483
`Patent 8,769,440 B2
`
`
`
`Claims Challenged
`In IPR2021-00482
`1, 5−7, 10−12, 26, 27
`8
`9
`25
`1, 5−7, 10−12, 26, 27
`8
`Claims Challenged
`In IPR2021-00483
`2−4
`13−18
`19, 20
`21−24
`28−37
`2−4
`13−18
`19, 20
`
`21−24
`
`28−37
`
`35 U.S.C. §
`102
`103
`103
`103
`103
`103
`35 U.S.C. §
`
`Reference(s)
`
`Guyot
`Guyot, Lazarus
`Guyot, Angles
`Guyot
`Robinson, Kobata, Angles
`Robinson, Kobata, Angles, Lazarus
`Reference(s)
`
`103
`103
`103
`103
`103
`103
`103
`103
`
`103
`
`103
`
`Guyot, Kikinis
`Guyot, Apte, Angles
`Guyot, Apte, Angles, Cheng
`Guyot, Ellsworth
`Guyot, Blumenau
`Robinson, Kobata, Angles, Kikinis
`Robinson, Kobata, Angles, Apte
`Robinson, Kobata, Angles, Apte,
`Cheng
`Robinson, Kobata, Angles,
`Ellsworth
`Robinson, Kobata, Angles,
`Blumenau
`Petitioner also relies on a Declaration of Dr. Henry H. Houh, filed as
`Exhibit 1007 in both proceedings (“Houh Decl.”). In support of its Reply,
`Petitioner filed a Supplemental Declaration of Dr. Houh, filed as
`Exhibit 1093 (“Supp. Houh Decl.”). The deposition transcript of Dr. Houh
`is filed in the record as Exhibit 2006 (“Houh Depo.”).
`
`
`
`11
`
`
`
`IPR2021-00482
`IPR2021-00483
`Patent 8,769,440 B2
`
`
`
`Patent Owner relies on the Declaration of Mr. Ivan Zatkovich, filed
`as Exhibit 2007 (“Zatkovich Decl.”). The deposition transcript of Mr.
`Zatkovich is filed in the record as Exhibit 1098 (“Zatkovich Depo.”).
`
`V. ANALYSIS
`A. Claim Construction
`In an inter partes review requested in a petition filed on or after
`November 13, 2018, we apply the same claim construction standard used in
`district courts, namely that articulated in Phillips v. AWH Corp., 415 F.3d
`1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b).
`In applying that standard, claim terms generally are given their
`ordinary and customary meaning as would have been understood by a person
`of ordinary skill in the art at the time of the invention and in the context of
`the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining
`the meaning of the disputed claim limitation, we look principally to the
`intrinsic evidence of record, examining the claim language itself, the written
`description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
`v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
`(citing Phillips, 415 F.3d at 1312–17).
`In our Decision on Institution, we did not expressly construe any
`terms, as neither party proposed specific claim constructions at that stage.
`See Dec. on Inst. 10; 482 Pet. 13; 483 Pet. 12; Prelim. Resp. 9−10. During
`the trial, a dispute arose as to the meaning of several terms. Specifically, in
`Petitioner’s Reply, Petitioner alleges that Patent Owner “reads additional
`requirements into the claims beyond what is required by the plain language”
`
`
`
`12
`
`
`
`IPR2021-00482
`IPR2021-00483
`Patent 8,769,440 B2
`
`
`(Reply 1), and proposes constructions for the disputed terms (see id. at 1–7).
`Patent Owner responds in turn with proposed constructions. See Sur-reply
`1–9. We discuss below the terms at issue and the parties’ respective
`contentions.
`
`1. “a computer user” and “a computer”
`Claim 1 recites “permitting a computer user to access one or more
`servers via a network” and “transferring a copy of software to a computer
`associated with the computer user.” Ex. 1001, 34:22–23. According to
`Petitioner, the claim recites only one “computer” and only one “computer
`user.” Reply 1. Nevertheless, Petitioner argues, the claim language permits
`multiple computers or multiple users, but does not require multiple
`computers or multiple users. Id. (citing Baldwin Graphic Sys., Inc. v.
`Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)). Petitioner’s arguments
`address whether the claim may properly read on a single user per computer
`scenario. Id.
`Patent Owner agrees with Petitioner that “the claims do not preclude a
`single-user/single-computer configuration.” Sur-reply 1. Patent Owner
`however takes issue with Petitioner’s “single-user/single-computer”
`configuration because of the scope of a different claim term: the “unique
`identifier identifying the computer.” Id. According to Patent Owner,
`Petitioner has failed to show that a unique identifier identifies, and is
`associated with, a computer. Id. (concluding that “Guyot and Robinson
`include no teaching of an advertising system limited to a ‘single-user/single-
`computer’ configuration, and Petitioner cites nothing in those references to
`the contrary.”)
`
`
`
`13
`
`
`
`IPR2021-00482
`IPR2021-00483
`Patent 8,769,440 B2
`
`
`
`We find Patent Owner’s arguments non-responsive to the issue
`presented by Petitioner concerning the terms “computer’ and “computer
`user.” Indeed, there is no dispute between the parties that the claim may
`encompass situations in which a single computer is operated by a single
`computer user, though the claim could also encompass multiple computers
`and multiple users. See Reply 1; Sur-reply 1; see also KCJ Corp. v. Kinetic
`Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000) (“This court has
`repeatedly emphasized that an indefinite article ‘a’ or ‘an’ in patent parlance
`carries the meaning of ‘one or more’ in open-ended claims containing the
`transitional phrase ‘comprising.’”). Accordingly, because the parties’
`disputes center around other claim terms, we are not persuaded that the
`scope of “computer” and “computer user” needs further clarification.
`
`2. “computer associated with the computer user”
`Having determined that the claim may encompass a single computer
`user operating a single computer, we look to whether the requirement that
`the computer and the computer user be associated, limits further the claim
`scope. Petitioner has proposed a construction for the term “associated” as:
`“to connect or join together, combining [], either directly or indirectly.”
`Reply 1 (internal citations omitted). Patent Owner takes issue with this
`proposed construction as it pertains to the association between the computer
`and the computer user. Specifically, Patent Owner argues that an association
`“involves an actual link or connection between two pieces of data.” Sur-
`reply 2 (citing Zatkovich Decl. ¶ 48). Patent Owner also posits that “it has
`to be a connection between data representing a user and data representing a
`computer.” Tr. 53:9−12. According to Patent Owner, the Specification
`14
`
`
`
`
`
`IPR2021-00482
`IPR2021-00483
`Patent 8,769,440 B2
`
`
`supports such an interpretation because it describes maintaining a table of
`users registered for a particular machine and that the application maintains a
`listing of users registered for a particular computer. Id. at 53:12−14
`(referring to Ex. 1001, 28:4−7, 16−17). Patent Owner also points to the
`Board’s Final Written Decision in a different, but related proceeding,
`Facebook, Inc. v. B.E. Technology, LLC, IPR2014-00052, Paper 45 (PTAB
`March 31, 2015),8 where, according to Patent Owner, “the Board recognized
`that ‘associating,’ in the context of the claims, depends on the disclosed
`connection between the two pieces of data at issue,” and that “[t]he same
`should apply here.” Sur-reply 3; Ex. 1038, 8.
`We are not persuaded by Patent Owner’s argument. The word
`“associated” is recited four times in claim 1:
`“computer associated with the computer user;”
`i.
`ii.
`“computer usage information associated with utilization of the
`computer;”
`“unique identifier associated with the computer;” and
`iii.
`“information associated with the unique identifier.”
`iv.
`Ex. 1001, 34:25−26, 27−28, 31−32, 35−36 (emphasis added). The claim is
`silent as to how any of these recited “associations” is performed—whether
`by linking data, tabulating data, or maintaining a database with the recited
`data. We recognize that, within the context of the Specification, the
`
`
`
` 8
`
` Hereinafter we refer to this decision of the Board as the ’52 FWD.
`Ex. 1038 (which erroneously identifies the Final Written Decision in that
`proceeding as Paper 10).
`
`
`
`15
`
`
`
`IPR2021-00482
`IPR2021-00483
`Patent 8,769,440 B2
`
`
`association of the computer and the computer user may be implemented in
`one embodiment by using a table or registry of users that are authorized to
`use that computer. See id. at 29:61−64 (explaining that “registration can
`manage the relationships between installations and users; recognizing that a
`user may use more than one installation and an installation may support
`more than one user.”). Notwithstanding such an embodiment, however, the
`claim provides no technical requirement of the “computer”-to-“computer
`user” association—nor does the claim provide any technical detail as to the
`other associations, which are also recited using plain and ordinary language.
`Patent Owner’s argument presents us with the difficult process of drawing a
`line between interpreting the claim within the context of the Specification
`and importing embodiments from that Specification into the claim. We may
`not “read into a claim a limitation from a preferred embodiment, if that
`limitation is not present in the claim itself.” Bayer AG v. Biovail Corp., 279
`F.3d 1340, 1348 (Fed. Cir. 2002); see also Reply 2 (Petitioner arguing that
`Patent Owner’s support in the Specification reflects a non-limiting example
`that does not limit the claims). Accordingly, we decline to import into the
`word “associated” the requirement of an actual link or connection between
`data, such as via a table or registry.
`On the other hand, Patent Owner makes a valid point that in a
`computer network environment, a person of ordinary skill in the art would
`recognize that associating requires a relationship between two pieces of
`information. PO Resp. 14 (arguing additional requirement of a database,
`table, or the like). Although we do not see the claims as supporting
`technical details of how these relationships are maintained (such as by using
`
`
`
`16
`
`
`
`IPR2021-00482
`IPR2021-00483
`Patent 8,769,440 B2
`
`
`a database), we understand the instances of “associated” in the claim point to
`a relationship between data or information. For instance, in another claim
`limitation, the “computer usage information” has a relationship (or is
`“associated”) with the “utilization of the computer” because that information
`includes “data regarding one or more programs run on the computer.”
`Ex. 1001, 34:27−30. Thus, the relationship between the recited pieces of
`data is that of a set and a subset: “utilization of the computer” is part of
`“computer usage information.” The plain use of the word “associated” in
`this manner informs us that the term should not be restricted to any
`particular manner of recording how the pieces of information are related or
`connected.
`With the concept of “relationship” in mind, we find that Petitioner’s
`proffered claim construction is in accord: to join or connect together. See
`Reply 1. The connection of the recited claim elements, in the plain and
`ordinary context of the claim language, refers to a relationship between these
`elements. And this connection or relationship need not be direct, like the
`rows of a table, or the list of users in a specific computer’s registry. Rather,
`a connection or relationship could also be indirect, such as the example in
`the Specification of the relationship between a user and the computer. See
`id. at 2 (citing Ex. 1001, 22:39−42). In that example, a user ID (representing
`a computer user in the computer network) is assigned to the copy of the
`software downloaded by the user. Ex. 1001, 22:39−42. And it is the direct
`relationship between the user ID and that particular copy of the software that
`evidences also an indirect relationship between the user (via the user ID) and
`the computer on which the software is installed. Put another way, by
`
`
`
`17
`
`
`
`IPR2021-00482
`IPR2021-00483
`Patent 8,769,440 B2
`
`
`assigning the user ID to the client software application, the user ID is also
`connected (or has a relationship with), albeit indirectly, to the computer on
`which the client software application is installed. Thus, we determine that
`Patent Owner’s contention of requiring a “relationship” for the term
`“association” is appropriate if taking also into account that the relationship
`may be direct or indirect, as explained above, and without requiring a
`specific data linkage as argued by Patent Owner.
`Patent Owner presents additional argument concerning the ’52 FWD
`(Ex. 1038) involving U.S. Patent 6,628,314 (“the ’314 patent”), which is
`related, through a series of continuations, to the ’440 patent. In the
`’52 FWD the Board determined that the term “associating”—in the
`limitations “associating said unique identifier with demographic information
`in a database” and “associating said computer usage information with said
`demographic information using said unique identifier”—“requires that the
`datasets of usage information and demographic information be associated,
`directly or indirectly, using the unique identifier.” Ex. 1038, 9. The claim
`language at issue in that proceeding, however, materially differs from that in
`the current proceeding, because there the claimed “associating” expressly
`refers to information in a database. See id. at 8, 9.9 Here, however, claim 1
`
`
`
` 9
`
`
`
` The Board applied the broadest reasonable interpretation standard in
`IPR2014-00052, representing another difference between the proceedings.
`See ‘052 FWD, 9. However, we note that during oral argument Patent
`Owner argued that under the Phillips claim construction standard we would
`not need to reach a different conclusion because the issue of data was not
`disputed in the that case. Tr. 52:9−17.
`18
`
`
`
`IPR2021-00482
`IPR2021-00483
`Patent 8,769,440 B2
`
`
`does not recite a database (or any other data structure) used in forming an
`association between the computer and computer user. Accordingly, the
`Board’s construction of “associating” in the ’52 FWD does not warrant that
`we adopt Patent Owner’s proposed construction for “associated” requiring
`an actual data linkage, for example, in a database. See Sur-reply 2–3; PO
`Resp. 14.
`Having reviewed the arguments briefed and presented during oral
`argument (as described above), we are not persuaded that the phrase
`“computer associated with the computer user” requires linking data
`representing the computer and computer user, such as for example, in a
`table, registry, or a database. As stated above, the phrase “associated,”
`under the plain reading of the claim language and as supported by the
`Specification, and in light of Patent Owner’s argument means “to connect or
`join together, or having a relationship, either directly or indirectly.”
`Therefore, the phrase “computer associated with the computer user” means
`that “the computer is connected, joined together, or has a relationship with
`the computer user.”
`
`3. “unique identifier associated with the computer” and “unique
`identifier identifying the computer”
`Claim 1 recites “determining a unique identifier associated with the
`computer, wherein the identifier uniquely identifies information sent from
`the computer to the one or more servers,” and “selecting an advertisement to
`be displayed on the computer, the selection based at least on information
`associated with the unique identifier identifying the computer.” Thus,
`
`
`
`19
`
`
`
`IPR2021-00482
`IPR2021-00483
`Patent 8,769,440 B2
`
`
`claim 1 requires a “unique identifier” that is both “associated with the
`computer” and “identif[ies] the computer.” Ex. 1001, 34:31−32, 36−37.
`Petitioner contends that “[t]he only thing ‘uniquely’ identified in
`claim 1 is ‘information sent from the computer to the one or more servers.’”
`Reply 3. According to Petitioner, “the computer in claim 1 need not be
`identified ‘uniquely,’” and “nothing prevents this computer from being
`identified through its user (i.e., using an identifier of its user).” Id. (citing
`Ex. 1098, 21:11−17). For support on this point, Petitioner points to the
`Board’s Final Written Decision in Microsoft Corp. v. B.E. Technology, LLC,
`IPR2014-00039, Paper 43 (PTAB March 31, 2015),10 where Petitioner
`asserts that the Board declined “to construe the term ‘providing a unique
`identifier to the computer’ in the related ’314 Patent to require that the
`identifier must ‘identif[y] the computer and not the user.’” Reply 4
`(alteration in original).
`Further, Petitioner explains that an identifier exclusive to the
`computer would not function as required by claim 1 “because there would be
`no information with which the function of selecting an advertisement could
`be performed,” where the advertisement is targeted for a particular user in
`claim 1. Tr. 19:4–17. Accordingly, Petitioner argues, “claim 1 permits the
`computer to be identified through the user’s association with the computer
`and nothing prohibits the same identifier from being associated with the
`user.” Id. at 22:17–20. In addition, in reading the “unique identifier”
`
`
`
`10 Hereinafter we refer to this decision of the Board as the ’39 FWD.
`Ex. 1037.
`
`
`
`20
`
`
`
`IPR2021-00482
`IPR2021-00483
`Patent 8,769,440 B2
`
`
`language on the prior art, Petitioner argues that “any ‘user’ and ‘computer
`identifier[]’ distinction is in nomenclature only: an ‘identifier’ is ‘any text
`string used as a label’ and a ‘user identifier’ text string could just as easily be
`a ‘computer identifier.’” Reply 9 (citing Supp. Houh Decl. ¶¶ 57–59; Ex.
`1094 at 243; Ex. 1098, 66:18–69:13) (alteration in original).
`Patent Owner does not dispute Petitioner’s contention “that an
`‘identifier,’ in the context of the claimed invention, is a ‘text string used as a
`label.’” Sur-reply 3 (citing Reply 9; Ex. 1098, 66:18–69:13). Patent Owner
`disagrees, however, with Petitioner’s reliance on the Board’s determination
`in IPR2014-00039 in proposing a broader construction of “unique
`identifier.” See id. at 4–5. Patent Owner also takes issue with Petitioner’s
`position because Patent Owner views the claim as requiring a relationship or
`link between the identifier and the computer—not a relationship between the
`identifier and the user. PO Resp. 25 (“However, the claims unambiguously
`require a unique identifier identifying the ‘computer’ and not the user.”); see
`also Sur-reply 5 (“In Response, B.E. demonstrated that the claim language
`itself undisputedly required an identifier for a computer.”). For instance,
`Patent Owner asserts that “the claim language itself undisputedly require[s]
`an identifier for a computer,” and that “the ’440 Patent discloses various
`‘unique identifier[s] identifying a computer.’” Sur-reply 5 (citing PO Resp.
`24–26) (alteration in original). In support of Patent Owner’s position, Mr.
`Zatkovich (Patent Owner’s expert) testified that “[t]he claims
`unambiguously require a unique identifier identifying the ‘computer’ and not
`the user.” Zatkovich Decl. ¶ 69; see also PO Resp. 25. During oral
`argument Patent Owner clarified its position further stating that a unique
`
`
`
`21
`
`
`
`IPR2021-00482
`IPR2021-00483
`Patent 8,769,440 B2
`
`
`identifier can be a user identifier, but that the prior art reference “has to say
`this unique identifier, which can be any string of text, identifies a computer.”
`Tr. 60:4−13. Patent Owner maintained that “[t]he unique identifier of the
`claim that identifies a computer is the installation ID” (id. at 69:21–22).
`The parties’ primary dispute is whether a user identifier may be
`“associated with” and also “identify” the computer. We addressed above the
`construction of the term “associated”—“to connect or join together, or
`having a relationship, either directly or indirectly.” So that term’s scope
`does not need to revisited here. Furthermore, neither party seems to dispute
`the scope of what it means to “identify the computer.” Rather, the parties’
`dispute warrants that we focus our claim construction analysis on whether
`the claim supports or rejects the notion that a user identifier m
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
