B.E. Technology, L.L.C. v. Google, Inc., Not Reported in F.3d (2016)
`
`2016 WL 6803057
`Only the Westlaw citation is currently available.
`United States Court of Appeals,
`Federal Circuit.
`
`B.E. TECHNOLOGY, L.L.C., Appellant
`v.
`GOOGLE, INC., Match.com LLC,
`People Media, Inc., Appellees
`B.E. Technology, L.L.C., Appellant
`v.
`Microsoft Corporation,
`Google, Inc., Appellees
`B.E. Technology, L.L.C., Appellant
`v.
`Facebook, Inc., Google, Inc., Match.com
`LLC, People Media, Inc., Appellees
`
`2015–1827
`|
`2015–1828
`|
`2015–1829
`|
`2015–1879
`|
`Decided: November 17, 2016
`
`Synopsis
`Background: Challenger filed petition for inter partes review
`of patent related to user interfaces that provided advertising
`over global computer network such as the Internet. The
`United States Patent and Trademark Office, Patent Trial
`and Appeal Board (PTAB), 2015 WL 1735100, 2015 WL
`1735099, and 2015 WL 1735098, determined that patent was
`unpatentable based on anticipation. Patent owner appealed.
`
`Holdings: The Court of Appeals, Chen, Circuit Judge, held
`that:
`
`[1] substantial evidence supported PTAB's finding that
`reference anticipated patent claims;
`
`[2] skilled artisan would have been motivated to combine
`references, rendering patent claims obvious; and
`
`[3] PTAB's determination that patent owner did not meet its
`burden to show written description support for the proposed
`substitute limitations, as required to amend patent, was not
`arbitrary and capricious.
`
`Affirmed in part and dismissed in part.
`
`West Headnotes (10)
`
`[1]
`
`[2]
`
`[3]
`
`Patents
`Computers and Software
`Term “demographic information” in patent
`related
`to user
`interfaces
`that provided
`advertising over global computer network such
`as the Internet, meant collected characteristic
`information about a user that does not identify
`the user.
`
`Patents
`Computers and Software
`Terms “providing a unique identifier to the
`computer” and the “identifier uniquely identifies
`information sent over said computer network
`from the computer to the server” in patent related
`to user interfaces that provided advertising over
`global computer network such as the Internet,
`meant any system, process, or entity provides
`a unique identifier to the computer, where the
`unique identifier identifies any information that
`is sent over the computer network.
`
`Patents
`Computers and Software
`Term “transferring a copy of said software to
`the computer in response to a download request
`by the user” in patent related to user interfaces
`that provided advertising over global computer
`network such as the Internet, meant sending
`a request for downloading data from a user's
`computer to the server.
`
`[4]
`
`Patents
`
`Computers and Software
`
` © 2020 Thomson Reuters. No claim to original U.S. Government Works.
`
`1
`
`Twitter-Google Exhibit 1039
`
`

`

`B.E. Technology, L.L.C. v. Google, Inc., Not Reported in F.3d (2016)
`
`Substantial evidence supported finding of Patent
`Trial and Appeal Board (PTAB), that Internet
`usage information was a behavior characteristic,
`and that reference describing system and method
`for targeting and distributing advertisements
`over a distributed information network that
`allowed information to be exchanged between
`a server and multiple subscriber systems taught
`use of collected characteristic
`information
`to target advertising to subscribers, within
`scope of “providing demographically-targeted
`advertising to a computer user” claimed in
`patent related to user interfaces that provided
`advertising over global computer network such
`as the Internet, as would anticipate patent claims.
`
`Patents
`Computers and Software
`Subscriber data in reference describing system
`and method for
`targeting and distributing
`advertisements over a distributed information
`network
`that allowed
`information
`to be
`exchanged between a server and multiple
`subscriber systems was unique identifier, as
`would anticipate claim in patent related to user
`interfaces that provided advertising over global
`computer network such as the Internet; reference
`used subscriber data and subscriber statistics
`to provide targeted advertising, subscriber data
`included subscriber's personal profile, and
`subscriber statistics contained Internet usage
`information.
`
`Patents
`Computers and Software
`Reference describing system and method for
`targeting and distributing advertisements over
`a distributed information network that allowed
`information
`to be exchanged between a
`server and multiple subscriber systems taught
`“transferring a copy of the software in response
`to a download request by
`the user”
`in
`patent related to user interfaces that provided
`advertising over global computer network such
`as the Internet, as would anticipate patent claims,
`where claims did not have an intent requirement.
`
`[5]
`
`[6]
`
`[7]
`
`[8]
`
`[9]
`
`[10]
`
`Patents
`Computers and Software
`Skilled artisan would have been motivated
`to combine
`reference describing
`system
`and method for
`targeting and distributing
`advertisements over a distributed information
`network
`that allowed
`information
`to be
`exchanged between a server and multiple
`subscriber systems and reference describing
`protocol on the Internet for transferring files
`from one computer host to another, rendering
`obvious patent related to user interfaces that
`provided advertising over global computer
`network such as the Internet; skilled artisan
`would have considered protocols in creating or
`improving upon a system to access and download
`software, and would look to methods of input
`and output in graphical user interface systems
`that allowed for access and download of software
`between a client computer and a server.
`
`Patents
`Inter partes review
`Patent Trial and Appeal Board's (PTAB)
`determination that patent owner did not meet its
`burden to show written description support for
`the proposed substitute limitations, as required
`to amend patent related to user interfaces
`that provided advertising over global computer
`network such as the Internet, was not arbitrary
`and capricious, where patent owner only
`provided string citation to original specification
`without explaining how those various pages
`supported each of the proposed substitute
`limitations. 5 U.S.C.A. § 706; 37 C.F.R. §
`42.121(b).
`
`Patents
`In general;  utility
`US
`Patent
`6,628,314. Construed
`Unpatentable.
`
`and
`
`Patents
`In general;  utility
`US Patent 5,918,014, US Patent 6,119,098, US
`Patent 6,771,290. Cited.
`
` © 2020 Thomson Reuters. No claim to original U.S. Government Works.
`
`2
`
`

`

`B.E. Technology, L.L.C. v. Google, Inc., Not Reported in F.3d (2016)
`
`Appeal from the United States Patent and Trademark Office,
`Patent Trial and Appeal Board in Nos. IPR2014–00038,
`IPR2014–00699.
`Appeal from the United States Patent and Trademark Office,
`Patent Trial and Appeal Board in Nos. IPR2014–00039,
`IPR2014–00738.
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2014–
`00052, IPR2014–00053, IPR2014–00698, IPR2014–00743,
`IPR2014–00744.
`
`Attorneys and Law Firms
`
`Robert E. Freitas, Jason S. Angell, Freitas Angell &
`Weinberg LLP, Redwood City, CA, argued for appellant. Also
`represented by Daniel J. Weinberg.
`
`Andrew John Pincus, Mayer Brown LLP, Washington, DC,
`argued for all appellees as to 15–1827. Google, Inc. also
`represented by Brian Rosenthal, Paul Whitfield Hughes,
`Clinton Brannon.
`
`Michael Sumner Forman, Office of the Solicitor, United
`States Patent and Trademark Office, Alexandria, VA, argued
`for intervenor Michelle K. Lee as to 15–1827. Also
`represented by Thomas W. Krause, Scott Weidenfeller,
`Kakoli Caprihan.
`
`Jeffrey Paul Kushan, Sidley Austin LLP, Washington, DC,
`argued for all appellees as to 15–1828. Microsoft Corporation
`also represented by Scott Border, Samuel Dillon, Ryan C.
`Morris, Anna Mayergoyz Weinberg.
`
`Heidi Lyn Keefe, Cooley LLP, Palo Alto, CA, argued for
`all appellees as to 15–1829, 15–1879. Facebook, Inc., also
`represented by Mark R. Weinstein; Orion Armon, Peter Sauer,
`Broomfield, CO.
`
`Jason Alexander Engel, K & L Gates LLP, Chicago, IL,
`for appellees Match.com LLC, People Media, Inc. Also
`represented by Kacy Dicke.
`
`Before Lourie, Chen, and Stoll, Circuit Judges.
`
`Opinion
`
`Chen, Circuit Judge.
`
`*1 B.E. Technology, L.L.C. (B.E.) appeals from three final
`written decisions of the U.S. Patent and Trademark Office,
`Patent Trial and Appeal Board (Board), across nine inter
`
`partes reviews (IPRs), in which the Board found unpatentable
`claims 11–22 of B.E.'s U.S. Patent No. 6,628,314. See
`Google, Inc. v. B.E. Tech., LLC, Nos. IPR2014–00038,
`IPR2014–0069, 2015 WL 1735099, at *1 (P.T.A.B. Mar. 31,
`2015) (Google Written Decision); Microsoft Corp. v. B.E.
`Tech., LLC, Nos. IPR2014–00039, IPR2014–00738, 2015
`WL 1735100, at *1 (P.T.A.B. Mar. 31, 2015) (Microsoft
`Written Decision); Facebook, Inc. v. B.E. Tech., LLC,
`Nos. IPR2014–00052; IPR2014–00053, IPR2014–00698,
`IPR2014–00743, IPR2014–00744, 2015 WL 1735098, at
`*2 (P.T.A.B. Mar. 31, 2015) (Facebook Written Decision).
`Because the above-captioned appeals all address overlapping
`claims of the '314 patent, we address them in a single
`opinion, and we affirm, for the reasons stated herein.1
`We agree with the Board that claims 11–22 of the '314
`patent are unpatentable based on anticipation by U.S. Patent
`No. 6,119,098 (Guyot) and obviousness in view of Guyot,
`U.S. Patent No. 5,918,014 (Robinson), and How to Use
`Anonymous FTP, IAFA Working Group, 1–13 (May 1994)
`(RFC 1635). Microsoft Written Decision at *4–14. We also
`affirm the Board's denial of B.E.'s contingent motion to
`amend. Id. at *16–17. Because we affirm based on Microsoft's
`petition, we do not address the merits of Google's and
`Facebook's parallel petitions and dismiss them as moot.2
`
`Background
`
`The '314 patent relates to user interfaces that provide
`advertising over a global computer network such as the
`Internet. See '314 patent col. 1, ll. 12–16. It describes a client
`software application comprising a graphical user interface
`(GUI) and an advertising and data management (ADM)
`module. Id. col. 6, ll. 64–67. The GUI comprises a first
`region comprising a number of user-selectable items and
`a second region comprising an information display region,
`which includes banner advertisements. Id. col. 4, ll. 24–37.
`To target a user with advertisements, program modules in the
`GUI collect statistical data based on the user's activity within
`the GUI. Id. col. 4, ll. 43–51.
`
`*2 When a user first accesses the client software application,
`the user enters demographic information into a form, which
`is used in selecting advertising to be displayed to the user.
`Id. col. 8, ll. 57–62, col. 16, l. 60–col. 17, l. 2. The ADM
`server checks the form's completeness, assigns a unique
`identification (ID) to the user, and stores the unique ID with
`the user's demographic information. Id. col. 6, l. 67, col.
`16, l. 60–col.17, l. 15. The user's computer downloads the
`
` © 2020 Thomson Reuters. No claim to original U.S. Government Works.
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`B.E. Technology, L.L.C. v. Google, Inc., Not Reported in F.3d (2016)
`
`client software application, which then monitors and reports
`to the ADM server the user's activity, and displays advertising
`banners to the user based on the user's input or activity at
`periodically timed intervals. Id. col. 12, ll. 55–59, col. 14, ll.
`40–46, col. 17, ll. 17–23.
`
`I. Representative Claim
`
`Claim 11 is representative and is reproduced below:
`
`11. A method of providing demographically-targeted
`advertising to a computer user, comprising the steps of:
`
`providing a server that is accessible via a computer
`network,
`
`permitting a computer user to access said server via said
`computer network,
`
`the user,
`information about
`acquiring demographic
`said demographic
`information
`including
`information
`specifically provided by the user in response to a request
`for said demographic information,
`
`providing the user with download access to computer
`software that, when run on a computer, displays advertising
`content, records computer usage information concerning
`the user's utilization of the computer, and periodically
`requests additional advertising content,
`
`transferring a copy of said software to the computer in
`response to a download request by the user,
`
`providing a unique identifier to the computer, wherein said
`identifier uniquely identifies information sent over said
`computer network from the computer to said server,
`
`associating said unique identifier with demographic
`information in a database,
`
`selecting advertising content for transfer to the computer in
`accordance with the demographic information associated
`with said unique identifier;
`
`transferring said advertising content from said server to the
`computer for display by said program,
`
`periodically acquiring said unique identifier and said
`computer usage information recorded by said software
`from the computer via said computer network, and
`
`associating said computer usage information with said
`demographic information using said unique identifier.
`Id. col. 22, l. 41–col. 23, l. 7 (emphases added). Although
`numerous petitioners, including Google, Inc., Microsoft
`Corp., and Facebook, Inc. filed separate IPR petitions against
`various claims of the '314 patent, we agree with Microsoft
`that all of the challenged claims are unpatentable based on
`anticipation by Guyot and obviousness in view of Guyot,
`Robinson, and RFC 1635. Microsoft Written Decision, at *1.
`We briefly review Guyot, Robinson, and RFC 1635, before
`discussing claim construction, anticipation, obviousness, and
`B.E.'s contingent motion to amend.
`
`II. Guyot
`
`Guyot describes a system and method for targeting and
`distributing advertisements over a distributed information
`network that allows information to be exchanged between
`a server and multiple subscriber systems. Id. at *6. The
`server stores and manages an advertisement database, and
`each subscriber system has a unique proprietary identifier.
`Id. at *6–7. The subscriber systems periodically access the
`server to download targeted advertisements based on the
`server-stored personal profile, before displaying the targeted
`advertisements to the subscriber. Id. at *6. The subscriber
`can select a “connection button” to connect to the server,
`which determines if the latest software version is needed, and
`if yes, a uniform resource locator (URL) is provided to the
`subscriber computer, which downloads the software. Id. at
`*10.
`
`III. Robinson
`
`*3 Robinson describes a system for displaying advertising to
`users using a cookie stored on the user's computer. Id. at *11.
`“The cookie contains the identifier of the user, and the user
`ID in a central database is updated with tracking information
`from the cookie,” which allows the central server to associate
`information with a user. Id.
`
`IV. RFC 1635
`
`RFC 1635 describes File Transfer Protocol (FTP), a protocol
`on the Internet for transferring files from one computer host
`to another. Id. at *12. The user of the FTP program logs into
`
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`

`B.E. Technology, L.L.C. v. Google, Inc., Not Reported in F.3d (2016)
`
`both hosts with a user account and a password. Id. RFC 1635
`also describes anonymous FTP, in which an archive site acts
`as a repository for a wealth of information, akin to a library.
`Id. To provide general access, a special user account called
`“anonymous” allows the user to log in using FTP to view and
`retrieve a limited set of files from the archive site. Id.
`
`Discussion
`
`I. Standard of Review
`
`“We review intrinsic evidence and the ultimate construction
`of the claim de novo.” SightSound Techs., LLC v. Apple Inc.,
`809 F.3d 1307, 1316 (Fed. Cir. 2015). In construing claims,
`the Board applies the broadest reasonable interpretation.
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142
`(2016). Anticipation is a question of fact. Eli Lilly & Co. v.
`Bd. of Regents of Univ. of Wash., 334 F.3d 1264, 1267 (Fed.
`Cir. 2003). “[O]bviousness under § 103 is a question of law
`based on underlying factual findings.” Nike, Inc. v. Adidas
`AG, 812 F.3d 1326, 1334 (Fed. Cir. 2016). “We review the
`Board's conclusions of law de novo and its findings of fact for
`substantial evidence.” Blue Calypso, LLC v. Groupon, Inc.,
`815 F.3d 1331, 1337 (Fed. Cir. 2016). Substantial evidence is
`“such relevant evidence [that] a reasonable mind might accept
`as adequate.” Id.
`
`II. Claim Construction
`
`We begin with claim construction. B.E. appeals the Board's
`constructions of three claim limitations: “demographic
`information,” “unique identifier,” and “transferring a copy
`of said software to the computer in response to a download
`request by the user.” We find no error in these constructions,
`and we address each, in turn.
`
`[1] The Board first adopted the parties' agreed-upon
`construction of “demographic information” as “collected
`characteristic information about a user that does not identify
`the user.” Microsoft Written Decision, at *4. Yet B.E. now
`appears to seek a different construction by arguing that
`the agreed-upon construction of “demographic information”
`must exclude “computer usage information.” B.E. asserts
`that claim 11 recites that the demographic information is
`obtained from the user via a request for that information,
`whereas computer usage information is collected from the
`
`user's computer activity. B.E., however, did not argue this
`position to the Board or object to the Board's construction.
`Id. The Board found that demographic information need not
`be solely information specifically requested from the user
`nor exclude Internet browsing history because demographic
`information means “collected information about a subscriber,
`such as Internet sites accessed, and this information does
`not identify the subscriber.” Id. Even though demographic
`information includes data specifically requested from a user,
`that does not mean that demographic information necessarily
`excludes computer usage information, as reflected in the
`broad, agreed-upon claim construction. We affirm.
`
`*4 [2] The Board next construed “providing a unique
`identifier to the computer” and the “identifier uniquely
`identifies information sent over said computer network from
`the computer to the server” to mean “any system, process,
`or entity provides a unique identifier to the computer, where
`the unique identifier identifies any information that is sent
`over the computer network.” Id. at *11. B.E. argues that (1)
`the unique identifier must be unique to the “computer,” and
`(2) the server must “provide” the unique identifier to the
`computer. Claim 11, in pertinent part, reads:
`
`[P]roviding a unique identifier to the computer, wherein
`said identifier uniquely identifies information sent over said
`computer network from the computer to said server,
`'314 patent, col. 22, ll. 58–62 (emphases added).
`
`We affirm because B.E.'s proposed construction of unique
`identifier does not comport with the disclosure of the '314
`patent, which describes collecting demographic information
`from a user, and there is no requirement that the server provide
`the unique identifier. B.E. agrees that “[c]laim 11 does not
`require, or inevitably forbid, that the unique identifier identify
`a user.” Appellant Br. at 25–26, Appeal No. 2015–1827.3
`But, B.E. argues that the remainder of the claim phrase,
`“said identifier uniquely identifies information sent ... from
`the computer,” requires the unique identifier to identify the
`computer. Id. According to B.E., whether the unique identifier
`identifies the user is immaterial, because the unique identifier
`“tolerates a user identifier if, but only if, the identifier
`‘uniquely identifies information sent ... from the computer.’
`” Id.
`
`We disagree. B.E. does not appreciate that the remainder of
`claim 11 establishes that the unique identifier is associated
`with “demographic
`information”
`that
`is “specifically
`provided by the user in response to a request for said
`
` © 2020 Thomson Reuters. No claim to original U.S. Government Works.
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`5
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`

`B.E. Technology, L.L.C. v. Google, Inc., Not Reported in F.3d (2016)
`
`demographic information.” '314 patent, col. 22, ll. 48–51, 58–
`64. B.E. does not point to any exclusionary language in the
`'314 patent's claims or specification that a unique identifier
`cannot be solely a user ID. To the contrary, dependent
`claim 16 expressly recites “associat[ing] a different unique
`identifier with each of a number of valid users of said
`software.” '314 patent, col. 23, ll. 24–25. The '314 patent
`specification also confirms that the unique identifier could be
`a “user” ID because “[t]he user ID ... is used to anonymously
`identify the user for the purpose of demographically targeting
`advertising to that user.” '314 patent, col. 17, ll. 29–31. This
`is achieved by “assign[ing] a unique ID to the user and
`then stor[ing] that ID along with the received demographic
`data.” Id. col. 17, ll. 13–14. B.E. alternatively argues that the
`specification explains that “server 22 assigns” the “unique
`ID,” id. col. 17, l. 13, and the client “receives an assigned
`ID from the server,” id. col. 18, l. 14, but nothing in the
`claims requires that the unique identifier be assigned by the
`server. Claim 11, for example, expressly recites “transferring
`said advertising content from said server to the computer,”
`whereas the unique identifier is just “provid[ed] ... to the
`computer.” We agree that claim 11 does not preclude the
`unique identifier from being provided by “any system,
`process, or entity,” and we affirm the Board's construction of
`unique identifier.
`
`[3] The Board construed “transferring a copy of said
`software to the computer in response to a download request
`by the user” to mean “sending a request for downloading data
`from a user's computer to the server.” Id. at *5. It rejected
`B.E.'s position that the claims have an “intent” requirement in
`the sense that “a user knowingly asks for a copy of software
`to be downloaded from a server to the user's computer.” Id.
`at *5, 10. The Board found that the claims do not require
`a user to “knowingly” ask for a copy of software, and the
`broadest reasonable interpretation of “download request by
`the user” is “sending a request from the user's computer to a
`server.” Id. We agree with the Board because the claims do
`not require that a user “knowingly” download the software.
`The claims require only that the user download the software,
`which means sending a request from the user's computer to
`the server. We agree with the Board's construction of this
`limitation to mean “sending a request for downloading data
`from a user's computer to the server.” Id. at *5.
`
`III. Anticipation of Claims 11–14 and 16–19 by Guyot
`
`*5 B.E. argued to the Board that Guyot did not disclose
`three limitations of claims 11–14 and 16–19: (1) a “method
`of providing demographically-targeted advertising to a
`computer user”; (2) “providing a unique identifier to the
`computer”; and (3) “transferring a copy of the software ‘in
`response to a download request by the user.’ ” Id. at *7.
`
`The Board rejected B.E.'s argument that Guyot does not
`disclose demographically targeted advertising simply because
`Guyot does not use the word “demographic.” Id. at *7–8. It
`found that Guyot discloses a database with subscriber data
`and subscriber statistics, and the subscriber data includes
`the subscriber's identification information, password, and
`“personal profile ... used to target specific advertisements
`to the subscriber.” Id. at *8. The subscriber statistics
`include “advertisements distributed to the subscriber, the
`number of times each advertisement has been displayed,”
`and “information on Internet sites that the subscriber has
`accessed over a predetermined period.” Id. The Board
`concluded that the subscriber statistics are within the broadest
`reasonable interpretation of “demographic information”
`because the statistics contain collected information about the
`subscriber, e.g., Internet sites accessed, without identifying
`the subscriber. Id. at *9. Internet sites accessed is a behavior
`characteristic within the scope of “demographic information.”
`Id.
`
`[4] B.E. argues on appeal that (1) Guyot does not disclose
`any form of the word “demographic” or provide any other
`express or inherent disclosure of the use of demographic
`information in targeting advertising, and (2) a subscriber's
`Internet usage cannot be “demographic information” because
`Internet usage falls under “computer usage information,”
`which is a different claim term. Both of these arguments
`lack merit because B.E. ignores the agreed-upon claim
`construction for demographic information. It is not necessary
`for Guyot to use the word “demographic” to disclose
`“collected characteristic information about a user that does
`not identify the user” because “demographic information”
`is not part of the construction. Id. “Computer usage
`information” is also within the scope of “demographic
`information,” as construed, and B.E. did not request before
`the Board that demographic information exclude computer
`usage information.4 Id. at *9. Substantial evidence supports
`the Board's finding that Internet usage information is a
`behavior characteristic, and that Guyot teaches the use of
`collected characteristic information to target advertising to
`subscribers, within the scope of “providing demographically-
`targeted advertising to a computer user.” Id.
`
` © 2020 Thomson Reuters. No claim to original U.S. Government Works.
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`B.E. Technology, L.L.C. v. Google, Inc., Not Reported in F.3d (2016)
`
`[5] The Board also rejected B.E.'s position that the limitation,
`“providing a unique identifier to the computer,” requires
`that (1) the unique identifier be provided by the server, and
`(2) the unique identifier identify the computer. Id. at *10.
`We agree with the Board because we rejected B.E.'s claim
`construction position that the “unique identifier” is limited
`to identifying the user's “computer” or that the server be
`the “source” of the unique identifier. Rather, because the
`claim language is unrestricted, the unique identifier could
`be provided by “any system, process, or entity,” and it
`requires only that the information be uniquely identified.
`Id. at *11. We also agree that Guyot's subscriber data is
`a unique identifier that identifies the subscriber statistics
`associated with each user. Id. B.E. itself concedes that
`“Guyot's Subscriber Data uniquely identifies the information
`associated with the subscriber.” Reply Br. at 19. The
`Board correctly found that Guyot uses subscriber data and
`subscriber statistics to provide targeted advertising; the
`subscriber data includes the subscriber's personal profile; and
`the subscriber statistics contain Internet usage information.
`Microsoft Written Decision, at *11. Thus, we agree with the
`Board that Guyot's subscriber data is a unique identifier.
`
`*6 [6] Finally, the Board rejected B.E.'s position that
`“transferring a copy of said software to the computer in
`response to a download request by the user” requires the user
`to be aware that he has requested a new version of the software
`for download. Id. at *9–10. We agree with the Board that
`Guyot teaches “transferring a copy of the software in response
`to a download request by the user” because the claims
`do not have an intent requirement. B.E.'s arguments that a
`subscriber is unaware of a download request by his computer
`is unavailing because this limitation does not require a user's
`intent to request a download, only that the download request
`occurs as a result of the user's actions through his computer.
`Guyot explains that a subscriber can click a “connection
`button” to connect to the server, which evaluates the necessity
`of downloading the latest version of software, and if yes, a
`URL address is provided to the subscriber's computer, which
`downloads the software. Id. The manual selection of Guyot's
`“connection button” by a subscriber causes his computer to
`request a download of the latest version of the software, which
`is sufficient to meet the requirements of this claim limitation.
`Id.
`
`We affirm because the Board had substantial evidence to find
`that Guyot anticipates claims 11–14 and 16–19.
`
`IV. Obviousness of Claims 20–22 in View of RFC 1635
`
`Obviousness requires assessing (1) the “level of ordinary
`skill in the pertinent art,” (2) the “scope and content of the
`prior art,” (3) the “differences between the prior art and
`the claims at issue,” and (4) “secondary considerations” of
`non-obviousness such as “commercial success, long felt but
`unsolved needs, failure of others, etc.” KSR Int'l Co. v. Teleflex
`Inc., 550 U.S. 398, 406 (2007).
`
`[7] Claim 20 depends on claim 11 and recites requesting
`and receiving demographic information in response to a user
`request to download software, prior to providing the user with
`download access. '314 patent col. 24, ll. 9–14. Claims 21–
`22 recite examining demographic information for required
`information before providing a user with download access,
`or providing anonymous download access in exchange for
`demographically-relatable computer usage information. '314
`patent col. 24, ll. 15–27.
`
`B.E. assigns error to the Board for failing to establish a
`motivation to combine Guyot and RFC 1635, arguing that a
`person of ordinary skill in the art would not have considered
`an FTP protocol in seeking a solution to obtaining answers
`to a user questionnaire.5 Microsoft responds that RFC 1635
`is analogous art because it was “reasonably pertinent to the
`particular problem with which the inventor is involved.” K–
`TEC, Inc. v. Vita—Mix Corp., 696 F.3d 1364, 1375 (Fed.
`Cir. 2012). Microsoft explains that B.E. misstates the '314
`patent's field of invention as “collect[ing] information using
`a questionnaire” because RFC 1635 is actually from the same
`field, i.e., “provid [ing] a user ... with access to information
`resources via the Internet.” Appellee Br. at 65.
`
`We agree with Microsoft. The '314 patent is not directed
`to a questionnaire, but to a “Computer Interface Method
`and Apparatus with Targeted Advertising.” '314 patent Title.
`It provides a “method and apparatus for providing an
`automatically upgradeable software application that includes
`targeted advertising based upon demographics and user
`interaction with the computer.” '314 patent Abstract. Claim
`20 recites not only requesting and receiving demographic
`information, but also accessing and downloading software.
`Claim 22 recites anonymous download access. A person of
`ordinary skill in the art would have considered FTP protocols,
`including RFC 1635, in creating or improving upon a system
`to access and download software. B.E. concedes that the FTP
`protocol “was designed to make it easy to download software
`
` © 2020 Thomson Reuters. No claim to original U.S. Government Works.
`
`7
`
`

`

`B.E. Technology, L.L.C. v. Google, Inc., Not Reported in F.3d (2016)
`
`and files without having to answer questions.” Reply. Br.
`at 22. The Board properly found that a person of ordinary
`skill would have been motivated to combine Guyot with RFC
`1635 because he or she would not have been looking at
`“questionnaires,” but at methods of input and output in GUI
`systems that allow for the access and download of software
`between a client computer and a server. The FTP protocol fits
`squarely within this field. Appellee Br. at 65. B.E. makes no
`separate arguments for claims 21–22.
`
`*7 Therefore, we affirm the Board's finding that claims 20–
`22 would have been obvious in view of Guyot and RFC 1635.
`
`V. B.E.'s Motion to Amend
`
`The Board denied B.E.'s contingent motion to amend, based
`on B.E.'s failure to provide a claim construction or point out
`with particularity the written description support for B.E.'s
`proposed new limitations. B.E. simply used a string citation
`to support its proposed substitute limitations, which included
`“selecting advertising content for transfer to the computer in
`accordance with real-time.” J.A. 1602–03. The Board found
`that it was unclear whether the “selecting” or “transfer” was in
`accordance with “real-time.” It also found that B.E.'s motion
`did not meet B.E.'s burden to establish written description
`support under 37 C.F.R. § 42.121(b) (2015), which explained
`that a “motion to amend claims must ... set forth: (1) The
`support in the original disclosure of the patent for each claim
`that is added or amended....”
`
`In reviewing the Board's interpretation of Patent and
`Trademark Office regulations, we apply “the standards set
`forth in the Administrative Procedure Act, 5 U.S.C. § 706.”
`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1306
`(Fed. Cir. 2015). “[W]e set aside actions of the Board that
`are arbitrary, capricious, an abuse of discretion, or otherwise
`not in accordance with law.” Id. “We accept the Board's
`interpretation of Patent and Trademark Office regulations
`unless that interpretation is ‘plainly erroneous or inconsistent
`with the regulation.’ ” Id.
`
`[8] We agree with the Board that B.E. d