`571-272-7822
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`Paper 33
`Entered: September 1, 2022
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`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
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`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)
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`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
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`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
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` The consolidated Decision on Institution was entered into the record of
`each proceeding.
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`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.
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` 4
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` 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
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`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
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`’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:
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`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.
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`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.
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`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;
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`b) Robinson: US 5,918,014, filed on December 26, 1996 and issued
`June 29, 1999, filed as Exhibit 1004;
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`c) Kobata: US 6,058,418, filed on February 18, 1997 and issued
`May 2, 2000, filed as Exhibit 1005;
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`d) Angles: US 5,933,811, filed on August 20, 1996 and issued
`August 3, 1999, filed as Exhibit 1006;
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`e) Lazarus: US 6,134,532, filed on November 14, 1997 and issued
`October 17, 2000, filed as Exhibit 1019;
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`f) Kikinis: WO 97/09682, published March 13, 1997, filed as
`Exhibit 1025;
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`g) Apte: US 7,225,142 B1, filed August 1, 1996 and issued
`May 29, 2007, filed as Exhibit 1008;
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`h) Cheng: US 6,151,643, filed June 7, 1996 and issued
`November 21, 2000, filed as Exhibit 1014;
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`i) Ellsworth: “Using Compuserve” book with copyright notice dated
`1994, filed as Exhibit 1026;
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`j) Blumenau: US 7,680,889 B2, filed March 30, 2005 and issued
`March 16, 2010, filed as Exhibit 1030.
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`The following grounds of unpatentability are asserted across the two
`proceedings as follows:
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`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
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`21−24
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`28−37
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`35 U.S.C. §
`102
`103
`103
`103
`103
`103
`35 U.S.C. §
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`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
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`103
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`103
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`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.”).
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`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”
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`(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.”)
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`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
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`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
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` 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).
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`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
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`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
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`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
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` 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.
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`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.”
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`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,
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`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”
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`10 Hereinafter we refer to this decision of the Board as the ’39 FWD.
`Ex. 1037.
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`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
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`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