`Filed: December 9, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TWITTER, INC. AND GOOGLE LLC,
`Petitioner,
`
`v.
`
`B.E. TECHNOLOGY, LLC,
`Patent Owner
`
`Case IPR2021-00483
`Patent 8,769,440
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`
`
`
`PATENT OWNER’S RESPONSE
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`Case IPR2021-00483
`Patent 8,769,440
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`TABLE OF CONTENTS
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`I.
`
`II.
`
`INTRODUCTION ...................................................................................... 1
`
`TECHNICAL BACKGROUND ................................................................ 4
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`A. Overview of U.S. Patent No. 8,769,440 ..................................................... 4
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`B. Prior PTAB Proceedings Involving Related Patents .................................. 6
`
`C. Level of Ordinary Skill ............................................................................... 8
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`D. Claim Construction ..................................................................................... 9
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`III.
`
`ARGUMENT.............................................................................................. 9
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`A. The Petition Fails to Establish by a Preponderance of the Evidence that
`the Challenged Claims are Invalid ............................................................. 9
`
`1. Claim 1 Is Not Anticipated by Guyot .................................................10
`
`a. Overview of Guyot ..............................................................................10
`
`b. Guyot Does Not Teach or Suggest “Transferring a Copy of Software
`to a Computer Associated with the Computer User”...................................12
`
`c. Guyot Does Not Teach or Suggest “Determining a Unique Identifier
`Associated with the Computer, Wherein the Identifier Uniquely Identifies
`Information Sent from the Computer to the One Or More Servers” or
`Selecting an Advertisement Based on Information Associated with “the
`Unique Identifier Identifying the Computer” ..............................................15
`
`i. Guyot’s “Unique Proprietary Identifier” Is Not the Claimed “Unique
`Identifier” Because It Is Not Used to Identify Information Sent from The
`Computer to the Server(s) In Connection With Selecting Advertisements
`
`15
`
`ii. Guyot’s “Subscriber Data” is Not the Claimed “Unique Identifier”
`Because it is Not “Associated With the Computer” and Does Not
`“Identify[] the Computer” as Required By the Claims ............................18
`
`(1) Petitioner’s Justifications for Ignoring Express Claim Limitations
`Requiring the Unique Identifier to Identify the Computer Are Flawed
`
`24
`
`(2) Petitioner’s Speculation that Guyot’s Subscriber Data
`Hypothetically Could Be Used to Identify a Computer Is Not a
`Disclosure of the Claimed Unique Identifier .......................................30
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`Patent 8,769,440
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`(3) Petitioner’s Reliance on Prior Proceedings Involving a Related
`Patent is Unavailing .............................................................................33
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`iii. The Petition and Dr. Houh Offer No Explanation Concerning
`Whether Guyot’s “Unique Proprietary Identifier” and “Subscriber Data”
`Together Satisfy the Claimed “Unique Identifier” ..................................35
`
`2. Claims 1 Is Not Obvious Over Robinson in View of Kobata in Further
`View of Angles ....................................................................................35
`
`a. Overview of Robinson ........................................................................35
`
`b. Robinson Does Not Teach or Suggest “Selecting an Advertisement to
`Be Displayed on the Computer, the Selection Based at Least on
`Information Associated with the Unique Identifier Identifying the
`Computer” ....................................................................................................36
`
`3. Claims 2–4 Are Not Obvious Over Guyot in View of Kikinis (Ground
`1) 47
`
`4. Claims 2–4 Are Not Obvious Over Robinson in View of Kobata,
`Angles, and Kikinis (Ground 2) ..........................................................47
`
`5. Claims 13–18 Are Not Obvious Over Guyot in View of Apte and
`Angles (Ground 3) ...............................................................................47
`
`6. Claims 13–18 Are Not Obvious Over Robinson in View of Kobata,
`Angles, and Apte (Ground 4) ..............................................................48
`
`7. Claims 19–20 Are Not Obvious Over Guyot in View of Apte, Angles,
`and Cheng (Ground 5) .........................................................................48
`
`8. Claims 19–20 Are Not Obvious Over Robinson in View of Kobata,
`Angles, Apte, and Cheng (Ground 6) ..................................................48
`
`9. Claims 21–24 Are Not Obvious Over Guyot in View of Ellsworth
`(Ground 7) ...........................................................................................48
`
`10. Claims 21–24 Are Not Obvious Over Robinson in View of Kobata,
`Angles, and Ellsworth (Ground 8) ......................................................49
`
`11. Claims 28–37 Are Not Obvious Over Guyot in View of Blumenau
`(Ground 9) ...........................................................................................49
`
`12. Claims 28–37 Are Not Obvious Over Robinson in View of Kobata,
`Angles, and Blumenau (Ground 10) ...................................................49
`
`B. The IPR Process Violates the Law and Constitution Because the Director
`Does Not Have Decision-Making Authority Concerning Institution ......49
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`IV.
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`
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`CONCLUSION ........................................................................................52
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`Case IPR2021-00483
`Patent 8,769,440
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`Cases
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`TABLE OF AUTHORITIES
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` Page(s)
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`B.E. Technology, L.L.C. v. Google, Inc.,
`2016 WL 6803057 (Fed. Cir. Nov. 17, 2016) .............................................passim
`
`Elekta Instrument S.A. v. O.U.R. Scientific Intern., Inc.,
`214 F.3d 1302 (Fed. Cir. 2000) .......................................................................... 28
`
`Mobility Workx, LLC v. Unified Patents, LLC,
`15 F.4th 1146 (Fed. Cir. 2021) ........................................................................... 50
`
`United States v. Arthrex, Inc.,
`141 S. Ct. 1970 (2021) .................................................................................. 49, 51
`
`Statutes
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`35 U.S.C. § 314 ........................................................................................................ 50
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`35 U.S.C. § 316(e) ..................................................................................................... 1
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`Case IPR2021-00483
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`Exhibit No.
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`Description
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`EXHIBIT LIST
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`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`
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`Response Brief in B.E. Tech., LLC, v. Microsoft Corp., Google
`Inc., Appeal No. 15-1828 (Fed. Cir. 2015)
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`Declaration of Charles Wizenfeld in Support of Motion for Pro
`Hac Vice Admission
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`Biography of Charles Wizenfeld
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`Declaration of Michael DeVincenzo in Support of Motion for
`Pro Hac Vice Admission
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`Biography of Michael DeVincenzo
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`Transcript of Deposition of Henry H. Houh, Ph.D. (Nov. 16,
`2021)
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`Declaration of Ivan Zatkovich
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`Case IPR2021-00483
`Patent 8,769,440
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`I.
`
`INTRODUCTION
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`Pursuant to 37 C.F.R. § 42.120(a), Patent Owner B.E. Technology, L.L.C.
`
`submits the following response to the Petition, setting forth reasons why Petitioner
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`has failed to carry its burden of proving unpatentability of the challenged claims by
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`a preponderance of the evidence. 35 U.S.C. § 316(e).
`
`The challenged claims of U.S. Patent No. 8,769,440 (the “’440 Patent”)
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`concern a method of providing reactive targeted advertising to a computer user in
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`real-time. The method of each challenged claim involves selecting an advertisement
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`for display based on, inter alia, information concerning the user’s computer usage
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`that is correlated with a unique identifier identifying (and associated with) a
`
`computer.
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`Each of Petitioner’s invalidity challenges relies on either U.S. Patent No.
`
`6,119,098 to Guyot et al. (“Guyot,” Ex-1041) or U.S. Patent No. 5,918,014 to
`
`Robinson (“Robinson,” Ex-1004). With respect to Guyot, Petitioner points to two
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`separate disclosures as the claimed unique identifier: a “unique proprietary
`
`identifier” and “Subscriber Data.” But as noted in the Board’s institution decision,
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`Guyot does not teach using the “unique proprietary identifier” in selection of an
`
`advertisement, as required by multiple claim limitations. And Guyot teaches that its
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`“Subscriber Data” only identifies a “subscriber” (i.e. a user). Petitioner points to no
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`teaching in Guyot that “Subscriber Data” is associated with or identifies a computer.
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`With respect to Robinson, Petitioner relies on a “Tracking Cookie” as
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`satisfying the claimed unique identifier. That Tracking Cookie is admittedly and
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`undisputedly a unique identifier of a user, and not a computer. Indeed, Petitioner
`
`and its expert, Dr. Houh, repeatedly tout Robinson’s Tracking Cookie as a user
`
`identifier.
`
`In light of the undisputed teachings of Guyot’s “Subscriber Data” and
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`Robinson’s “Tracking Cookie” as being user identifiers and not computer identifiers,
`
`Petitioner instead attempts to offer justifications for why they should not have to
`
`identify prior art that actually teaches a unique identifier associated with or
`
`identifying the computer, as recited in the claims. First, Petitioner urges that while
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`the challenged claims expressly recite an identifier associated with and identifying
`
`a computer, the specification of the ’440 Patent only describes examples of user
`
`identifiers and, therefore, unique identifiers identifying users must be considered
`
`unique identifiers for computers. Petitioner’s argument is legally baseless because
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`the written description cannot be used to erase claim limitations. Moreover, as
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`detailed more fully in Section III.A.1.c.ii.(1) below, the specification of the ’440
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`Patent plainly identifies both user identifiers and computer identifiers, and
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`distinguishes between them, rendering Petitioner’s argument factually as well as
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`legally baseless.
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`Second, Petitioner asserts that a user identifier is a “unique identifier
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`identifying the computer” because the claim language requires “the computer” to be
`
`associated with a user. Of course, the antecedent basis of the word “computer”
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`cannot change the phrase “unique identifier identifying the computer” into an
`
`identifier identifying the user. Instead, the claim language plainly requires a unique
`
`identifier identifying a computer, and that the computer must also be associated with
`
`a computer user.
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`Third, Petitioner contends that even though the prior art it relies on discloses
`
`user identifiers and not computer identifiers, under certain hypothetical conditions
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`a user identifier could be used as a computer identifier. Yet, even under Petitioner’s
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`hypothetical conditions, a skilled artisan would not find either Guyot or Robinson
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`discloses a unique identifier identifying or associated with a computer because those
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`references do not teach unique identifiers actually associated with computers or that
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`are actually taught as computer identifiers. Petitioner’s arguments regarding how a
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`user identifier could be used in undisclosed hypothetical examples cannot substitute
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`for the prior art’s failure to teach the unique identifiers required by the claims.
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`Lastly, Petitioner urges that because the Board previously found claims in
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`related U.S. Patent No. 6,628,314 (the “’314 Patent”) unpatentable over Guyot and
`
`Robinson, the same result is warranted here. That argument disregards that the’440
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`Patent’s claims expressly require a unique identifier that is associated with, and that
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`identifies, the computer. The ’314 Patent claims contain no such limitations and the
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`Board expressly construed the ’314 Patent as not so limited before rendering the
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`’314 Patent claims unpatentable.
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`II. TECHNICAL BACKGROUND
`
`A. Overview of U.S. Patent No. 8,769,440
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`U.S. Patent No. 8,769,440 (the “’440 Patent,” Ex-1001) is directed to “a
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`method of reactive targeted advertising provid[ing] for display of advertising, via
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`the internet, to computers of users.” Ex-1001, Abstract. The specification explains
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`that, at the time of the invention in the late 1990s, computer systems were unable to
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`deliver, in real-time, advertising targeted to a user over the Internet based on
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`information already known about a user together with information concerning a
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`user’s present interests (i.e., “reactive” to a user’s current activities). Id. at 1:22–
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`3:65; Ex-2007, Zatkovich Dec. at ¶ 25.
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`In order to address problems existing in prior art network advertising systems,
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`the patent discloses methods to identify and provide advertisements that are relevant
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`to a user in real-time. The specification describes this real time, reactive targeting
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`method as follows:
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`As will be appreciated by those skilled in the art, the reactive targeting
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`provided by client software application 10 is handled in real time, rather
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`than simply as a part of building a set of advertisements for later display
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`to the user. This permits the display of advertising that is relevant to
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`what the user is doing at any particular time.
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`Ex-1001, 20:18–23; Ex-2007, Zatkovich Dec. at ¶¶ 26–28.
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`Claim 1 is exemplary of the claimed invention:
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`[1.0] A method comprising:
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`[1.1] permitting a computer user to access one or more servers via a network;
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`[1.2] transferring a copy of software to a computer associated with the
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`computer user, the software being configured to run on the computer to
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`display advertising content and record computer usage information
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`associated with utilization of the computer, wherein the computer usage
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`information includes data regarding one or more programs run on the
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`computer;
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`[1.3] determining a unique identifier associated with the computer, wherein
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`the identifier uniquely identifies information sent from the computer to
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`the one or more servers;
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`[1.4] selecting an advertisement to be displayed on the computer, the selection
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`based at least on information associated with the unique identifier
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`identifying the computer;
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`[1.5] receiving a request for an advertisement from the computer; and
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`[1.6] providing the selected advertisement for display on the computer in
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`response to the request.
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`Ex-1001, 34:21–41; Ex-2007, Zatkovich Dec. at ¶ 29.
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`B. Prior PTAB Proceedings Involving Related Patents
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`The ’440 Patent shares a priority claim with U.S. Patent No. 6,628,314 (the
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`“’314 Patent”). The ’314 Patent was the subject of multiple inter partes review
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`proceedings initiated in 2013 and 2014. In a Final Written Decision involving two
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`of those proceedings (IPR 2014-00039 and IPR2014-00738), the Board found, inter
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`alia, that Guyot anticipated claims 11–14 and 16–19 of the ’314 Patent, and that
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`claim 15 of the ’314 Patent was obvious over a combination of Guyot and Robinson.
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`Ex-1037, 27–28; Ex-2007, Zatkovich Dec. at ¶ 30.
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`The claims of the ’314 Patent differ from the claims of the ’440 Patent
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`regarding the “unique identifier.” For example, claim 11 of the ’314 Patent requires
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`that a unique identifier be provided to the computer, whereas the claims of the ’440
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`Patent require that the unique identifier is associated with, and must identify the
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`computer. In the IPR proceeding involving the ’314 Patent, the Board rejected
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`Patent Owner’s argument that Guyot failed to disclose a limitation of the ’314
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`Patent’s claims requiring “providing a unique identifier to the computer.” Ex-1037,
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`12. The Board construed the “providing a unique identifier to the computer”
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`limitation as not requiring identification of the computer, and rejected Patent
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`Owner’s position that the “unique identifier identifies the computer not the user.”
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`Id. at 17. The Board explained that the full limitation at issue—“providing a unique
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`identifier to the computer, wherein said identifier uniquely identifies information
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`sent over said computer network from the computer to said server”—only required
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`that “the ‘unique identifier’ identifies ‘information’ that is sent over the computer
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`network [and] [t]he ‘information’ identified by the ‘unique identifier’ can include
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`any information, including user information or computer information.” Id. at 10.
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`Thus, the Board concluded that the limitation at issue did not require a unique
`
`identifier to identify the computer as opposed to the user. Based on its construction,
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`the Board determined that Guyot satisfied the limitation at issue because it taught a
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`unique identifier that identified a user (called a “Subscriber” in Guyot’s parlance):
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`“Guyot discloses Subscriber Data or a unique identifier that uniquely identifies
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`Subscriber Statistics or information sent over the computer network.” Id. at 18; Ex-
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`2007, Zatkovich Dec. at ¶ 31.
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`The United States Court of Appeals for the Federal Circuit affirmed the
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`Board’s Final Written Decision in B.E. Technology, L.L.C. v. Google, Inc., 2016 WL
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`6803057 (Fed. Cir. Nov. 17, 2016).1 The Federal Circuit “rejected B.E.’s claim
`
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`1 Because the Federal Circuit affirmed the Final Written Decision involving IPR
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`2014-00039 and IPR2014-00738, it dismissed as moot Patent Owner’s appeals of
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`the Board’s other Final Written Decisions involving the ’314 Patent and did not
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`address those Final Written Decisions on the merits. B.E. Tech., 2016 WL 6803057,
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`at *1.
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`construction position that the “unique identifier” is limited to identifying the user’s
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`‘computer’ … because the claim language is unrestricted.” B.E. Tech., 2016 WL
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`6803057, at *5. The Federal Circuit therefore agreed with the Board that “Guyot’s
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`subscriber data is a unique identifier that identifies the subscriber statistics
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`associated with each user.” Id. (emphasis added). Thus, the Board and the Federal
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`Circuit found it necessary to first determine whether the ’314 Patent claims are
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`limited to a unique identifier associated with, or identifying, the computer before
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`concluding Guyot’s user identifier met the ’314 Patent claims. Ex-2007, Zatkovich
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`Dec. at ¶ 32–34.
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`Additionally, during the prior proceedings, the Board relied on Robinson to
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`meet a limitation of dependent claim 15 of the ’314 Patent, which requires “storing
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`a cookie on the computer” (Ex-1037, 19), and the Federal Circuit affirmed that
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`finding. B.E. Tech., 2016 WL 6803057, at *6, n.5. However, that limitation does not
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`appear in claim 1 of the ’440 Patent, and neither the Board nor the Federal Circuit
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`has previously found that Robinson discloses a unique identifier that identifies the
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`computer, as required by the claims here, and as detailed below, Robinson contains
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`no such disclosures. Ex-2007, Zatkovich Dec. at ¶ 35.
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`C. Level of Ordinary Skill
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`For purposes of this response, Patent Owner only disagrees with Petitioner’s
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`and Dr. Houh’s assessment of the applicable level of skill in the art with respect to
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`its failure to acknowledge that a person of ordinary skill in the art would have a
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`working knowledge of network-based targeted advertising. See Pet. at 9; Ex-2007,
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`Zatkovich Dec. at ¶¶ 16–18.
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`D. Claim Construction
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`For purposes of this response, Patent Owner submits that all terms should be
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`given their ordinary and customary meaning. Patent Owner reserves the right to
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`propose any claim constructions as may become necessary and does not waive any
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`arguments pertaining to claim construction or scope by declining to raise them in
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`this response.
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`III. ARGUMENT
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`A. The Petition Fails to Establish by a Preponderance of the
`Evidence that the Challenged Claims are Invalid
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`The Petition challenges only certain dependent claims of the ’440 Patent,
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`namely dependent claims 2–4, 13–24, and 28–37. Each of the challenged dependent
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`claims depends, directly or indirectly, from claim 1, the sole independent claim of
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`the ’440 Patent. Claim 1 is being challenged concurrently in Case IPR2021-00482.
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`The patentability analysis of claim 1 presented herein is thus substantially identical
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`to that in the concurrently-filed response in Case IPR2021-00482.2
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`As explained below, Petitioner has failed to demonstrate that either Guyot or
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`Robinson teaches or suggests the claimed “unique identifier” of claim 1, which must
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`both be “associated with the computer” and “identify[] the computer.” Indeed, it is
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`undisputed that Petitioner relies only on disclosures of user identifiers. Accordingly,
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`each of Petitioner’s grounds of unpatentability fails.
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`1. Claim 1 Is Not Anticipated by Guyot
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`a. Overview of Guyot
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`Guyot discloses a system and method for targeting and distributing
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`advertisements over a distributed information network, such as the Internet. Ex-
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`1041, 1:9–11; Ex-2007, Zatkovich Dec. at ¶ 37.
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`The architecture for Guyot’s advertisement system is shown in Figure 1:
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`2 Patent Owner’s response in IPR2021-00482 includes additional arguments as to
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`why the prior art does not render invalid dependent claim 25 of the ’440 Patent,
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`which claim is not challenged in this proceeding.
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`
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`Guyot’s system includes a server 200 and multiple subscriber systems 300. Ex-1041,
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`3:15–16. Guyot states that the server 200 and each of the subscriber systems 300
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`are implemented on the Internet with the server 200 and subscriber systems 300 each
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`having a “unique proprietary identifier.” Id. at 3:20–22. Server 200 stores and
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`manages an advertisement database, and subscriber systems 300 periodically access
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`server 200 to download advertisements. Id. at 3:24–29; Ex-2007, Zatkovich Dec. at
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`¶¶ 38–39.
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`For each subscriber, the advertisement database stores “Subscriber Data,”
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`which includes the subscriber’s identification information, the subscriber’s
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`password, and the subscriber’s personal profile that is used to target specific
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`advertisements to the subscriber. Ex-1041, 3:55–61; Ex-2007, Zatkovich Dec. at ¶
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`40.
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`The subscriber system includes a processor which uploads “Subscriber
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`Statistics” to the server, and downloads, if necessary, the latest version of the client
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`application software from the server. Ex-1041, 5:18–27. The subscriber statistics
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`preferably include information related to the advertisements displayed on the
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`subscriber’s system and information on the Internet sites that the subscriber has
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`accessed over a predetermined period of time. Id. at 4:15–24. This information is
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`utilized to refine the subscriber’s personal profile. Id. at 4:23–24; Ex-2007,
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`Zatkovich Dec. at ¶¶ 41–42.
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`b. Guyot Does Not Teach or Suggest
`“Transferring a Copy of Software to a
`Computer Associated with the Computer User”
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`Guyot does not teach any “computer associated with [a] computer user” as
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`required by the claims. Ex-2007, Zatkovich Dec. at ¶ 43.
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`Petitioner’s expert, Dr. Houh, asserts that in Guyot “the client application runs
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`on a computer associated with a computer user ….” Pet. at 16; Ex-1007, ¶ 105. Dr.
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`Houh offers no explanation for his opinion that the computer is associated with the
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`computer user in Guyot. Ex-1007, ¶ 105; Ex-2007, Zatkovich Dec. at ¶ 44.
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`Dr. Houh cites three passages as supporting his opinion that Guyot teaches “a
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`computer associated with a computer user.” Ex-1007, ¶ 105 (relying on Ex-1041,
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`5:18–23, 7:25–28, 8:28–50). The passages relied on by Dr. Houh do not disclose “a
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`computer associated with a computer user.” Dr. Houh first relies on a portion of
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`Guyot concerning uploading the Subscriber Statistics and downloading software.
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`Ex-1041, 5:18–23. That passage has nothing to do with associating a computer with
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`a computer user, as required by the claim language. Similarly, the second and third
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`passages have nothing to do with the requirement that the computer be associated
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`with a computer user. See Ex-1041, 7:25–28 (“At step S400, the control system
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`determines if the connection button 550 has been selected by the subscriber. If the
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`connection button 550 has been selected, control continues to step S500.”); 8:28–50
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`(discussing establishing of connection to server). Ex-2007, Zatkovich Dec. at ¶ 45.
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`Petitioner appears to be arguing that a computer is necessarily associated with
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`a user (even if no computer or system actually associates a computer or identifier
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`thereof with any computer user or identifier thereof). Dr. Houh opines that such
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`association exists because at any point in time there may be a user operating a
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`computer. Put another way, while Guyot teaches no actual associating of a computer
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`(or identifier thereof) with a computer user (or identifier thereof) in the computer
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`networking context, according to Dr. Houh Guyot does not need any such teaching
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`because a computer is always associated with a computer user in the philosophical
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`sense that at least one user must operate a computer. Yet, the patent is not a
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`philosophical work and computer systems do not operate on philosophical
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`principals. Computer systems operate on actual associations using actual constructs
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`such as databases, tables and the like. Ex-2007, Zatkovich Dec. at ¶ 46.
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`Case IPR2021-00483
`Patent 8,769,440
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`Petitioner’s reading of the phrase “associated” reads out entirely the
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`requirement for a “computer associated with the computer user.” Under Petitioner’s
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`reading of the claims, all computers would necessarily be associated with a computer
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`user because computers require operators. In other words, it does not matter if a
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`computer is associated with a user as long as an association between the two pieces
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`of information could be made. Of course, the claim language does not require a
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`computer that could be associated with the computer user. Instead, it requires a
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`computer that is actually associated with the computer user. Ex-2007, Zatkovich
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`Dec. at ¶ 47.
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`One of skill in the art would know that, in the computer networking context,
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`associating requires a relationship between two pieces of information in a database
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`or a table, or the like. Consistent with the understanding of an ordinary artisan, the
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`’440 Patent expressly
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`teaches associating subscribers and computers by
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`“maintain[ing] a list[] of users registered for a particular computer.” Ex-1001,
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`28:16–17; see also id. at 28:4–7 (“For example, the application can match the
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`Windows NT log-in identity against a table of users registered for that machine …
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`.”) (emphasis added); id. at 27:57–62. Guyot does not teach anything resembling an
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`association between a computer and a computer user. As such, Guyot does not teach
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`or suggest a computer associated with a computer user. Ex-2007, Zatkovich Dec. at
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`¶ 48.
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`Case IPR2021-00483
`Patent 8,769,440
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`c. Guyot Does Not Teach or Suggest “Determining
`a Unique Identifier Associated with the
`Computer, Wherein the Identifier Uniquely
`Identifies Information Sent from the Computer
`to the One Or More Servers” or Selecting an
`Advertisement Based on Information
`Associated with “the Unique Identifier
`Identifying the Computer”
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`Petitioner contends that two separate disclosures from Guyot satisfy the
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`claimed “unique identifier associated with the computer, wherein the identifier
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`uniquely identifies information sent from the computer to the one or more servers”
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`and the “unique identifier identifying the computer”: Guyot’s disclosure of (1) a
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`“unique proprietary identifier” and (2) “Subscriber Data.” Pet. at 17–19. However,
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`as detailed below, neither of those alleged identifiers meets the claim limitations.
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`Ex-2007, Zatkovich Dec. at ¶ 49.
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`i. Guyot’s “Unique Proprietary Identifier” Is Not
`the Claimed “Unique Identifier” Because It Is
`Not Used to Identify Information Sent from The
`Computer to the Server(s) In Connection With
`Selecting Advertisements
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`A person of skill in the art would not consider Guyot’s “unique proprietary
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`identifier” to be the “unique identifier” that is required by the claims. Guyot
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`mentions a “unique proprietary identifier” one time, stating only that the server and
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`each subscriber system in its distributed information network can have a unique
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`proprietary identifier. See Ex-1041, 3:18–22 (“In a preferred embodiment, the
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`Case IPR2021-00483
`Patent 8,769,440
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`distributed information network 100 is implemented on the Internet, with the server
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`200 and each of the subscriber system 300 having a unique proprietary identifier.”).
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`That teaching says nothing about using the “unique proprietary identifier” of either
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`the server or the computers in connection with selecting or displaying an
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`advertisement, as required of the claimed “unique identifier.” Thus, the “unique
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`proprietary identifier” in Guyot fails to satisfy the requirements that the claimed
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`“unique identifier” must “uniquely identify information sent from the computer to
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`one or more servers,” and that an advertisement must be “select[ed]…based at least
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`on information associated with the unique identifier identifying the computer.” Ex-
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`2007, Zatkovich Dec. at ¶ 50.
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`Petitioner has not shown these particular limitations are met with regard to
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`Guyot’s “unique proprietary identifier.” In addressing Guyot’s “unique proprietary
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`identifier,” Dr. Houh states that in Guyot each computer or “subscriber system 300”
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`is identified with a “unique proprietary identifier.” Ex-1007, ¶ 115 (relying on Ex-
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`1041, 3:18–22). Dr. Houh then states that the “unique identifier” “is determined
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`when it is initially set.” Ex-1007, ¶ 115 (relying on Ex-1041, 3:55–65). Then, with
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`no citation to any support in Guyot, Dr. Houh declares that Guyot discloses the
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`“unique proprietary identifier” “is used by the system in selecting an appropriate
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`advertisement….” Id; Ex-2007, Zatkovich Dec. at ¶ 51.
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`Case IPR2021-00483
`Patent 8,769,440
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`First, one of skill in the art would not believe Guyot discloses determining the
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`“unique proprietary identifier” in Column 3, lines 55–65. The relied-on passage does
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`not involve determining the “unique proprietary identifier,” and indeed, has nothing
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`to do with the “unique proprietary identifier.” Ex-1041, 3:55–65. To the contrary,
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`the passage discusses “the subscriber’s identification information,” “a password
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`assigned to the subscriber,” and “a personal profile of the subscriber.” Id. Dr. Houh
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`does not opine that Guyot discloses the use of the “unique proprietary identifier”
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`(mentioned only in Column 3, lines 18–22), as the subscriber’s identification
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`information or part of the personal profile, and it would not be understood as such.
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`Ex-2007, Zatkovich Dec. at ¶¶ 52–53.3
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`Second, Dr. Houh’s opinion that Guyot discloses that the “unique proprietary
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`identifier” “is used by the system in selecting an appropriate advertisement to be
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`displayed on the specific computer associated with the user of that computer” (Ex-
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`1007, ¶ 115), is unsupported and inconsistent with how a person of skill in the art
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`would understand Guyot. One of skill in the art would recognize Guyot includes no
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`teaching that its “unique proprietary identifier” is used for the selection of
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`3 Of course, the “subscriber’s identification information” would not qualify as a
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`unique identifier associated with a computer as indicated in the next section.
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`Case IPR2021-00483
`Patent 8,769,440
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`advertisements or the display of advertisements and Dr. Houh identified nothing to
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`the contrary. Ex-2007, Zatkovich Dec. at ¶ 54; see also Institution Decision at 17
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`(Board recognizing “Guyot as being silent regarding what role if any the ‘unique
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`proprietary identifier’ has in the process of selecting advertisements for a user” and
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`that Dr. Houh’s testimony to the contrary “is conclusory