Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 10
`Entered: March 31, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`MICROSOFT CORPORATION and GOOGLE, INC.,
`Petitioner,
`
`v.
`
`B.E. TECHNOLOGY, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014–00039
`Case IPR2014–00738
`Patent 6,628,314
`_______________
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`Twitter-Google Exhibit 1037
`
`

`

`IPR2014–00039
`IPR2014–00738
`Patent 6,628,314
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`I.
`
`INTRODUCTION
`
`A. Background
`
`Microsoft Corporation (“Microsoft”) filed a corrected Petition to institute
`
`inter partes review of claims 11–22 of U.S. Patent No. 6,628,314 (Ex. 1001, “the
`
`’314 patent”). Paper 5 (“Pet.”). B.E. Technology, LLC (“Patent Owner”) did not
`
`file a preliminary response. Pursuant to 35 U.S.C. § 314, we instituted inter partes
`
`review on April 9, 2014, as to claims 11–22 of the ʼ314 patent—claims 11–14 and
`
`16–19 under 35 U.S.C. § 102 as anticipated by Guyot,1 claim 15 under 35 U.S.C.
`
`§ 103 as obvious over Guyot and Robinson,2 and claims 20–22 under 35 U.S.C.
`
`§ 103 as obvious over Guyot and RFC 1635.3 Paper 13 (“Dec.”).
`
`After institution of the inter partes review, Google, Inc. (“Google”) filed a
`
`Petition and a Motion to Join the inter partes review. IPR2014-00738, Papers 1, 3.
`
`We granted the motion and joined Google and Microsoft (collectively,
`
`“Petitioner”) in the inter partes review. Paper 27.
`
`Patent Owner filed a Response (Paper 30, “PO Resp.”) and Petitioner filed a
`
`Reply (Paper 33, “Pet. Reply”). Patent Owner filed a Motion to Amend (Paper 31,
`
`“Mot. to Amend”), Petitioner filed an Opposition to Patent Owner’s Motion to
`
`Amend, and Patent Owner filed a Reply to Petitioner’s Opposition.
`
`Oral hearing was held on December 10, 2014, and the hearing transcript has
`
`been entered in the record as Paper 42 (“Tr.”).
`
`The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
`
`decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the
`
`1 U.S. Patent No. 6,119,098 (Ex. 1006) (“Guyot”).
`2 U.S. Patent No. 5,918,014 (Ex. 1007) (“Robinson”).
`3 Deutsch et al., How to Use Anonymous FTP, IAFA Working Group, 1-13
`(May 1994) (Ex. 1022) (“RFC 1635”).
`
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`reasons discussed below, we determine that Petitioner has shown by a
`
`preponderance of the evidence that claims 11–22 of the ʼ314 patent are
`
`unpatentable. Patent Owner’s contingent Motion to Amend is denied.
`
`B. Related Proceedings
`
`Petitioner indicates that the ’314 patent is the subject of several district court
`
`cases: B.E. Technology, L.L.C. v. Microsoft Corp., No. 2:12-cv-02829-JPM (W.D.
`
`Tenn.), where Petitioner was served on October 10, 2012, and B.E. Technology,
`
`L.L.C. v. Google, Inc., No. 2:12-cv-2830-JPM (W.D. Tenn.), filed on October 9,
`
`2012. Pet. 4–5; IPR2014-00738, Paper 1, 2–3.
`
`The ’314 patent is also the subject of Google, Inc. v. B.E. Technology,
`
`L.L.C., IPR2014-00038 (PTAB Apr. 9, 2014), Facebook, Inc. v. B.E. Technology,
`
`L.L.C., IPR2014-00052 (PTAB Apr. 9, 2014), Facebook, Inc. v. B.E. Technology,
`
`L.L.C., IPR2014-00053 (PTAB Apr. 9, 2014), Match.com LLC and People Media,
`
`Inc. v. B.E. Technology, L.L.C., IPR2014-00698 (PTAB June 13, 2014),
`
`Match.com LLC v. B.E. Technology, L.L.C., IPR2014-00699 (PTAB June 13,
`
`2014), Google, Inc. v. B.E. Technology, L.L.C., IPR2014-00738 (PTAB June 18,
`
`2014), Google, Inc. v. B.E. Technology, L.L.C., IPR2014-00743 (PTAB June 18,
`
`2014), and Google, Inc. v. B.E. Technology, L.L.C., IPR2014-00744 (PTAB June
`
`18, 2014). IPR2014-00699 has been joined with IPR2014-00038, IPR2014-00743
`
`has been joined with IPR2014-00052, and IPR2014-00698 and IPR2014-00744
`
`have been joined with IPR2014-00053.
`
`C. The ʼ314 Patent
`
`The ’314 patent relates to user interfaces that provide advertising obtained
`
`over a global computer network. Ex. 1001, col. 1, ll. 12–16. The ’314 patent
`
`discloses a client software application that comprises a graphical user interface
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`(GUI) program module and an advertising and data management (ADM) module.
`
`Id. at col. 6, ll. 64–67. The GUI comprises multiple regions, including a first
`
`region comprising a number of user selectable items and a second region
`
`comprising an information display region, such as banner advertisements. Id. at
`
`col. 4, ll. 24–37. Program modules associated with the GUI store statistical data
`
`regarding the display of the selected informational data, allowing the targeting of
`
`banner advertisements based upon the type of link selected by the user. Id. at col.
`
`4, ll. 43–51. The system for selecting and providing advertisements is set forth in
`
`Figure 3 as follows:
`
`Figure 3 illustrates a block diagram of a system distributing advertisements
`
`over the Internet. Id. at col. 6, ll. 21–22. ADM server 22 is accessible by client
`
`computers 40 over Internet 20, where client computers 40 have the client software
`
`application installed. Id. at col. 8, ll. 32–35. ADM server has associated with it
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`Ad Database 44 and User/Demographics Database 46. Id. at col. 8, ll. 38–43. Ad
`
`Database 44 stores banner advertising that is provided to client computers 40. Id.
`
`User/Demographics Database 46 stores demographic information used in targeting
`
`advertising downloaded to individual client computers 40. Id. at col. 8, ll. 55–57.
`
`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 col. 8, ll. 57–62. The demographic information is submitted by the user by
`
`entering the information into a form provided to the user, and ADM server 22
`
`checks the completeness of the form. Id. at col. 16, l. 60 – col. 17, l. 2. ADM
`
`server 22 then assigns a unique ID to the user and stores the unique ID with the
`
`received user demographic information. Id. at col. 17, ll. 11–15. An initial set of
`
`advertisements is selected, and the client software application is downloaded to
`
`client computer 40 for installation. Id. at col. 17, ll. 17–23. The client software
`
`application monitors user interaction with the computer, whether with the client
`
`software application or with other applications, and later reports this information to
`
`the ADM server. Id. at col. 12, ll. 55–59, col. 13, ll. 1–2. Advertising banners are
`
`displayed in response to some user input or periodically at timed intervals. Id. at
`
`col. 14, ll. 40–43. The client software application targets the banner advertising
`
`displayed, based on the user’s inputs, so that it relates to what the user is doing. Id.
`
`at col. 14, ll. 43–46.
`
`D. Illustrative Claims
`
`Petitioner challenges claims 11–22 of the ’314 patent. Independent claim 11
`
`and dependent claims 15 and 20 are illustrative of the claims at issue and follow:
`
`11. A method of providing demographically-targeted
`advertising to a computer user, comprising the steps of:
`
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`providing a server that is accessible via a computer network,
`permitting a computer user to access said server via said
`computer network,
`the user, said
`information about
`acquiring demographic
`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
`information with said
`associating said computer usage
`demographic information using said unique identifier.
`
`15. The method of claim 11, wherein said providing a unique
`identifier step further comprises storing a cookie on the computer.
`
`20. The method of claim 11, wherein said acquiring step
`further comprises requesting said demographic information in
`response to a request from the user to download said software and
`receiving said demographic information from the user prior to
`providing the user with access to said software.
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`E. Claim Construction
`
`The Board will interpret claims of an unexpired patent using the broadest
`
`reasonable construction in light of the specification of the patent in which they
`
`appear. See 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, No.
`
`2014-1301, 2015 WL 448667, at *7–8 (Fed. Cir. Feb. 4, 2015) (“Congress
`
`implicitly adopted the broadest reasonable interpretation standard in enacting the
`
`AIA,” and “the standard was properly adopted by PTO regulation.”). Under the
`
`broadest reasonable construction standard, claim terms are given their ordinary and
`
`customary meaning, as would be understood by one of ordinary skill in the art in
`
`the context of the entire disclosure. In re Translogic Tech. Inc., 504 F.3d 1249,
`
`1257 (Fed. Cir. 2007).
`
`1. “demographic information”
`
`Petitioner proposes that the term “demographic information” means
`
`“information collected about end user characteristics that does not identify the end
`
`user.” Pet. 10 (citing Ex. 1003 ¶¶ 105–106). Petitioner points to the context of
`
`“demographic information” as used in the ʼ314 patent specification to include time
`
`zone, locale, and client hardware. Id. (citing Ex. 1001, col. 3, ll. 8–11). Petitioner
`
`further argues that the ʼ314 patent specification specifically describes
`
`“demographic information” to exclude information that identifies an end-user for
`
`privacy concerns. Id. (citing Ex. 1001, col. 2, ll. 40–48). Patent Owner has not
`
`provided a construction for “demographic information,” and Patent Owner agrees
`
`with this claim construction proposed by Petitioner. Tr. 23:1–6. We agree that
`
`Petitioner’s proposed meaning for “demographic information” is both reasonable
`
`and consistent with its usage in the ʼ314 patent specification. Accordingly, we
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`construe “demographic information” to mean “collected characteristic information
`
`about a user that does not identify the user.”
`
`2. “download request by the user”
`
`Patent Owner proposes that the plain and ordinary meaning of “request” is
`
`“to ask for something.” PO Resp. 17. Patent Owner also proposes that the term
`
`“user,” within the meaning of claim 11, means “the person using the computer.”
`
`Id. Patent Owner determines that “download request by the user” means that “a
`
`user knowingly asks for a copy of software to be downloaded from a server to the
`
`user’s computer.” Id. (citing Ex. 1001, col. 8, ll. 58–59, col. 16, ll. 54–56). Patent
`
`Owner specifically argues that upon a download request from a user, the user is
`
`presented with a form and “[o]nly once the form is completely filled out, does the
`
`server transmit the application to the client.” Id. at 18–19 (citing Ex. 1001, col. 16,
`
`ll. 60–63). Because the user is required to complete the form, Patent Owner argues
`
`that the user is “conscious of the request and purposefully makes the request.” Id.
`
`at 19.
`
`Petitioner argues that the “intention of the user” when a copy of the software
`
`is downloaded is “illusory and legally irrelevant.” Pet. Reply 6, 9–10. Petitioner
`
`further argues that a “download request” involves “sending data from a user’s
`
`computer based on a user’s ‘request,’ which is received by and triggers actions by
`
`the server (e.g. downloading of the updated software).” Id. at 8–9 (emphasis
`
`omitted).
`
`We agree with Petitioner that the broadest reasonable interpretation of
`
`“download request by the user” does not require the “intent” of the user. We are
`
`not persuaded by Patent Owner’s argument that because a user completes a form,
`
`the user “knowingly” asks for a copy of software. Patent Owner fails to direct us
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`to any factual basis to draw this conclusion. Furthermore, we are not persuaded
`
`that the feature must be incorporated into the claims. Patent Owner does not direct
`
`us to persuasive evidence or rationale that demonstrates that the claims require this
`
`feature. Thus, we are not persuaded by Patent Owner that the “intent” of the user
`
`is required under the broadest reasonable construction of “download request by the
`
`user.” We are also persuaded by Petitioner that a “download request,” under the
`
`broadest reasonable interpretation, involves sending a request from the user’s
`
`computer to a server. Accordingly, we construe “download request by the user,”
`
`under the broadest reasonable interpretation, to mean sending a request for
`
`downloading data from a user’s computer to the server.
`
`3. “providing a unique identifier to the computer”
`
`Independent claim 11 recites the limitation “providing a unique identifier to
`
`the computer.” Patent Owner argues that “the unique identifier be ‘provided’ to
`
`the computer by the server.” PO Resp. 23. Patent Owner argues that the claims
`
`require the unique identifier is provided to the computer and the ʼ314 patent
`
`specification states that “‘[o]nce all required information has been provided, flow
`
`moves to block 164 where the application reports demographic data back to server
`
`22, receives an assigned ID from the server, and stores the new user data at the
`
`client computer in user data storage 34.’” Id. at 23–24 (quoting Ex. 1001, col. 18,
`
`ll. 11–16) (emphasis omitted). Patent Owner further argues that the “unique
`
`identifier” must identify the computer, and not the subscriber. Id. at 24–25.
`
`Petitioner responds that the scopes of the claims are not limited to require that the
`
`unique identifier is provided by the server. Pet. Reply 12.
`
`We are not persuaded by Patent Owner that the limitation “providing a
`
`unique identifier to the computer” requires that (1) the unique identifier is provided
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`by the server and (2) the unique identifier identifies the computer and not the user.
`
`Claim 11 recites “providing a unique identifier to the computer” and the “identifier
`
`uniquely identifies information sent over said computer network.” Claim 11 does
`
`not limit the system, process, or entity that “provides” the unique identifier. Claim
`
`11 further only requires that the “unique identifier” identifies “information” that is
`
`sent over the computer network. The “information” identified by the “unique
`
`identifier” can include any information, including user information or computer
`
`information. This construction is consistent with the several examples provided in
`
`the ʼ314 patent specification. See Ex. 1001, col. 17, ll. 13–14, 29–41, col. 18, ll. 1–
`
`20. Therefore, we determine that the limitations of “providing a unique identifier
`
`to the computer” and the “identifier uniquely identifies information sent over said
`
`computer network” mean any system, process, or entity that provides a unique
`
`identifier to the computer, where the unique identifier identifies any information
`
`that is sent over the computer network.
`
`II. ANALYSIS
`A. Anticipation of Claims 11–14 and 16–19 by Guyot
`
`1. Guyot (Ex. 1006)
`
`Guyot discloses a system and method for targeting and distributing
`
`advertisements over a distributed information network, such as the Internet. Ex.
`
`1006, col. 1, ll. 9–11. The distributed information network allows for information
`
`to be exchanged between a server and multiple subscriber systems. Id. at col. 3, ll.
`
`13-16; col. 3, ll. 44–47. The advertisement targeting system is set forth in Figure 1
`
`as follows:
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`The system includes server 200 and multiple subscriber systems 300. Id. at
`
`col. 3, ll. 15–16. Information is exchanged between server 200 and subscriber
`
`systems 300 over communication links 400. Id. at col. 3, ll. 17–18. Each
`
`subscriber system has a unique proprietary identifier. Id. at col. 3, ll. 21–22.
`
`Server 200 stores and manages an advertisement database. Id. at col. 3, ll. 24–25.
`
`Subscriber systems 300 periodically access server 200 to download advertisements
`
`that are targeted specifically to a subscriber based on a subscriber’s personal
`
`profile stored on server 200. Id. at col. 3, ll. 26–29. Subscriber systems 300 then
`
`display the targeted advertisements. Id. at col. 3, ll. 29–30.
`
`The advertisement database stores, for each subscriber, subscriber data that
`
`includes the subscriber’s identification information, the subscriber’s password, and
`
`the subscriber’s personal profile. Id. at col. 3, ll. 55–60. The subscriber’s personal
`
`profile is obtained by having the subscriber provide answers to a questionnaire. Id.
`
`at col. 3, ll. 60–65. The subscriber’s personal profile is used to target specific
`
`advertisements to the subscriber. Id. at col. 3, ll. 60–61.
`
`The subscriber system includes a memory, which stores a client application,
`
`and a processor which executes the client application. Id. at col. 3, ll. 30–36. The
`
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`client application establishes a connection between the subscriber system and the
`
`server and the client application uploads subscriber statistics to the server, and
`
`downloads, if necessary, the latest version of the client application software from
`
`the server. Id. at col. 5, ll. 18–27. The subscriber statistics preferably include
`
`information related to the advertisements displayed on the subscriber’s system and
`
`information on the Internet sites that the subscriber has accessed over a
`
`predetermined period of time. Id. at col. 4, ll. 15–24. This information is utilized
`
`to refine the subscriber’s personal profile. Id.
`
`2. Analysis
`
`Petitioner contends that claims 11–14 and 16–19 are anticipated by Guyot.
`
`Pet. 27–36. Petitioner has provided an analysis illustrating where each of the
`
`limitations of the claims is disclosed by Guyot. Id.
`
`Patent Owner argues that (a) Guyot fails to disclose a “method of providing
`
`demographically-targeted advertising to a computer user,” (b) Guyot fails to
`
`disclose “transferring a copy of the software ‘in response to a download request by
`
`the user,’” and (c) Guyot fails to disclose “providing a unique identifier to the
`
`computer.” PO Resp. 9–28.
`
`a. “method of providing demographically-targeted advertising to a
`computer user”
`
`Claim 11 recites, in the preamble, a “method of providing demographically-
`
`targeted advertising to a computer user.” Petitioner argues that Guyot discloses a
`
`system and method for targeting and distributing advertisements over a distributed
`
`network. Pet. 27–28. Dr. Houh, Petitioner’s expert, states that Guyot discloses
`
`subscriber data that includes a personal profile and subscriber statistics. Ex. 1003
`
`¶¶ 273–275. The personal profile information is generated from a questionnaire,
`
`similar to the technique described by the ʼ314 patent specification. Id. ¶¶ 273–274
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`(citing Ex. 1001, 2:29–34). Dr. Houh further explains that Guyot discloses that the
`
`subscriber statistics contain information on which Internet sites the user has visited
`
`and the advertisements viewed by the user, and are further used to update the
`
`personal profile. Id.¶ 275 (citing Ex. 1006, 4:22–23).
`
`Patent Owner first argues that “Guyot does not use any form of the word
`
`‘demographic’ in the reference” and, therefore, fails to disclose a method of
`
`providing demographically targeted advertising. PO Resp. 11. We are not
`
`persuaded by this argument because a prior art reference need not disclose the
`
`exact terminology used in the claim. See In re Bond, 910 F.2d 831, 832 (Fed. Cir.
`
`1990) (holding that whether a reference teaches a claim limitation “is not an
`
`‘ipsissimis verbis’ test”).
`
`Patent Owner further argues that Guyot discloses that advertisements are
`
`provided to subscribers based on a personal profile provided by the subscriber,
`
`where the personal profile is obtained by having the subscriber provide answers to
`
`a questionnaire and then is updated and refined by tracking Internet sites accessed
`
`by the subscriber. PO Resp. 11 (citing Ex. 1006, col 1, ll. 63–65, col. 3, ll. 61–63,
`
`col. 4, ll. 19–23). Patent Owner argues that Guyot does not identify the questions
`
`included in the questionnaire, and, therefore, Guyot does not explicitly disclose
`
`that demographic information is included in the personal profile. Id. at 11–13.
`
`Petitioner responds that “demographic information” means “collected
`
`characteristic information about a user,” and Dr. Houh explains that a person with
`
`ordinary skill in the art would have understood that information collected by the
`
`user profile questionnaire to establish and update the user’s personal profile is
`
`“demographic information.” Pet Reply 1–2 (citing Ex. 1003 ¶¶ 266, 273–275, 278,
`
`300–301). Petitioner further argues that Mr. Goldstein, Patent Owner’s expert,
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`agrees that “demographic information,” under the broadest reasonable
`
`interpretation, includes web browsing history that documents that a user has visited
`
`a particular website, the frequency of the visit to the website, and the time of the
`
`visit to the website. Pet. Reply 2–3 (citing Ex. 2015, 54:5–23).
`
`We agree with Petitioner. Guyot discloses a database that includes
`
`Subscriber Data and Subscriber Statistics, where the Subscriber Data includes a
`
`subscriber’s identification information, password, and the personal profile of the
`
`subscriber that is used to target specific advertisements to the subscriber. Ex.
`
`1006, col. 3, ll. 55–61. The personal profile is obtained by having the subscriber
`
`provide answers to a questionnaire. Id. at col. 3, ll. 61–63. The Subscriber
`
`Statistics include the advertisements distributed to the subscriber, the number of
`
`times each advertisement has been displayed to the subscriber, and further includes
`
`information on Internet sites that the subscriber has accessed over a predetermined
`
`period of time. Id. at col. 4, ll. 15–21. This information is utilized to define further
`
`a subscriber’s personal profile. Id. at col. 4, ll. 21–23.
`
`As discussed in our claim construction, “demographic information” means
`
`“collected characteristic information about a user that does not identify the user.”
`
`Section I.E.1. This construction was provided by Petitioner and Patent Owner has
`
`agreed this claim construction is correct. Pet. 10 (citing Ex. 1003 ¶¶ 105–106); Tr.
`
`23:1–6. Accordingly, we agree with Petitioner that Guyot’s disclosure that
`
`Subscriber Statistics that include information on Internet sites accessed by a
`
`subscriber is within the broadest reasonable interpretation of “demographic
`
`information.” The Subscriber Statistics are collected information about a
`
`subscriber, such as Internet sites accessed, and this information does not identify
`
`the subscriber. The Internet sites accessed by a subscriber describe a behavior
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`characteristic of a user. This collected behavior characteristic of the user is within
`
`the broadest reasonable interpretation of “demographic information.” Guyot
`
`further describes that this information is used to define the subscriber’s profile that
`
`is used to target advertisements for the user. Ex. 1006, col. 3, ll. 55–61, col. 4, 21–
`
`23. Accordingly, we agree with Petitioner that Guyot discloses a “method of
`
`providing demographically-targeted advertising to a computer user.”
`
`b. “transferring a copy of said software to the computer in response
`to a download request by the user”
`
`Claim 11 recites “transferring a copy of said software to the computer in
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`response to a download request by the user.” Petitioner argues that Guyot
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`discloses downloading an updated version of a client application in response to an
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`automatic or manual connection by a user, and, therefore, describes “transferring a
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`copy of said software to the computer in response to a download request by the
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`user.” Pet. 30 (citing Ex. 1003 ¶¶ 307, 309).
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`Patent Owner argues that, in Guyot, the subscriber “has no information that
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`would cause him or her to perceive even the potential that a new version of
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`software will be downloaded” and the subscriber “is not even aware that ‘the
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`control system determines if the latest version of the client application software
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`needs to be downloaded.’” PO Resp. 22 (quoting Ex. 1006, col. 8, ll. 38–40).
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`Patent Owner argues that because the subscriber is not aware that a new version is
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`available, it cannot be a “request by the user.” Accordingly, Patent Owner argues
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`that Guyot fails to disclose “transferring a copy of said software to the computer in
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`response to a download request by the user.”
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`Petitioner responds that Patent Owner acknowledges that in Guyot software
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`is downloaded in response to a user’s action, and the intent of the user is irrelevant.
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`Pet. Reply 6. Petitioner further responds that Guyot discloses that a “user
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`manually connects to the server, and in response to that action, the server
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`downloads an updated version of the software to the user’s computer.” Id. at 7
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`(citing Ex. 1003 ¶¶ 285–292; Ex. 1006, col. 6, ll. 44–56). Petitioner argues that a
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`user manually “clicking the ‘connection button’ is an action taken by the user that
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`causes the user’s computer to send a request to the server,” which responds by
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`providing a software to download. Id. at 9.
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`As discussed above in our claim construction, the limitation “download
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`request by the user,” under the broadest reasonable interpretation, does not require
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`a specific intent of the user. Section I.E.2. As also discussed above, we are
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`persuaded by Petitioner that “download request by the user,” under the broadest
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`reasonable interpretation, involves the sending of a request, to download data, from
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`a user’s computer to the server. Id. Guyot discloses that a subscriber can select a
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`“connection button” that establishes a connection to the server. Ex. 1006, col. 6,
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`ll. 43–46. A control system determines if the latest version of the client application
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`software needs to be downloaded. Id. at col. 8, ll. 38–41. If it is determined that
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`the latest version needs to be downloaded, a URL address pointing to the Internet
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`site that contains the latest client application software is provided to the subscriber
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`computer, and the latest client application software is downloaded. Id. at col. 8,
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`ll. 44–49. Therefore, the manual selection of the “connection button,” by the
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`subscriber, triggers the subscriber’s computer to request the downloading of the
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`latest software from the server. Accordingly, we are persuaded by Petitioner that
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`Guyot discloses “transferring a copy of said software to the computer in response
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`to a download request by the user.”
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`c. “providing a unique identifier to the computer”
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`Claim 11 recites “providing a unique identifier to the computer.” Petitioner
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`argues that Guyot discloses that each computer is identified to the server via a
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`“unique proprietary identifier.” Pet. 30. Petitioner alternatively argues Guyot
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`discloses Subscriber Data and Subscriber Statistics for each user, where Subscriber
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`Data includes a user’s identification, password, and personal profile and Subscriber
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`Statistics include usage information for each user. Id. This information is sent to
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`the server to update the information stored by the server. Id. Petitioner argues that
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`this disclosure in Guyot meets the limitation “providing a unique identifier to the
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`computer, wherein said identifier uniquely identifies information sent over said
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`computer network from the computer to said server.” Id. at 30–31.
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`Patent Owner argues that the claims require that the “unique identifier” is
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`provided to the computer by the server. PO Resp. 23. Patent Owner further argues
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`that Guyot discloses Subscriber Data that identifies the subscriber, not the
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`computer, and, therefore, does not identify information sent from the computer to
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`the server because multiple subscribers may utilize the client application. Id. at
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`24–25. Petitioner responds that the claims do not require that the unique identifier
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`is sent by the server to the user’s computer.
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`As discussed in our claim construction above, we are not persuaded by
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`Patent Owner’s arguments that the claims require that the server provides the
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`unique identifier to the computer and the unique identifier identifies the computer,
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`not the user. Section I.E.3. We determine that the limitations of “providing a
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`unique identifier to the computer” and the “identifier uniquely identifies
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`information sent over said computer network” mean that any system, process, or
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`entity provides a unique identifier to the computer, where the unique identifier
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`identifies any information that is sent over the computer network. Id. Guyot
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`discloses a database that includes Subscriber Data and Subscriber Statistics, where
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`the Subscriber Data include a subscriber’s identification information, a password,
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`and a personal profile of the subscriber that is used to target specific
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`advertisements to the subscriber. Ex. 1006, col. 3, ll. 55–61. The Subscriber
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`Statistics include the advertisements distributed to the subscriber, the number of
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`times each advertisement has been displayed to the subscriber, and information on
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`Internet sites that the subscriber has accessed over a predetermined period of time.
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`Id. at col. 4, ll. 15–21. This information is utilized to further define a subscriber’s
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`personal profile. Id. at col. 4, ll. 21–23. Accordingly, we are persuaded by
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`Petitioner that Guyot discloses Subscriber Data or a unique identifier that uniquely
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`identifies Subscriber Statistics or information sent over the computer network.
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`3. Conclusion
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`Petitioner contends that claims 11–14 and 16–19 are anticipated by Guyot.
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`Pet. 27–36. Petitioner has provided an analysis illustrating where each of the
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`limitations of the claims is disclosed by Guyot. Id. We determine that Petitioner
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`has demonstrated, by a preponderance of the evidence, that claim 11 is anticipated
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`by Guyot. Similarly, we determine that Petitioner has demonstrated, by a
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`preponderance of the evidence, that claims 12–14 and 16–19 are anticipated by
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`Guyot.
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`B. Obviousness of Claim 15 over Guyot and Robinson
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`1. Robinson (Ex. 1007)
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`Robinson discloses a system for the display of advertising to users of an
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`interactive communications medium. Ex. 1007, col. 1, ll. 12–13. The system
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`tracks activities of a subject in an interactive communications medium, derives
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`information from the activities, determines a community for