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
`
`_______________
`
`FACEBOOK, INC., MATCH.COM LLC, PEOPLE MEDIA, INC., and
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`B.E. TECHNOLOGY, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014–00052
`Case IPR2014–00053
`Case IPR2014–00698
`Case IPR2014–00743
`Case IPR2014–00744
`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 1038
`
`

`

`IPR2014–00052
`IPR2014–00743
`Patent 6,628,314
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`IPR2014–00053
`IPR2014–00744
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`IPR2014–00698
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`I.
`
`INTRODUCTION
`
`A. Background
`
`Facebook, Inc. (“Facebook”) filed two Petitions1 to institute inter partes
`
`review of claims 11, 12, 13, 15, 18, and 20 of U.S. Patent No. 6,628,314 (Ex. 1001,
`
`“the ’314 patent”). 52 Paper 1 (“52 Pet.”); 53 Paper 1 (“53 Pet.”). B.E.
`
`Technology, LLC (“Patent Owner”) did not file a Preliminary Response to either
`
`Petition. Pursuant to 35 U.S.C. § 314, we instituted inter partes review on April 9,
`
`2014, as to claims 11, 12, 13, 15, 18, and 20 of the ʼ314 patent under 35 U.S.C.
`
`§ 103 as obvious over Shaw2 and W3C3 and as obvious over Angles4 and Shaw.
`
`52 Paper 10 (“52 Dec.”); 53 Paper 10 (“53 Dec.”).
`
`After institution of the inter partes reviews, Match.com LLC (“Match.com”)
`
`and People Media, Inc. (“People Media”) filed a Petition and a Motion to Join the
`
`IPR2014-00053 inter partes review. IPR2014-00698, Papers 1, 4. Google, Inc.
`
`(“Google”) filed two Petitions and Motions to Join the inter partes reviews.
`
`IPR2014-00743, Papers 1, 3; IPR2014-00744, Papers 1, 3. We granted
`
`Match.com, People Media, and Google’s motions and joined Match.com, People
`
`Media, Google, and Facebook (collectively, “Petitioner”) in the inter partes
`
`reviews. 52 Paper 28; 53 Paper 26; 53 Paper 28.
`
`Patent Owner filed a Response in each of the proceedings; the following
`
`table identifies the remaining papers filed by the parties:
`
`
`1 Citations may be preceded by “52” to designate IPR2014-00052 or “53” to
`designate IPR2014-00053.
`2 U.S. Patent No. 5,809,242 (52 Ex. 1103) (“Shaw”).
`3 Melissa Dunn et al., Privacy and Profiling on the Web (June 1, 1997), available
`at http://www.w3.org/TR/NOTE-Web-privacy.html (52 Ex. 1105) (“W3C”).
`4 U.S. Patent No. 5,933,811 (53 Ex. 1003) (“Angles”).
`
` 2
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`IPR2014–00052
`IPR2014–00743
`Patent 6,628,314
`
`
`Case No.
`
`Petition
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`IPR2014–00053
`IPR2014–00744
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`IPR2014–00698
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`IPR2014-00052
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`IPR2014-00053
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`Paper 1 (“52 Pet.”)
`
`Paper 1 (“53 Pet.”)
`
`Decision to Institute
`
`Paper 10 (“52 Dec.”)
`
`Paper 10 (“53 Pet.”)
`
`PO Response
`
`Paper 31 (“52 PO Resp.”)
`
`Paper 32 (“PO Resp”)
`
`Petitioner’s Reply
`
`Paper 33 (“52 Pet. Reply”)
`
`Paper 33 (“Pet. Reply”)
`
`Patent Owner’s
`Motion to Amend
`
`Paper 32 (“52 Mot. to
`Amend”)
`
`Paper 31 (“53 Mot. to
`Amend”)
`
`Petitioner’s
`Opposition to Motion
`to Amend
`
`Patent Owner’s Reply
`to Petitioner’s
`Opposition to Motion
`to Amend
`
`
`
`Paper 34 (“52 Opp. Mot. to
`Amend”)
`
`Paper 34 (“53 Opp. Mot.
`to Amend”)
`
`Paper 36 (“52 PO Reply
`Opp. Mot. to Amend”)
`
`Paper 36 (“53 PO Reply
`Opp. Mot. to Amend”)
`
`Oral hearing for both IPR2014-00052 and IPR2014-00053 was held on
`
`December 10, 2014, and the hearing transcript has been entered in the record as 52
`
`Paper 44 and 53 Paper 44.
`
`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
`
`reasons discussed below, we determine that Petitioner has shown by a
`
`preponderance of the evidence that claims 11, 12, 13, 15, 18, and 20 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. Google, Inc., No. 2:12-cv-2830-JPM (W.D.
`
`Tenn.), filed on October 9, 2012; B.E. Technology, L.L.C. v. Facebook, Inc., No.
`
` 3
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`IPR2014–00744
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`IPR2014–00052
`IPR2014–00743
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`12-cv-2769-JPM (W.D. Tenn.), filed on September 7, 2012; B.E. Technology,
`
`IPR2014–00698
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`L.L.C. v. People Media, Inc., No. 2:12-cv-02833 (W.D. Tenn.), filed on September
`
`21, 2012; and B.E. Technology, L.L.C. v. Match.com LLC, No. 2:12-cv-02834
`
`(W.D. Tenn.), filed on September 21, 2012. 52 Pet. 1; 53 Pet. 1; IPR2014-00698,
`
`Paper 1, 2; IPR2014-00743, Paper 1, 2; IPR2014-00744, Paper 1, 2.
`
`The ’314 patent is also the subject of Google, Inc. v. B.E. Technology,
`
`L.L.C., IPR2014-00038 (PTAB Apr. 9, 2014), Microsoft Corp. v. B.E. Technology,
`
`L.L.C., IPR2014-00039 (PTAB Apr. 9, 2014), Match.com LLC v. B.E. Technology,
`
`L.L.C., IPR2014-00699 (PTAB June 13, 2014), and Google, Inc. v. B.E.
`
`Technology, L.L.C., IPR2014-000738 (PTAB June 18, 2014). IPR2014-00699 has
`
`been joined with IPR2014-00038 and IPR2014-00738 has been joined with
`
`IPR2014-00039.
`
`C. The ʼ314 Patent
`
`The ’314 patent relates to user interfaces that provide advertising obtained
`
`over a global computer network. 52 Ex. 1101, col. 1, ll. 12–16. The ’314 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 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:
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`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
`
`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
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`checks the completeness of the form. Id. at col. 16, l. 60–col. 17, l. 2. ADM server
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`IPR2014–00698
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`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 Claim
`
`Petitioner challenges claims 11, 12, 13, 15, 18, and 20 of the ’314 patent.
`
`Independent claim 11 is illustrative of the claims at issue and follows:
`
`11. A method of providing demographically-targeted
`advertising to a computer user, comprising the steps of:
`providing a server that is accessible via a computer network,
`permitting a computer user to access said server via said
`computer network,
`the user, 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,
`
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`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.
`
`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. “periodically”
`
`Claim 11 recites a method that includes steps of “providing . . . software
`
`that . . . periodically requests additional advertising content” and “periodically
`
`acquiring said unique identifier and said computer usage information.” Petitioner
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`proposes that “periodically” should be construed to mean “recurring from time to
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`IPR2014–00698
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`time.” 52 Pet. 8. Petitioner bases this construction on the dictionary definition of
`
`“periodically,” which includes “(1) having or marked by repeated cycles;
`
`(2) happening or appearing at regular intervals; or (3) recurring or reappearing
`
`from time to time; intermittent.” Id. (citing 52 Ex. 1125, 6). Patent Owner has not
`
`provided a construction for “periodically.”
`
`We agree with Petitioner. The ʼ314 patent specification does not provide a
`
`special definition for “periodically,” and the claims do not limit further the scope
`
`of periodically. Accordingly, we agree with Petitioner that the broadest reasonable
`
`definition provided by the dictionary is “(3) recurring or reappearing from time to
`
`time; intermittent” because this definition does not require regular cycles or
`
`intervals. Additionally, the broadest reasonable meaning of “periodically” does
`
`not require the recurrence or reappearance to be at a specific interval.
`
`Accordingly, we construe “periodically” to mean “recurring from time to time, at
`
`regular or irregular time intervals.”
`
`2. “associating”
`
`Claim 11 recites “associating said unique identifier with demographic
`
`information in a database” and “associating said computer usage information with
`
`said demographic information using said unique identifier.” Petitioner contends
`
`that the plain and ordinary meaning of “associating” is “to connect or join together,
`
`combine.” 52 Pet. 7 (citing 52 Ex. 1125, 4). Petitioner further contends that this
`
`ordinary meaning for “associating” also should include both indirect and direct
`
`“associating.” Id. at 7–8. Patent Owner has not provided a construction for
`
` 8
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`
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`“associating.”
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`We agree with Petitioner. The ʼ314 patent specification does not provide a
`
`special definition for “associating.” As discussed by Petitioner, claim 11, under
`
`the broadest reasonable interpretation, requires that the datasets of usage
`
`information and demographic information be associated, directly or indirectly,
`
`using the unique identifier. Id. Accordingly, we adopt the ordinary meaning and
`
`construe “associating” to mean “to connect or join together,” either directly or
`
`indirectly.
`
`II. ANALYSIS
`
`A. Obviousness of Claims 11, 12, 13, 15, 18, and 20 over Shaw and W3C
`
`1. Shaw (52 Ex. 1103)
`
`Shaw discloses an electronic mail system that displays targeted
`
`advertisements to remote users when the users are off-line. 52 Ex. 1103, col. 1,
`
`ll. 8–11. Shaw discloses that a user operates a client computer that runs a client
`
`program. Id. at col. 3, ll. 24–26. The client program allows a user to read, write,
`
`edit, send, receive, and store electronic mail. Id. at col. 3, ll. 56–58. The client
`
`program displays advertisements to the user when the user is composing emails.
`
`Id. at col. 4, ll. 4–6.
`
`The user completes a member profile that includes information about the
`
`user, such as hobbies, interests, employment, education, sports, demographics, etc.
`
`Id. at col. 5, ll. 5–9. The server system utilizes the user’s entered information to
`
`determine which advertisements should be directed to the user. Id. at col. 5, ll. 14–
`
`16. The client program periodically communicates with a server system. Id. at
`
`col. 3, ll. 35–36. The server system transmits eligible advertisements to the client
`
`program when the client program establishes a connection with the server system.
`
`Id. at col. 5, ll. 19–24. The advertisements are stored on the user’s client computer
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`so that advertisements can be displayed when the user is not on-line. Id. at col. 5,
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`IPR2014–00698
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`ll. 32–35. The email system for providing targeted advertisements is set forth in
`
`Figure 1 as follows:
`
`
`
`Figure 1 illustrates the email system that transmits and displays
`
`advertisements to users when composing emails. Client computer 101
`
`communicates with server system 107 via network 103. Id. at col. 9, ll. 31–35.
`
`Server system 107 includes database management system 106. Id. at col. 10,
`
`ll. 14–15. The user is provided with software, either on disk or electronically
`
`downloaded over the Internet, which is executed on client computer 101. Id. at
`
`col. 10, ll. 44–48.
`
`2. W3C (52 Ex. 1105)
`
`W3C is directed to the personalization and targeting of information for
`
`customers using demographic information, where the customers provide
`
`demographic information once and retain control over how the information is
`
`disclosed. 52 Ex. 1105, 1–2. Users are enabled to create one or more personae,
`
`which describe the role the user wishes to release to a website. Id. at 4. A persona
`
`includes an identifier, UserID, and demographic information, such as birthday,
`
`gender, level of education, marital status, number of children, and income level.
`
`Id. at 5–6. The personae are associated with a single profile for a user. Id. at 4.
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`The user profile information is stored locally in order for the client software to
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`provide information to websites. Id. at 7. Users are provided an interface in order
`
`to maintain their profile information. Id.
`
`The exchange of persona information is illustrated in Figure 2 as follows:
`
`
`
`The client requests a document from a website. Id. at Fig. 2. The website or
`
`server responds with a request for personal information from the client and a
`
`statement of how this information is to be used. Id. at 8. The client defines rules
`
`for accessing and acquiring data, and the server only receives the requested data if
`
`the rules are satisfied. Id. at 8–9.
`
`The persona information further includes “click-stream” information. Id. at
`
`6. Click-stream information describes a user’s activity on a website. Id. at 12.
`
`The Web browsers keep track of the user’s browsing behavior locally. Id. This
`
`information periodically is posted back to the Web server. Id.
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`11
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`3. Analysis
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`Petitioner argues that Shaw discloses every limitation of claim 11, and
`
`argues that W3C discloses a unique identifier that uniquely identifies the client
`
`independent of website affiliation. 52 Pet. 16–17. Petitioner further argues that all
`
`of the elements of this limitation are disclosed by Shaw and W3C, and the
`
`combination would have yielded nothing more than predictable results. Id. at 18–
`
`19. Petitioner alternatively argues that a person with ordinary skill in the art would
`
`have been motivated to combine the unique identifier of W3C with Shaw in order
`
`to have a “richer and more complete set of profile information” that can be used to
`
`increase the targeting of advertising. Id.
`
`Patent Owner argues (a) Shaw fails to disclose “providing a unique identifier
`
`to the computer,” (b) a person with ordinary skill in the art would not have
`
`combined Shaw with W3C, and (c) the adoption of the “broadest reasonable
`
`construction” rule exceeds the PTO’s rule making authority. 52 PO Resp. 5–9.
`
`a. “providing a unique identifier to the computer, wherein said
`identifier uniquely identifies information sent over said computer
`network from the computer to said server”
`
`Claim 11 recites “providing a unique identifier to the computer, wherein said
`
`identifier uniquely identifies information sent over said computer network from the
`
`computer to said server.” Petitioner argues that Shaw discloses a unique email
`
`address that is associated with each user and this email address is used to connect
`
`to the server system to send member profile information. 52 Pet. 16–17 (citing 52
`
`Ex. 1103, col. 1, ll. 45–50, col. 12, ll. 6–13, 59–65, col. 18, ll. 39–42, 46–56).
`
`Petitioner further argues that W3C discloses that a user creates a persona that is
`
`associated with a User ID and demographic information, and the unique User ID
`
`uniquely identifies the user independent of website affiliation. Id. (citing Ex. 1105,
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`5–7). Petitioner contends that the claim does not require any particular system,
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`process, or entity to provide a unique identifier to the computer and that Shaw’s
`
`disclosure that the user provides the unique identifier to the computer meets this
`
`claim limitation. 52 Pet. Reply 3–4.
`
`Patent Owner argues that Shaw discloses that the “e-mail address is provided
`
`by the user at the client, to the server,” whereas the ʼ314 patent requires that the
`
`unique identifier is “provided” to the computer by the server. 52 PO Resp. 5
`
`(citing 52 Ex. 1103, col. 12, ll. 6–13). Patent Owner argues that the ʼ314 patent
`
`specification describes 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.” 52 PO Resp. 6 (quoting 52 Ex. 1101,
`
`col. 18, ll. 11–16). Accordingly, Patent Owner argues that a “person of ordinary
`
`skill in the art would understand the difference between an identifier being
`
`provided from the server to the client . . . and an identifier being provided from the
`
`client to the server.” Id.
`
`Claim 11 recites “providing a unique identifier to the computer.” Claim 11,
`
`however, does not require a particular system, process, or entity to provide the
`
`unique identifier to the computer. Although the ʼ314 patent specification suggests
`
`that the unique identifier is assigned from the server, Patent Owner has not
`
`provided persuasive evidence or argument that this feature from the ʼ314 patent
`
`specification is required by the claims. Accordingly, we agree with Petitioner’s
`
`argument that Shaw’s disclosure of a user entering a unique email address to the
`
`computer describes “providing a unique identifier to the computer.” 52 Pet. 16–17
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`(citing Ex. 1103, col. 1, ll. 45–50, col. 12, ll. 6–13, 59–65, col. 18, ll. 39–42, 46–
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`56); 52 Pet. Reply 3–4.
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`Patent Owner further contends that Shaw’s e-mail address does not identify
`
`uniquely “the computer” and does not identify uniquely “information sent from the
`
`computer to the server.” 52 PO Resp. 6. Patent Owner specifically argues that
`
`Shaw discloses that more than one user may utilize a single client computer and,
`
`therefore, the e-mail address identifies a user, not the computer or the information
`
`sent from the computer to the server. Id. Petitioner responds that the claim
`
`language does not require that the “unique identifier” identify the computer itself.
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`52 Pet. Reply 5–6. Petitioner argues that Shaw’s email address identifies the user
`
`and connects the client system to the appropriate mail server. Id. at 7 (citing Ex.
`
`1103, col. 18, ll. 34–56). Petitioner further argues that Shaw’s e-mail address
`
`uniquely identifies user profile information and user statistics when those files are
`
`sent from the client to the server. Id. (citing Ex. 1103, col. 6, ll. 21–29, Fig. 11).
`
`Claim 11 recites that the unique identifier “uniquely identifies information
`
`sent over said computer network.” Claim 11 only requires that “information” is
`
`identified by the identifier. Patent Owner has not provided persuasive evidence or
`
`rationale to demonstrate that the “information” must be the computer itself, or that
`
`it must be specifically anything else. Accordingly, the term “information” must be
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`construed broadly to include any information, including information that identifies
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`the user. As argued by Petitioner above, Shaw discloses a unique email address
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`that uniquely identifies the information as information regarding the user. See 52
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`Pet. Reply 7 (citing Ex. 1103, col. 6, ll. 21–29, col. 18, ll. 34–56, Fig. 11).
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`Accordingly, we agree with Petitioner that Shaw discloses this limitation.
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`b. Combination of Shaw and W3C
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`Petitioner argues that both Shaw and W3C are directed toward systems and
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`methods for providing targeted advertising to users over the Internet using
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`client/server architectures. 52 Pet. 18–19, 22. Petitioner further argues that all of
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`the elements of claim 11 are disclosed by Shaw and W3C with no change to their
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`respective functions and that combining Shaw and W3C to produce a system with
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`all of the features would render nothing more than predictable results. Id. at 18–
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`19, 22, 25–26. Petitioner additionally argues that the combination of Shaw and
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`W3C involves nothing more than known computer techniques to improve a similar
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`advertising system in the same way. Id. Mr. Robert J. Sherwood’s Declaration
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`supports Petitioner’s argument that the combination of Shaw and W3C would have
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`been obvious to a person with ordinary skill in the art and that such a combination
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`would render nothing more than predictable results. 52 Ex. 1111 ¶ 54.
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`Patent Owner contends that “Shaw is a mostly disconnected e-mail system
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`that is not dependent on the use of an identifier that can be used on the World Wide
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`Web,” whereas W3C “addressed a possible personal profile standard that could be
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`used on the Web.” 52 PO Resp. 7. Patent Owner, accordingly, concludes that the
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`“W3C profile is of no use to the Shaw system.” Id. (citing Ex. 2001 ¶ 23). Patent
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`Owner further argues that “there is no reason why an unapproved proposal
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`[standard] of this nature would have been adopted by one of ordinary skill.” Id.
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`(citing 52 Ex. 2001 ¶ 24).
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`Petitioner responds that Shaw contemplates its system’s usage with web
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`pages. 52 Pet. Reply 9–10 (citing Ex. 1103, col. 23, l. 64 – col. 24, l. 4). Petitioner
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`further explains that in W3C the demographic profile is more developed because of
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`the user interactions with multiple websites, and a person with ordinary skill in the
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`art would have “recognized that the more detailed profile in the W3C Submission
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`would have allowed Shaw ‘to draw upon a richer and more complete set of profile
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`information the user has accumulated,’ thus resulting in improved and more
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`accurate target[ed] advertising.” 52 Pet. Reply 10–11 (quoting Ex. 2001 ¶ 19).
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`Petitioner further argues that W3C discloses clearly that “it was not the type of
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`formal industry standard that had to go through an official approval process.” 52
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`Pet. Reply 11.
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`We disagree with Patent Owner. First, Patent Owner has not directed us to
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`evidence or rationale to demonstrate that the combination of the personal profile
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`schema associated with the User ID of W3C with the member information
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`associated with the e-mail address of Shaw would have rendered anything more
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`than predictable results. Petitioner has shown that the combination of W3C with
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`Shaw includes known elements and that the combination would have rendered
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`nothing more than predictable results. Pet. 18–19. Patent Owner has not provided
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`persuasive evidence or an argument to rebut the Petitioner’s position.
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`Second, Patent Owner has not provided persuasive supporting evidence that
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`a person with ordinary skill in the art would not have combined personal profile
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`schema associated with the unique User ID of W3C with the member profile
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`information associated with the e-mail address of Shaw. Specifically, Patent
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`Owner has not demonstrated, with supporting evidence or rationale, why a person
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`with ordinary skill in the art would not have combined an element that is used on
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`the Web (W3C) with an e-mail system (Shaw). Rather, Patent Owner’s argument,
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`and Mr. Neal Goldstein’s testimony, merely allege that the “W3C profile is of no
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`use to the Shaw system” without providing a factual basis to support this
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`conclusion. See 52 PO Resp. 7 (citing Ex. 2001 ¶ 23). In light of the Shaw system
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`contemplating the adaptation of the Shaw system to provide a series of
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`advertisements to a user in a number of web pages (Ex. 1103, col. 23, l. 64 – col.
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`24, l. 2), we are not persuaded by Patent Owner that a person with ordinary skill in
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`the art would not have combined W3C with Shaw. Furthermore, Patent Owner
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`also has not directed us to persuasive evidence or rationale to demonstrate that a
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`person with ordinary skill in the art would not have combined W3C with Shaw
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`because the W3C standard was not approved. As pointed out by Petitioner, Patent
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`Owner has not provided persuasive evidence that the W3C standard requires
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`approval. 52 Pet. Reply 11–12.
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`c. Adoption of the “Broadest Reasonable Interpretation” Standard
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`Patent Owner argues that the United States Patent and Trademark Office
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`(“PTO”) does not have substantive rule-making authority and, accordingly, Patent
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`Owner contends that the broadest reasonable construction standard should not be
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`applied and claim construction should be carried out in the same manner as applied
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`in a judicial proceeding. 52 PO Resp. 7–9. Patent Owner has not provided a claim
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`construction as would have been carried out in a judicial proceeding or alleged any
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`distinctions between the claim construction that would have been carried out in a
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`judicial proceeding and the broadest reasonable construction. As such, Patent
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`Owner’s argument does not articulate clearly how our determinations would be
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`different based a different claim construction standard. Accordingly, Patent
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`Owner’s argument is tantamount to a request for an advisory opinion.
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`In any event, we disagree with Patent Owner. Our reviewing court has held
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`that “Congress implicitly adopted the broadest reasonable interpretation standard in
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`enacting the AIA,” and “§ 316 provides authority to the PTO to conduct
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`rulemaking.” In re Cuozzo Speed Techs., LLC, No. 2014-1301, 2015 WL 448667,
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`at *7–8 (Fed. Cir. Feb. 4, 2015). Accordingly, the “broadest reasonable
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`interpretation standard affects both the PTO’s determination of whether to institute
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`IPR proceedings and the proceedings after institution and is within the PTO’s
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`authority under the statute.” Id.
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`4. Conclusion
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`We determine that Petitioner has demonstrated, by a preponderance of the
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`evidence, that claim 11 would have been obvious over Shaw and W3C. Similarly,
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`we determine that Petitioner has demonstrated, by a preponderance of the
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`evidence, that claims 12, 13, 15, 18, and 20 would have been obvious over Shaw
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`and W3C.
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`B. Obviousness of Claims 11, 12, 13, 15, 18, and 20 over Angles and Shaw
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`1. Angles (53 Ex. 1003)
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`Angles discloses a system for an on-line advertising service that can custom
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`tailor specific advertisements to particular consumers and track consumer
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`responses to the advertisements. 53 Ex. 1003, col. 2, ll. 45–49. A consumer
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`registers with an advertisement provider by entering demographic information into
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`the advertisement provider’s demographic database. Id. at col. 3, ll. 18–21. The
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`advertisement provider assigns the consumer a unique member code. Id. at col. 3,
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`ll. 24–25. The consumer is provided software that enhances the consumer’s
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`Internet browser so that custom advertisements can be merged with electronic
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`documents provided by the content provider. Id. at col. 3, ll. 25–29. The
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`advertisement provider obtains the unique member code from the consumer’s
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`computer. Id. at col. 3, ll. 54–56. The consumer member code is used to identify
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`the consumer’s demographic information and preferences. Id. at col. 3, ll. 56–58.
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`The consumer’s demographic information and preferences are used to select an
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`appropriate advertisement for the consumer. Id. at col. 3, ll. 58–61.
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`The system for providing on-line custom advertisements is set forth in
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`Figure 1 as follows:
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`Figure 1 illustrates the interaction between consumer computer 12, content
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`provider computer 14, and advertisement provider computer 18. Id. at col. 4,
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`ll. 50–53. A consumer directs consumer computer 12 to establish a
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`communications link with content provider computer 14. Id. at col. 7, ll. 53–55.
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`Content provider computer 14 transfers electronic page 32 to consumer computer
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`1