PTAB

IPR2014-00039

Microsoft Corp v. Be Technology LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Computer Interface Method and Apparatus with Targeted Advertising
  • Brief Description: The ’314 patent discloses methods for providing demographically-targeted advertising to a computer user. The system involves a server providing downloadable software to a user's computer, which then collects demographic and computer usage information, associates it with a unique identifier, and receives targeted ads from the server based on that information.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 11-14 and 16-19 under §102(e) by Shaw

  • Prior Art Relied Upon: Shaw (Patent 5,809,242)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Shaw discloses every element of independent claim 11 and several dependent claims. Shaw describes a customized client email program that delivers demographically-targeted ads. The system provides a server accessible over a network, which users access via the client software. It acquires demographic information when a user creates a member profile. The server provides the user with download access to the client software, which displays ads, records computer usage, and periodically requests more ads. A unique identifier (the user’s email address and a "binding") is associated with the user's demographic profile in a server database. The server then selects and transfers advertising to the user’s computer based on this associated information and periodically acquires updated usage information from the client. Petitioner contended that dependent claims 12-14 and 16-19 are also taught by Shaw's disclosure of periodically updating ads (claim 12), using a public network like the Internet (claim 13), and using the unique email/password combination to distinguish software copies and associate usage data (claims 14, 16, 17).

Ground 2: Obviousness of Claim 15 over Shaw in view of Robinson

  • Prior Art Relied Upon: Shaw (Patent 5,809,242) and Robinson (Patent 5,918,014)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that claim 15 depends on claim 11 and adds the step of "storing a cookie on the computer" to provide the unique identifier. While Shaw discloses storing a unique identifier ("user name" and "binding information") locally on the user's computer, Robinson explicitly teaches using cookies to track users for targeted advertising.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Shaw and Robinson because both references are directed to targeted advertising systems that rely on the local storage of user-specific information. Robinson's disclosure of using cookies was a well-known, conventional technique by 1998, and a POSITA would have recognized it as an obvious and readily implementable way to achieve the local data storage function described in Shaw.
    • Expectation of Success: Given that cookies were a widely used and accepted method for uniquely identifying a user to a server at the time, a POSITA would have had a high expectation of success in implementing Shaw's system using the cookie mechanism taught by Robinson.

Ground 3: Anticipation of Claims 11-14 and 16-19 under §102(e) by Guyot

  • Prior Art Relied Upon: Guyot (Patent 6,119,098)

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Guyot, like Shaw, discloses all elements of claim 11. Guyot describes delivering targeted advertising via a client application that communicates with a server over the Internet. It acquires demographic information through a user questionnaire. The client application can be downloaded, displays ads continuously, and tracks user activity (e.g., mouse movement, websites visited). Guyot's system assigns a "unique proprietary identifier" to each user, which is stored in a server database that associates the identifier with the user's personal profile and usage statistics. The server selects and downloads ads to the client based on this associated data. The client periodically connects to the server to upload usage information and download new ads, meeting the limitations of claim 11 and dependent claims 12-14 and 16-19.

  • Additional Grounds: Petitioner asserted that claims 11-19 are also anticipated by Robinson. Further, Petitioner asserted multiple obviousness grounds for claims 20-22 based on combinations of Shaw, Guyot, and Robinson, each in view of RFC 1635 ("How to Use Anonymous FTP"). These grounds argued that arranging the steps of acquiring demographic information before granting software download access was an obvious design choice suggested by conventional client-server protocols like Anonymous FTP.

4. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 11-22 of the ’314 patent as unpatentable.