PTAB

IPR2014-00052

Facebook Inc 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 a method for providing demographically-targeted advertising to a computer user. The system relies on downloadable client software that acquires a user's demographic information, records computer usage, and periodically requests tailored advertising content from a server based on the collected data.

3. Grounds for Unpatentability

Ground 1: Claims 11-13, 15, 18, and 20 are obvious over Shaw in view of the W3C Submission

  • Prior Art Relied Upon: Shaw (Patent 5,809,242) and the W3C Submission (“Privacy and Profiling on the Web,” a 1997 Microsoft submission).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Shaw disclosed the core system of a client program that acquires demographic information in a "member profile" and periodically communicates with a server to receive targeted advertisements. The W3C Submission was asserted to teach the remaining limitations, including using a unique identifier (a "User ID") independent of website affiliation, client-side logging of user browsing behavior, and associating this usage information with demographic data to create a comprehensive user profile. Dependent claim 15’s "cookie" limitation was also taught by the W3C Submission.
    • Motivation to Combine: A POSITA would combine the W3C Submission’s advanced profiling techniques with Shaw’s advertising system to improve ad targeting. Shaw’s system could be extended from email to web browsing, and the W3C Submission, as a proposed internet standard, provided a well-reasoned, predictable method for creating richer user profiles by logging web behavior. This combination would achieve the beneficial result of more effective and accurately targeted advertising.
    • Expectation of Success: The combination involved applying known web-profiling techniques (W3C Submission) to a known targeted advertising framework (Shaw), and a POSITA would have expected success in creating a more effective system.

Ground 2: Claims 11-13, 18, and 20 are obvious over Logan in view of PHOSITA Knowledge

  • Prior Art Relied Upon: Logan (Patent 5,721,827) and the general knowledge of a Person Having Ordinary Skill in the Art (PHOSITA).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Logan, by itself, taught nearly every element of the challenged claims. Logan described an internet-based system for distributing personalized information, including targeted advertising, based on a user’s demographic data and computer usage behavior. The system involved downloadable software, user registration to provide demographic data, creation of a unique identifier ("AccountNo"), client-side logging of usage, and periodic communication with a host server to upload usage data and download new advertising content.
    • Motivation to Combine: This ground relied less on a combination and more on the assertion that Logan was a comprehensive reference. Petitioner contended that to the extent any minor detail was not explicitly disclosed in Logan, it would have been an obvious implementation detail or a matter of common knowledge for a PHOSITA in the field of internet advertising at the time.
    • Expectation of Success: As Logan was argued to teach a complete system, a POSITA would have had a high expectation of success in implementing the claimed method based on its teachings.

Ground 3: Claims 11 and 15 are obvious over Logan in view of Merriman

  • Prior Art Relied Upon: Logan (Patent 5,721,827) and Merriman (Patent 5,948,061).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground asserted that Logan taught the baseline system for targeted advertising as detailed in Ground 2. Merriman was introduced to explicitly teach the limitation of dependent claim 15: storing a cookie containing a unique user identifier on the user's computer. Merriman described an advertising server that, upon detecting a new user, assigns a unique identification number and transmits it back to the user’s browser within a "write cookie" instruction.
    • Motivation to Combine: A POSITA would combine Merriman's cookie-based identification method with Logan's comprehensive advertising system. Logan already included an integrated HTML interface (a browser) and tracked user habits. Using a cookie, as taught by Merriman, represented a well-known and improved method for uniquely identifying a user and tracking their computer usage information, such as websites visited, which would enhance the effectiveness of Logan’s targeting algorithms. The combination was a predictable integration of two similar client-server advertising technologies.
    • Expectation of Success: Combining a standard user-tracking mechanism (cookies from Merriman) with a targeted content delivery system (Logan) would have been a straightforward task for a POSITA with a high expectation of success.

4. Key Claim Construction Positions

  • "associating": Petitioner argued this term should be construed to mean "to connect, join together, or combine, either directly or indirectly." This construction was proposed to clarify that the link between data sets (e.g., usage and demographic data) could be indirect, such as through a common unique identifier, which is consistent with the patent's disclosure and the teachings of the prior art.
  • "periodically": Petitioner proposed this term be construed to mean "recurring from time to time," based on its plain and ordinary meaning and consistent use within the patent specification. This construction supports the idea that communications between the client and server do not need to occur at fixed, regular intervals.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 11-13, 15, 18, and 20 of the ’314 patent as unpatentable.