PTAB

IPR2014-00053

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 describes a method for providing demographically-targeted advertising to a computer user. The system involves a server that provides downloadable client software which, when run on the user's computer, displays ads, records computer usage information, and periodically requests new advertising content.

3. Grounds for Unpatentability

Ground 1: Obviousness over Angles, Guyot, and Fox - Claims 11-13, 15, 18, and 20 are obvious over Angles in view of Guyot and Fox.

  • Prior Art Relied Upon: Angles (Patent 5,933,811), Guyot (Patent 6,119,098), and Fox (David Fox & Troy Downing, Web Publisher's Construction Kit with HTML 3.2 (1996)).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Angles taught the core framework of the challenged claims, including a client-server system for delivering customized advertisements based on consumer demographic profiles. Angles disclosed collecting user demographics, assigning a unique identifier (stored as a cookie), selecting ads based on the profile, and sending them to the user's computer via a downloadable "consumer control module" (a plug-in). However, Petitioner contended that Angles did not explicitly teach persistently storing usage data on the client computer or periodically uploading it. To address these limitations, Petitioner asserted that Guyot taught a client application that records "Subscriber Statistics" (usage data) in local memory and periodically uploads this data to a server, specifically to accommodate users without a continuous internet connection. For the limitation of transferring software in response to a user's download request, Petitioner cited Fox, a textbook that described the standard, well-known process of a user visiting a webpage to explicitly download and install a browser plug-in.
    • Motivation to Combine: A POSITA would combine Angles with Guyot to improve the advertising system's performance and reliability, particularly in the mid-1990s environment of slow and inconsistent dial-up connections. Guyot’s method of locally storing usage data and periodically uploading it in batches would have been an obvious solution to avoid the need for a continuous network connection, a problem acknowledged in both the ’314 patent and Angles. A POSITA would have been motivated to incorporate the teachings of Fox because it represented a basic, well-known method for distributing and installing the exact type of plug-in software disclosed in Angles, making the system more user-friendly and conventional.
    • Expectation of Success: Petitioner argued there was a high expectation of success because combining these references involved applying known techniques (local data storage, batch uploading, standard plug-in installation) to a known system (targeted advertising) to achieve predictable results and solve a known problem (unreliable internet connectivity).

Ground 2: Obviousness over Angles and Shaw - Claims 11-13, 15, 18, and 20 are obvious over Angles in view of Shaw.

  • Prior Art Relied Upon: Angles (Patent 5,933,811) and Shaw (Patent 5,809,242).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented an alternative to the Guyot combination. Petitioner again relied on Angles for the foundational targeted advertising system. Shaw was introduced to supply the teachings of client-side data recording and periodic communication for users who are online or offline. Shaw disclosed an email/advertising system with a client program that records user activity and advertisement statistics in local files. This data is then communicated to the server whenever the user establishes a connection (e.g., to send/receive email). Petitioner asserted that Shaw’s system, which was also applicable to web browsers for offline viewing, directly taught recording computer usage information on the client and periodically acquiring it at the server, thus rendering the corresponding limitations of claim 11 obvious.
    • Motivation to Combine: Petitioner asserted that a POSITA would have been motivated to combine Angles and Shaw for reasons similar to the Guyot combination: to create a more robust and cost-effective advertising system that could function without a continuous, expensive internet connection. Shaw explicitly touted the advantages of its "batch" mode operation, which lowered communication costs compared to "fully-connected" online services. This provided an express motivation for a POSITA to modify the system of Angles to incorporate Shaw's offline capabilities and periodic data transfer, thereby achieving the same cost and reliability benefits.
    • Expectation of Success: The combination of Angles and Shaw was argued to be a straightforward application of known methods for managing data in environments with intermittent connectivity. A POSITA would have reasonably expected that implementing Shaw's periodic, batch-based communication method within Angles' targeted advertising framework would predictably result in a more efficient and reliable system.

4. Key Claim Construction Positions

  • "associating": Petitioner argued this term should be construed according to its plain meaning of "to connect, join together, or combine," and that the specification supported this construction including both direct and indirect association. This was relevant as the prior art often linked usage data and demographic data via a common unique user identifier, which Petitioner contended met the claim limitation.
  • "periodically": Citing dictionary definitions and the patent specification, Petitioner asserted this term should be construed to mean "recurring from time to time" or "intermittent." This construction was broad enough to encompass both regularly scheduled communications and communications that occur whenever a network connection is established, as taught by the prior art (Guyot and Shaw).

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.