PTAB

IPR2014-00698

Matchcom v. Be Technology LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Demographically-Targeted Advertising
  • Brief Description: The ’314 patent discloses a method and system for providing demographically-targeted advertising to a computer user. The invention involves downloadable software that presents advertising content to a user based on demographic and computer usage information collected by a server.

3. Grounds for Unpatentability

Ground 1: 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: Petitioner argued that Angles, the primary reference, disclosed the vast majority of the limitations in the challenged claims. Angles taught a client-server system for delivering customized advertisements based on a consumer's demographic profile. This included a server providing downloadable software (a "consumer control module") to a user's computer, acquiring demographic data upon registration, assigning a unique identifier ("consumer member code"), selecting ads based on the user's profile, and tracking user interactions (e.g., clicks on ads).

      Petitioner contended that Shaw was necessary to render obvious certain claim limitations related to systems with intermittent network connectivity, which Angles did not explicitly detail. Specifically, Petitioner argued that while Angles taught tracking user interactions, Shaw explicitly disclosed client-side software that records computer usage information in persistent storage (e.g., an event log file) on the user's computer. Furthermore, Shaw disclosed a system where the client software periodically communicates with the server to upload this stored usage data and download new advertisements in "batch" mode, rather than requiring a continuous connection. This mapping from Shaw was used to meet limitations requiring the recording of usage information and the periodic acquisition of that data by the server. Dependent claims were argued to be obvious as they recited features also found in the combination, such as using a publicly-accessible network like the Internet (Angles), storing the unique identifier in a cookie (Angles), and including data about accessed resources as part of the usage information (Angles).

    • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSITA) would have been motivated to combine the teachings of Angles and Shaw to create a more robust and efficient targeted advertising system. Both references were in the same field of art and addressed the same problem. The primary motivation was to adapt the generally "always-on" system of Angles to the known technical realities of the mid-1990s, where many users had slow, unreliable, and expensive dial-up Internet connections.

      Shaw explicitly taught the advantages of a system that connects only intermittently, noting that communication costs and hardware requirements are "substantially lower than for 'fully-connected' on-line service." A POSITA would therefore have been motivated to modify Angles' system to incorporate Shaw's method of locally recording usage data and periodically uploading it in batches. This would improve system performance, reduce costs, and increase reliability by avoiding the need for a continuous network connection, which was a well-understood design goal at the time.

    • Expectation of Success: Petitioner argued that a POSITA would have had a reasonable expectation of success in making this combination. The proposed modification involved applying known computer storage and networking techniques (local data logging and batch transfers), as taught by Shaw, to the analogous advertising system of Angles. The result would have been the predictable improvement of making the advertising system functional and efficient over intermittent network connections, without changing the fundamental functions of either system.

4. Key Claim Construction Positions

  • "associating": Petitioner argued this term should be construed as "to connect, join together, or combine, either directly or indirectly." This construction was asserted to be consistent with the claim language which recites "associating said computer usage information with said demographic information using said unique identifier," contemplating an indirect connection via the identifier.
  • "periodically": Petitioner proposed construing this term to mean "recurring from time to time." This interpretation was argued to be consistent with the specification and broad enough to encompass both regular and irregular time intervals, as taught by the prior art for requesting ads or uploading user data.

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.