PTAB

IPR2014-00738

Google Inc v. Be Technology LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method and system for demographically-targeted advertising
  • Brief Description: The ’314 patent discloses a method for delivering targeted advertising to a computer user. The system involves providing a server, acquiring demographic and computer usage information from the user, associating that information with a unique identifier in a database, and then selecting and transferring advertising content to the user based on that associated information.

3. Grounds for Unpatentability

Ground 1: Anticipation by Guyot - Claims 11-14 and 16-19 are anticipated by Guyot under 35 U.S.C. §102.

  • Prior Art Relied Upon: Guyot (Patent 6,119,098).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Guyot disclosed every limitation of independent claim 11 and its asserted dependent claims. Guyot described a client-server system for delivering targeted advertising where a client application gathers demographic information (e.g., from a user questionnaire) and computer usage information (e.g., mouse movement, sites visited). This information was sent to a server, associated with a "unique proprietary identifier" for each user in a database, and used to select and download targeted ads to the client application for display. Petitioner contended this process directly mapped to the steps recited in claim 11, including providing a server, acquiring demographic and usage information, providing software to the user, associating a unique identifier with the information in a database, and selecting/transferring ads based on that information. The dependent claims were also allegedly met, as Guyot described using the Internet (claim 13), using the identifier to distinguish software copies (claim 14), and requiring user logins (claims 16-17).

Ground 2: Obviousness over Guyot and Robinson - Claim 15 is obvious over Guyot in view of Robinson under 35 U.S.C. §103.

  • Prior Art Relied Upon: Guyot (Patent 6,119,098) and Robinson (Patent 5,918,014).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Guyot taught all elements of claim 11, upon which claim 15 depends. Claim 15 added the specific limitation that the step of "providing a unique identifier" further comprises "storing a cookie on the computer." While Guyot disclosed using a "unique proprietary identifier" stored locally, it did not explicitly name cookies. Robinson, however, expressly taught using cookies to track user activity for targeted advertising systems.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would have been motivated to implement Guyot’s unique identifier using the well-known cookie technology disclosed by Robinson. By the ’314 patent’s priority date, cookies were a widely accepted and common method for uniquely identifying a user to a server, particularly in the context of web browsers, which Guyot’s system could utilize.
    • Expectation of Success: A POSITA would have had a high expectation of success because using cookies for user identification was a conventional, proven, and straightforward technique at the time.

Ground 3: Obviousness over Guyot and RFC 1635 - Claims 20-22 are obvious over Guyot in view of RFC 1635 under §103.

  • Prior Art Relied Upon: Guyot (Patent 6,119,098) and RFC 1635 ("How to Use Anonymous FTP").
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued Guyot disclosed the base method of claim 11. Claim 20 added a specific sequence of steps: acquiring demographic information occurs "in response to a request from the user to download" the software. Guyot disclosed both acquiring user information and downloading software, but did not mandate this specific order. RFC 1635, which described the conventional anonymous File Transfer Protocol (FTP), disclosed a standard process where a user provides information (e.g., an email address) before being granted download access.
    • Motivation to Combine: A POSITA would have found it an obvious design choice to implement the user registration and software download steps of Guyot in the conventional sequence shown in protocols like anonymous FTP. Requiring user information before providing a download was a common and logical workflow for client-server systems to ensure data was collected.
    • Expectation of Success: The combination was a simple ordering of known steps, representing a choice among a finite number of predictable solutions. A POSITA would have expected this sequence to work as intended. This logic was extended to claims 21 and 22, which added minor variations such as requiring a specific element of information and permitting anonymous access, both of which were described as obvious design choices informed by conventional practices like those in RFC 1635.

4. Key Claim Construction Positions

  • "demographic information": Petitioner argued for the broadest reasonable construction of this term to mean "information collected about end user characteristics that does not identify the end user." This construction was based on the specification's distinction between demographic data (like time zone or hardware) and personally identifying information. This interpretation was critical for mapping prior art that collected general, non-identifying user data to the claims.

5. Arguments Regarding Discretionary Denial

  • Petitioner filed this IPR as a "me-too" petition and concurrently filed a Motion for Joinder with an already-instituted IPR proceeding (IPR2014-00039). The petition explicitly stated that it asserted the "exact same grounds of unpatentability that the Board has already instituted" in the earlier case. This procedural posture was presented as a primary reason for the Board to institute this follow-on petition, as the Board had already found a reasonable likelihood of success on the same arguments and evidence.

6. Relief Requested

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