Google Inc v. Be Technology LLC

1. Case Identification

• Case #: IPR2014-00743
• Patent #: 6,628,314
• Filed: May 9, 2014
• Petitioner(s): Google Inc.
• Patent Owner(s): B.E. Technology, LLC
• Challenged Claims: 11-13, 15, 18, and 20

2. Patent Overview

• Title: Method of Demographically-Targeted Advertising
• Brief Description: The ’314 patent discloses a method and system for providing demographically-targeted advertising to a computer user. The system uses downloadable client-side software to collect user demographic and computer usage data, which is then used by a server to select and deliver relevant advertising content.

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 W3C Submission (a 1997 Microsoft submission to the World Wide Web Consortium titled "Privacy and Profiling on the Web").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Shaw, which discloses an electronic mail system that displays targeted advertisements, teaches the majority of the limitations in independent claim 11. Shaw’s system includes client software that a user downloads, which then collects user demographic data via a "member profile." This client software periodically communicates with a server system to upload the profile and usage statistics, and to download new, targeted advertisements based on that information. Petitioner asserted that the W3C Submission, a proposed standard for tracking and profiling users, supplies the remaining limitations. Specifically, the W3C Submission taught more advanced techniques for providing a unique identifier to a user (e.g., a User ID independent of any single website, which could be implemented via a cookie as recited in claim 15), associating that identifier with demographic data in a database using a standardized schema (the vCard standard), and recording computer usage information such as browsing history (as recited in claim 18) to build a richer user profile.
  • Motivation to Combine: The petition asserted a POSITA would combine Shaw with the teachings of the W3C Submission to improve the effectiveness of Shaw’s targeted advertising system. The W3C Submission was an internet standard proposal designed to facilitate the exchange of profile information across multiple websites. A POSITA would have been motivated to incorporate its standardized profiling and unique identifier methods into Shaw's system to create a richer, more complete, and cross-platform user profile. This would predictably result in more accurate and valuable ad targeting. For dependent claims, a POSITA would have been motivated to use a cookie (W3C Submission) to track web browsing (Shaw’s web browser embodiment) because it was a well-known method for gathering valuable user data to enhance advertising profiles.
  • Expectation of Success: Petitioner contended that a POSITA would have had a high expectation of success because the combination involved applying a known technique (the W3C Submission’s advanced profiling) to a similar system (Shaw’s advertising system) to yield predictable results. The integration involved nothing more than known computer storage and data transmission techniques.

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 asserted to be critical because the prior art systems link computer usage data with demographic data indirectly, using a unique identifier as the common link, rather than combining the data sets directly.
• "periodically": Petitioner proposed this term be construed as "recurring from time to time," which could encompass both regular and irregular intervals. This interpretation aligns with the teachings of Shaw, where the client software connects with the server "as needs to be replaced" or when the user initiates a connection, rather than at strictly fixed intervals.
• Petitioner noted that the Board, in a decision to institute a related case (IPR2014-00052), had already adopted these same constructions.

5. Arguments Regarding Discretionary Denial

• This petition was filed with a Motion for Joinder to a previously instituted IPR, IPR2014-00052, asserting the exact same grounds of unpatentability. Petitioner argued that because the petition was accompanied by a motion for joinder, the one-year time limitation for filing a petition under 35 U.S.C. §315(b) did not apply, and therefore the petition should not be denied on timeliness grounds.

6. Relief Requested

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