PTAB

IPR2014-00744

Google Inc v. Be Technology LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method for Providing Demographically Targeted Advertising
  • Brief Description: The ’314 patent relates to a method and system for delivering targeted advertising over a computer network. The invention involves a server providing downloadable software to a user's computer, which then acquires demographic information from the user, records their computer usage, and presents advertising content selected by the server based on that combined data.

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 the combined teachings of Angles and Shaw rendered the challenged claims obvious. Angles was asserted to disclose the majority of limitations in independent claim 11, including a client-server system for targeted advertising. In Angles, a server acquires demographic information from a user, assigns a unique "consumer member code" that is stored locally (e.g., in a cookie), selects customized ads based on the user's profile, and downloads a "consumer control module" (software plug-in) to the user's browser to display the ads. Petitioner contended that Angles did not explicitly teach locally recording usage information for later batch upload, instead transmitting it in real-time. To bridge this gap, Petitioner relied on Shaw, which described an email and advertising system designed for users with intermittent internet connections. Shaw expressly taught a client program that records user activity and ad interaction data in local files (an "event log file" and "advertisements statistics file") and periodically communicates with a server to upload this usage data and download new advertisements in batches. This teaching from Shaw was mapped directly to the claim limitations requiring the software to "record[] computer usage information" and the server to "periodically acquir[e]" that information. Petitioner further mapped elements of dependent claims, such as using a global computer network (the Internet) and storing the unique identifier in a cookie, directly to express disclosures in Angles.
    • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would have been motivated to integrate Shaw's periodic, batch-mode communication method into the Angles advertising system. Both references belong to the analogous art of internet advertising. A POSITA would combine them to solve the well-understood problem of slow, unreliable, and costly internet connections that were common in the mid-1990s—a problem the ’314 patent itself acknowledged. Shaw explicitly detailed the advantages of its approach, stating that a system connecting only periodically to transfer data has "substantially lower" communication costs and hardware requirements than a "fully-connected" service. Therefore, modifying the Angles system to locally store usage data and upload it periodically, as taught by Shaw, was a known solution to a known problem, representing a simple combination of prior art elements to achieve the predictable result of a more efficient and cost-effective advertising system.
    • Expectation of Success: A POSITA would have possessed the requisite skill to implement this combination with a high expectation of success. The integration involved applying known data storage and communication techniques (local file storage and periodic client-server connections from Shaw) to a standard advertising framework (Angles), which constituted a straightforward engineering choice rather than an inventive step.

4. Key Claim Construction Positions

  • "associating": Petitioner proposed this term be construed as "to connect or join together, combine," and clarified that the term encompasses both direct and indirect association. This construction was argued as critical because the prior art, like the patent, described using a unique identifier (e.g., a "consumer member code") to link two separate data sets—user demographics and computer usage information—which are stored in a database. This linkage via a common identifier represents an indirect association that falls within the proper scope of the claim term.
  • "periodically": Petitioner argued this term should be construed to mean "recurring from time to time, at regular or irregular time intervals." This construction was based on the ordinary meaning of the word and contextual support from the specification, which used less rigid phrases like "from time to time" and "as needs to be replaced." This broader construction was important for mapping Shaw, which described a client connecting to a server as needed (e.g., when a user checks email) rather than at strictly fixed, regular intervals.

5. Relief Requested

  • Petitioner requests the institution of an inter partes review and the cancellation of claims 11-13, 15, 18, and 20 of Patent 6,628,314 as unpatentable.