Takeaway: A prior art reference does not have to disclose the exact terminology used in the claim.

In its Final Written Decision, the Board found that all of the challenged claims, claims 11-22, of the ’314 Patent are unpatentable and denied Patent Owner’s Motion to Amend. The ’314 Patent relates to user interfaces that provide advertising obtained over a global computer network.

The Board began with claim construction, stating that the claims are interpreted using the broadest reasonable interpretation in light of the specification. First, the Board reviewed the term “demographic information,” adopting Petitioner’s construction that was agreed to by the Patent Owner. The Board then examined the term “download request by the user,” agreeing with Petitioner that the term does not require the intent of the user. Then, the Board reviewed the term “providing a unique identifier for the computer,” again refusing to accept Patent Owner’s construction.

The Board then reviewed the first ground of unpatentability – anticipation of claims 11-14 and 16-19 by Guyot. Patent Owner argued that Guyot fails to disclose a “method of providing demographically-targeted advertising to a computer user,” “transferring a copy of the software ‘in response to a download request by the user,’” and “providing a unique identifier to the computer.” As to the first term, the Board was not persuaded by Patent Owner’s argument that Guyot does not use the word “demographic” because a prior art reference need not disclose the exact terminology used in the claim. Further, the Board was persuaded by Petitioner’s expert’s testimony. Regarding the other limitations, the Board found that under the Board’s construction of “request by the user” and “providing a unique identifier for the computer,” Guyot discloses this limitation.

The Board then turned to the next ground of unpatentability – obviousness of claim 15 over Guyot and Robinson. Claim 15 depends on claim 11 and Patent Owner argued that claim 15 was not unpatentable for the same reasons as claim 11 above. Therefore, the Board found that claim 15 is unpatentable.

The Board then reviewed the final ground of unpatentability – obviousness of claims 20-22 over Guyot and RFC 1635. Patent Owner argued that Petitioner did not provide a motivation to combine and that a person of ordinary skill in the art would not have considered the FTP protocol when looking for a solution to obtaining answers to a user questionnaire. The Board disagreed, finding Patent Owner’s argument unpersuasive because it was merely a conclusory assertion.

Patent Owner also argued that the PTO does not have substantive rule-making authority, therefore, it cannot employ a broadest reasonable construction standard. The Board disagreed and found that the Federal Circuit has endorsed the broadest reasonable interpretation standard.

Finally, the Board analyzed Patent Owner’s proposed substitute claims, stating that the burden of proof is on Patent Owner to establish that the proposed amendments are patentable. The Board found that Patent Owner did not provide claim constructions for how the new terms are to be construed. The Board further held that Patent Owner failed to provide written description support for the substitute claims. Therefore, the Board denied the Motion to Amend.

Microsoft Corporation and Google, Inc. v. B.E. Technology, LLC, IPR2014-00039; IPR2014-00738

Paper 43: Final Written Decision

Dated: March 31, 2015

Patent 6,628,314

Before: Sally C. Medley, Kalyan K. Deshpande, and Lynne E. Pettigrew

Written by: Deshpande

Related Proceedings: B.E. Technology, L.L.C. v. Microsoft Corp., No. 2:12-cv-02829-JPM (W.D. Tenn.); B.E. Technology, L.L.C. v. Google, Inc., No. 2:12-cv-2830-JPM (W.D. Tenn.); IPR2014-00038; IPR2014-00052; IPR2014-00053; IPR2014-00698; IPR2014-00699; IPR2014-00738; IPR2014-00743; IPR2014-00744