[00:00:14] Speaker 00:
Next case is also BET Technology versus Facebook, Google, and AL-15.

[00:00:22] Speaker 00:
This is the 1829 case.

[00:00:25] Speaker 00:
Mr. Freitas again.

[00:00:27] Speaker 00:
And we'll be focusing on Shaw and other references.

[00:00:33] Speaker 01:
Yes, Your Honor.

[00:00:34] Speaker 01:
Thank you.

[00:00:35] Speaker 01:
May I please report?

[00:00:37] Speaker 01:
I'd like to begin this argument with a focus on the disclosure regarding rail time.

[00:00:44] Speaker 01:
In column 16 of the 314 patent, all this information is in the original application.

[00:00:53] Speaker 01:
There's a clear discussion of how it all works.

[00:00:57] Speaker 01:
It begins by saying, as will be appreciated by those skilled in the art, the reactive targeting provided by client software application 10 is handled in real time rather than

[00:01:11] Speaker 01:
simply as a part of building a set of advertisements for later display to the user.

[00:01:17] Speaker 01:
So there's a clear distinction there between real time and building ads for later.

[00:01:23] Speaker 01:
It goes on.

[00:01:25] Speaker 01:
This permits the display of advertising that is relevant to what the user is doing at any particular time.

[00:01:32] Speaker 01:
The key concept involved in real time, what the user is doing at the particular time.

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It goes on with an explanation regarding stocks.

[00:01:44] Speaker 01:
Then, moving on, there's a very, very clear disclosure of grabbing an ad from the internet, not just in local storage.

[00:01:54] Speaker 01:
On line 40, excuse me, starting on 38, furthermore, for user computers that enjoy a full-time connection to the internet,

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The reactive targeting can be used to access a specific advertisement over the internet rather than from a pre-stored banner storage.

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And that thought is followed up on a few lines down, line 45.

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Alternatively, the user's actions that can be used to select an advertisement via Banner Database 130 can be sent to ADM Server 22

[00:02:33] Speaker 01:
or some other advertising server as posted form data with the server using the data to select and download an appropriate advertisement.

[00:02:44] Speaker 01:
This permits real-time targeting of advertising while expanding the available pool of advertisements without having to previously download.

[00:02:54] Speaker 01:
So it's quite clear what's going on there in the real time.

[00:02:59] Speaker 01:
The point we are criticized on by the board

[00:03:01] Speaker 01:
And this is the only point that was made, was that it wasn't clear whether it was the selection or the transfer that had to occur in real time.

[00:03:12] Speaker 01:
But what's there in the disclosure?

[00:03:15] Speaker 01:
Well, first of all, obviously, the display is there.

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It's there in black and white.

[00:03:20] Speaker 01:
The selection and download are also spelled out in black and white.

[00:03:25] Speaker 01:
But there's another way to think about this.

[00:03:28] Speaker 01:
Obviously, the point is to display to the user something that relates to what he or she is doing at that time.

[00:03:38] Speaker 01:
Well, in order to do that, there obviously has to be a selection.

[00:03:44] Speaker 01:
And if, as in the column 16 disclosure, the ad is being retrieved from the internet, well, it's being selected for transfer.

[00:03:54] Speaker 01:
And this is all occurring in real time, and it's quite clear.

[00:03:59] Speaker 01:
And that's where we were criticized.

[00:04:01] Speaker 01:
We didn't say whether it was selection or transfer.

[00:04:05] Speaker 01:
Well, there's no need to say that.

[00:04:06] Speaker 01:
It's spelled out quite clearly in our written description support.

[00:04:11] Speaker 01:
But let me go back to the issue about the unique identifier and the unique way that that's addressed in the Facebook case.

[00:04:21] Speaker 01:
Interestingly, what Facebook has done is criticize us

[00:04:26] Speaker 01:
for not looking at the words set over set computer network when we focused on set from the computer.

[00:04:35] Speaker 01:
Well, what we tried to explain in our reply brief, that's common ground.

[00:04:40] Speaker 01:
The unique identifier must identify information sent over the computer network.

[00:04:46] Speaker 01:
We agree with Facebook.

[00:04:49] Speaker 01:
But where we apparently part company is whether the rest of the claim language is just as important.

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And we say it is.

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We say those are words of limitation.

[00:04:59] Speaker 01:
They apparently disagree.

[00:05:02] Speaker 01:
With respect to Shaw, the Shaw email address, again, is a user identifier.

[00:05:12] Speaker 01:
It does not identify what comes from the computer.

[00:05:15] Speaker 01:
It identifies what comes from the user.

[00:05:18] Speaker 01:
And like the other items that have been argued and found by the board to meet this limitation,

[00:05:25] Speaker 01:
The Shaw email address also fails.

[00:05:29] Speaker 01:
Interestingly, in its decision, the board said Claim 11 only requires that information is identified by the identifier and said that we did not provide persuasive evidence that the information must be the computer itself.

[00:05:50] Speaker 01:
We sure didn't, because we never argued that.

[00:05:53] Speaker 01:
That is the straw person that the board took aim at.

[00:05:59] Speaker 01:
The board said that we didn't prove that the information must be the computer.

[00:06:03] Speaker 01:
We never said anything remotely like that.

[00:06:07] Speaker 02:
And then... So can you, you've just described what your argument is not.

[00:06:14] Speaker 02:
Can you repeat what your argument is and then tell me what the daylight is between your argument versus the argument that is not your argument?

[00:06:21] Speaker 01:
Yes, your honor.

[00:06:22] Speaker 01:
Our argument, very simply, is that as the language said, and as all agree, it is information that is being identified.

[00:06:31] Speaker 01:
Which information is it?

[00:06:33] Speaker 01:
It is the information set over said computer network from the computer is the key point of dispute to said server.

[00:06:42] Speaker 01:
The from the computer point does not, in our mind, signify that the identifier must, per se, identify the computer.

[00:06:52] Speaker 01:
And there are two examples in column 17.

[00:06:54] Speaker 02:
So then what is it?

[00:06:57] Speaker 01:
It must show, it must identify the information that comes from the computer, that is sent from the computer.

[00:07:06] Speaker 01:
And there are two examples in column 17 in the patent of how that could be the case.

[00:07:12] Speaker 01:
And by the way, there's no doubt that throughout the patent there is a reference to user IDs.

[00:07:19] Speaker 01:
That's true.

[00:07:20] Speaker 01:
But in column 17, where these two key disclosures are made, they're talking about a user ID, but they're talking about a user ID, first, being provided to the particular piece of software that's on the computer, and second, using a cookie.

[00:07:41] Speaker 01:
Now in these examples, Judge Chen, what we see is something that goes beyond merely identifying a user.

[00:07:49] Speaker 01:
The user ID, the unique identifier, whatever type of identifier it is, when it is provided to the software on a particular computer, it doesn't say Joe's computer or Sally's computer.

[00:08:05] Speaker 01:
What it says is, all right, this identifier identifies this piece of software.

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That piece of software resides on a specific computer.

[00:08:16] Speaker 01:
Therefore, that identifier,

[00:08:19] Speaker 01:
is capable of meeting the limitation.

[00:08:22] Speaker 01:
The Shaw email address doesn't have that characteristic.

[00:08:26] Speaker 01:
It can't do that.

[00:08:28] Speaker 01:
All it does is say this information came from that user who has that email address.

[00:08:36] Speaker 01:
The same thing with the cookie.

[00:08:39] Speaker 01:
The cookie is provided to the computer.

[00:08:43] Speaker 01:
When the ID is associated with the cookie,

[00:08:47] Speaker 01:
The information that goes with the cookie is uniquely identified as coming from that computer, although it isn't per se an identifier of the computer.

[00:09:02] Speaker 01:
But it serves the function.

[00:09:03] Speaker 01:
It serves the purpose of the limitation, because it now does identify what comes from the computer.

[00:09:12] Speaker 02:
I believe this is the appeal where your opposing counsel

[00:09:16] Speaker 02:
is arguing that your claim as proposed to be amended doesn't have an inventive concept and therefore is no good under Section 101.

[00:09:26] Speaker 02:
Yes, Your Honor.

[00:09:27] Speaker 02:
What's your response to that?

[00:09:28] Speaker 01:
Our response to that is that as the art was developing at this time, a lot of techniques were known.

[00:09:37] Speaker 01:
Certainly the idea of using demographic information in the abstract, that's something that was well known.

[00:09:44] Speaker 01:
But as the internet was growing,

[00:09:46] Speaker 01:
There was something that was very different that was coming around.

[00:09:49] Speaker 01:
And that was the ability to use this reactive targeting and to do so in real time.

[00:09:54] Speaker 01:
This is not something that ties back to anything that could have happened before.

[00:09:59] Speaker 01:
It's very unique and specific to what was going on as the internet was developing.

[00:10:05] Speaker 02:
So your inventive concept is to display ads in real time based on what the user happens to be browsing at that time?

[00:10:15] Speaker 01:
It is an inventive concept.

[00:10:17] Speaker 01:
It is the use of computer usage information for that purpose.

[00:10:23] Speaker 01:
The use of the computer usage information in the targeting.

[00:10:32] Speaker 01:
But beyond that,

[00:10:34] Speaker 01:
The rest of the 314 patent is addressing other new ideas involving the use of the new technology that was now available.

[00:10:44] Speaker 01:
And the art that's been cited doesn't demonstrate that the inventive steps that are in claim 11 were old.

[00:10:59] Speaker 01:
But I have another point to make about the specific reference to W3C.

[00:11:09] Speaker 01:
Facebook seeks, in some sense, to combine the identifier of Shaw.

[00:11:15] Speaker 01:
I'm sorry.

[00:11:15] Speaker 02:
Don't we have an opinion that's targeted advertising is an abstract idea?

[00:11:23] Speaker 01:
I don't remember that one.

[00:11:24] Speaker 01:
But in general, Your Honor, I think it is.

[00:11:27] Speaker 02:
OK.

[00:11:29] Speaker 01:
So in the abstract, targeted advertising, the idea of targeting advertising, yes, that's abstract.

[00:11:37] Speaker 01:
But we go beyond that.

[00:11:40] Speaker 01:
We use specific features to do specific kinds of targeting.

[00:11:46] Speaker 01:
And these are tied to the new developments that were then available in the internet.

[00:11:52] Speaker 00:
You're into your rebuttal time, but you wanted to make a point about W3C.

[00:11:57] Speaker 01:
Yes, I would like to make the one point about W3C before I sit down.

[00:12:04] Speaker 01:
On page 8 of 13 of the W3C reference, there is a clear distinction between the identifier as claimed in claim 11 and the identifier as used in W3C.

[00:12:22] Speaker 01:
What it says is that identity is often tied to a user's client machine through site-specific cookies.

[00:12:31] Speaker 01:
This creates an unnecessary and inconvenient dependency since users frequently move from machine to machine.

[00:12:41] Speaker 01:
And then it offers some solutions.

[00:12:43] Speaker 01:
And what the W3C proposal does, among other things,

[00:12:48] Speaker 01:
is it removes that cookie dependency, which creates the machine dependency, which matches up with claim 11.

[00:12:55] Speaker 01:
So the Shaw email address is not the claim 11 identifier.

[00:13:02] Speaker 01:
And the problem is not solved by W3C.

[00:13:08] Speaker 00:
Ms.

[00:13:08] Speaker 00:
Keefe.

[00:13:11] Speaker 03:
Thank you, Your Honors.

[00:13:13] Speaker 03:
I'd like to start where Mr. Freitas took off, and he just said that what we have to look for are somehow now cookies, even though they are nowhere in the claims themselves.

[00:13:21] Speaker 03:
But luckily, we have a record in which there is a combination where none of the items are disputed.

[00:13:28] Speaker 03:
We haven't heard about that today because they have no good answer for it.

[00:13:32] Speaker 03:
Engels plus Shaw.

[00:13:33] Speaker 03:
It's undisputed that the Engels plus Shaw combination includes all of the elements of the claims.

[00:13:39] Speaker 03:
And in fact, the Engels reference specifically talks about using cookies with the identifier in order to send information to and from the computer.

[00:13:51] Speaker 03:
The only argument that patent owner has made of any form versus the Engels and Shaw combination is somehow that it wouldn't be the motivation to combine didn't exist.

[00:14:05] Speaker 03:
But the problem is the board actually pointed out that there was a very specific reason for combining Engels and Shaw.

[00:14:12] Speaker 03:
And that would be, and this is at A22, that the combination would result in reduced costs and increased efficiencies.

[00:14:21] Speaker 03:
And they come to this conclusion right after citing two portions of the petition which indicated that the combination of Engels and Shaw would result in the claimed invention.

[00:14:35] Speaker 03:
42 of the petition, which is at A1623, specifically column 12 of the patent is pointed out as supporting that it would be a good idea in order to increase efficiency to store the advertisement locally so that you could access it more quickly.

[00:14:56] Speaker 03:
Column 12 of Engels specifically contemplates

[00:15:02] Speaker 03:
that you would want to store information locally in order to access it more quickly.

[00:15:06] Speaker 03:
And that's at A1701.

[00:15:09] Speaker 03:
Therefore, the examiner had sufficient evidence in the record to easily conclude that the combination was correct.

[00:15:16] Speaker 03:
But here we have an even more interesting scenario in which BE itself has conceded that the combination is proper because of the increase in speed.

[00:15:29] Speaker 03:
So here, in the record itself, BE concedes

[00:15:32] Speaker 03:
that it would be faster to be able to access local storage of advertisement.

[00:15:38] Speaker 03:
They do so at A2510, which is in their brief down below, and they also do so in their brief here above at pages 35 through 36, where they indicate that storage of advertisements on the advertising storage medium on the consumer computer would provide for faster access to the stored advertisements, thereby

[00:16:00] Speaker 03:
providing the proper motivation for someone using Engels to look to Shaw to see how that might be done.

[00:16:06] Speaker 03:
Their only argument is that wouldn't dispense with the need for commands from the advertising computer or eliminate the need for online communication, but that's not required for there to be a motivation to combine, solely that you would look to the combination in order to find something and some reason to combine the references.

[00:16:22] Speaker 03:
And here, that's absolutely true, and there's no argument that there is not a unique identifier in the Engels and Shaw combination.

[00:16:31] Speaker 03:
With respect to Your Honor's question regarding the 101, I think it's very important to point out that early in the argument today, Mr. Freitas indicated

[00:16:42] Speaker 03:
that, in fact, the proposed amendment includes broad claim language.

[00:16:46] Speaker 03:
You can use it in any way and in any combination you want.

[00:16:49] Speaker 03:
So saying that this is, in fact, very, very broad.

[00:16:52] Speaker 03:
He then concedes that, in fact, targeted advertising is generic and says that the only thing that might be somehow new is the idea of real time.

[00:17:03] Speaker 03:
However, in terms of real life analogies, real time targeting of advertisements are used

[00:17:10] Speaker 03:
have been used for centuries, including, for example, walking around Times Square noticing that someone has kids with them and giving them, in real time, a pamphlet for The Lion King instead of for some more serious play.

[00:17:22] Speaker 03:
That's a targeted advertising happening in real time.

[00:17:25] Speaker 03:
But the patent itself also gives us the possibility of real time access to information.

[00:17:33] Speaker 03:
If we look to column three, which is at 1118,

[00:17:39] Speaker 03:
In describing the bland patent, they specifically indicate that information may be given periodically, and this is at line six, or in response to a specific request by the servers.

[00:17:52] Speaker 03:
That's something that could be happening in real time.

[00:17:55] Speaker 03:
So there's nothing saying that real time wasn't actually in the priority itself, just that perhaps it wasn't used when you use the combination.

[00:18:04] Speaker 03:
But the rest of the specification in columns one, two, and three

[00:18:09] Speaker 03:
fully embrace the notion that targeted advertising based on usage data, based on demographics, is in fact generic and is old.

[00:18:17] Speaker 03:
Your honors do actually have recently had a case directly in front of you.

[00:18:21] Speaker 03:
Are you equating generic with old and abstract?

[00:18:24] Speaker 03:
They're not necessarily the same thing.

[00:18:25] Speaker 03:
They can be the same thing.

[00:18:27] Speaker 03:
Here, the generic idea is simply that of targeting information based on demographics or targeting information based on usage data.

[00:18:34] Speaker 03:
And the question is whether that would be abstract.

[00:18:36] Speaker 03:
And I think that is absolutely abstract.

[00:18:38] Speaker 03:
In fact, Your Honor's recently had a case in front of you.

[00:18:41] Speaker 03:
Morse versus Facebook case, where the exact issue was targeting advertisements based on demographics.

[00:18:48] Speaker 03:
And in that case, there was a Rule 36 affirmance of a 101 rejection.

[00:18:52] Speaker 03:
Your Honors also recently had in front of you the Baskin case, where Your Honors found that the filtering of information is, in fact, generic.

[00:19:01] Speaker 03:
In that case, you were filtering information the opposite direction.

[00:19:04] Speaker 03:
You were trying to find out what not to serve instead of what to serve.

[00:19:07] Speaker 03:
But the fact remains that filtering information from a server down to a user isn't itself generic.

[00:19:14] Speaker 03:
Those two very recent cases, I think, are on point for that point.

[00:19:18] Speaker 03:
And with that, your honors, unless you have any further questions, I think there is sufficient evidence to find that, in fact, the rejection of the original claims was proper over the combination

[00:19:29] Speaker 03:
of Engels and Shaw, and that the 101 rejection is also proper to sustain the rejection of the claim amendment.

[00:19:37] Speaker 03:
And under Rex Nord, since it is another ground that was fully briefed below, it's appropriate to use it here to sustain the rejection.

[00:19:45] Speaker 00:
Thank you, Your Honor.

[00:19:46] Speaker 00:
Thank you, Ms.

[00:19:46] Speaker 00:
Keefe.

[00:19:47] Speaker 00:
Mr. Freitas has two and a half minutes.

[00:19:53] Speaker 01:
I don't think Ms.

[00:19:53] Speaker 01:
Keefe is correct about the cookie playing a role in what the board did with Engels.

[00:19:59] Speaker 01:
I've just taken a quick look.

[00:20:00] Speaker 01:
I didn't remember the board relying on that.

[00:20:02] Speaker 01:
I don't see it in my review.

[00:20:05] Speaker 01:
What the board relied on, what the board cited was the consumer member code.

[00:20:11] Speaker 01:
It's also a user ID, not a claim 11 unique identifier.

[00:20:22] Speaker 01:
With respect to the idea of a motivation to combine, the evidence that was presented

[00:20:28] Speaker 01:
made it clear that these two systems are different.

[00:20:33] Speaker 01:
One way that Facebook attempted to equate them and to substantiate the idea of a motivation that combined was by saying that, well, it could be used with the internet.

[00:20:44] Speaker 01:
It didn't require a continuous, excuse me, it could be used with a dial-up.

[00:20:49] Speaker 01:
It didn't require a continuous connection.

[00:20:52] Speaker 01:
But it's quite clear in angles that

[00:20:55] Speaker 01:
What's going on is simply using those dial-ups as a portal to the internet.

[00:21:03] Speaker 01:
The other problem that infected everything the board did in the Facebook case is its reliance on the predictable results idea.

[00:21:15] Speaker 01:
What happened in a case where it's difficult to think about what the result might be?

[00:21:20] Speaker 01:
And Facebook never mentioned it, and the board never mentioned it.

[00:21:23] Speaker 01:
As a matter of fact,

[00:21:25] Speaker 01:
The predictable result idea was injected not even as a one-liner, but a half-liner by Facebook in the petition with no evidence, no explanation, and no support.

[00:21:37] Speaker 01:
And yet the board's conclusion is driven heavily, if not exclusively, by this predictable result idea.

[00:21:45] Speaker 01:
And where we end up when that occurs, when that concept is used as it was, is with the burden of proof being placed on the patent owner.

[00:21:54] Speaker 01:
That's what we see throughout the board's analysis.

[00:21:59] Speaker 01:
Patent owner didn't prove.

[00:22:00] Speaker 01:
Patent owner didn't persuade.

[00:22:03] Speaker 01:
So they take the half-line comment by Facebook that only a predictable result would apply.

[00:22:10] Speaker 01:
They say that BE didn't rebut that, and that's enough.

[00:22:14] Speaker 01:
They take features that aren't useful, that the expert testimony shows aren't useful, and they combine them.

[00:22:24] Speaker 01:
This is an example of classic hindsight, and it's nothing more.

[00:22:30] Speaker 00:
Thank you.

[00:22:30] Speaker 00:
Thank you, counsel.

[00:22:31] Speaker 00:
We'll take the case under advisement.