BlackBerry Limited

Patent Trials and Appeals Board

Dec 1, 2020

IPR2019-00940 (P.T.A.B. Dec. 1, 2020)

Trials@uspto.gov Paper 50
571-272-7822 Date: December 1, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

FACEBOOK, INC., INSTAGRAM, LLC, and WHATSAPP INC.,
Petitioner,

v.

BLACKBERRY LIMITED,
Patent Owner.
____________

IPR2019-00940
Patent 8,676,929 B2
____________

Before MIRIAM L. QUINN, GREGG I. ANDERSON, and
ROBERT L. KINDER, Administrative Patent Judges.

KINDER, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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Facebook, Inc., Instagram, LLC, and WhatsApp Inc. (collectively,
“Petitioner”) filed a Petition pursuant to 35 U.S.C. §§ 311–319 to institute
an inter partes review of claims 1, 5, 8–10, 13, 16 (“the challenged claims”)
of U.S. Patent No. 8,676,929 B2, issued on March 18, 2014 (Ex. 1001, “the
’929 patent”). Paper 2 (“Pet.”). BlackBerry Ltd. (“Patent Owner”) filed a
Preliminary Response. Paper 8.
We instituted inter partes review of the challenged claims pursuant to
35 U.S.C. § 314. Paper 13 (“Dec.”). Subsequent to our institution of
review, Patent Owner disclaimed claims 5, 8, and 13 of the ’929 patent.
Ex. 2003 (Disclaimer in Patent Under 37 C.F.R. § 1.321(a) signed Dec. 18,
2019). This Final Decision does not address the claims that were
disclaimed.
During the trial, Blackberry filed a Patent Owner Response (Paper 26,
“PO Resp.”), and Petitioner filed a Reply (Paper 35, “Pet. Reply”). Patent
Owner thereafter filed a Sur-reply (Paper 47, “Sur-reply”). An oral hearing
was conducted on September 3, 2020. Paper 49 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons discussed below, Petitioner has shown by a preponderance
of the evidence that claims 1, 9, 10, and 16 of the ’929 patent are
unpatentable.
I. BACKGROUND
A. The ʼ929 Patent (Ex. 1001)
The ʼ929 patent is directed to a “System and Method for Pushing
Information to a Mobile Device.” Ex. 1001, code (54). The ’929 patent
claims priority through a series of continuation applications to provisional
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application No. 60/307,265, filed on July 23, 2001. Id. at codes (63) and
(60). The “invention relates to pushing information to a mobile handheld
communication device,” through the use of “an information source, a
wireless network, and a proxy content server.” Id. at 1:22–28, 51–53.
The Abstract describes detecting “[a] triggering event,” such that
“[w]hen the information relevant to the detected triggering event comprises
content information, a meta tag is inserted to the content information.” Id. at
code (57). Further, “[t]he meta tag relates to display of specific one or more
advertisements with the content information,” and “[t]he content information
that includes the meta tag is transmitted to the mobile device.” Id.
The Specification describes storing information received from an
information source in a “proxy content server” that sorts the information into
a “plurality of channels based on pre-defined information categories.” Id. at
1:55–60. In addition, “the proxy content server . . . automatically transmits
information from a selected channel over the wireless network to the mobile
device.” Id. at 1:58–61. “Proxy Content Server 18 stores received
information 12 to a particular channel 21 based on user specific information
categories.” Id. at 4:33–35. These concepts are illustrated in Figure 8,
reproduced below:

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Figure 8 of the ’929 patent represents a flow diagram illustrating an
exemplary method of pushing information to a mobile device based on a
triggering event.
As depicted in Figure 8, information is pushed to the mobile device based on
a “triggering event.” One example of a triggering event is a timer firing,
controlled by the Proxy Content Server. Id. at 13:24–27. Examples of
significant time intervals that might trigger a timer are lunchtime,
suppertime, and other significant times of the day. Id. at 13:27–31. If a
triggering event is detected, Proxy Content Server 18 determines if any of
the information categories assigned to channel 21 are relevant to the
triggering event. Id. at 13:36–39. If the Proxy Content Server determines
that the triggering event is relevant to information in a channel, the Proxy
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Content Server then determines the type of information. Id. at 13:36–47. If
it is advertising information, it is passed on to the mobile device; if it is
content information, then meta tags are added. Id. at 13:47–51. The ’929
patent provides one example of meta tags as “embedded control sequences
that the Proxy Content Server 18 has inserted to indicate when advertising
should be inserted.” Id. at 8:32–34.
The Specification further describes how the Proxy Content Server
determines whether to insert meta tags describing advertising information in
the instance of content information. Id. at 11:66–12:16. “Once this insertion
[of the meta tags] is completed the data package is sent to the mobile device
. . . .” Id. This ensures “that the mobile device user has a consistent and
transparent experience of receiving both information content and advertising
content.” Id. at 3:1–4. On the mobile device, Channel Viewer and Selector
45 displays combined advertising and content information to the user. Id. at
8:29–31 (The Channel Viewer and Selector “presents the content
information 51A, 51B to the user and monitors the information for meta-tags
within the content.”), 8:44–47 (The Channel Viewer and Selector “uses the
advertising tag to retrieve the corresponding advertising information and
inserts it into the exact space indicated by the meta tag.”).

B. Illustrative Claim
Claim 1, reproduced below, is illustrative of the claims at issue:
1. A method for pushing information to a mobile device, the
method comprising:
detecting a triggering event comprising a time triggering event;
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determining, by a server, information relevant to the detected
triggering event from among information stored in one of a
plurality of memory location channels, wherein the information
is stored in the one of the plurality of memory location channels
based on a category of the information matching a pre-defined
category of the one of the plurality of memory location channels;
when the information relevant to the detected triggering event
comprises content information, inserting to the content
information, by the server, a meta tag for one or more
advertisements to be displayed with the content information,
wherein the meta tag identifies the one or more advertisements
and advertisement display requirements, and wherein the one or
more advertisements are selected based on the detected
triggering event; and
transmitting the content information that includes the meta tag to
the mobile device.
Ex. 1001, 14:11–31. While claim 1 covers a method for pushing
information to a mobile device, independent claim 9 (also challenged)
is directed to the server that pushes the information. Id. at 14:58–
15:10.

C. Related Proceedings
According to Patent Owner, the following matters are related
proceedings involving the ’929 patent or related patents. Paper 4.
i. BlackBerry Ltd. v. Snap, Inc., No. 2:18-cv-02693 (C.D. Cal.)
ii. BlackBerry Ltd. v. Facebook, Inc. et al., No. 2:18-cv-01844 (C.D.
Cal.), and related appeal, Blackberry Ltd. v. Facebook, Inc., Case No.
20-1256 (Fed. Cir.). Ex. 1039.
iii. BlackBerry Ltd. v. Twitter, Inc., No. 2:19-cv-1444 (C.D. Cal)
iv. Facebook, Inc. et al. v. BlackBerry Limited, IPR2019-00516
v. Facebook, Inc. et al. v. BlackBerry Limited, IPR2019-00528
vi. Facebook, Inc. et al. v. BlackBerry Limited, IPR2019-00706
vii. Facebook, Inc. et al. v. BlackBerry Limited, IPR2019-00787
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viii. Facebook, Inc. et al. v. BlackBerry Limited, IPR2019-00899
ix. Facebook, Inc. et al. v. BlackBerry Limited, IPR2019-00923
x. Facebook, Inc. et al. v. BlackBerry Limited, IPR2019-00924
xi. Facebook, Inc. et al., v. Blackberry Limited, IPR2019-00925
xii. Facebook, Inc. et al., v. Blackberry Limited, IPR2019-00941
xiii. Facebook, Inc. et al. v. BlackBerry Limited, IPR2019-00942
xiv. Snap, Inc. v. BlackBerry Limited, IPR2019-00829.

D. Evidence Relied Upon
Petitioner relies on the following references:
Langseth, US Patent No. 6,671,715 B1, issued Dec. 30, 2003 (Ex.
1003, “Langseth”);
Excerpts from Stephen Walther, Sams Teach Yourself E-Commerce
Programming with ASP in 21 Days (2000) (Ex. 1004, “Walther”);
Excerpts from Robbin Zeff et al., Advertising on the Internet (2nd ed.
1999) (Ex. 1005, “Zeff”);
Excerpts from Anthony T. Mann, Microsoft SQL Server 7 for
Dummies (1998) (Ex. 1006, “Mann”);
Gilhuly, WO 01/22669 A1, published Mar. 29, 2001 (Ex. 1019,
“Gilhuly”); and,
U.S. Patent No. 7,406,697 B2, filed Dec. 13, 2000, issued July 29,
2008 (Ex. 1020, “Laux”).
Petitioner also relies on Declarations of Sandeep Chatterjee, Ph.D.,
filed as Exhibits 1002 and 1041. Patent Owner relies on a Declaration of
Matthew B. Shoemake, Ph.D., filed as Exhibit 2004.

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E. Grounds Asserted
Petitioner challenges claims 1–5, 8–10, 13, and 16 are of the ʼ929
patent on the following grounds (Pet. 4):
Claims Challenged 35 U.S.C. § Reference(s)/Basis
1,1 5,2 8–10, 13, 16 § 103(a)3 Langseth, Walther, Zeff, Mann
1, 5, 8 § 103(a) Langseth, Walther, Zeff, Mann, Gilhuly
9, 10, 13, 16 § 103(a) Langseth, Walther, Zeff, Mann, Laux

F. Claim Construction
The parties propose claim constructions for a few claim terms and
agree upon the claim interpretation of other terms. See Pet. 9–12; PO Resp.
10–14. After considering the parties’ contentions and agreed constructions,
we determine it necessary to construe only the term “meta tag” for purposes
of this Final Decision.
1. Legal Standard
In an inter partes review for a petition filed on or after November 13,
2018, a claim “shall be construed using the same claim construction standard
that would be used to construe the claim in a civil action under 35 U.S.C.

1 At page 21 of the Petition, claim 2 is erroneously listed as being part of
this ground. The Petition does not have any analysis for claim 2, and
Petitioner admits that claim 2 is not part of this proceeding. Pet. Reply 23
n.5.
2 Claims 5, 8, and 13 are disclaimed. Ex. 2003.
3 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), took effect on March 16,
2013. Because the application from which the ’929 patent issued was filed
before that date, our citations to Title 35 are to its pre-AIA version.
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282(b).” 37 C.F.R. § 42.100(b) (2019). In applying this claim construction
standard, we are guided by the principle that the words of a claim “are
generally given their ordinary and customary meaning,” as understood by a
person of ordinary skill in the art in question at the time of the invention.
Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc)
(citation omitted). “In determining the meaning of the disputed claim
limitation, we look principally to the intrinsic evidence of record, examining
the claim language itself, the written description, and the prosecution
history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at
1312–17). Of course, “[t]here is a heavy presumption that claim terms are to
be given their ordinary and customary meaning.” Aylus Networks, Inc. v.
Apple Inc., 856 F.3d 1353, 1358 (Fed. Cir. 2017). “Properly viewed, the
‘ordinary meaning’ of a claim term is its meaning to the ordinary artisan
after reading the entire patent.” Id. (quoting Phillips, 415 F.3d at 1321).
2. “meta tag”
The parties dispute whether certain prior art references teach or
disclose a “meta tag” as claimed and we find it necessary to offer our views
of the meaning of this term. Notably, with some caveats, both parties seem
to agree that “meta tag” can at least mean “embedded control sequence
inserted to indicate when advertising should be inserted.” See Pet. 11; PO
Resp. 10.
Petitioner notes that it “will apply Patent Owner’s proposed
construction of an ‘embedded control sequence inserted to indicate when
advertising should be inserted’ for purposes of mapping the prior art to the
challenged claims.” Pet. 11; Tr. 8:8–9:18. Petitioner points to the
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Specification’s description of meta tags as “embedded control sequences that
Proxy Content Server 18 has inserted to indicate when advertising should be
inserted.” Pet. 11 (quoting Ex. 1001, 8:32–35) (emphases omitted).
“Petitioner agrees that the ‘’ tag in HTML would not qualify
as the ‘meta tag’ recited in the challenged claims, as by design, it could not
be used to carry out the claimed function of identifying an advertisement and
its display requirements.” Pet. 11–12; Ex. 1002 ¶¶ 103, 104, 106–108, n.7.
In fact, Dr. Chatterjee testifies that “I am not relying on an HTML
‘’ tag in my analysis.” Ex. 1002 ¶ 103, n.7. Dr. Chatterjee also
opines that “[a] person of ordinary skill in the art would have understood an
HTML tag for a banner advertisement to comprise a ‘meta tag.’” Ex. 1002
¶ 104. Petitioner further explains “other tags in HTML can certainly
perform these claimed functions. Nothing in the ’929 patent excludes the
use of other HTML tags to implement the claimed ‘meta tag.’” Pet. 12.
Patent Owner agrees generally that “meta tag” includes at least
“embedded control sequence inserted to indicate when advertising should be
inserted,” but Patent Owner further argues that meta tag should exclude all
“hidden, descriptive text within HTML code.” PO Resp. 10–11. Notably,
Patent Owner later contends that the HTML IMG tag disclosed in Walther
would be excluded under such a definition. Id. at 25–26.
Patent Owner relies primarily on reasoning from the district court’s
claim construction decision. Id. at 11–12; see generally Ex. 1017 (“Final
Ruling on Claim Construction”). The district court, however, chose not to
construe the term “meta tag.” Ex. 1017, 20 (“For the above stated reasons,
the term ‘meta tag for one or more advertisements to be displayed with the
content information’ is not construed.”). We determine that the district court
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found it unnecessary to construe “meta tag,” relying instead on “the claim
language itself,” and further the meaning of this term had no bearing on the
district court’s final adjudication. Ex. 1017, 20; see Tr. 16:18–17:19 (Board:
“With respect to the District Court’s claim construction for meta tag, did it
have any application to the District Court’s ultimate decision related to
Section 101.” Counsel for Petitioner: “No, . . . the Court ultimately
declined to consider to construe meta tag . . . the statement that they’re
relying on is not definitional . . . [a]nd ‘I don’t need to construe it because
the claims provide substantial guidance on what they require.’”).
Patent Owner points to the district court’s reasoning that the term
“meta tag” is normally used to refer to descriptive text within HTML code
that is hidden to the viewer of the page but readable by search engines. PO
Resp. 11. The district court determined that based on the Specification that
normal usage is not the same as how the term is used in the ’929 patent. Id.
(citing Ex. 1017, 19; Ex. 2004 ¶ 44). Patent Owner argues that “the District
Court held that ‘[t]he weight of the evidence . . . supports the conclusion that
the ’929 Patent does not use the term “meta tag” to mean hidden, descriptive
text within HTML code.’” Id. at 12 (citing Ex. 1017, 19; Ex. 2004 ¶¶ 46–
47). Patent Owner requests that the Board adopt the district court’s
“unambiguous determination that ‘the ’929 Patent does not use the term
“meta tag” to mean hidden, descriptive text within HTML code.’” Id. at 13
(emphases omitted).
In its Reply, Petitioner recognizes that “[m]ost of Patent Owner’s
arguments rest on claim construction arguments about ‘meta tag,’” but
Petitioner contends these arguments “derive no support from the claims,
specification, or prosecution history.” Pet. Reply 1. Petitioner reiterates that
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the term “meta tag” should not be construed to exclude “hidden, descriptive
text within HTML code.” Petitioner argues this is an inappropriate negative
limitation. Id. at 1–2; Tr. 15:1–7 (“Patent Owner is interpreting the District
Court’s construction to basically exclude any HTML tag. It would
essentially read HTML out of the patent.”). Petitioner contends that the
“sole basis for this negative limitation is a sentence from the district court’s
claim construction order that . . . was not intended to provide an express
construction.” Pet. Reply 2. Relying on MPEP § 2173.05, Petitioner argues
that a negative limitation must have a basis in the specification, yet Patent
Owner does not cite anything in the Specification to support its proposed
negative limitation, and Patent Owner fails to provide a single citation to
anything in the intrinsic record. Pet. Reply 2.
Petitioner examines in detail the district court’s analysis. Id. at 2–6.
Petitioner argues that “[t]he district court’s statement about ‘hidden,
descriptive text within HTML code,’ was plainly intended to resolve the
narrow question of whether the ‘meta tag’ of the ’929 patent was the same
thing as a ‘meta tag’ (i.e., ) in the context of HTML.” Id. at 4.
Petitioner argues that that district court’s “remark about ‘hidden, descriptive
text within HTML code’ was intended to resolve a particular factual dispute
about whether the ’929 patent used the term ‘meta tag’ consistent with its
common everyday usage.” Id. at 3; see also Tr. 12:13–13:18 (counsel for
Petitioner explaining why district court used phrase “hidden, descriptive
text” and arguing “[t]he reason the Court cited this discussion was it was
trying to say these HTML meta tags, they’re not the same thing as the meta
tags that are in the patent . . . because the meta tags in HTML, they don’t do
anything; they just provide this descriptive text,” but “meta tags in the
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patents, they have to at least do two things: they have to identify an ad and
specify a display requirement.”). Based on Petitioner’s arguments and
evidence, we agree the district court’s assessment was intended only to
resolve the narrow question of whether the claimed “meta tag” was the same
thing as a tag in the context of HTML. We do not agree that this
assessment was intended to exclude all HTML from the scope of the
invention.
We agree with Petitioner that the intrinsic record does not provide
support for Patent Owner’s proposed negative limitation. As Petitioner
asserts, we find the Specification contemplates that standard HTML may be
used to deliver information to users. Pet. Reply 6 (citing Ex. 1001, 10:36–
39); Tr. 18:1–15 (the ’929 patent “expressly contemplates that you can use
HTML to push out or to format the data that’s being sent out to the mobile
device” because the patent “specifically says ‘HTML’ or ‘WML.’”). The
Specification explains that the invention contemplates allowing information
pushed to a mobile device to be provided using HTML accessible through a
web browser. Ex. 1001, 10:36–39 (“enables the mobile device user to
access and review HTML or WML based web pages with the mobile
device”).
A “meta tag” at least encompasses “an embedded control sequence
inserted to indicate when advertising should be inserted.” The Specification
is clear that at least one embodiment of “[m]eta tags are embedded control
sequences that Proxy Content Server 18 has inserted to indicate when
advertising should be inserted.” Ex. 1001, 8:32–35. We find persuasive Dr.
Chatterjee’s testimony that “while the statement from the specification at
8:32-35 may not provide an express or precise definition of ‘meta tag,’ it
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would have provided a person of ordinary skill at least one example of
something that would qualify as a ‘meta tag’ as claimed.” Ex. 1002 ¶ 106.
Further, we find persuasive Dr. Chatterjee’s explanation as to the differences
between a “meta tag” as claimed, and a “” tag. Id. ¶¶ 103, 104,
106–108, n.7. A “” tag in the HTML context provides
descriptive information about an HTML document, and is hidden, as it is not
displayed when the HTML document is viewed in a web browser. Id. ¶¶
103, 104, 106–108, n.7; see also Tr. 13:24–14:13 (“we’ve made the
argument that an HTML meta tag would not meet that construction without
even a negative limitation. It just would not meet the construction because
it’s not capable -- it has no effect on the display of the page whatsoever,
whereas the meta tag in the patent has to affect . . . identify the ad and
specify the display requirements”).
We agree with the district court that “the claims already include
meaningful requirements that inform the meaning of the term ‘meta tag,’”
such as requiring that the “meta tag identify ‘advertisement display
requirements.’” Ex. 1017, 20. However, we further determine that the term
“meta tag” at least encompasses “an embedded control sequence inserted to
indicate when advertising should be inserted,” as explained above.
Although the claimed “meta tag” is not commensurate in scope with a
tag, we find no basis to exclude all hidden, descriptive text within
HTML code from the scope of the claimed invention.
Although not presented as a claim construction issue, Patent Owner
further argues that the term “meta tag” also requires information specifying
timing or geographical location for triggering an ad display. See PO Resp.
33–34. Specifically, Patent Owner contends that a “meta tag” “must have
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some impact as to ‘when’ a mobile phone is to display an advertisement
after receiving the meta tag.” Id. (citing Ex. 2004 ¶ 104). Patent Owner
seizes on the word “when” in the parties’ generally agreed on construction
(embedded control sequence inserted to indicate when advertising should be
inserted). Id. See also Sur-reply 5 (“‘when’ is the language used in the
specification and ‘when’ has a well-known meaning”). According to Patent
Owner, “[t]he meta tag must do more than indicate where or how an
advertisement should be placed, the plain language of the construction
requires that it must indicate when it should be inserted.” Id. at 6 (emphases
omitted).
Petitioner responds that the word “when” merely specifies the point at
which, during the display of information, an advertisement is to be inserted.
Pet. Reply 9–10. Petitioner notes that the Specification provides guidance
on the types of information meta tag would “normally include,” such as “an
advertising name” or “identifier,” but that there is no discussion of any
potential time or geographic location information for triggering an ad
display or any suggestion “meta tag” must include such information. Id.
(citing Ex. 1001, 8:29–38, 12:12–14); see also Tr. 25:2–4 (“using the meta
tag for timing information, like time of day, isn’t disclosed in the
specification anywhere”), 21:8–11 (“Patent Owner . . . cannot identify a
single example of a meta tag in a spec that includes timing information. It’s
not part of the meta tag.”). Petitioner points out that “[o]ther portions of the
specification describe the purpose of the ‘meta tag’ as specifying the precise
location on the screen where advertising will be inserted.” Pet. Reply 11
(citing Ex. 1001, 8:44–47, 10:64–67, 11:13–15). Petitioner argues that these
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selections prove that the “meta tag” does not have to include a time or
geographic location information. Id. at 10–11.
Further, Petitioner contends its position “is also consistent with the
claim language, which describes the purpose of the meta tag as ‘identif[ying]
the one or more advertisements and advertisement display requirements.’”
Id. at 11 (emphasis omitted). Petitioner concludes that the Specification’s
use of the word “when” (Ex. 1001, 8:33–35) “does not refer to a particular
time or graphic location for triggering display of an advertisement. It
instead, at most, indicates when, during the process of presenting the
information, advertising should be inserted.” Id. at 11. For the reasons
discussed below, we find Petitioner’s position persuasive.
As examined above, we agree with the district court that “meta tag” is
best understood in the context of the surrounding claim language, but a
“meta tag” at least encompasses “an embedded control sequence inserted to
indicate when advertising should be inserted.” This understanding of “meta
tag” from the Specification was not meant to be an all-encompassing
definition, but instead one example sufficient for resolution of this
proceeding. Now, Patent Owner asks us to construe not just “meta tag” from
the claims, but also a word (“when”) from this example in the Specification.
We see no reason to further define “when.” We make the following findings
in support of our determination not to define “when.”
We determine that the Specification does not provide support for
requiring a meta tag to control a time at which a mobile phone is to display
an advertisement after receiving the meta tag. See, e.g., Ex. 1001, 8:29–38.
We agree with Petitioner and find that when content contains a meta tag,
advertising should be inserted into the content information in accordance
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with the meta tag. See Ex. 1041 ¶¶ 14–19, 15 (“[T]he word ‘when’ does not
specify a particular time or location for presentation of the advertisement.”),
17 (“It instead, at most, indicates when, during the process of presenting the
information, advertising should be inserted.”); Tr. 25:21–26:4 (Board: “So
at a minimum, the ‘when’ -- your position is the ‘when’ that gets satisfied
when the web page is displayed on the mobile device and in the mobile
device -- the browser has to go get the link and display the tag information.”
Counsel for Petitioner: “Exactly. And I noticed I think Your Honor used
the word ‘when’ correctly, consistent with ordering – in describing it.
That’s exactly what we’re saying.”).
The ’929 “patent makes clear that content may – or may not – contain
a meta tag.” Ex. 1041 ¶ 19 (citing Ex. 1001, 10:64–11:2 (“[T]he Channel
Viewer and Selector module 45 monitors the [content] information for meta
tags within the content screen at step 93. If a meta tag is detected….”)
(underlining added by Dr. Chatterjee). Thus, we agree with Petitioner and
find that “[t]he patent thus uses the term ‘when’ merely to describe the
affirmative presence within content of an embedded control sequence
indicating that advertising should be inserted.” Id. “In other words, when
content contains such an embedded control sequence, advertising should be
inserted in accordance with that embedded control sequence.” Id.

II. ANALYSIS
A petition must show how the challenged claims are unpatentable
under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4).
Petitioner has “the burden of proving a proposition of unpatentability by a
preponderance of the evidence.” 35 U.S.C. 316(e).
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Once a trial is instituted, we will “issue a final written decision with
respect to the patentability of any patent claim challenged by the petitioner.”
35 U.S.C. § 318(a). Because Patent Owner disclaimed claims 5, 8, and 13 of
the ’929 patent (Ex. 2003), however, we will not address these claims in this
Final Decision because they are treated as though they never existed. See
Sanofi-Aventis U.S., LLC v. Dr. Reddy’s Labs., Inc., 933 F.3d 1367, 1373
(Fed. Cir. 2019) (“When Sanofi disclaimed the disclaimed claims, it
effectively eliminated those claims from the patent leaving the . . . patent as
though the disclaimed claim(s) had never existed.”) (internal quotation
marks, citations, and punctuation omitted for clarity).
A. Obviousness Based on Langseth, Walther, Zeff, and Mann
Petitioner challenges the patentability of claims 1, 9, 10, 16 of the
’929 patent under 35 U.S.C. § 103(a) as obvious based on Langseth,
Walther, Zeff, and Mann. Pet. 21–65. In support thereof, Petitioner
identifies the disclosures in each reference alleged to describe the subject
matter in the challenged claims and further relies on the testimony of Dr.
Chatterjee (Exs. 1002, 1041).
Patent Owner contends that the combination of references fails to
prove unpatentability. PO Resp. 25–40. In support thereof, Patent Owner
relies on the testimony of Dr. Shoemake (Ex. 2004).
We have reviewed the parties’ contentions and supporting evidence.
Based on the final record, we are persuaded that Petitioner has demonstrated
by a preponderance of the evidence that claims 1, 9, 10, and 16 of the ’929
patent would have been obvious based on Langseth, Walther, Zeff, and
Mann. We begin our analysis with the principles of law that apply generally
to a ground based on obviousness, followed by a brief summary of each
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reference, the parties’ contentions, and then the reasons for our
determination.
1. Principles of Law
A claim is unpatentable under § 103(a) if the differences between the
claimed subject matter and the prior art are such that the subject matter, as a
whole, would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations,
including: (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of skill in
the art;4 and (4) where in evidence, so-called secondary considerations.5
Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966).
An invention “composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art.” KSR Int’l Co., 550 U.S. at 418. The relevant
inquiry is whether Petitioner has set forth “some articulated reasoning with

4 Based on the final record, including our review of the ’929 patent and
cited prior art, we find persuasive Petitioner’s assessment of the level of
ordinary skill in the art and apply it in this Final Decision. See Pet. 4 (A
person of ordinary skill in the art would have “a bachelor’s degree in
software engineering, computer science, computer engineering, or electrical
engineering with at least two years of experience in developing software and
systems for storing, retrieving, and transmitting displayable information
(such as text and images) over a computer network to another device.”).
Patent Owner accepts Petitioner’s assessment. Ex. 2004 ¶ 29.

5 Neither party has offered evidence of secondary considerations in the final
record.
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some rational underpinning to support the legal conclusion of obviousness.”
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Further, “rejections on
obviousness grounds cannot be sustained by mere conclusory statements.”
Id.
2. Overview of Langseth (Ex. 1003)
Langseth discloses “[a] delivery system for a personal intelligence
network that actively delivers highly personalized and timely informational
and transactional data.” Ex. 1003, code (57). Langseth describes a system
in which “[u]sers may subscribe to various channels of content and to
specific services within each channel that are delivered when a
predetermined condition occurs (e.g., based on a schedule, when an
exception condition occurs, or in response to a specific initiation request).”
Id. at 1:16–22.
Langseth discloses a system in which information is stored in a
database in a plurality of “channels,” each corresponding to a particular field
of interest. Id. at 4:1–5. Users may subscribe to receive services provided
for each channel, which may be delivered in the form of formatted content
(such as an HTML email messages) at a certain frequency or based on the
occurrence of an event. Id. at 4:5–11, 3:61–4:18. Figure 14 provides an
example message containing information from a weather channel that can be
sent to a subscribing user:
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Figure 14 of Langseth depicts an example of an HTML output that can be
sent to a subscribing user. Id. at 7:11–12.
As shown in Figure 14, Langseth describes:
Because of the graphical capabilities of HTML, the output may
create more graphics such as the suns, clouds and other images
depicted in embodiment 700. Specifically, this output example
is for a weather channel output for a particular user. The weather
channel output may comprise a weather forecast section 702, a
name section 704, recommended activities 706, with click-and-
buy links 710, and additional 708.
Id. at 23:11–18. As depicted in Figure 14, the HTML email also includes
advertising information, such as “recommended activities 706, with
click-and-buy links 710,” as well as “additional 708” corresponding to an
advertisement for “Flo’s Diner.” Accordingly, Figure 14 shows that
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advertisements may be selected and inserted into an HTML document for
transmission.
3. Overview of Walther (Ex. 1004)
Walther is an instructional book that teaches techniques for creating
web pages that display advertising. Ex. 1004, Introduction (“how to build a
commercial Web site using Microsoft’s Active Server Pages technology”).
Walther describes how to insert advertisements in HTML documents. See
Id. at 515–517.6 Walther discusses Microsoft’s Active Server Pages
(“ASP”) technology and Internet Information Server (“IIS”), which can be
used to insert a graphical banner advertisement into an HTML page. Id. at 8,
10 (“Some of the largest Web sites on the Internet use Internet Information
Server.”), 514–516 (describing banner advertisement functionality).
Walther discloses an IIS software component known as the “Ad
Rotator” that provides a toolkit for inserting banner advertising into web
documents. Id. at 515–517. Walther provides an example in which the Ad
Rotator outputs an HTML tag for insertion into an HTML page:

Id. at 516–517 (yellow highlighting added by Petitioner at Pet. 18). The
yellow highlighted HTML tag information causes the browser to retrieve a
banner advertising image from a particular URL , and then display the banner ad using a width of 468
pixels and height of 60 pixels. Id.
3. Overview of Zeff (Ex. 1005)
Zeff, entitled Advertising on the Internet (2nd ed. 1999), teaches ways
to use the Internet as a medium for advertising. See, e.g., Ex. 1005, iii–x
(Table of Contents), 1. Zeff describes how e-mail can be delivered as
HTML, “which allow[s] messages to look like Web pages.” Id. at 28. Zeff
further describes how a graphical ad can be inserted into and displayed with
certain content information. For example, Figure 11.22 below depicts a web
page from The Weather Channel that includes a banner ad (“Dinner & a
movie”) inserted between content for “current conditions” and “5-day
forecast”:

Figure 11.22 depicts local advertising on The Weather Channel targeting the
Philadelphia area with green and red boxes added by Petitioner (Pet. 19, 44)
to show banner advertisement (red) and content information (green).
Ex. 1005, 273.
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Zeff also explains that “[a]dvertisements delivered through push technology
are sent (usually with content) directly to a user rather than waiting for the
user to appear. Push technology includes email . . . .” Id. at 54.
4. Overview of Mann (Ex. 1006)
Mann, entitled Microsoft SQL Server 7 for Dummies (1998),
describes features of Microsoft’s SQL Server 7 relational database
management system. See, e.g., Ex. 1006, 1–5 (Introduction). Petitioner
relies on Mann to show how information can be stored in certain memory
locations. Pet. 20. Mann explains that Microsoft SQL Server 7 stores each
database in a separate file. Ex. 1006, 73–74, 78, 82. Mann provides an
example of a database named “CUSTOMERORDERS” that may be stored
in a file named “E:\MSSQL7\DATA\CUSTOMERORDERS.MDF.” Id. at
82. Mann further explains that the data (i.e., information) for a database is
stored in the database file.
Mann further discloses that a database file is a memory location.
Mann explains that “[a] file name is sometimes referred to as a physical
name. A physical name is the physical location given to an object.” Id. at
82; see also id. at 318 (defining “Physical Name” as “[a] physical location
assigned to an object”). Mann further discloses that a database file is stored
in a computer readable storage medium—i.e., “memory,” for example, that
Microsoft SQL Server 7 uses a computer’s “C:\ drive” for storage by default.
Id. at 31.
5. Analysis – Claim 1
i. Petitioner’s Challenge
In challenging claim 1, Petitioner relies on Langseth (Ex. 1003),
which describes a push-based system for delivering content and advertising
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information to a mobile device. Pet. 12. According to Petitioner, “[a] server
and database organize information into a series of ‘channels,’ such as News,
Weather, Finance, among others.” Id. (citing Ex. 1003, 4:1–5). Petitioner
notes that “[i]n response to a time-based event, such as the arrival of a user-
specified time, [Langseth’s] server retrieves content and advertising
information from one or more of those ‘channels,’ generates an appropriate
message, and pushes the message to the user’s mobile device for display.”
Id. Petitioner relies in particular on Figure 14 of Langseth, which depicts an
example of such a message (an HTML email) containing advertising
information and incorporating content from a personalized “Weather”
channel.
Petitioner combines Langseth with three other references for this
ground. According to Petitioner:
Ground 1 thus combines Langseth with Walther (Ex.
1004) and Zeff (Ex. 1005), which describe well-known
techniques for using HTML tags to insert “banner ads” into web
documents, and Mann (Ex. 1006), which describes well-known
techniques for storing information in relational databases. These
references provide the routine implementation details
unaddressed by Langseth, and render the claims obvious.
Pet. 14. Below, we examine each limitation of claim 1 as well as
Petitioner’s stated rationales for combining the references in a manner that
teaches each limitation as well as the claim as a whole.
Petitioner persuasively shows that Langseth’s disclosure of delivery of
information (e.g., HTML emails) to a mobile device (e.g., personal digital
assistant) as well as Langseth’s disclosures regarding automatic email
generation and delivery as teaching the claimed method for pushing
information to a mobile device. Pet. 21–23. Petitioner also relies on Zeff’s
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disclosure that “[a]dvertisements delivered through push technology are sent
(usually with content) directly to a user rather than waiting for the user to
appear. Push technology includes email . . .” as further demonstrating how
Langseth’s techniques of generating HTML email and transmitting it to a
device, based on a time-based schedule, provide another example of pushing
information to a device. Pet 24 (quoting Ex. 1005, 54; citing Ex. 1002 ¶ 66).
Next, claim 1 requires “detecting a triggering event comprising a time
triggering event,” and Petitioner relies persuasively on Langseth’s step of
determining the arrival of a selected time for processing a scheduled service.
Pet. 24. Langseth describes a database system that stores “channels,” each
channel comprising information about a particular field of interest, and also
how a user can subscribe to a “service,” which provides information from a
channel to the user (e.g., via email). Id. The service may be delivered based
on a schedule with varied frequency such as end-of-day (after 5 p.m.) or
intra-day (every hour between 10 a.m. and 5 p.m.). Id. 24–25 (citing 4:5–11,
4:20–26, 8:2–7). Thus, the “triggering event comprising a time triggering
event” in Langseth takes the form of the arrival of the time that triggers the
service to be processed.
Petitioner persuasively establishes that Langseth’s data distribution
server identifying and retrieving information from the “channel database” in
response to the detected event (the arrival of the selected time for a service)
teaches “determining, by a server, information relevant to the detected
triggering event from among information stored in one of a plurality of
memory location channels” limitations of claim 1. Pet. 26–28. As explained
by Petitioner, “[t]he claimed ‘plurality of memory location channels’ is
satisfied by Langseth’s disclosure of multiple different ‘channels,’ e.g.,
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finance channel, weather channel, etc., because each of Langseth’s
‘channels’ corresponds to a different memory location.” Id. at 28 (citing
Ex. 1003, 4:1–5, 5:35–38) (emphasis omitted). Petitioner also persuasively
shows how Langseth teaches “from among information stored in one of a
plurality of memory location channels” through the data distribution server
62 selecting, in response to a triggering event, relevant data from within a
particular channel. Id. See also id. at 29 (providing additional examples of
services that retrieve and provide information from their respective
channels) (citing Ex. 1003, 9:38–11:49).
Petitioner next relies on Langseth, as well as a combination of
Langseth and Mann, to show that “the multiple channels in Langseth each
disclose a separate ‘memory location channel,’ i.e. memory location.”
Pet. 30. “Langseth explains that its channels (such as finance and weather)
can each have its own database.” Id. (citing Ex. 1003, 5:37–39, 12:11–13,
4:13–16, 23:28–30). Thus, according to Petitioner, “[e]ach channel in
Langseth therefore has a corresponding database,” and “each channel
database as disclosed in Langseth is a memory location because the database
data must be stored in a particular location in memory.” Id. (citing Ex. 1002
¶ 80).
As additional support for the multiple channels limitations, Petitioner
relies on Mann to “confirm[] that Microsoft SQL Server 7 stores each
database in a file, i.e., memory location.” As noted by Petitioner, “Mann
describes features of Microsoft’s SQL Server 7 – the same software (and
even version) expressly referenced in Langseth.” Pet. 30–31. Further,
“Mann explains that Microsoft SQL Server 7 stores each database in a
separate file,” and Mann demonstrates further support that a database file is
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a memory location. Id. at 31 (citing Ex. 1006, 73–74, 78, 82, 125).
According to Petitioner, and Dr. Chatterjee (Ex. 1002 ¶ 83), “[i]t would have
been obvious to combine Langseth with Mann, predictably resulting in the
database system of Langseth, implemented using Microsoft SQL Server 7 as
described in Mann,” and that the combination “would . . . have resulted in
storing each channel database of Langseth in a ‘memory location channel.’”
Pet. 32. Further, Petitioner explains persuasively that “[a] person of
ordinary skill, seeking to implement or improve Langseth, would have
naturally turned to a reference such as Mann for additional information
regarding databases and database storage – particularly considering that
Langseth expressly refers to Microsoft SQL Server for implementing data
storage.” Id.
Petitioner identifies “the information is stored . . . based on a category
of the information matching a pre-defined category” as being taught by
Langseth’s disclosure of a “pre-defined category” as a field of interest or
subject matter for a particular “channel,” such as “Finance” or “Weather.”
Pet. 33 (citing Ex. 1003, 3:66–4:5). Petitioner relies on Langseth’s
disclosure of “organizing and storing data into one or more ‘channels’ of
data, where the data within a particular channel share some relationship,
such as relating to the same general subject matter.” Id. (citing Ex. 1003,
7:59–64, Fig. 2A). Petitioner also explains how “the information stored in a
particular channel in Langseth corresponds to an information category
associated with that channel,” such as “Weather” information in the
“Weather” channel, as depicted in Figure 2A of Langseth. Pet. 34. As
argued by Petitioner, and supported by Dr. Chatterjee (Ex. 1002 ¶ 89), the
category associated with the channel in Langseth is “pre-defined” because
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“[t]he system could not store the information in an appropriate channel
without first defining the channel and its associated category.” Pet. 34.
Claim 1 next requires “when the information relevant to the detected
triggering event comprises content information,” and Petitioner explains
persuasively how Langseth teaches “information retrieved from the channel
database (e.g., Finance, Weather) when the time for processing a scheduled
service has arrived (‘detected triggering event’).” Id. at 35. Petitioner notes
examples of “content” information delivered by Langseth, and concludes
that “[t]he claimed ‘content information’ is thus satisfied by information
from the channel that the system uses to generate messages sent to users who
have subscribed to a service within that channel.” Id. at 36. Petitioner
provides, as an example, the content information depicted in Figure 14 of
Langseth.

Petitioner’s annotated Figure 14 of Langseth depicts an example of an
HTML output that can be sent to a subscribing user. Pet. 37;
Ex. 1003, 7:11–12.
According to Petitioner, “[t]he ‘content information’ in Figure 14
includes at least the information shown in the red boxes, specifically the
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numerical values for the forecast of high and low temperatures and the text
describing the severe weather warnings.” Pet. 37 (citing Ex. 1002 ¶ 94).
Petitioner argues that it would have been apparent that the weather “content
information,” as shown in Figure 14 above, would have been generated by a
time-triggered service. Id. (citing Ex. 1003, 22:55–58, 10:19–34; Ex. 1002
¶ 94, n.5). Likewise, Dr. Chatterjee explains persuasively how the detected
triggering event corresponds in Langseth to the arrival of the selected time
for a service to be processed, and content information includes the
information from the channel that the system uses to generate the messages
sent to users who have subscribed to a service within that channel. Ex. 1002
¶¶ 93, 94. Thus, based on the final record, Petitioner explains persuasively
how the information above constitutes “content information” under any
reasonable definition of content information. Pet. 37. Patent Owner does
not dispute these contentions.
Claim 1 next requires “inserting to the content information, by the
server, a meta tag for one or more advertisements to be displayed with the
content information.” As discussed more below, Patent Owner contests
whether the prior art teaches this limitation. According to Petitioner, this
limitation is disclosed by Langseth, Walther (Ex. 1004), and Zeff
(Ex. 1005). Pet. 39. Petitioner notes that Langseth teaches the ability to
display “content information” (e.g., weather forecast and severe weather
warnings) with “one or more advertisements” (e.g., “Flo’s Diner *Open 24
Hours*”) and further teaches how “the server” created the HTML email of
Figure 14. Id. Petitioner relies on Walther’s teaching of “including a meta
tag for an advertisement (i.e., HTML tag information for a graphical banner
advertisement) with content information (e.g., additional content on a web
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page) and displaying the advertisement with the content information.” Id. at
40.
More specifically, Walther “describes a well-known Microsoft
technology known as Internet Information Server (‘IIS’), which is expressly
mentioned in Langseth,” and it further “describes a built-in IIS feature
known as the ‘Ad Rotator Component’ that is ‘used to display banner
advertisements on the Web pages of a Web site.’” Pet. 40 (quoting Ex.
1004, 16, 514). Walther’s “Ad Rotator uses a ‘schedule file’ that defines
(among other things) the graphical advertisements to show and their display
parameters, such as width and height.” Id. (citing Ex. 1004, 515–516; Ex.
1002 ¶¶ 101–102). According to Petitioner, and Dr. Chatterjee, “[t]he Ad
Rotator as described in Walther creates HTML tags for an advertisement
selected in accordance with the schedule file,” and it “provides the following
exemplary HTML tags:”

Pet. 40 (quoting Ex. 1004, 516–517) (yellow highlighting added by
Petitioner). Petitioner reasons that “the ‘IMG’ tag in yellow corresponds to
the claimed ‘meta tag’” because “[t]he ‘IMG’ tag above is a ‘embedded
control sequence’ for HTML that specifies the name and location of the
image file, and specifies how it will be displayed – in this case with a width
of 468 pixels and height of 60 pixels (‘WIDTH=468 HEIGHT=60’).”
Pet. 41 (citing Ex. 1002 ¶ 103).
Petitioner further argues that “[t]he IMG tag shown above . . . controls
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when the advertising image should be inserted (placed) by the rendering
software on the screen for viewing.” Id. (citing Ex. 1002 ¶ 107 (“it is a
sequence (of characters) that controls when the advertising image should be
inserted (placed) by the rendering software”).
In its Reply, Petitioner contends that the IMG tag shown above in
yellow “include[s] HTML attributes including SRC, WIDTH, HEIGHT, and
BORDER.” Pet. Reply 13. Petitioner argues that “[t]hese attributes do not
provide ‘descriptive text within HTML code,’ but rather, provide the actual
HTML code for identifying the image file and specifying its precise size and
position for display on the screen.” Id. (citing Ex. 1041 ¶ 9; Ex. 1013 § 3.4,
at 80–86). Such “HTML attributes do not provide the type of narrative
descriptive text used, for example, by search engines to index a web page or
site,” according to Petitioner. Id. Based on these arguments, Petitioner
concludes that even if the Board were to adopt Patent Owner’s proposal of
interpreting meta tag to include a negative limitation, it would still not
exclude the HTML IMG tag in Walther because the “HTML IMG tag does
not provide ‘hidden, descriptive text within HTML code,’ as that language is
properly understood.” Id. at 12. (emphasis omitted)
Addressing Patent Owner’s argument concerning “when” advertising
should be inserted, Petitioner reiterates that “the IMG tag ‘controls when the
advertising image should be inserted (placed) by the rendering software on
the screen for viewing.’” Pet. Reply 14 (citing Ex. 1002 ¶¶ 107–109).
Petitioner explains that “when inserted in an HTML file, it will cause the
advertisement to be displayed to the user.” Id.
The claim limitation also recites, “inserting to the content information,
by the server, a meta tag,” and Petitioner has shown persuasively how
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Walther would insert the HTML tag when generating the HTML email.
Pet. 43 (citing Ex. 1002 ¶¶103, 109, 116; Ex. 1004, 516–517). Petitioner
relies on the combination of Walther with Zeff as teaching this element
because “Zeff provides a concrete example of banner advertisement inserted
to content information.” Pet. 44. Zeff’s Figure 11.22 depicts a web page
from “The Weather Channel” that includes a banner ad (“Dinner & a
movie”) inserted between content information for current weather conditions
and 5-day forecast:

Petitioner’s annotated Figure 11.22 of Zeff depicting advertising on The
Weather Channel for the Philadelphia area with added green and red boxes.
Pet. 44.
Petitioner adds the red box to show the banner advertisement and the green
boxes to show content information. Id. According to Petitioner, and Dr.
Chatterjee, “[a] person of ordinary skill would have understood that the
appearance of the banner advertisement (in the red box) between the two
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pieces of content information above means that the HTML tag for the banner
ad was inserted between them.” Id. at 44–45 (citing Ex. 1002 ¶ 111).
Thus, according to Petitioner, “Langseth, in combination with Walther
and Zeff, therefore renders obvious the step of ‘inserting to the content
information, by the server, a meta tag for one or more advertisements to be
displayed with the content information.’” Pet. 45. Petitioner reasons that
the Zeff figure above “shows a banner ad (in the red box) inserted between
the content information (shown in green boxes), which is displayed with the
content information,” and that “Walther teaches that placing that banner ad
involves inserting a ‘meta tag’ that identifies the advertisement.” Id. (citing
Ex. 1002 ¶ 112). When the teachings of these references are combined as
proposed by Petitioner, they “would have produced an HTML email (such as
Figure 14) in which a banner advertisement was inserted between the
content information, by the server in Langseth inserting a meta tag at that
location in the HTML document, as taught in Zeff and Walther.” Id. (citing
Ex. 1002 ¶ 112).
Based on the final record, Petitioner provides a persuasive rationale
for combining the cited teachings in the proposed manner, which is
unchallenged by Patent Owner. According to Dr. Chatterjee, Langseth,
Walther, and Zeff are analogous references in the field of Internet and web-
based communications. Ex. 1002 ¶ 114. Further, Zeff and Walther both
acknowledge that email can be delivered as HTML, and Langseth
specifically mentions using IIS and ASP technologies, the same ones
described in Walther. Id.; see also Ex. 1003, 13:18–25; Ex. 1005, 28, 30;
Ex. 1004, 423. Petitioner also explains how the teachings of Walther would
have been basic knowledge to a person of ordinary skill, such that Walther’s
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HTML-based techniques for inserting advertising information in an HTML
file were known industry standards and easily adopted. Pet. 46. Petitioner
also contends that Zeff provides express motivation for inserting an
advertisement in an HTML document, as described by Walther. Id. at 46–47
(quoting Ex. 1005, 30). Finally, as explained by Dr. Chatterjee, inserting a
meta tag for the advertising information into an HTML e-mail, rather than
inserting the advertisement directly, would have also enabled the
transmission of smaller email messages. Ex. 1002 ¶ 116.
Petitioner further explains how Walther’s teaching of a “meta tag”
identifies the advertisement as well as the advertisement display
requirements. Pet. 48. As for the claim limitation that “wherein the one or
more advertisements are selected based on the detected triggering event,”
Petitioner establishes persuasively how Langseth and Zeff disclose how the
advertisements are selected based on the detected triggering event. Id. at
49–50. Petitioner reasons that “[i]t would have been obvious in view of Zeff
that the advertising information, as well as the content information, would
have been selected based on the detected triggering event,” specifically the
time trigger of Langseth. Id. at 50–51 (citing Ex. 1002 ¶ 124).
The final claim 1 limitation requires “transmitting the content
information that includes the meta tag to the mobile device.” Petitioner
explains persuasively how the content information from the channel
database in Langseth (e.g., weather or other information), which includes the
HTML banner advertising image with a meta tag as taught by Walther and
Zeff, is transmitted to the mobile device in the form of an HTML email.
Pet. 51–53.
ii. Patent Owner’s Argument
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Most of Patent Owner’s arguments rest on claim construction
positions concerning “meta tag” that we have rejected for the reasons set
forth above. See PO Resp. 25–27 (“An ‘IMG’ tag is ‘hidden, descriptive
text within HTML code,’ and therefore not a meta tag, as claimed.”). Patent
Owner alleges two main shortfalls in the prior art: there are no meta tags
(PO Resp. 25), and there is no disclosure of inserting meta tags to the
content information (id. at 36).
Patent Owner first argues that none of Petitioner’s references teaches
a meta tag for one or more advertisements as claimed. Id. at 25. Patent
Owner contends that Walther’s HTML “IMG” tags are not “meta tags.” Id.
at 26. Patent Owner presents two main arguments to support this
conclusion. The first is that “[a]n ‘IMG’ tag is ‘hidden, descriptive text
within HTML code,’ and therefore not a meta tag, as claimed.” Id.
The second argument looks to the agreed definition of “meta tags”
(“embedded control sequence inserted to indicate when advertising should
be inserted”), and Patent Owner argues that Walther’s IMG tag “does not
‘indicate when an advertisement should be inserted’ as required by the
construction.” Id. at 30–31 (emphasis added). Instead, Patent Owner
contends an IMG tag indicates what advertisement should be inserted—i.e.,
the name and location of the image file, and how the advertisement will
appear on the webpage—i.e., its width and height. Id. at 31. Patent Owner
distinguishes Walther because the identified meta tag allegedly “does not,
however, indicate when the advertisement should be inserted . . . after a
‘time triggering event’ is detected.” Id. (citing Ex. 2004 ¶ 93).
As explained more below, each of these first two Patent Owner
arguments have been considered in the claim construction analysis above
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and rejected.
Patent Owner additionally argues that “[i]rrespective of whether any
of the prior discloses meta tags, none of Petitioners’ prior art discloses
‘inserting to the content information, by the server, a meta tag for one or
more advertisements to be displayed with the content information,’ as
required by the claims.” PO Resp. 36 (citing Ex. 2004 ¶¶ 123–125). Patent
Owner contends that as shown in Zeff’s Figure 11.22, “a banner
advertisement (outlined in red) is included in an HTML web page next to
weather forecast information (the alleged ‘content information,’ outlined in
green),” but “[t]his banner advertisement is not a ‘meta tag,’ and does not
meet the ‘inserting to the content information . . . a meta tag’ limitation of
the claims.” Id. at 37.
Patent Owner also contends that Petitioner’s expert admitted during a
deposition that the ALT attribute in HTML IMG tags is not a meta tag. PO
Resp. 27 (citing Ex. 2006, 82:15–17). Patent Owner further argues that the
ALT attribute is not optional in Walther’s Ad Rotator, and thereafter
concludes that “Walther’s IMG tag is never a meta tag.” Id. at 28 (citing
Ex. 2004 ¶ 110); Tr. 55:1–27.
iii. Analysis (claim 1)
Based on the final record before us, we find Petitioner’s contentions
with respect to claim 1 persuasive. Petitioner’s analysis of the combination
of Langseth, Walther, Zeff, and Mann, as supported by Dr. Chatterjee,
explains how the combination teaches all the elements of claim 1 and
provides several persuasive rationales for combining the teachings. Based
upon Petitioner’s evidence presented, including the testimony of Dr.
Chatterjee, we are persuaded by Petitioner’s evidence and argument. Below,
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we examine in detail those limitations challenged by Patent Owner. For all
other limitations not challenged, we have reviewed the evidence and adopt
Petitioner’s reasoning and evidence as set forth above.
With regard to Patent Owner’s first argument that Walther’s HTML
“IMG” tags are not “meta tags,” we disagree. As we explained in detail
above in the claim construction analysis (§ I.F.2), we find no basis to
exclude all hidden, descriptive text within HTML code from the scope of the
claimed invention. We credit Dr. Chatterjee’s testimony that “[t]he ‘IMG’
tag [identified by Petitioner] is an ‘embedded control sequence’ for HTML
that specifies the image file and how it will be displayed, in this case, with a
width and height of 468 by 60 pixels, respectively (‘WIDTH=468
HEIGHT=60’).” Ex. 1002 ¶ 103. We also credit Dr. Chatterjee’s distinction
between a “‘’ tag” that “provides descriptive information about
an HTML document,” and the claimed “meta tag,” to conclude, “I am not
relying on an HTML ‘’ tag in my analysis.” Id. ¶ 103 n.7,
¶¶ 109–110. Dr. Chatterjee goes on to explain, and we agree, that “[a]
person of ordinary skill in the art would have understood an HTML tag for a
banner advertisement to comprise a ‘meta tag.’” Id. ¶ 104. We have
considered Dr. Shoemake’s testimony to the contrary as to definition of
“meta tag” and that an IMG tag is not a meta tag, but this testimony does not
point to any portion of the Specification requiring the exclusion of all
hidden, descriptive text within HTML code. See Ex. 2004 ¶¶ 53–55. Thus,
we conclude Dr. Shoemake’s position is based on an overly narrow claim
scope as detailed above.
Further, we have interpreted claim 1 to only require that when content
contains a meta tag, advertising should be inserted into the content
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information in accordance with the meta tag. See Ex. 1041 ¶¶ 14–19, 15
(“[T]he word ‘when’ does not specify a particular time or location for
presentation of the advertisement.”), 17 (“It instead, at most, indicates when,
during the process of presenting the information, advertising should be
inserted.”). (emphasis omitted)
Given these interpretations, Petitioner explains persuasively how
Walther’s IMG tag “controls when the advertising image should be inserted
(placed) by the rendering software on the screen for viewing.” Pet. 41
(citing Ex. 1002 ¶¶ 107–109). Walther’s IMG tag is an embedded control
sequence because it specifies the name and location of the image file as well
as how it will be displayed. Id. (citing Ex. 1002 ¶ 103). “And when inserted
in an HTML file, it will cause the advertisement to be displayed to the user.”
Id. We agree with Petitioner that “the HTML IMG tag in Walther specifies
the point at which the advertisement is to be inserted during the processing
of the HTML email.” Pet. Reply 14–15; see also Ex. 1002 ¶¶ 108–110
(explaining how the processing and use of Walther’s IMG tag mirrored the
operation of the meta tag described in the ’929 patent Specification).
Petitioner has persuasively shown that the combination of prior art
teaches “inserting to the content information, by the server, a meta tag for
one or more advertisements to be displayed with the content information,” as
required by claim 1. Petitioner explains that the proposed combination was
based on insertion of the claimed meta tag (i.e. HTML tag) into the content
information. Pet. 44–45; see also Pet. Reply 18. Specifically, “[a]s
combined with Langseth, the teachings of Walther and Zeff would have
produced an HTML email (such as Figure 14) in which a banner
advertisement was inserted between the content information, by the server in
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Langseth inserting a meta tag at that location in the HTML document, as
taught in Zeff and Walther.” Pet. 45 (citing Ex. 1002 ¶ 112).
As further explained by Dr. Chatterjee, whose testimony we credit in
this regard, “it would have been obvious to insert the tag into an HTML
document – that was the whole point of the HTML tag,” and “a person of
ordinary skill in the art would have understood that the appearance of
[Zeff’s] banner advertisement (in red box) between the two pieces of content
information above means that the HTML tag for the banner ad was inserted
between them.” Ex. 1002 ¶ 111. As Petitioner further argues, Patent Owner
appears to concede that the combination of Langseth, Walther, and Zeff
would have predictably resulted in the insertion of an HTML tag into the
content in order to display the advertisement, because Patent Owner states
“‘[o]f course, whenever an HTML page is displayed, there must be
underlying HTML code, including HTML tags, that dictates how the
elements of the web page, such as banner advertisements, are displayed.’”
Pet. Reply 19 (quoting PO Resp. 37–38).
We determine that Patent Owner’s arguments concerning the “ALT”
attribute are both irrelevant and incorrect. See PO Resp. 27–28; Tr. 52:1–4
(counsel for Patent Owner arguing Petitioner “failed to meet their burden
with respect to the IMG tag element, because they haven’t addressed all the
mandatory parts”). First, we disagree that the ALT attribute is mandatory
within Walther’s Ad Rotator system. See Pet. Reply 15–17; Ex. 1041 ¶¶ 28–
30. Instead, “as explained by Dr. Chatterjee, Walther makes clear that a
developer can leave Ad Rotator fields blank by placing a hyphen (-) on the
line corresponding to the field,” which Petitioner “further confirm[s] by a
contemporaneous textbook describing the Ad Rotator component (a well-
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known component of Microsoft’s Active Server Pages (ASP) product).”
Pet. Reply 17 (citing Ex. 1041 ¶¶ 28–29; Ex. 1044, 6). We find Petitioner’s
evidence persuasive in demonstrating “that a person of ordinary skill in the
art would not have interpreted Walther as suggesting that ALT attribute text
was mandatory.” Pet. Reply 17 (citing Ex. 1041 ¶¶ 28– 30; Ex. 1044, 6).
Second, even if mandatory, Petitioner does not rely on the ALT
feature, and its presences does nothing to detract from the portions of
Walther actually relied upon. Tr. 29:6–11 (“[W]e didn’t rely on it because it
doesn’t perform the functions of a meta tag. It’s really just an error
condition.”). As Petitioner explains, “[t]he Petition never argued that the
ALT attribute qualifies as a meta tag, nor relied in any way on it in showing
the claimed meta tag.” Pet. Reply 15 (citing Pet. 41 n. 5; Ex. 1002 ¶ 103).
Instead, “the Petition only relies on particular attributes of the HTML IMG
tag in Walther – the IMG SRC, WIDTH, HEIGHT, and BORDER attributes
– and excludes the ALT attribute that appears between the SRC and
WIDTH/HEIGHT/BORDER attributes:”

Pet. Reply 15–16 (showing Walther’s Ad Rotator (Ex. 1004, 516–517) with
yellow highlighting added by Petitioner). As explained by Petitioner,
“although ALT is shown as the second of five attributes of the specific
example above, it is undisputed that the HTML standard would have
allowed the ALT attribute to be placed elsewhere in the IMG tag, for
example, at the end.” Pet. Reply 16 (citing Ex. 1041 ¶ 25). Thus, we agree
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with Petitioner and find that “[t]he presence or absence of an ALT attribute
has no relevance to the instituted grounds.” Pet. Reply 16.
Finally, Patent Owner states that in Langseth, “‘content information’
and advertisements would be filled into the ‘template’ used to create HTML
mail, such that they are displayed in the same HTML page.” PO Resp. 21;
Ex. 2004 ¶ 73. Patent Owner seems to suggest that this is insufficient
because advertisements are inserted into a template and not the content
information. Id. Based on the final record before us, however, use of a
“template” in Langseth is optional. See Ex. 1003, 18:21–24. Further, even
if the message generator system may be created from a template, Patent
Owner cites nothing in Langseth suggesting that messages themselves must
be created from templates. See Pet. Reply 20–21 (citing Ex. 1003, 18:18–
24, 18:66–67, 24:54–58). We have considered Dr. Shoemake’s testimony
that content information and advertisements would be filled into the
template used to create HTML mail, but find this testimony unpersuasive.
Ex. 2004 ¶ 73. As Dr. Chatterjee testifies, “there is nothing in Langseth that
requires the use of a template to create the HTML email.” Ex. 1041 ¶ 37.
Further, we find persuasive Dr. Chatterjee’s testimony that the passage
relied upon by Patent Owner “merely states that ‘[e]ach message generator
system 68 may be created from a sub-service template,’ and that statement
does not state that individual messages themselves are created from a
template.” Id. ¶ 38 (quoting Ex. 1003, 18:21–24).
For the foregoing reasons, and based on the final record, Petitioner
has shown by a preponderance of the evidence that a person of ordinary skill
would have a rational basis to combine Langseth, Walther, Zeff, and Mann
and that this combination teaches the limitations recited in independent
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claim 1, as well as teaches claim 1 as a whole. Petitioner has demonstrated
by a preponderance of the evidence that claim 1 would have been obvious
over Langseth, Walther, Zeff, and Mann.
6. Analysis – Claims 9, 10, 16
Petitioner has also demonstrated by a preponderance of the evidence
that Langseth, Walther, Zeff, and Mann teach all the limitations of claims 9,
10, and 16. See Pet. 57–65. Below, we address Petitioner’s evidence and
argument, as well as Patent Owner’s contentions with respect to claim 10’s
requirement of “transmitting the advertisement to the mobile device instead
of the content information that includes the meta tag.” See PO Resp. 38.
Claim 9 is an independent claim (Ex. 1001, 14:58–15:10) reciting “a
server” with limitations similar in scope to method claim 1 addressed above.
Petitioner establishes on the final record how the combination of references
teach each limitation of claim 9. See Pet. 57–63. Because claim 9 is nearly
the same as claim 1, Petitioner largely relies upon its analysis of claim 1,
with which we agree for the reasons set forth above.
Claim 9 first recites “a server, comprising: a database organized into
a plurality of memory location channels.” Petitioner relies persuasively on
Langseth’s disclosure of a number of memory location channels, each
channel storing information of a particular category (e.g., Finance, Weather)
and each channel described as a database. Pet. 58–59. We agree with
Petitioner’s demonstration of how Langseth teaches “each of the memory
location channels storing information of a same category as a pre-defined
category of each of the respective memory location channels” whereas
“Langseth organizes and stores data into one or more ‘channels’ of data,
where the data within a particular channel relates to a particular subject
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matter.” Claim 9; Pet. 59. Petitioner further demonstrates persuasively that
it would have been obvious to the person of ordinary skill in the art “to
implement the machine housing the data distribution server 62 to physically
enclose the channel databases,” thus meeting the requirement of claim 9 that
the server comprises a database. Pet. 59–60.
Petitioner notes “[o]ne final difference between this limitation and
claim 1[b] is that claim 9 recites ‘a database organized into a plurality of
memory location channels,’ whereas claim 1 does not recite a database.”
Pet. 60. Petitioner argues persuasively that “in Langseth, each memory
location channel can have a separate channel database . . . [b]ut nothing in
Langseth prohibits those channel databases from being part of a larger
database.” Id. (citing Ex. 1003, Fig. 2A, 4:1–5, 5:37–39, 12:11–13, 23:28–
30). Petitioner relies on Langseth’s disclosure of a database system that may
provide a plurality of channels and concludes “Langseth therefore discloses
‘a database organized into a plurality of memory location channels’ as
claimed, i.e., the individual channels.” Id. (emphasis omitted); see also
Ex. 1002 ¶ 153 (Dr. Chatterjee testifying, “Langseth’s channel databases
together comprise an organized collection of data—i.e., a database,” and
“Langseth describes the plurality of channels as parts of a larger database
system.”). We find Petitioner’s contentions persuasive.
Other than the arguments addressed above for claim 1, Patent Owner
does not specifically challenge Petitioner’s contentions with respect to claim
9. For the reasons set forth above, we determine Petitioner has established
by a preponderance of the evidence that claim 9 would have been obvious
over Langseth, Walther, Zeff, and Mann.
Claim 10 depends from claim 9 and further requires “the server is
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configure[d] to, when the information relevant to the detected triggering
event comprises advertisement, transmitting the advertisement to the mobile
device instead of the content information that includes the meta tag.”
Ex. 1001, 15:11–15.
Petitioner shows how Langseth teaches each of these additional
requirements. Pet. 63–64. Petitioner explains how Langseth discloses
numerous services for its various exemplary channels, and certain services
provide “content information” from a channel while others provide
“advertising information” from a channel. Pet. 63–64 (citing Ex. 1003,
9:38–11:49). According to Petitioner and Dr. Chatterjee, “[w]hen a user
subscribed to a service for a channel that provided advertisements, the
information relevant to the detected triggering event would comprise
advertisement rather than content information.” Pet. 64; Ex. 1002 ¶ 162.
Thus, “for those services, a person of ordinary skill would have understood
and found it obvious that Langseth’s system would transmit an HTML email
comprising advertisement instead of content information to the user’s mobile
device.” Id.
Patent Owner challenges whether Langseth identifies the cited
examples as advertisements and argues “a POSITA would not have found it
obvious that these advertisements would be transmitted ‘instead of the
content information that includes the meta tag,’ as required by the claims.”
PO Resp. 39. Patent Owner further contends “the Petition does not even
allege that it would have been obvious to transmit advertisement ‘instead of
the content information that includes the meta tag,’” but instead “that it
would have been obvious ‘that Langseth’s system would transmit an HTML
email comprising advertisement instead of content information to the user’s
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mobile device.’” Id. (quoting Pet. 64) (citing Ex. 2004 ¶¶ 134, 135). Patent
Owner concludes that “[i]t is not sufficient that advertisement be transmitted
instead of content information; rather, according to the plain language of the
claims, the content information must include meta tags.” Id. at 40.
Petitioner responds that Patent Owner’s “argument cannot be
reconciled with the plain language of claim 10, which clearly recites
‘transmitting the advertisement to the mobile device instead of the content
information that includes the meta tag.’” Pet. Reply 23. As Dr. Chatterjee
opines, “[t]his argument does not make sense. . . . ‘content information that
includes the meta tag’ is not transmitted under the scenario contemplated in
claim 10. Because there is no ‘content information’ transmitted under claim
10, there is no need for any transmission of any ‘meta tag’ inserted into
the content information, either.” Ex. 1041 ¶ 43.
We are persuaded by Petitioner’s evidence and argument regarding
claim 10. The claim language is clear that when subscribed to a service for a
channel that provided advertisements, the information relevant to the
detected triggering event would comprise advertisement rather than content
information. Notably, claim 9, from which claim 10 depends, recites “when
the information relevant to the detected triggering event comprises content
information, inserting into the content information a meta tag.” Ex. 1001,
15:1–3. Claim 10 relies on the scenario when the information relevant to the
detected triggering event does not comprise content information (as
conditioned by claim 9), and only then does claim 10’s requirement that
“when the information relevant to the detected triggering event comprises
advertisement,” control. See Tr. 30:6–32:20 (“But in claim 10, it doesn’t
comprise content; it comprises an advertisement. . . . You just transmit the
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advertisements in the mobile device. You don’t need to transmit the content
information or meta tags, because you don’t even need the meta tags,
because that entire step of inserting the content of the meta tags -- the meta
tags of the content, it skips.”). Patent Owner’s contentions are therefore not
persuasive.
We determine that Petitioner has shown by a preponderance of the
evidence how the combination of references teach the claimed server’s
capability to carry out the requirements of both claims 9 and 10, and also
provided a rational basis for the combination of references.
Claim 16 depends from claim 9 and further requires “wherein the one
or more advertisement comprises static advertisement, dynamic
advertisement, or default advertisement.” Ex. 1001, 16:15–17.
Relying on stipulated claim constructions for static and dynamic
advertising information, Petitioner shows persuasively how Langseth and
Zeff teach these additional limitations of claim 16. Pet. 55, 65. For
example, “Langseth discloses at least static advertising information,”
through “an advertisement identifying ‘Flo’s Diner,’” which is “advertising
information that relates to the identity of an advertiser.” Pet. 55–56 (citing
Ex. 1003, Fig. 14). Petitioner similarly identifies disclosures in Zeff of static
advertising information. Pet. 56 (citing Ex. 1005, 31, Fig. 2.8). Petitioner
establishes persuasively how “[i]t would thus have been obvious that the
advertisements included with Langseth’s HTML email could include each of
these types of advertising information.” Pet. 57 (citing Ex. 1002 ¶¶ 145,
146).
Patent Owner has not specifically challenged Petitioner’s contentions
with respect to claim 16, except for the arguments addressed above directed
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to the limitations of claims 1 and 9. We determine that Petitioner has shown
by a preponderance of the evidence how the combination of references teach
the requirements of claim 16. Petitioner has demonstrated by a
preponderance of the evidence that claims 1, 9, 10, and 16 would have been
obvious over the combination of Langseth, Walther, Zeff, and Mann.

B. Obviousness Based on Langseth, Walther, Zeff, Mann, and Gilhuly
Petitioner challenges the patentability of claim 1 (claims 5 and 8
having been disclaimed) of the ’929 patent under 35 U.S.C. § 103(a) as
obvious based on Langseth, Walther, Zeff, Mann, and Gilhuly. Pet. 65–69.
In support thereof, Petitioner identifies the disclosures in each reference
alleged to describe the subject matter in the challenged claims and further
relies on the testimony of Dr. Chatterjee (Ex. 1002).
We have reviewed Petitioner’s contentions and supporting evidence.
Based on the final evidence of record, we are persuaded that Petitioner has
demonstrated by a preponderance of the evidence that claim 1 of the ’929
patent would have been obvious based on this ground. Below, we provide a
brief summary of Gilhuly, and address the reasons for our determination.
1. Overview of Gilhuly (Ex. 1019)
Gilhuly is directed to “[a] system and method for pushing information
from a host system to a mobile data communication device upon sensing a
triggering event.” Ex. 1019, code (57). Gilhuly describes “[a] redirector
program operating at the host system [that] enables a user to continuously
redirect certain user-selected data items from the host system to the user’s
mobile data communication device upon detecting that one or more user-
defined triggering events has occurred.” Id. at 3:2–11.
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2. Analysis
Petitioner relies on essentially the same analysis for the ground above,
except now also relying on Gilhuly to “demonstrate[] that it would have
been obvious to implement the transmission from server 62 to the user
device 22 in Langseth using a push technique.” Pet. 65. Petitioner argues
that the preamble to claim 1 recites “[a] method for pushing information to a
mobile device,” and “it is not entirely clear what ‘pushing’ would require.”
Id. Thus, Petitioner combines the teaching of Langseth with Gilhuly, “a
reference that clearly discloses ‘pushing’ information under any reasonable
construction.” Id.
Petitioner provides a persuasive rationale for combining the teachings
of Gilhuly into the combination of references examined above. Pet. 67–68.
As explained by Petitioner, “[i]t would have been obvious to further
combine Langseth, Walther, Zeff, and Mann with Gilhuly” because doing so
“would have predictably resulted in the HTML email of Langseth being
pushed from the data distribution server 62 to the user mobile device 22,
according to the teachings of Gilhuly.” Id. at 67. “Langseth and Gilhuly
disclose similar systems for automatically transmitting information to the
user based on triggering events specified by the user,” and “Gilhuly
expressly describes that its ability to ‘integrat[e] with other host system
components such as E-mail’ as one of the advantages of its push technique.”
Id. at 67–68 (citing Ex. 1019, 5:18).
We have reviewed Petitioner’s contentions regarding claim 1 and
determine that the information presented shows by a preponderance of the
evidence that Langseth, Walther, Zeff, Mann, and Gilhuly teach all the
limitations of claim 1. See Pet. 65–69.
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Patent Owner has not specifically challenged this ground or the
addition of Gillhuly to the combination. Petitioner has demonstrated that
claim 1 would have been obvious over the combination of Langseth,
Walther, Zeff, Mann, and Gilhuly.

C. Obviousness Based on Langseth, Walther, Zeff, Mann, and Laux
Petitioner challenges the patentability of claims 9, 10, and 16 of the
’929 patent under 35 U.S.C. § 103(a) as obvious based on Langseth,
Walther, Zeff, Mann, and Laux. Pet. 69–72. In support thereof, Petitioner
identifies the disclosures in each reference alleged to describe the subject
matter in the challenged claims and further relies on the testimony of Dr.
Chatterjee.
We have reviewed the parties’ contentions and supporting evidence.
Based on the final record, we are persuaded that Petitioner has demonstrated
by a preponderance of the evidence that claims 9, 10, and 16 of the ’929
patent would have been obvious based on this ground. Below, we provide a
brief summary of Laux, and address the reasons for our determination.
1. Overview of Laux (Ex. 1020)
Laux, entitled “System and Method Including a Merging Driver for
Accessing Multiple Data Sources,” describes a software technique for
treating multiple distinct databases as a single large logical database.
Ex. 1020, code (57). “A user by a single query (or any other access
operation, e.g. for editing) can access data, which may be distributed over
multiple sources.” Id. at 1:51–53. Laux explains, “[b]y specifying the
sources to be accessed, a user can ‘merge’ different sources into a ‘virtual’
database, which looks to the user like a single database, but which is actually
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a grouping of several databases or sources selected by the user.” Id. at 1:53–
57. Laux discloses a “merging driver” that interacts with the application
programming interfaces (APIs) supporting various other databases, to
provide a unified interface to each of the databases. Id. at 1:39–59, 6:12–23.
2. Analysis
Petitioner explains that this ground “addresses independent claim 9,
and claims 10, 13, and 16, which depend from claim 9.” Pet. 69. Claim 9
requires “a database organized into a plurality of memory location
channels.” Id. According to Petitioner, “[i]t would have been obvious to
combine Laux with Langseth and the other references cited in Ground 1,
predictably resulting in the Langseth information delivery system in which
the channels in Langseth – even when implemented as separate databases –
were transformed in behavior into a single virtual database under the
teachings of Laux.” Id. at 71 (citing Ex. 1002 ¶ 181).
Petitioner presents a persuasive rationale for this combination because
Laux “provides a straightforward and express motivation to combine in that
its technique allows a search of multiple databases through a single query,
‘so a single query can provide the user with results, which are retrieved from
different sources.’” Pet. 71 (quoting Ex. 1020, 1:57–58).
Patent Owner has not specifically challenged this ground or the
addition of Laux to the combination. Petitioner has established persuasively
that Langseth, Walther, Zeff, Mann, and Laux teach all the limitations of
claims 9, 10, and 16. See Pet. 69–72. Petitioner has demonstrated that
claims 9, 10, and 16 would have been obvious over the combination of
Langseth, Walther, Zeff, Mann, and Laux.
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IV. CONCLUSION
For the reasons set forth above, based on the final trial record, we
determine that the information presented in the Petition establishes by a
preponderance of the evidence that all challenged claims (1, 9, 10, and 16)
would have been obvious. We therefore determine that each challenged
claim is unpatentable as set forth below.7
V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1, 9, 10, 16 of the ’929 patent have been
proven to be unpatentable;

7 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
Claims 35 U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1, 9, 10,
16 § 103(a)
Langseth, Walther,
Zeff, Mann
1, 9, 10, 16
1 § 103(a)
Langseth, Walther,
Zeff, Mann,
Gilhuly
1
9, 10, 16 § 103(a) Langseth, Walther, Zeff, Mann, Laux
9, 10, 16
Overall
Outcome
1, 9, 10, 16
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FURTHER ORDERED because this is a Final Written Decision,
parties to this proceeding seeking judicial review of the Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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For PETITIONER:

Heidi Keefe
Andrew Mace
COOLEY LLP
hkeefe@cooley.com
amace@cooley.com

For PATENT OWNER:

James Glass
Sam Stake
Ognjen Zivojnovic
QUINN EMANUEL URQUHART & SULLIVAN LLP
jimglass@quinnemanuel.com
ogizivojnovic@quinnemanuel.com
samstake@quinnemanuel.com