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UNITED STATES PATENT AND TRADEMARK OFFICE

_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD


_______________
GOOGLE INC.
Petitioner
v.
BUYSAFE, INC.
Patent Owner
_______________
U.S. Patent No. 8,515,791
Issue Date: August 20, 2013
Title: METHOD, SYSTEM AND COMPONENTS FOR OBTAINING,
EVALUATING AND/OR UTILIZING SELLER, BUYER AND TRANSACTION
DATA
_______________
Covered Business Method Review No. CBM2014-00122
________________________________
PETITION FOR COVERED BUSINESS METHOD REVIEW
UNDER 35 U.S.C. 321 AND 18 OF THE LEAHY-SMITH
AMERICA INVENTS ACT

I. INTRODUCTION .............................................................................................1
FORMALITIES .............................................................................................4

II.
A.

REAL PARTY IN INTEREST .............................................................................4

B.

RELATED MATTERS .......................................................................................4

C.

FEE ................................................................................................................4

D.

DESIGNATION OF LEAD AND BACKUP COUNSEL ............................................4

E.

POWER OF ATTORNEY ...................................................................................5

F.

SERVICE INFORMATION .................................................................................5

III. OVERVIEW OF THE 791 PATENT .........................................................5


A.

SUMMARY OF THE ALLEGED INVENTION OF THE 791 PATENT ......................5

B.

SUMMARY OF THE PROSECUTION HISTORY OF THE 791 PATENT ..................9


GROUNDS FOR STANDING....................................................................12

IV.
A.

THE 791 PATENT IS DIRECTED TO A COVERED BUSINESS METHOD ..............12

1. The 791 Patent Claims Methods Used in the Practice, Administration,


or Management of Financial Products or services ............................................12
2. At Least Claims 1 and 24 of the 791 Patent are not Directed to a
Technological Invention ................................................................................17
B.

GOOGLE IS ELIGIBLE TO FILE THIS PETITION...............................................21

V.

STATEMENT OF RELIEF REQUESTED ..............................................22

VI.

IDENTIFICATION OF PRIOR ART RELIED UPON ..........................22

VII. CLAIM CONSTRUCTION ........................................................................22


VIII. FULL STATEMENT OF THE REASONS FOR THE RELIEF
REQUESTED .........................................................................................................24
A. GROUND 1: CLAIMS 1-27 OF THE 791 PATENT ARE UNPATENTABLE UNDER
35 U.S.C. 103 BASED ON SAMSON IN VIEW OF WODA .........................................24
B. GROUND 2: CLAIMS 1-27 OF THE 791 PATENT ARE UNPATENTABLE UNDER
35 U.S.C. 103 BASED ON OLDHAM IN VIEW OF SCHROEDER AND WODA .............55
IX.

CONCLUSION ............................................................................................80

LIST OF EXHIBITS
Exhibit No. Description
Exhibit 1001 U.S. Patent No. 8,515,791 (the 791 patent)
SAP America, Inc. v. Versata Development Group, Inc., CBM
Exhibit 1002 2012-00001, Paper No. 36, Decision Institution of Covered
Business Method Review (January 9, 2013)
Congressional Record - Senate, Patent Reform Act of 2011, 157
Exhibit 1003
Cong. Rec. S1360-1394 (daily edition, March 8, 2011)
Volusion, Inc. v. Versata Software, Inc. and Versata Development
Exhibit 1004 Group, Inc., CBM 2013-00017, Paper No. 8, Decision Institution of
Covered Business Method Review (October 24, 2013)
Exhibit 1005 77 Fed. Reg. 157 (August 14, 2012) 48734-48773
Classification Definitions, Class 705, Data Processing: Financial,
Exhibit 1006 Business Practice, Management, or Cost/Price Determination.
January 2012
Exhibit 1007 Prosecution History for U.S. Patent Application No. 12/263,778
Complaint for Patent Infringement, buySAFE, Inc. v. Google Inc.,
Exhibit 1008
Civil Action No. 3:13-cv-00781-HEH (E.D. Va.)
Plaintiff buySAFEs Opening Claim Construction Brief,
Exhibit 1009 Document 39 from buySAFE, Inc. v. Google Inc., Civil Action No.
1:11-cv-01282-LPS (D. Del., Aug. 10, 2012)
Exhibit 1010 U.S. Patent No. 7,644,019 (the 019 patent)
Exhibit 1011 U.S. Patent Publication No. 2004/0210527 (Woda)
Exhibit 1012 U.S. Patent No. 7,228,287 (Samson)
Exhibit 1013 U.S. Patent Publication No. 2008/0103887 (Oldham)
Exhibit 1014 U.S. Patent Publication No. 2003/0130883 (Schroeder)
Declaration of Dr. Edward J. Cherian Concerning the Invalidity of
Exhibit 1015
U.S. Patent No. 8,515,791

ii

I.

INTRODUCTION
Through counsel, Google Inc. (Google or Petitioner) hereby petitions

for initiation of a covered business method review of U.S. Patent No. 8,515,791
(the 791 patent, Ex. 1001), for which an assignment to buySAFE, Inc.
(buySAFE) was recorded in the U.S. Patent and Trademark Office (USPTO)
database on November 3, 2008.
The 791 patent is directed to methods that perform web analytics to
measure consumer-to-customer conversion continuously throughout surfing,
through conversion and past completion of a purchase on-line. Ex. 1001, 5:24-26.
Cookies and other known tracking mechanisms are used to track consumer
behavior before and during the on-line purchase. Ex. 1001, 4:4-21. In
conjunction with the purchase, the 791 patent discloses that a financial product, or
transaction performance guaranty, may underwrite the obligations of the product
or service provider to reduce the risk of the consumer. Ex. 1001, 4:36:53. The
guaranty also allows tracking of consumer behavior after the on-line purchase
based on, for example, whether a party makes a claim against the obligations, or
through code related to the guaranty. Ex. 1001, 6:14-38.

While prosecuting the 791 patent, the applicants initially argued that the
prior art failed to disclose the monitoring of post-transaction activity.1 After two
Office Actions that rejected the claims in light of prior art that showed such a
limitation, the applicants amended all claims to add the limitation of determining
whether it is acceptable to assume some or all of a third partys obligation, and
added new claims that all included similar limitations.2 The applicants further
argued, in at least three different instances, that the prior art failed to disclose the
determining limitation. 3 Based on these amendments and arguments, the 791
patent was allowed.
Concurrently, buySAFE was asserting (and continues to assert) U.S. Pat. No.
7,644,019 by Woda et al. (the 019 patent, Ex. 1010) against Google.4 The 019
patent was, and continues to be, assigned to buySAFE, and includes inventors

Ex. 1007, April 11, 2011 Amendment, claims 1 and 14, p. 6.

Ex. 1007, August 17, 2012 Amendment after Final, amended independent claims

1 and 14 and new claims 25, 26 and 28.


3

See, e.g., Ex. 1007, June 11, 2012 Applicant-Initiated Interview Summary;

August 17, 2012 Amendment after Final, and p. 4; and May 30, 2013 ApplicantInitiated Interview Summary.
4

buySAFE, Inc. v. Google Inc., Civil Action No. 1:11-cv-01282-LPS (D. Del.).
2

common with the 791 patent (i.e., Steven L. Woda and Jeffrey E. Grass). The
019 patent was not disclosed to the USPTO during the prosecution of the 791
patent.
The 019 patent, as discussed below,5 discloses the identical limitations that
caused the 791 patent to be allowed, namely a transaction performance guaranty
service that is provided as part of an on-line transaction that includes a
determination of whether to accept third party obligations. See, e.g., Ex. 1010,
Abstract. BuySAFE itself made this argument during the claim construction
portion of the litigation.6
Therefore, one of the grounds of unpatentability herein (Ground 2) adds
the disclosure of the 019 patent in the form of Woda to the previous combination

The corresponding patent publication to the '019 patent, U.S. Pat. Pub. No.

2004/0210527 (Woda, Ex. 1011) is used for the below discussion and proposed
grounds because the '019 patent qualifies as prior art under 35 U.S.C. 102(e),
which may not be allowed for a CBM review. Woda was also not disclosed to the
USPTO during the prosecution of the 791 patent.
6

See Ex. 1009, Plaintiff buySAFEs Opening Claim Construction Brief, dated

Aug. 10, 2012, p. 11 (arguing that the '019 patent discloses [d]etermining that it is
acceptable to assume a risk on behalf of [the first party]).
3

of prior art asserted by the Examiner during prosecution of the 791 patent to show
a reasonable likelihood of prevailing. Another ground of unpatentability (Ground
1) uses a single prior art primary reference (Samson, Ex. 1012) that was not
before the Examiner during prosecution of the 791 patent in combination with
Woda.
II.

FORMALITIES
A.

REAL PARTY IN INTEREST

Google Inc. certifies that it is the real party-in-interest.


B.

RELATED MATTERS

The 791 patent has been asserted against Google in buySAFE, Inc. v.
Google Inc., Civil Action No. 3:13-cv-00781-HEH (E.D. Va.). See Ex. 1008.
C.

FEE

This petition is accompanied by the required payment in accordance with 37


C.F.R. 42.15(b). The Office is hereby authorized to charge any further fees that
may be required by this petition to Deposit Account No. 50-1165.
D.

DESIGNATION OF LEAD AND BACKUP COUNSEL

Lead Counsel

Back-Up Counsel

Barry S. Goldsmith, Reg. No. 39,690


Miles & Stockbridge P.C.
1751 Pinnacle Drive, Suite 500
Tysons Corner, VA 22102
bgoldsmith@milesstockbridge.com
Telephone: (703) 610-8680
Facsimile: (703) 842-6464

Keith M. Mullervy, Reg. No. 62,382


Miles & Stockbridge P.C.
1751 Pinnacle Drive, Suite 500
Tysons Corner, VA 22102
kmullervy@milesstockbridge.com
Telephone: (703) 610-8680
Facsimile: (703) 610-8686
4

E.

POWER OF ATTORNEY

A power of attorney is being filed with the designation of counsel in


accordance with 37 C.F.R. 42.10(b).
F.

SERVICE INFORMATION

As identified in the attached Certificate of Service, a copy of the present


petition, in its entirety, is being served to the address of the attorney or agent of
record. Google may be served at its counsel, Miles & Stockbridge P.C.
III.

OVERVIEW OF THE 791 PATENT

A.

SUMMARY OF THE ALLEGED INVENTION OF THE 791 PATENT

The 791 patent is directed to methods that perform web analytics to


measure consumer-to-customer conversion continuously throughout surfing,
through conversion and past completion of a purchase on-line. Ex. 1001, 5:24-26;
Ex. 1015, 20. As for tracking before and up to the purchase, the 791 patent
discloses that a consumer's click-stream can include an indication of every
website and every page of every website that the consumer visits. Ex. 1001, 4:57; Ex. 1015, 20. However, click-streams consistently end at the time that
payment is tendered for a purchased item. Ex. 1001, 4:4-5; Ex. 1015, 20.
As a mechanism used to facilitate the tracking of post-transaction activity,
the 791 patent discloses a financial product referred to as a Transaction Related
Offering or TRO. Ex. 1001, 4:36; Ex. 1015, 21. The TRO is any product or
5

service of perceived or actual value that is provided to a consumer in connection


with a transaction, such as an on-line transaction to purchase products or services,
for at least the purpose of motivating the consumer to purchase products or
services at the present time and/or in the future. Ex. 1001, 4:37-40; Ex. 1015,
21. Examples of a TRO disclosed in the 791 patent include a transaction
performance guaranty, wherein a safe transaction service provider underwrites the
obligations of the product or service provider to reduce risk to the consumer. Ex.
1001, 4:43-46; Ex. 1015, 21. Other examples include free shipping of a
purchased product, a warranty for the product that is not automatically provided by
the manufacturer, preferred or alternative product or service pricing, coupons or
offers for additional products and/or services, etc. Ex. 1001, 4:47-50; Ex. 1015,
21.
The TRO allows for post-transaction tracking of consumer behavior. Ex.
1015, 22. For example, if the TRO is the underwriting of the seller's
obligations, post-transaction activity may include determining whether a claim has
been made by the beneficiary (e.g., the customer), and processing of the claim.
Ex. 1001, 5:1-4; Ex. 1015, 22. Further, code related to the TRO may facilitate
data gathering: TRO related graphic code may also be incorporated with an
applet (e.g., a Java applet) that may be designed to perform certain data gathering
tasks related to the transaction or the TRO. Ex. 1001, 6:55-58; Ex. 1015, 22.
6

The data obtained from the TRO related tracking disclosed in the 791 patent
can be used to determine consumer behavior. Ex. 1001, 7:4-7; Ex. 1015, 23. For
example, the information may be used to determine how to increase consumer
likelihood to engage with a website by understanding, for example, actual
conversion to usage, time spent on a website or particular webpage, CTR (Click
Through Rate) to a TRO related environment, e.g., a website associated with a
TRO provider, number of page views, etc. Ex. 1001, 7:8-12; Ex. 1015, 23.
Further, it may be determined how one or more TROs (such as those illustrated in
FIG. 1) impact current and future consumer behavior from point of entry of a
consumer in an on-line environment. Ex. 1001, 7:13-16; Ex. 1015, 23. The
791 patent further discloses that the impact or effect of various parameters of the
TROs are determined: a TRO impact report may be generated to indicate impact
and efficacy of one or more TROs offered in the on-line environment and/or
parameters associated with such TROs, e.g., placement of TRO graphic, type of
TRO graphic, cost of TRO, frequency of placement, duration of TRO, etc. Ex.
1001, 11:23-28; Ex. 1015, 23.
However, the alleged novelty of the 791 patent of measuring consumer-tocustomer conversion and tracking consumer behavior continuously throughout
surfing, through conversion and past completion of a purchase on-line was well
known before the priority date of the 791 patent. Ex. 1015, 24. First, as
7

acknowledged in the 791 patent, and consistent with the prior art discussed below,
the concept of determining consumer behavior using a clickstream during surfing
and a conversion/sale was well known. Ex. 1001, 4:11-21; Ex. 1015, 24.
Further, the concept of tracking consumer behavior past completion of the
purchase and using a transaction performance guarantee for on-line transactions is
disclosed in buySAFEs own 019 patent and other prior art discussed below. Ex.
1015, 24. The prior art discussed below also discloses tying together pre- and
post- transaction activity to determine consumer behavior. Ex. 1015, 25. For
example, Samson (Ex. 1012) discloses incentives that are offered to facilitate a
sale, and the tracking of the effects of the incentives when an incentive is
accepted/redeemed in conjunction with a sales transaction. Ex. 1015, 25.
Therefore, as explained in detail below and in the corresponding declaration
of Dr. Edward J. Cherian (Ex. 1015), the claims of the 791 patent would not have
been considered new or non-obvious to a person of ordinary skill in the art at the
time of filing.7

All references to a person of ordinary skill in the art (POSA) refer to the

knowledge or understanding of a person of ordinary skill in the art as of November


2, 2007 (the earliest priority date of the 791 patent). A POSA would have at least
a bachelor degree in electrical engineering, systems engineering, computer
8

B.

SUMMARY OF THE PROSECUTION HISTORY OF THE 791 PATENT

The non-provisional application (U.S. Application No. 12/263,778) that


resulted in the 791 patent was filed on November 3, 2008 and claims priority to
U.S. Provisional Application No. 60/985,001 (filed November 2, 2007).
In response to the first Office Action dated August 23, 2011, rejecting all
pending claims based on a primary reference Oldham (Ex. 1013), the applicants
amended all claims and argued that [a]s indicated by the Examiner and his
supervisor, these amendments effectively distinguish the claimed invention from
the asserted prior art because the art fails to teach or suggest monitoring of
consumer following a sales transaction and analyzing that behavior to generate
consumer behavior data. Ex. 1007, November 4, 2011 Amendment, p. 6.
On March 1, 2012, a Final Office Action was issued, again rejecting all
pending claims in the application. Ex. 1007, March 1, 2012 Final Office Action.
In the March 1, 2012 Final Office Action, the Examiner combined prior art
reference Schroeder (Ex. 1014) with Oldham to reject the claims. Schroeder was

engineering, computer science, or a related field, and approximately two years of


work experience in the field of Internet technology and computer software for
modeling and managing business or financial activities and e-commerce. Ex.
1015, 14.
9

cited, for the most part, for the disclosure of monitoring consumer behavior past
completion of a sales transaction. See, e.g., id., p. 7.
In response, the applicants conducted an Examiner interview on June 11,
2012. During the interview, the applicants argued that the prior art does not
disclose (1) monitoring of [a] consumer following a sales transaction and
analyzing that behavior to generate consumer behavior data"; and (2) the at least
one sales transaction related offering is the underwriting of one party's obligations
in a sales transaction." Ex. 1007, June 11, 2012 Applicant-Initiated Interview
Summary.
Further in response to the Final Office Action, on August 17, 2012 the
applicants filed a Request for Continued Examination (RCE) with an amendment
to all independent claims. The amendment added the limitation wherein the at
least one sales transaction involves determining whether it is acceptable to assume
some or all of a third partys obligation in the at least one sales transaction to all
pending independent claims. Ex. 1007, August 17, 2012 Amendment after Final,
pp. 2-5. New claims that included similar limitations and that resulted in issued
claims 24-27 were also added. Id., pp. 5-7. In the Remarks section, the
applicants stated that [b]y this amendment, the independent claims have been
focused to more specifically claim aspects of the invention as discussed during the
telephone interview. Id., p. 8.
10

On May 30, 2013, the Examiner mailed a Notice of Allowance with an


Interview Summary stating: Examiner acknowledged the prior examinations of
other examiners and the additional claim limitation regarding the determination of
whether to accept third-party obligations associated with the claim amendments
and barring any further discovery in a search of the prior art, a Notice of
Allowance would issue. Ex. 1007, May 30, 2013 Notice of Allowance, p. 6. The
791 patent was ultimately issued on August 20, 2013.
While prosecuting the 791 patent, buySAFE was asserting U.S. Pat. No.
7,644,019 by Woda et al. (the 019 patent, Ex. 1010) against Google. The 019
patent discloses the identical limitations that caused the 791 patent to be allowed.
Ex. 1015, 31. For instance, during the claim construction phase of the litigation,
buySAFE argued that the 019 patent discloses [d]etermining that it is acceptable
to assume a risk on behalf of [the first party]). See Ex. 1009, Plaintiff
buySAFEs Opening Claim Construction Brief, dated Aug. 10, 2012, p. 11.
Despite making this argument regarding the 019 patent, a mere one week later
during its prosecution of the 791 patent buySAFE amended its claims to require
nearly identical language (i.e., determining whether it is acceptable to assume
some or all of a third partys obligation in the at least one sales transaction) and
stated that the Examiners agreed that the prior art did not address the underwriting
as recited in some of the claims. Ex. 1007, August 17, 2012 Amendment after
11

Final, pp. 2-5, 8. Unfortunately, buySAFE failed to submit both the 019 patent
and its claim construction arguments to those Examiners.
IV.

GROUNDS FOR STANDING


A.

THE 791 PATENT IS DIRECTED TO A COVERED BUSINESS METHOD

The Patent Trial and Appeal Board (PTAB) may institute a transitional
post-grant review proceeding for review of the validity of covered business method
patents. AIA 18(a)(1). A covered business method patent is a patent that
claims a method or corresponding apparatus for performing data processing or
other operations used in the practice, administration, or management of a financial
product or service, except that the term does not include patents for technological
inventions. AIA 18(d)(1) and 37 C.F.R. 42.301(a). As discussed below, the
791 patent has one or more claims that are directed to a covered business method.
Thus, the 791 patent is eligible for covered business method patent review.
1.
THE 791 PATENT CLAIMS METHODS USED IN THE
PRACTICE, ADMINISTRATION, OR MANAGEMENT OF FINANCIAL
PRODUCTS OR SERVICES
The claims of the 791 patent are directed to monitoring and analyzing
consumer sales data. Ex. 1001, 17:56 - 20:56. This falls within the definition of
financial products or services. To qualify as a covered business method patent, the
claims need not to have a literal recitation of the terms financial products or
services. Ex. 1002, p. 23. Instead, the term financial is an adjective that simply
12

means relating to monetary matters. Ex. 1002, p. 23. Activity that is incidental
and complementary to a financial activity falls within the definition of AIA
18(d)(1). Ex. 1002, p. 23 (citing 77 Fed. Reg. 157 (August 14, 2012) 48734,
48736). If even a single claim of a patent, interpreted in light of the specification
of the patent and the knowledge of ordinary skill in the art, encompasses the
practice, administration, or management of a financial product or service, then the
patent satisfies the financial product or service requirement for a covered
business method patent. See, e.g., Ex. 1004, pp. 5-6; Ex. 1002, pp. 22-24; Ex.
1005, pp. 48735-36.
Claim 24 of the 791 patent is directed to a method for performing
systematic analysis of consumer behavior data to predict consumer demand. Ex.
1001, 20:1-3. In the claimed method, the at least one sales transaction includes a
transaction performance guaranty service for some or all of one partys obligations
in the at least one sales transaction. Ex. 1001, 20:21-24. In view of the 791 patent
specification, and as recited in claim 25, the transaction performance guaranty can
be a surety bond, a specialized bank guaranty, or a specialized insurance policy.
Ex. 1001, 15:36-39; Claim 25. Such products are clearly considered financial
products and services as contemplated by the AIA. See Ex. 1008, p. 6 (discussing
method claims directed to offering insurance as financial products or services).

13

Moreover, the method of claim 24 includes monitoring behavior of at least


one consumer prior to, during, and subsequent to at least one sales transaction to
generate consumer behavior data, and analyzing the generated consumer behavior
data. Ex. 1001, 20:4-15. Thus, claim 24 requires data processing of consumer
sales data covering financial activity. In addition, the analysis is to determine the
efficacy of a plurality of parameters relating to one or more sales transaction
related offerings. Ex. 1001, 20:13-15. As discussed in the 791 patent
specification, the invention improves management and assessment of the efficacy
of delivery of Transaction Related Offering (TROs). Ex. 1001, 1:15-17. A TRO
refers to any product or service of perceived or actual value that is provided to a
customer in connection with a [sales] transaction. Ex. 1001, 4:36-39 (emphasis
added). Therefore, claim 24 covers subject matter that is financial in nature,
incidental to a financial activity or complementary to a financial activity. Ex.
1002, pp. 21-22.
Claim 1 of the 791 patent is also directed to a method for performing
systematic analysis of consumer behavior data to predict consumer demand. Ex.
1001, 17:56-58. In the claimed method, the at least one sales transaction involves
determining whether it is acceptable to assume some or all of a third partys
obligations in the at least one sales transaction. Ex. 1001, 18:8-11. In other words,
claim 1 relates to underwriting. As noted in the legislative history, practice,
14

administration, and management is intended to cover any ancillary activities


related to a financial product or service, including, without limitation, marketing,
customer interfaces, Web site management and functionality, transmission or
management of data, servicing, underwriting, customer communications, and back
office operations - e.g., payment processing, stock clearing. Ex. 1003, S1365
(statement of Sen. Schumer) (emphasis added). Thus, even if the underwriting of
claim 1 could not be considered a financial product in and of itself, it is an
ancillary activity to a financial product or service. Accordingly, the claimed
assumption of third party obligations in a sale transaction clearly falls within the
scope contemplated by AIA 18(d)(1).
Moreover, the method of claim 1 includes monitoring behavior of at least
one consumer prior to, during, and subsequent to at least one sales transaction to
generate consumer behavior data, and analyzing the generated consumer behavior
data to determine efficacy of a plurality of parameters relating to one or more sales
transaction related offerings. Ex. 1001, 17:59-18:2. Thus, similar to claim 24,
claim 1 involves data processing of consumer sales data covering financial activity
and covers subject matter that is financial in nature, incidental to financial activity
or complementary to a financial activity.
Claim 1 therefore recites a method directed to data processing used in the
practice, administration, or management of a financial product or service, and thus
15

falls within the definition of a covered business method. Claims 2-11, 23 and 2627 recite substantially similar limitations to those noted above with respect to
claim 1. See Ex. 1001, 18:12-45, 19:34-57, and 20:29-56. A POSA would
recognize that claims 1-11, 23, and 26-27, as well as the remaining claims, also
encompasses the practice, administration, or management of a financial product or
service. Ex. 1015, 34.
The patent classification further supports the assertion that the 791 patent
qualifies as a covered business method patent. The USPTO has recognized that
patents subject to covered business method patent review are anticipated to be
typically classifiable in Class 705. Ex. 1005, 48739. Based on the issued claims,
the 791 patent has been classified by the USPTO in USPC 705/7.11, which relates
to data processing for operations research or analysis with automated electrical
financial or business practice or management arrangement. See Ex. 1001 and Ex.
1006, 705-7. The 791 patent has also been classified in USPC 705/7.29, which is
a subclass of 705/7.11 and relates to market data gathering, market analysis or
market modeling. See Ex. 1001 and Ex. 1006, 705-12. Since the 791 patent has
not been classified in any other USPC class and in view of the discussion above
regarding the claims, the 791 patent clearly claims data processing or other
operations used in the practice, administration or management of a financial
product or service, as required under the statute.
16

AT LEAST CLAIMS 1 AND 24 OF THE 791 PATENT ARE NOT


2.
DIRECTED TO A TECHNOLOGICAL INVENTION
One or more of the claims of the 791 patent are also not directed to a
technological invention. See AIA 18(d)(1). The PTAB rules provide the
following definition of technological invention:
(b)

Technological invention. In determining whether a patent is

for a technological invention , the following will be considered on


a case-by-case basis: whether the claimed subject matter as a whole
recites a technological feature that is novel and unobvious over the
prior art; and solves a technical problem using a technical solution.
37 C.F.R. 42.301(b).
The presence of a single claim that is not directed to a technological invention is
sufficient to institute a CBM review. See Ex. 1002, p. 26.
The PTAB Office Trial Practice Guide provides guidance with respect to
claim content that would not render a patent a technological invention as follows:
(a)

Mere recitation of known technologies, such as computer

hardware, communication or computer networks, software, memory,


computer readable storage medium, scanners, display devices, or
databases, or specialized machines, such as ATM or point of sale
device.
(b)

Reciting the use of known prior art technology to accomplish

a process or method, even if the process or method is novel and nonobvious.

17

(c)

Combining prior art structures to achieve the normal,

expected or predictable result of that combination.


Ex. 1005, 48763-64.
Thus, a technological invention is one that has both (1) a novel, unobvious
technological feature and (2) a technical solution to a technical problem. In this
context, it is apparent that the 791 patent cannot qualify as a technological
innovation.
At least claims 1 and 24 of the 791 patent lack a novel and unobvious
technological feature. Those claims are each directed to a method of performing
systematic analysis of consumer behavior to predict consumer demand, wherein
consumer behavior is monitored and analyzed to determine efficacy of a sales
transaction related offering. Ex. 1001, 17:56-18:2, 19:34-47, 20:1-15; 20:29-43.
While the claims discuss monitoring by at least one server coupled to at least one
communication network and analyzing at at least one server coupled to the least
one communication network, these recitations merely define the context of the
method. See id. The alleged novelty of the 791 patent is in the performance of
the method, i.e., analyzing consumer behavior and determining efficacy of
parameters relating to a transaction related offering, and not in any particular
hardware or software employed.
Indeed, the claims do not require, nor have the inventors proposed, any
novel computer software or hardware to achieve the claimed methods. Ex. 1015,
18

38. To the contrary, the specification of the 791 patent only discusses well known
examples of software and hardware that can be used to practice the claimed
methods. Ex. 1015, 38. For example, the patent describes the technology for
monitoring consumer behavior as including cookies, Macromedia Flash, Microsoft
Silverlight, or JavaFX, which are all known technologies. Ex. 1001, 8:4-49; Ex.
1015, 39. The patent also indicates that:
a plurality of appropriate tracking methods may be utilized to
measure consumer behavior and TRO-related activity including
tracking of consumer based on presentation of a graphic associated
with the TRO (also referred to as a TRO graphic) and seller
provided TRO related information.
Ex. 1001, 6:25-30; Ex. 1015, 40. Consequently, according to the 791
patent, no specific unconventional software, computer equipment, tools, or
processing capabilities are required in performing the claimed methods.
Ex. 1015, 41.
Moreover, the claims all make reference to known technologies, such as a
server and communication network, which cannot qualify the patent as a
technological invention. Ex. 1015, 38. As noted in the legislative history of the
AIA, a patent is not a technological invention because it combines known
technology in a new way to perform data processing operations. Ex. 1003,
S1364. Indeed, the mere recital of known prior art technology to effect a method,
19

even if the method itself is novel and unobvious, is insufficient to render the patent
to be a technological invention. See Ex. 1004, pp. 7-8. A POSA would recognize
that subject matter claimed in the 791 patent does no more than combine known
technology to perform data processing operations. Ex. 1015, 42.
The claimed methods also do not solve a technical problem using a technical
solution. One problem addressed by the 791 patent of determining efficacy of
parameters related to a transaction related offering by monitoring consumer
behavior subsequent to a transaction is not a technical one. Rather, the
determination of efficacy of parameters related to a transaction related offering is a
business problem. Ex. 1015, 43. The 791 patent further emphasizes that it is the
monitoring of the consumer behavior with respect to the sales transaction that the
alleged invention seeks to address, not any particular deficiency in current
monitoring technologies. See e.g., Ex. 1001, 1:10-18, 3:50-4:33. Nor do the
claims offer any technical solution for this problem. Ex. 1015, 45. The claims
merely recite conventional servers and communication networks where the
monitoring and analysis occurs. Ex. 1015, 45. In addition, during prosecution,
the Examiner did not consider claim 1 to be allowable over the prior art until
buySAFE included the limitation of wherein the at least one sales transaction
involves determining whether it is acceptable to assume some or all of a third
partys obligations in the at least one sales transaction. Ex. 1007, August 17,
20

2012 Amendment after Final, p. 2. Similar features were also recited in claims 12,
23 and 26. Ex. 1001, 18:66-19:2, 19:53-57, 20:49-53. Claim 24 recites a similar
feature of the at least one sales transaction includes a transaction performance
guaranty service for some or all of one partys obligations in the at least one sales
transaction. Ex. 1001, 20:21-24. Yet these features that supposedly distinguished
over the prior art of record are not technical solutions to technical problems.
Rather, these features merely recite determining or including a performance
guaranty service associated with a sales transaction, which may be performed by a
human intermediary. Accordingly, the claims of the 791 patent fail to provide a
technical solution to a technical problem. Ex. 1015, 43.
For at least the foregoing reasons, at least claims 1, 12, 23, 24 and 26 of the
791 patent are not directed to a technological invention.
B.

GOOGLE IS ELIGIBLE TO FILE THIS PETITION

The 791 patent has been asserted against Google in buySAFE, Inc. v.
Google Inc., No. 3:13-cv-00781 (E.D. Va.). See Ex. 1008.
Google certifies that estoppel does not prohibit review on the grounds
identified in this petition. Further, Google has not been a party to any other postgrant review of the challenged claims. Google is thus eligible under 37 C.F.R.
42.302 to file this petition.

21

In addition, a petition for post grant review of the 791 patent is not available
because the 791 patent is not subject to the first inventor-to-file provisions, so the
filing of this petition is not precluded.
V.

STATEMENT OF RELIEF REQUESTED


Petitioner requests cancellation of claims 1-27 (the Challenged Claims) of

the 791 patent based on the following grounds of unpatentability:


Ground
1

Claims
1-27

Description
Invalid under 35 U.S.C. 103 as being obvious
based on Samson in view of Woda

1-27

Invalid under 35 U.S.C. 103 as being obvious


based on Oldham in view of Schroeder and Woda

VI.

IDENTIFICATION OF PRIOR ART RELIED UPON

Exhibit 1011 U.S. Patent Publication No. 2004/0210527 (Woda)


Exhibit 1012 U.S. Patent No. 7,228,287 (Samson)
Exhibit 1013 U.S. Patent Publication No. 2008/0013887 (Oldham)
Exhibit 1014 U.S. Patent Publication No. 2003/0130883 (Schroeder)
VII. CLAIM CONSTRUCTION
In covered business method reviews, claim terms are interpreted under the
broadest reasonable construction in light of the specification of the patent in
which it appears standard. 37 C.F.R. 42.300(b). In compliance with 37 C.F.R.

22

42.304(b)(3) and pursuant to the USPTOs final Office Practice Guide, a party
may provide a simple statement that the claims terms are to be given their
broadest reasonable interpretation, as understood by one of ordinary skill in the art
and constituent with the disclosure. 77 FR 48764, Aug. 14, 2012, effective Sept.
16, 2012.
Any proposed constructions in this Petition are not binding on Google in
litigation or in other forums that apply different standards of claim construction
than the broadest reasonable construction standard applied by the PTAB in covered
business method review proceedings. Also, while Google believes these are all the
terms requiring construction, Google reserves the right to request that additional
terms be construed, for example, in response to arguments by buySAFE.
Petitioner hereby provides the simple statement that the claims terms are to
be given their broadest reasonable interpretation, as understood by one of ordinary
skill in the art and constituent with the disclosure. To supplement the simple
statement, the broadest reasonable constructions for the following claim terms of
the 791 patent are provided below and are incorporated into the patentability
challenges raised herein:
Determine efficacy of a plurality of parameters relating to one or more
sales transaction related offerings: Under the broadest reasonable
interpretation, this term should mean determine the impact on consumer behavior
23

of two or more characteristics of one or more sales transaction related offerings.


Ex. 1001, 11:23-28; 13:58-62; Ex. 1015, 50.
Sales transaction related offering: Under the broadest reasonable
interpretation, this term should mean any product or service of perceived or actual
value that is provided to a consumer in connection with a sales transaction for at
least the purpose of motivating the consumer to purchase products or services. Ex.
1001, 4:35-43; Ex. 1015, 51.
Transaction performance guaranty: Under the broadest reasonable
interpretation, this term should mean promise to assume one or more obligations of
a party to a sales transaction. Ex. 1001, 4:42-46, 20:22-24; Ex. 1007, August 17,
2012 Amendment after Final; Ex. 1015, 52.
Shared object: Under the broadest reasonable interpretation, this term
should mean the same as cookie. Ex. 1001, 7:50-52 (A Flash shared object
(also referred to merely as a shared object or local shared-object, is essentially a
Flash implemented cookie.); Ex. 1015, 53.
VIII. FULL STATEMENT OF THE REASONS FOR THE RELIEF REQUESTED
A.

GROUND 1: CLAIMS 1-27 OF THE 791 PATENT ARE UNPATENTABLE


UNDER 35 U.S.C. 103 BASED ON SAMSON IN VIEW OF WODA

Samson in view of Woda, a printed publication of the application for


buySAFE's 019 patent, discloses each and every claim element of claims 1-27 of
the 791 patent. Ex. 1015, 54.
24

1.

OVERVIEW OF SAMSON (EX. 1012)

U.S. Patent No. 7,228,287 to Samson et al. (Samson) was filed on


November 13, 2000 and issued on June 5, 2007. Samson is available as prior art at
least under 35 U.S.C. 102(a). Samson was not cited during prosecution of the
791 patent.
Samson discloses that an incentive system 20 is incorporated to an overall
product sales system with a data provider system 10 and a product supplier system
30. Ex. 1012, 3:28-30; Fig. 2; Ex. 1015, 56. As a consumer bids on items
through the Internet, the consumer's browsing behavior 3, bidding behavior 4,
and other data 5 is recorded and sent to system 20. Ex. 1012, 3:56-4:9; Fig. 2; Ex.
1015, 56. System 20 records this received data for all bidders, including
browsing behavior 11, bidding and behavior values 12, personal computer
information 13, such as an Internet service provider and modem speed, and
transaction history 14. Ex. 1012, 4:19-24; Fig. 2; Ex. 1015, 57. The
information received by system 20 in connection with all bidders is used to create
a consumer profile 16. Ex. 1012, 4:44-45; Fig. 2; Ex. 1015, 57.
Samson discloses that consumer profile 16 includes the behavior of bidders
prior to and during sales transactions: the browsing behavior 11 has click
stream information, which includes other components of the auction site that were
visited by the consumer, number of pages visited, time spent on each page during
25

each visit per each auction, number of auctions visited/participated, and frequency
of revisiting auctions. Ex. 1012, 4:24-30; Fig. 2; Ex. 1015, 58. Samson
discloses that consumer profile 16 further includes the behavior of bidders during
and subsequent to sales transactions: the bidding and behavior values 12
includes bidding history, start bid, bid frequency, bid increment, final bid, winning
bid, target product, coupon redemption rate . . . whether the consumer's bid was a
successful bid, which is the winning bid, or an unsuccessful bid. Ex. 1012, 4:3040; Fig. 2; Ex. 1015, 59. For example, a POSA would understand that a coupon
would be redeemed after/subsequent the sale. Ex. 1015, 60.
Samson discloses that system 20 will generate incentives 24 using a
learning model. Ex. 1012, 6:43-44; Ex. 1015, 61. The learning model
calculates the incentives based on the information in the consumer profile,
classification, product consideration set, seller's inventory position 36, and
incentive options 37. Ex. 1012, 6:44-47; Ex. 1015, 61. The incentives may be
in the form of a coupon, discount, rebate, additional product, reward, or any other
type of offer. Ex. 1012, 8:50-53; Ex. 1015, 61. The incentives may also include
free add-ons, such as more warranty or free or otherwise discounted additional
goods or services. Ex. 1012, 6:21-22; Ex. 1015, 61.
In connection with the incentives, Samson discloses that parameters
(referred to as incentive options 37), such as the amount of a discount to offer for
26

a discount incentive, are determined. See, e.g., Ex. 1012, 6:8; Ex. 1015, 62.
When the consumer profile is classified 18, the unsold item from inventory is
chosen 17, and the seller's inventory position 36 and incentive options 37 are
determined, the system 20 will generate incentives 24 using a learning model.
Ex. 1012, 6:40-44; Ex. 1015, 62.
Examples of the incentive options disclosed in Samson include additional
percentage or specified amount discounts from manufacturers to help the seller or
retailer move the inventory, such as where the retailer gives an additional 5%
incentive on all Model 1234 goods or services moved out of inventory, and free
add-ons, such as more warranty or free or otherwise discounted additional goods or
services. Ex. 1012, 6:16-28; Ex. 1015, 63. Examples of inventive/incentive
options generated include: a coupon for $91 off a J brand product A with a MSRP
(manufacturer's suggested retail price) of $299.95 from Stereo Store, a coupon for
$71 off a P brand product A with a MSRP of $349.99 from Electronic Retailer, a
coupon for $46 off a S brand product A with a MSRP of $299.99 from Ed's
Manufacturer, and a coupon for a S brand product B with a MSRP of $249.99 from
Stereo Store. Ex. 1012, 8:57-63; Ex. 1015, 63. A POSA would understand that
in Samson, parameters/incentive options would correspond to each incentive
offered, such as an amount of discount for a discount incentive, the number of

27

additional years for a more warranty incentive, the brand of the product subject
to an incentive, etc. Ex. 1015, 64.
Once generated, system 20 will then offer the incentive 25 to the
consumer. Ex. 1012, 8:39-40; Ex. 1015, 65. Samson discloses that the
incentive, and associated incentive option, is determined, generated and provided
for a specific sales transaction to a specific consumer: The incentive may be a
general incentive for any product or a specific incentive for a specific product. In
addition, the notification may contain one or more incentives offered at the same
time to the same consumer. Ex. 1012, 8:43-45; Ex. 1015, 65.
When the incentive is delivered to the consumer, the consumer has the
option of selecting the incentive 27. Ex. 1012, 9:3-4; Ex. 1015, 66. If the
incentive is redeemed, the behavior of the customer is then updated (i.e.,
subsequent or past completion to the sales transaction): if the consumer
chooses to select the incentive, specified by yes 29, the consumer profile will be
updated 50 with information that the incentive was redeemed and the redemption
will be processed 52. Ex. 1012, 9:12-15; Ex. 1015, 66. The redemption
information is then used to determine how accurate the learning model is
performing so that it can be adjusted for future incentives and therefore determine
the efficacy of the incentives. Ex. 1012, 9:15-17; Ex. 1015, 67. In the preferred
embodiment, the redemption rate is among the primary indicators monitored and
28

updated in order to improve the accuracy of the attributes, of the data, and their
weightings in the learning model. Ex. 1012, 6:59-63; Ex. 1015, 67.
As with coupon redemptions, a POSA would understand that incentives such
as rebate, additional product, reward, or any other type of offer would also be
redeemed after/subsequent the sale. Ex. 1015, 68. Samson further discloses
that the learning model of consumer behavior generates data after/subsequent to
sales transactions: The learning model is constantly monitored and updated to
improve accuracy. When the system 20 is turned on at Day 0, it has minimal
information on which to base incentive generation decisions. As time goes by and
redemption data is accumulated, statistics will be used in the learning model to
determine what information, or attributes, add to the ability to accurately produce
incentives and which attributes do not add value. Ex. 1012, 6:49-56 (emphasis
added); Ex. 1015, 69.
Samson discloses that the attributes of consumer behavior are analyzed to
determine the impact on the incentives: Over time, it is possible to more
accurately understand how important each attribute is in computing the proper
incentive. Ex. 1012, 6:57-59; Ex. 1015, 70. The attributes include redemption
rate, as well as intensity (how often the consumer bid, checked on the current bid
price, viewed the website in general), competitiveness (if the consumer responded
each and every time he or she was outbid), final bid-price (as a percentage or full29

retail price of an item, where the higher the final bid, the less of an incentive a
consumer will receive), and zip code driven demographics (higher level annual
income zip-codes will receive less of a discount than lower annual income zip
codes). Ex. 1012, 7:10-18; Ex. 1015, 70. Therefore, a POSA would understand
that Samson discloses the impact of a plurality of attributes/parameters on the
incentives. Ex. 1015, 70.
Samson further discloses that there are many different incentive and award
programs to influence consumers to purchase on-line. Ex. 1012, 1:56-57; Ex.
1015, 71. As discussed, Samson discloses that one of the incentives may be
more warranty. Ex. 1012, 6:21-22; Ex. 1015, 78. Arguably, an additional
warranty may not be considered a disclosure of the limitations of assume some or
all of a third partys obligations, recited in claims 1-23 of the 791 patent, a
transaction performance guaranty, recited in claims 24 and 25 of the 791 patent,
or assume one or more obligations of a party that provides a product or a service,
recited in claims 26 and 27; Ex. 1015, 79. Regardless, Samson discloses that the
incentives may be any other type of offer. Ex. 1012, 8:50-53; Ex. 1015, 79.
2.

OVERVIEW OF WODA (EX. 1011)

U.S. Patent Pub. No. 2004/0210527 to Woda et al. (Woda) (Ex. 1011) was
filed on April 21, 2003, was published on October 21, 2004, and issued as the 019

30

patent, which is currently being asserted against Google. Woda is available as


prior art at least under 35 U.S.C. 102(b).
As discussed above, Woda and the 019 patent have some common
inventors (i.e., Woda and Grass), and have a common assignee (i.e., buySAFE)
with the 791 patent. However, neither Woda or the 019 patent was cited during
prosecution of the 791 patent, despite buySAFE's amendments adding language
based on the 019 patent to the claims of the 791 patent.
Woda discloses that Fig. 1 depicts a framework 100 in which a safe
transaction service provider provides a transaction performance guaranty for a
transaction involving a party who obtains the safe transaction service through an
underwriting process, according to one embodiment of the inventions. Ex. 1011,
[0031] (emphasis added); Ex. 1015, 83. The transaction performance guaranty
service, which may be obtained for a fee, provides a separate performance
guaranty on behalf of its subscriber for each transaction involving the subscriber.
Ex. 1011, [0033]; Ex. 1015, 83.
Examples of the transaction performance guarantee disclosed in Woda
include a surety bond 220, a specialized bank guaranty 230, . . . , a specialized
insurance policy 240, or in a form of a safe transaction guaranty 250. Ex. 1011,
[0035]; Ex. 1015, 84. The safe transaction service provider 130 may provide its
own guaranty in the form of, for instance, the surety bond 220 and the safe
31

transaction guaranty 250. Ex. 1011, [0035]; Ex. 1015, 84. The safe
transaction service provider 130 may also provide a performance guaranty in forms
supported by other institutions such as the specialized bank guaranty 230 supported
by a bank or the specialized insurance policy 240 (or surety bond) supported by an
insurance company. Ex. 1011, [0035]; Ex. 1015, 84.
Woda discloses a framework 600 in which the safe transaction service
provider 130 may interact with a marketspace provider 610 in order to effectively
facilitate a transaction performance guaranty service to parties involved in
transactions posted in a marketspace provided by the marketspace provider 610.
Ex. 1011, [0053]; Ex. 1015, 85. As indicated by the disclosed marketspace
providers, the transaction is an on-line transaction using a communication network:
Examples of such a marketspace provider may be eBay, uBid, Amazon Auctions,
or Yahoo Auctions. Ex. 1011, [0053]; Ex. 1015, 85.
Woda discloses an underwriting process to determine service subscribers:
the safe transaction service provider 130 determines service subscribers according
to their qualifications measured using different approaches. Ex. 1011, [0047];
Ex. 1015, 86. In framework 100, the safe transaction service provider 130
underwrites each applicant requesting different services. Ex. 1011, [0047]; Ex.
1015, 86. The underwriter 140 may communicate with different entities to

32

gather relevant information in order to make a qualification decision about each


service applicant. Ex. 1011, [0048]; Ex. 1015, 86.
Therefore, a POSA would understand that Woda discloses determining
whether it is acceptable to assume some or all of a third party's obligations in the at
least one sales transaction (as recited in independent claims 1, 12 and 23 of the
791 patent), wherein the at least one sales transaction includes a transaction
performance guaranty service for some or all of one party's obligations in the at
least one sales transaction (as recited in independent claim 24 of the 791 patent),
and determines whether it is acceptable to assume one or more obligations of a
party that provides a product or a service associated with the one or more sales
transaction related offerings (as recited in independent claim 26 of the 791
patent). Ex. 1015, 87.
During the litigation involving Woda/the 019 patent, buySAFE has agreed
with the above description of the disclosure of Woda. 8 Specifically, buySAFE
argued that the 019 patent discloses [d]etermining that it is acceptable to assume
a risk on behalf of [the first party]). Ex. 1009, p. 11.
3.
A POSA WOULD BE MOTIVATED TO COMBINE SAMSON AND
WODA

buySAFE, Inc. v. Google Inc., Civil Action No. 1:11-cv-01282-LPS (D. Del.).
33

A POSA would combine Samson and Woda based on multiple rationale


described in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d
1385 (2007) ("KSR rationale"). Ex. 1015, 90. Samson and Woda are analogous
art as they are both directed to conducting transactions over the Internet between
customers and sellers, and are both directed to providing incentives to customers
during the purchasing process. Further, both Samson and Woda are directed to
transactions using online auctions. See, e.g., Ex. 1012, 3:56-4:9; 8:39-40; Ex.
1011, [0033], [0053]; Ex. 1015, 91. Samson discloses a list of possible
incentives that can be used, and discloses that any other type of offer can be used
as an incentive. Ex. 1012, 8:50-53; Ex. 1015, 92. A POSA, when implementing
a system described in Samson, and having knowledge of Woda, would be
motivated to include the additional incentive disclosed in Woda in order to include
more incentives and facilitate more transactions. Ex. 1015, 92. The addition of
the transaction performance guaranty of Woda into Samson, which already
discloses a warranty, would operate in a predictable manner to facilitate the
transactions and can be combined using known methods. Ex. 1015, 93. A POSA
would further consider the substitution of the transaction performance guaranty
of Woda as one of the incentives of Samson as a simple substitution of one known
element for another to obtain predictable results. Ex. 1015, 94.
4.

CLAIM CHARTS FOR SAMSON + WODA


34

Further details of how Samson in view of Woda discloses each and every
claim element of claims 1-27 of the 791 patent are shown in the charts below.
791 Patent Claims
1. [a] A method for
performing systematic
analysis of consumer
behavior data to predict
consumer demand via
an on-line environment,
the method comprising:

[b] monitoring behavior


of at least one consumer
in the on-line
environment by at least
one server coupled to at
least one
communication network

Samson + Woda
Samson discloses a system 20 that creates a customer profile
16 and a learning model for creating incentives used to
induce purchasing of products by consumers (i.e., analysis
of consumer behavior data to predict demand) (Ex. 1015,
56-57):
As shown in FIG. 1, the method, or incentive system
20, includes creating a consumer profile 16 for at least
one consumer, choosing at least one unsold item, or
product to offer, 17 from an inventory based on the
information in the consumer profile, generating, or
calculating, an incentive for the chosen unsold item 24
based on the consumer profile, and offering the
chosen unsold item and the incentive to the consumer
25 to induce purchasing of the chosen unsold
item. Ex. 1012, 3:17-25; Fig. 1 (emphasis added).
The learning model will also determine the products
that meet the criteria of both the product consideration
set and the seller's inventory position 36. The learning
model calculates incentives for products determined
to be part of an individual consumer's product
consideration set. The product consideration set may
be constrained in two ways. First, the set may be
constrained by the available inventory from the
seller's or retailer's shelves. Second, the set may be
chosen based on the behavior of the individual
consumers. Ex. 1012, 7:60-8:1.
Samson discloses that system 20 monitors the behavior of the
consumers for an online auction prior to and during a sales
transaction (Ex. 1015, 58):
In the preferred embodiment, as the consumer explores
the site and places bids on auction items, the auction
house records the consumer's browsing behavior 3,
35

included in the on-line


environment prior to,
during and subsequent
to at least one sales
transaction performed
in the on-line
environment to generate
consumer behavior
data; and

bidding behavior 4, and other data 5. The browsing


behavior 3 may include the auction items the consumer
has considered and the bidding behavior 4 may include
start bids and bid frequency. The other data 5 may
include information about the consumer's personal
computer, such as Internet service provider and modem
speed. The recorded information is stored in a data file 6
by the auction house. The auction house continuously
monitors all bidders and records their behavior, while the
auction is still open or there is still time remaining 7,
specified by yes 7a. When there is no time remaining 7,
specified by no 8a, the auction is closed 8 and the data
file 6 is then sent 9 to the incentive system 20. Ex.
1012, 3:56 4:9; Fig. 2.
The sent data received by the incentive system 20,
preferably, has price-sensitivity indicators for all bidders,
including browsing behavior 11, bidding and behavior
values 12, personal computer information 13, such as an
Internet service provider and modem speed, and
transaction history 14. Preferably, the browsing behavior
11 has click stream information, which includes other
components of the auction site that were visited by the
consumer, number of pages visited, time spent on each
page during each visit per each auction, number of
auctions visited/participated, and frequency of revisiting
auctions. Ex. 1012, 4:19-30; Fig. 2.
Samson discloses updating the consumer profile (i.e.,
consumer behavior) after an incentive is redeemed (i.e.,
subsequent to at least one sales transaction). Some or
all of the incentives disclosed in Samson are redeemed
subsequent to sales transactions (Ex. 1015, 59, 60):
If, however, the consumer chooses to select the
incentive, specified by yes 29, the consumer profile
will be updated 50 with information that the incentive
was redeemed and the redemption will be processed
52. The redemption information is then used to
determine how accurate the learning model is
36

performing. For example, if approximately 50% of the


consumers in a classification expected to act on an
incentive do not, the learning model may then split the
classification into two other and/or new
classifications. Ex. 1012, 9:12-20; Fig. 2.
The incentive options 37 include additional
percentage or specified amount discounts from
manufacturers to help the seller or retailer move the
inventory, such as where the retailer gives an
additional 5% incentive on all Model 1234 goods or
services moved out of inventory, and free add-ons,
such as more warranty or free or otherwise discounted
additional goods or services. Ex. 1012, 6:16-22; Fig.
2.
The incentives may also be in the form of a coupon,
discount, rebate, additional product, reward, or any
other type of offer. Ex. 1012, 8:50-53.
Samson further discloses that the learning model of
consumer behavior generates data subsequent to sales
transactions (Ex. 1015, 61, 67, 68):
The learning model is constantly monitored and
updated to improve accuracy. When the system 20 is
turned on at Day 0, it has minimal information on
which to base incentive generation decisions. As time
goes by and redemption data is accumulated,
statistics will be used in the learning model to
determine what information, or attributes, add to the
ability to accurately produce incentives and which
attributes do not add value. Ex. 1012, 6:49-56
(emphasis added).
In the preferred embodiment, the redemption rate is
among the primary indicators monitored and updated
in order to improve the accuracy of the attributes, of
the data, and their weightings in the learning model.
Ex. 1012, 6:59-63.
37

[c] analyzing the


generated consumer
behavior data at at least
one server coupled to
the at least one
communication network
included in the on-line
environment to
determine efficacy of a
plurality of parameters
relating to one or more
sales transaction related
offerings,

Samson discloses that incentives such as a coupon,


discount, or more warranty are offered as part of the
sales transaction (i.e., sales transaction related
offerings) (Ex. 1015, 61):
The incentive may be a general incentive for any
product or a specific incentive for a specific product.
In addition, the notification may contain one or more
incentives offered at the same time to the same
consumer. These incentives may be based on a retail
price of the auction item or an unsuccessful bid,
which is less than a lowest successful bid in the
auction. The incentives may also be in the form of a
coupon, discount, rebate, additional product, reward,
or any other type of offer. Ex. 1012, 8:50-52; Fig. 2.
Incentives include free add-ons, such as more
warranty or free or otherwise discounted additional
goods or services. Ex. 1012, 6:16-22.
In connection with the incentives, Samson discloses that
incentive options 37 (i.e., a plurality of parameters)
are determined, such as the amount of a discount to offer
for a discount incentive (Ex. 1015, 62, 63, 64):
The incentive options 37 include additional
percentage or specified amount discounts from
manufacturers to help the seller or retailer move the
inventory, such as where the retailer gives an
additional 5% incentive on all Model 1234 goods or
services moved out of inventory, and free add-ons,
such as more warranty or free or otherwise discounted
additional goods or services. Ex. 1012, 6:16-28.
When the consumer profile is classified 18, the
unsold item from inventory is chosen 17, and the
seller's inventory position 36 and incentive options 37
are determined, the system 20 will generate incentives
24 using a learning model. Ex. 1012, 6:40-44.
38

Samson discloses that attributes within the consumer


profile (i.e., consumer behavior data) are analyzed to
determine the impact (i.e., efficacy) of incentives and
incentive options (i.e., plurality of parameters related
to sales transaction related offerings), including
redemption rates, intensity, competitiveness, etc. (Ex.
1015, 70):
The learning model is constantly monitored and
updated to improve accuracy. When the system 20 is
turned on at Day 0, it has minimal information on
which to base incentive generation decisions. As time
goes by and redemption data is accumulated, statistics
will be used in the learning model to determine what
information, or attributes, add to the ability to
accurately produce incentives and which attributes do
not add value. . . Over time, it is possible to more
accurately understand how important each
attribute is in computing the proper incentive. In
the preferred embodiment, the redemption rate is
among the primary indicators monitored and updated
in order to improve the accuracy of the attributes, of
the data, and their weightings in the learning model.
....
Preferred attributes include intensity (how often the
consumer bid, checked on the current bid price,
viewed the website in general), competitiveness (if the
consumer responded each and every time he or she
was outbid), final bid-price (as a percentage or fullretail price of an item, where the higher the final bid,
the less of an incentive a consumer will receive), and
zip code driven demographics (higher level annual
income zip-codes will receive less of a discount than
lower annual income zip codes). Ex. 1012, 6:497:18 (emphasis added).
Samson discloses that redemption rates (i.e., consumer
behavior data) are analyzed to determine the accuracy
(i.e., efficacy) of the learning model (Ex. 1015, 67,
39

74):

[d] wherein the


monitoring consumer
behavior is performed
past completion of the
at least one sales
transaction performed
in the on-line
environment and the
analyzing is performed
based on consumer
behavior data generated
based on monitored
behavior occurring after
the at least one sales
transaction,

The redemption information is then used to


determine how accurate the learning model is
performing. For example, if approximately 50% of
the consumers in a classification expected to act on an
incentive do not, the learning model may then split the
classification into two other and/or new
classifications. Ex. 1012, 9:15-20 (emphasis added).
Samson discloses updating the consumer profile (i.e.,
consumer behavior) after incentives, such as coupons, are
redeemed (i.e., after the at least one sales transaction)
(Ex. 1015, 59, 60, 65, 67-70):
Preferably, the bidding and behavior values 12
includes bidding history, start bid, bid frequency, bid
increment, final bid, winning bid, target product,
coupon redemption rate, and keywords used in
auction searches. Ex. 1012, 4:30-34.
If, however, the consumer chooses to select the
incentive, specified by yes 29, the consumer profile
will be updated 50 with information that the incentive
was redeemed and the redemption will be processed
52. The redemption information is then used to
determine how accurate the learning model is
performing. For example, if approximately 50% of the
consumers in a classification expected to act on an
incentive do not, the learning model may then split the
classification into two other and/or new
classifications. Ex. 1012, 9:12-20.
In the preferred embodiment, the redemption rate is
among the primary indicators monitored and updated
in order to improve the accuracy of the attributes, of
the data, and their weightings in the learning model.
Ex. 1012, 6:59-63.

40

[e] wherein the at least


one sales transaction
involves determining
whether it is acceptable
to assume some or all of
a third party's
obligations in the at
least one sales
transaction.

Samson discloses that the incentive is determined and


generated by the seller and provided for a specific sales
transaction to a specific consumer (Ex. 1015, 65):
When an incentive is generated 24, or created, the
system 20 will then offer the incentive 25 to the
consumer. In the preferred embodiment, an incentive
notification is created and sent to the consumer. The
incentive notification may be in the form of e-mail or
any other type of delivery. The incentive may be a
general incentive for any product or a specific
incentive for a specific product. In addition, the
notification may contain one or more incentives
offered at the same time to the same consumer. Ex.
1012, 8:38-47.
Samson discloses that the incentive can include more
warranty. Ex. 1012, 6:21-22 (i.e., assume an
obligation)
A POSA would recognize that more warranty is an
incentive offered to the consumer that involves assuming
a third partys obligation. Ex. 1015, 78.
Woda discloses a transaction performance guaranty
used to underwrite a sales transaction (i.e., assume some
or all of a third party's obligations, as understood by a
POSA and as argued by buySAFE during the litigation
claim construction phase of the 019 patent) as a type of
incentive that can be included by system 20 of Samson
(Ex. 1015, 83):
FIG. 1 depicts a framework 100 in which a safe
transaction service provider provides a transaction
performance guaranty for a transaction involving a
party who obtains the safe transaction service through
an underwriting process, according to one
embodiment of the inventions. Ex. 1011, [0031].
The underwriter 140 may communicate with
41

different entities to gather relevant information in


order to make a qualification decision about each
service applicant. It may gather credit information
from different credit agencies 150. It may also collect,
either internally or externally, ratings of a merchant
from various rating information sources 160. Ex.
1011, [0048].
791 Patent Claims
Samson + Woda
2. The method of claim Samson discloses the continuous monitoring of bidders
behavior from the initial exposure (Ex. 1015, 72):
1, wherein the
monitoring consumer
In the preferred embodiment, as the consumer
behavior is performed
explores the site and places bids on auction items, the
continuously from the at
auction house records the consumer's browsing
least one consumer's
behavior 3, bidding behavior 4, and other data 5. The
first exposure to the onbrowsing behavior 3 may include the auction items
line environment.
the consumer has considered and the bidding behavior
4 may include start bids and bid frequency. . . The
auction house continuously monitors all bidders and
records their behavior . . . Ex. 1012, 3:61 4:6; Fig.
2.
791 Patent Claims
3. The method of claim
1, wherein the
consumer behavior data
indicates details
pertaining to a
conversion of the at
least one consumer to a
customer in the on-line
environment.

Samson + Woda
Samson discloses the monitored behavior data includes
details of successful bids (i.e., a conversion) (Ex. 1015,
73):

791 Patent Claims


4. The method of claim
3, wherein the
consumer behavior data
indicates whether the at
least one consumer

Samson + Woda
Samson discloses updating the consumer profile (i.e.,
consumer behavior data) regarding whether incentives
are redeemed (Ex. 1015, 74):

Preferably, the bidding and behavior values 12 also


contain whether the consumer's bid was a successful
bid, which is the winning bid, or an unsuccessful bid.
Ex. 1012, 4:38-40.

If, however, the consumer chooses to select the


42

accepted one or more


transaction related
offerings in connection
with the at least one
sales transaction.

incentive, specified by yes 29, the consumer profile


will be updated 50 with information that the
incentive was redeemed and the redemption will be
processed 52. The redemption information is then
used to determine how accurate the learning model is
performing. For example, if approximately 50% of the
consumers in a classification expected to act on an
incentive do not, the learning model may then split the
classification into two other and/or new
classifications. Ex. 1012, 9:12-20 (emphasis added).

791 Patent Claims


5. The method of claim
1, wherein the
consumer behavior data
indicates whether the at
least one consumer
accepted one or more
sales transaction related
offerings.

Samson + Woda
Samson discloses updating the consumer profile (i.e.,
consumer behavior data) regarding whether incentives
are redeemed (Ex. 1015, 74):

791 Patent Claims


6. The method of claim
1, further comprising:
identifying consumer
behavior data from at
least two different
sources to identify
consumer behavior data
that pertains to a same
consumer; and
correlating the

Samson + Woda
Samson discloses identifying consumer behavior data
from at least two different sources (e.g., browsing
behavior 11, personal computer information 13, coupon
redemption and demographics) and correlating the data to
form consumer profile 16 (Ex. 1015, 75):

If, however, the consumer chooses to select the


incentive, specified by yes 29, the consumer profile
will be updated 50 with information that the
incentive was redeemed and the redemption will be
processed 52. The redemption information is then
used to determine how accurate the learning model is
performing. For example, if approximately 50% of the
consumers in a classification expected to act on an
incentive do not, the learning model may then split the
classification into two other and/or new
classifications. Ex. 1012, 9:12-20; Fig. 2 (emphasis
added).

Preferably, the browsing behavior 11 has click


stream information, which includes other components
of the auction site that were visited by the consumer,
number of pages visited, time spent on each page
43

consumer behavior data


pertaining to the same
consumer.

during each visit per each auction, number of auctions


visited/participated, and frequency of revisiting
auctions. Preferably, the bidding and behavior values
12 include bidding history target product, coupon
redemption rates . . . . The personal computer
information 13 includes Internet service provider,
referring URL link, web browser make and model,
operating system, bookmarks, zip code, access
location (work or home) and credit card type.
Demographics, psychographics, market conditions,
and any other relevant information from other
databases 15 or any other relevant information
identified through contact with the consumer may also
be recorded. From this information 11, 12, 13, 14 and
15, the system 20 creates a consumer profile 16. Ex.
1012, 4:24-45; Fig. 2.

791 Patent Claims


7. The method of claim
6, further comprising
deleting redundant data
in the consumer
behavior data pertaining
to the same consumer.

Samson + Woda
Samson discloses storing consumer behavior data in a
database. See e.g., Ex. 1012, 4:46-59; Fig. 2; Ex. 1015,
76.

791 Patent Claims


8. The method of claim
6, wherein the at least
two different sources
include seller reported
data and a consumer
behavior tracking
mechanism.

A POSA would recognize that a database would include


a database management system that deletes redundant
data. Ex. 1015, 76.
Samson + Woda
See claim 6 above. At least two different sources
include click stream information (i.e., a consumer
behavior tracking mechanism) and whether incentives
are redeemed (i.e., seller reported data) Ex. 1015, 77.
A POSA would recognize that browsing behavior 11 and
personal computer information 13 are collected by
known tracking mechanisms at the time of the filing of
Samson, such as cookies and shared objects. Ex. 1015,
77.

791 Patent Claims

Samson + Woda

44

9. The method of claim


8, wherein the
consumer behavior
tracking mechanism is a
shared object.

The two sources disclosed by Samson, described above


for claim 6, include click stream information (i.e., a
cookie or a consumer behavior tracking mechanism
that is a shared object).
A POSA would recognized that browsing behavior 11
and personal computer information 13 are collected by
known tracking mechanisms at the time of the filing of
Samson, such as cookies and shared objects. Ex. 1015,
77.

791 Patent Claims


10. The method of
claim 8, wherein the
consumer behavior
tracking mechanism is a
cookie.

Samson + Woda
See claim 6 and 8 above.

791 Patent Claims


11. The method of
claim 8, wherein the at
least two different
sources include code
provided in the on-line
environment provided
in connection with the
at least one sales
transaction related
offering, the code being
executed to monitor and
record consumer
behavior.

Samson + Woda

791 Patent Claims


12. A method for
reorganizing of memory
space, by deallocating
redundant, obsolete, or
unreferenced database

A POSA would recognized that browsing behavior 11


and personal computer information 13 are collected by
known tracking mechanisms at the time of the filing of
Samson, such as cookies and shared objects. Ex. 1015,
77.
See claim 6 above.
A POSA would recognize that browsing behavior 11 and
personal computer information 13 are collected by
known tracking mechanisms that include code provided
in the on-line environment. Ex. 1015, 77.

Samson + Woda
This preamble should be given no patentable weight.
Further, Samson discloses that the customer profile is
stored in a database. A POSA would understand that a
known database would include a database management
45

and file information, in


order to increase the
efficiency of memory
space usage, the method
comprising:

analyzing, at at least
one server coupled to at
least one
communication network
included in an on-line
environment, consumer
behavior data generated
prior to, during and
subsequent to at least
one sales transaction
performed in the on-line
environment;
identifying consumer
behavior data from at
least two different
sources to identify
consumer behavior data
that pertains to a same
consumer; and
correlating the
consumer behavior data
pertaining to the same
consumer for use in at
least one sales
transaction related
offering,
wherein the consumer
behavior data is
generated based on
behavior of the same
consumer past

system and would be organized as recited in claim 12,


including deallocating redundant data (Ex. 1015, 76):
In creating an updated consumer profile 16b, which
includes a classification, the initial consumer profile is
compared with existing consumer classifications 19,
or index of consumer behavior indicators, in a
database of the system 20. Ex. 1012, 4:52-55; Fig. 2.
See Claim 1[b] above.

See Claim 6 above.

See Claim 1[d] above.

46

completion of the at
least one sales
transaction performed
in the on-line
environment and the
analyzing is performed
based on consumer
behavior data generated
based on monitored
behavior occurring after
the at least one sales
transaction,
wherein the at least one
sales transaction
involves determining
whether it is acceptable
to assume some or all of
a third party's
obligations in the at
least one sales
transaction.

See Claim 1[e] above.

791 Patent Claims


13. The method of claim 12, further comprising
deleting redundant data in the consumer behavior
data pertaining to the same consumer.

Samson + Woda
See Claim 7 above

791 Patent Claims


14. The method of claim 12, wherein the at least
two different sources include seller reported data
and a consumer behavior tracking mechanism.

Samson + Woda
See Claim 8 above.

791 Patent Claims


15. The method of claim 14, wherein the
consumer behavior tracking mechanism is a
shared object.

Samson + Woda
See Claim 9 above.

791 Patent Claims

Samson + Woda

47

16. The method of claim 14, wherein the


consumer behavior tracking mechanism is a
cookie.

See Claim 10 above.

791 Patent Claims


17. The method of claim 14, wherein the at least
two different sources includes code provided in
the on-line environment provided in connection
with the at least one sales transaction related
offering, the code being executed to monitor and
record consumer behavior.

Samson + Woda
See Claim 11 above.

791 Patent Claims


18. The method of claim 12, wherein the
consumer behavior is generated continuously
from the at least one consumer's first exposure to
the on-line environment.

Samson + Woda
See Claim 2 above.

791 Patent Claims


19. The method of
claim 12, wherein the
consumer behavior is
generated continuously
past completion of the
at least one sales
transaction performed
in the on-line
environment.

Samson + Woda
Samson discloses that the learning model of consumer
behavior continuously generates data after redemption
data is accumulated (i.e., past completion) of sales
transactions (Ex. 1015, 69):
The learning model is constantly monitored and
updated to improve accuracy. When the system 20 is
turned on at Day 0, it has minimal information on
which to base incentive generation decisions. As time
goes by and redemption data is accumulated,
statistics will be used in the learning model to
determine what information, or attributes, add to the
ability to accurately produce incentives and which
attributes do not add value. Ex. 1012, 6:49-56
(emphasis added).

791 Patent Claims


20. The method of claim 12, wherein the
consumer behavior data indicates whether the
consumer accepted one or more sales transaction
related offerings.
48

Samson + Woda
See Claim 5 above.

791 Patent Claims


21. The method of claim 12, wherein the
consumer behavior data indicates details
pertaining to a conversion of the at least one
consumer to a customer in the on-line
environment.

Samson + Woda
See Claim 3 above.

791 Patent Claims


22. The method of claim 21, wherein the
consumer behavior data indicates whether the
consumer accepted one or more sales transaction
related offerings in connection with the at least
one sales transaction.

Samson + Woda
See Claim 4 above.

791 Patent Claims


23. A method for performing systematic analysis
of consumer behavior data to predict consumer
demand via an on-line environment, the method
comprising:
monitoring behavior of at least one consumer in
the on-line environment by at least one server
coupled to at least one communication network
included in the on-line environment prior to,
during and subsequent to at least one sales
transaction performed in the on-line environment
to generate consumer behavior data; and
analyzing the generated consumer behavior data
at at least one server coupled to the at least one
communication network included in the on-line
environment to determine efficacy of a plurality
of parameters relating to one or more sales
transaction related offerings,

Samson + Woda
See Claim 1[a] above.

wherein the monitoring consumer behavior is


performed past completion of the at least one
sales transaction performed in the on-line
environment and the analyzing is performed
based on consumer behavior data generated based
on monitored behavior occurring after the at least
one sales transaction,
49

See Claim 1[b] above.

See Claim 1[c] above.

See Claim 1[d] above.

wherein the at least one sales transaction involves


determining whether it is acceptable to assume
some or all of a third party's obligations in the at
least one sales transaction.
791 Patent Claims
24. A method for
performing systematic
analysis of consumer
behavior data to predict
consumer demand via
an on-line environment,
the method comprising:
monitoring behavior of
at least one consumer in
the on-line environment
by at least one server
coupled to at least one
communication network
included in the on-line
environment prior to,
during and subsequent
to at least one sales
transaction performed
in the on-line
environment to generate
consumer behavior
data; and
analyzing the generated
consumer behavior data
at at least one server
coupled to the at least
one communication
network included in the
on-line environment to
determine efficacy of a
plurality of parameters
relating to one or more
sales transaction related
offerings,

See Claim 1[e] above.

Samson + Woda
See Claim 1[a] above.

See Claim 1[b] above.

See Claim 1[c] above.

50

wherein the monitoring


behavior is performed
past completion of the
at least one sales
transaction performed
in the on-line
environment, and the
analyzing is performed
based on consumer
behavior data generated
based on monitored
behavior occurring after
the at least one sales
transaction,
wherein the at least one
sales transaction
includes a transaction
performance guaranty
service for some or all
of one party's
obligations in the at
least one sales
transaction.

See Claim 1[d] above.

Samson discloses that the incentive is included for sales


transactions (Ex. 1015, 65):
When an incentive is generated 24, or created, the
system 20 will then offer the incentive 25 to the
consumer. In the preferred embodiment, an incentive
notification is created and sent to the consumer. The
incentive notification may be in the form of e-mail or
any other type of delivery. The incentive may be a
general incentive for any product or a specific
incentive for a specific product. In addition, the
notification may contain one or more incentives
offered at the same time to the same consumer. Ex.
1012, 8:38-47.
Samson discloses that the incentive can include more
warranty. Ex. 1012, 6:16-22 (i.e., some or all of one
party's obligations) (Ex. 1015, 78).
A POSA would recognize that more warranty is an
incentive offered to the consumer that involves assuming
a partys obligation. Ex. 1015, 78.
Woda discloses a transaction performance guaranty
used to underwrite a sales transaction (i.e., for some or
51

all of one party's obligations, as understood by a POSA


and as argued by buySAFE during the litigation claim
construction phase of the 019 patent) as a type of
incentive that can be included by system 20 of Samson
(Ex. 1015, 83):
FIG. 1 depicts a framework 100 in which a safe
transaction service provider provides a transaction
performance guaranty for a transaction involving a
party who obtains the safe transaction service through
an underwriting process, according to one
embodiment of the inventions. Ex. 1011, [0031]
(emphasis added).
The underwriter 140 may communicate with
different entities to gather relevant information in
order to make a qualification decision about each
service applicant. It may gather credit information
from different credit agencies 150. It may also collect,
either internally or externally, ratings of a merchant
from various rating information sources 160. Ex.
1011, [0048].
791 Patent Claims
25. The method of
claim 24, wherein the
transaction performance
guaranty is one or more
of a surety bond, a
specialized bank
guaranty, a specialized
insurance policy, and a
safe transaction
guaranty
791 Patent Claims
26. A method for
performing systematic
analysis of consumer
behavior data to predict

Samson + Woda
Woda discloses the recited embodiments for transaction
performance guaranty (Ex. 1015, 84):
FIG. 2 illustrates different exemplary forms in which
a transaction performance guaranty 210 may be
provided, according to an embodiment of the
inventions. It may be offered in the form of a surety
bond 220, a specialized bank guaranty 230, . . . , a
specialized insurance policy 240, or in a form of a
safe transaction guaranty 250. Ex. 1011, [0035].
Samson + Woda
See Claim 1[a] above.

52

consumer demand via


an online environment,
the method comprising:
monitoring behavior of
at least one consumer in
the on-line environment
by at least one server
coupled to at least one
communication network
included in the on-line
environment prior to,
during and subsequent
to at least one sales
transaction performed
in the on-line
environment to generate
consumer behavior
data; and
analyzing the generated
consumer behavior data
at at least one server
coupled to the at least
one communication
network included in the
on-line environment to
determine efficacy of a
plurality of parameters
relating to one or more
sales transaction related
offerings,
wherein the monitoring
behavior is performed
past completion of the
at least one sales
transaction performed
in the on-line
environment, and the
analyzing is performed

See Claim 1[b] above.

See Claim 1[c] above.

See Claim 1[d] above.

53

based on consumer
behavior data generated
based on monitored
behavior occurring after
the at least one sales
transaction,
wherein a safe
transaction service
provider determines
whether it is acceptable
to assume
one or more obligations
of a party that provides
a product or a service
associated with the one
or more sales
transaction related
offerings

Samson discloses that the incentive, which can include a


warranty (i.e., assume one or more obligations of a party
that provides a product or a service) is determined,
generated and provided for sales transactions. (Ex. 1015,
65):
When an incentive is generated 24, or created, the
system 20 will then offer the incentive 25 to the
consumer. In the preferred embodiment, an incentive
notification is created and sent to the consumer. The
incentive notification may be in the form of e-mail or
any other type of delivery. The incentive may be a
general incentive for any product or a specific
incentive for a specific product. In addition, the
notification may contain one or more incentives
offered at the same time to the same consumer. Ex.
1012, 8:38-47.
Samson discloses that the incentive can include more
warranty. Ex. 1012, 6:16-22 (i.e., some or all of one
party's obligations) (Ex. 1015, 78).
A POSA would recognize that more warranty is an
incentive offered to the consumer that involves assuming
a partys obligation. Ex. 1015, 78.
Woda discloses a safe transaction service used to
underwrite a sales transaction (i.e., determines whether
it is acceptable to assume one or more obligations of a
party, as understood by a POSA and as argued by
buySAFE during the litigation claim construction phase
of the 019 patent) as a type of incentive that can be
included by system 20 of Samson (Ex. 1015, 83):
54

FIG. 1 depicts a framework 100 in which a safe


transaction service provider provides a transaction
performance guaranty for a transaction involving a
party who obtains the safe transaction service
through an underwriting process, according to one
embodiment of the inventions. Ex. 1011, [0031]
(emphasis added).
The underwriter 140 may communicate with
different entities to gather relevant information in
order to make a qualification decision about each
service applicant. It may gather credit information
from different credit agencies 150. It may also collect,
either internally or externally, ratings of a merchant
from various rating information sources 160. Ex.
1011, [0048].
791 Patent Claims
27. The method of
claim 26, further
comprising providing a
transaction related
offering graphic.

Samson + Woda
Woda discloses a graphic related to the transaction
guaranty (i.e., transaction related) (Ex. 1015, 88):
To render a seal in its graphical form, the guaranty
seal generation mechanism 1010 may produce code
that can be used to render a graphical symbol. Ex.
1011, [0074].

GROUND 2: CLAIMS 1-27 OF THE 791 PATENT ARE UNPATENTABLE


UNDER 35 U.S.C. 103 BASED ON OLDHAM IN VIEW OF SCHROEDER AND
WODA

B.

Oldham in view of Schroeder and Woda discloses each and every claim
element of claims 1-27 of the 791 patent. Ex. 1015, 95.
1.

Overview of Oldham (Ex. 1013)

U.S. Pat. Pub. No. 2008/0013887 to Oldham et al. (Oldham) was


published on May 1, 2008. Oldham is available as prior art at least under 35
55

U.S.C. 102(a). Oldham was cited during prosecution of the 791 patent, and was
applied as the primary reference for all of the prior art rejections. See, e.g., Ex.
1007, March 1, 2012 Final Office Action.
Oldham discloses an advertisement system 100 provides one or more
advertisements to an individual (e.g., a user of a product or service, both physical
and online) at the time of a user transaction using information associated with the
transaction itself. Ex. 1013, [0015]; Ex. 1015, 97. The advertisements can be
provided in electronic form, for example, as a banner advertisement on a web
page. Ex. 1013, [0002]; Ex. 1015, 97. The advertisement may include an
incentive (e.g., a coupon or other discount) to encourage the consumer to purchase
a particular product or service. Ex. 1013, [0003]; Ex. 1015, 98. If the
consumer purchases the advertised product or service in response to the
advertisement, it can be called a conversion. Ex. 1013, [0003]; Ex. 1015, 98.
Oldham discloses that the provided advertisements are tracked for later
conversion by the user. Ex. 1013, [0015]; Ex. 1015, 99. A conversion
tracking module 112 collects information associated with advertisement
conversions. Ex. 1013, [0024]; Ex. 1015, 99. The conversion information
(i.e., whether a sales transaction occurs) and the efficacy of each
advertisement/incentive is tracked and stored: A table or other convenient data
structure can be generated to score conversion rates for particular categories (i.e.,
56

the effectiveness of the advertisement for particular product categories, an


advertisement may be more effective in one category than another). Ex. 1013,
[0026]; Ex. 1015, 99. A POSA would understand that determining the
effectiveness of an advertisement is a prediction of consumer demand. Ex. 1015,
100.
Oldham discloses that the transaction location can be a physical location
(e.g., a physical store) or a non-physical location (e.g., a website of an online
store). Ex. 1013, [0030]; Ex. 1015, 101. A POSA would understand that the
online transaction of Oldham would include a communication network. Ex. 1015,
101.
Oldham discloses that the system presents one or more matching
advertisements to the user contemporaneously in time with the transaction (308). .
. . In one implementation, the advertisement is presented to the user with the
transaction receipt (electronic or virtual). Ex. 1013, [0065]; Ex. 1015, 102. A
POSA would understand that the advertisements that are subsequently tracked are
presented to the user before the conversion (i.e., before the purchase in response to
the advertisement, or prior to), contemporaneously (i.e., during) and with a
transaction receipt (i.e., subsequent) to the transaction. Ex. 1015, 102.
Further, Oldham discloses that the monitoring of consumer behavior (i.e., a
conversion of an advertisement) is continuously tracked from the first exposure to
57

the advertisement using a tracking code: The conversion tracking module 112
collects information associated with advertisement conversions. The originating
advertisement for the conversion is tracked, for example, using a tracking code
provided with the advertisement impression. Ex. 1013, [0024]; Ex. 1015, 103.
A POSA would understand that the tracking code would be a cookie and/or a
shared object that would continually track online consumer behavior continuously
from first exposure throughout. Ex. 1015, 103.
2.

OVERVIEW OF SCHROEDER (EX. 1014)

U.S. Pat. Pub. No. 2003/0013883 to Schroeder et al. (Schroeder) was


published on July 10, 2003. Schroeder is available as prior art at least under 35
U.S.C. 102(a). Schroeder was cited during prosecution of the 791 patent, and
was applied in combination with Oldham to reject the claims of the 791 patent in a
Final Office Action. Ex. 1007, March 1, 2012 Final Office Action. Schroeder was
cited, for the most part, for the disclosure of monitoring consumer behavior past
completion of a sales transaction. See, e.g., id., p. 7.
Schroeder discloses a business planner system that offers a Web interface
to permit a retailer or remote sales staff member to experiment with a variety of
scenarios to determine the benefits of alternate promotions. Ex. 1014, [0056];
Ex. 1015, 108. Proposed promotions are entered into a computer program that
runs a lift model 4 for the products and markets of concern in the division. Ex.
58

1014, [0058]; Ex. 1015, 108. Prediction of increased sales, or sales lift, due to
a promotion is achieved using mathematical models for market response to a set of
promotion conditions, with a plurality of promotion types being available in the
model. Ex. 1014, [0058]; Ex. 1015, 109. The models may be derived from
correlations of point-of-sale (POS) data with past promotions and, in some
embodiments, may be updated continuously as POS data is obtained for each
promotion. Ex. 1014, [0058]; Ex. 1015, 109.
Schroeder discloses analyzing past sales performance of a product (i.e.,
consumer behavior data) to predict consumer demand for a product: Such
information can be used to correlate past sales performance for a product to
promotion activity. Ex. 1014, [0029]; Ex. 1015, 110. Schroeder discloses
monitoring behavior in an on-line environment prior to, during and subsequent to
at least one sales transaction: The business planner system 1 may also be adapted
to handle the forward buying behavior of customers. . . . so the business planner
system 1 may include a module that tracks past forward buying behavior and
extrapolates to estimate the forward buying actions of the customer for a given
planned promotion. Ex. 1014, [0072]; Ex. 1015, 110.
3.

OVERVIEW OF WODA (EX. 1011)

See Section VIII.A.2 above.


4.
A POSA WOULD BE MOTIVATED TO COMBINE OLDHAM AND
SCHROEDER AND WODA
59

A POSA would combine Oldham, Schroder and Woda based on multiple


KSR rationale. Ex. 1015, 111.
Oldham and Schroeder are analogous art as they are both directed to sales
transactions, and are both directed to predicting the impact of advertisements and
other types of promotions on consumer behavior (i.e., future sales). Ex. 1015,
112. A POSA would be motivated to implement the techniques of Schroeder to
predict the effects or lift from proposed product promotions into the advertisement
system of Oldham that selects the best advertisement and/or incentive to present
based on a prediction on how that advertisement/promotion will increase sales.
Ex. 1015, 112. During prosecution of the 791 patent, the Examiner offered
multiple reasons why a POSA would combine Oldham and Schroeder. See, e.g.,
Ex. 1007, March 1, 2012 Final Office Action, pp. 5-7. The applicants failed to
argue that Oldham and Schroeder should not be combined.
Further, Oldham and Woda are also analogous art as they are both directed
to conducting transactions over the Internet between customers and sellers, and are
both directed to providing incentives to customers during the purchasing process.
Ex. 1015, 114. Oldham discloses that the incentives can include a coupon or
other discount. Ex. 1013, 8:50-53; Ex. 1015, 114. A POSA, when
implementing a system described in Oldham, and having knowledge of Woda,
would be motivated to include the additional incentive disclosed in Woda in order
60

to include more incentives and facilitate more transactions. Ex. 1015, 114. The
addition of the transaction performance guaranty of Woda into Oldham would
operate in a predictable manner to facilitate the transactions and can be combined
using known methods. Ex. 1015, 115. A POSA would further consider the
substitution of the transaction performance guaranty of Woda as one of the
incentives of Oldham as a simple substitution of one known element for another to
obtain predictable results. Ex. 1015, 115.
5.

CLAIM CHARTS FOR OLDHAM + SCHROEDER + WODA

Further details of how Oldham in view of Schroeder and Woda discloses


each and every claim element of claims 1-27 of the 791 patent are shown in the
charts below. Wherever possible, the arguments used by the Examiner during
prosecution of the 791 patent when applying Oldham and Schroeder to the
limitations of claims 1-27 in the Final Office Action are also used in the claim
charts below. See Ex. 1007, March 1, 2012 Final Office Action.
791 Patent Claims
1. [a] A method for
performing systematic
analysis of consumer
behavior data to predict
consumer demand via
an on-line environment,
the method comprising:

Oldham + Schroeder + Woda


Oldham discloses generating data in an on-line
environment based on user conversion rates, such as a
purchase of a product in response to an advertisment (i.e.,
consumer behavior data) to determine the effectiveness
of an advertisement and to select an advertisement to
present (i.e., to predict consumer demand) (Ex. 1015,
99, 104):
A table or other convenient data structure can be
generated to score conversion rates for particular
61

categories (i.e., the effectiveness of the advertisement


for particular product categories, an advertisement
may be more effective in one category than another).
In one implementation, a ranking algorithm used to
select advertisements for presentation to a user can
adjust selection according to the conversion rates for
particular categories (ranking is described in greater
detail below). Ex. 1013, [0026].
Schroeder also discloses analyzing past sales performance
of a product (i.e., consumer behavior data) to predict
consumer demand for a product (Ex. 1015, 110):
Such information can be used to correlate past sales
performance for a product to promotion activity. Ex.
1014, [0029].

[b] monitoring behavior


of at least one consumer
in the on-line
environment by at least
one server coupled to at
least one
communication network
included in the on-line
environment prior to,
during and subsequent

Proposed promotions are entered into a computer


program that runs a lift model 4 for the products and
markets of concern in the division. Prediction of
increased sales, or sales lift, due to a promotion is
achieved using mathematical models for market
response to a set of promotion conditions, with a
plurality of promotion types being available in the
model. The models may be derived from correlations
of point-of-sale (POS) data with past promotions and,
in some embodiments, may be updated continuously
as POS data is obtained for each promotion. Ex.
1014, [0058].
Oldham discloses monitoring consumer behavior in an
on-line environment using a server and a communication
network (Ex. 1015, 104):
In general, in one aspect, a computer-implemented
method is provided. The method includes receiving
information descriptive of a transaction, the
information including an identification of an item
from the transaction and identifying from a collection
of advertisements one or more first advertisements
62

to at least one sales


transaction performed
in the on-line
environment to generate
consumer behavior
data; and

based on an association identified between the first


advertisements and the information. Ex. 1013,
[0004].
The advertisement system 100 provides one or more
advertisements to an individual (e.g., a user of a
product or service, both physical and online) at the
time of a user transaction using information associated
with the transaction itself. Ex. 1013, [0015].
The transaction location can be a physical location
(e.g., a physical store) or a non-physical location (e.g.,
a website of an online store). For example, a particular
user can access a particular online store and initiate a
transaction by purchasing a product. Ex. 1013,
[0030].
Oldham discloses that a conversion, that can take place in
an online environment, is a sales transaction in
response to an advertisement (Ex. 1015, 98):
If the consumer purchases the advertised product or
service in response to the advertisement, it can be
called a conversion. A conversion is said to occur
when a user consummates a transaction related to a
previously served advertisement. Ex. 1013,
[0003].
Oldham discloses that conversions (i.e., consumer
behavior) of advertisements are tracked (i.e.,
monitored) (Ex. 1015, 99):
The system can optionally track conversions of
presented advertisements (310). Ex. 1013,
[0067].
Oldham discloses that the advertisements that are
subsequently tracked are presented to the user before the
conversion (i.e., before the purchase in response to the
advertisement, or prior to), contemporaneously (i.e.,
63

during) and with a transaction receipt (i.e.,


subsequent) to the transaction (Ex. 1015, 102):
The system presents one or more matching
advertisements to the user contemporaneously in time
with the transaction (308). . . . In one implementation,
the advertisement is presented to the user with the
transaction receipt (electronic or virtual). Ex. 1013,
[0065].
Schroeder discloses monitoring behavior in an on-line
environment prior to, during and subsequent to at least
one sales transaction (Ex. 1015, 110):
The business planner system 1 may also be adapted
to handle the forward buying behavior of customers. .
. . so the business planner system 1 may include a
module that tracks past forward buying behavior and
extrapolates to estimate the forward buying actions of
the customer for a given planned promotion. Ex.
1014, [0072].
A method and system for predicting the profit
attributable to a proposed sales promotion of a
product . . . determining a sales lift for the plurality of
single promotions; and correlating the sales lift with
promotion information to provide a sales lift model.
Ex. 1014, Abstract.

[c] analyzing the


generated consumer
behavior data at at least

For example, after a sales representative 44 for the


manufacturer has entered preliminary promotional
plans in the business planner system 1 to create a
promotional calendar . . . the business planner system
1 may compute the funds required for the plan, or the
funds may be estimated manually and entered by the
sales representative. Ex. 1014, [0079].
Oldham discloses that conversion rates (i.e., consumer
behavior data) for different product categories are
analyzed to determine the effectiveness of advertisements
64

one server coupled to


the at least one
communication network
included in the on-line
environment to
determine efficacy of a
plurality of parameters
relating to one or more
sales transaction related
offerings,

(i.e., a plurality of parameters relating to one or more


sales transaction related offering) (Ex. 1015, 99):
A table or other convenient data structure can be
generated to score conversion rates for particular
categories (i.e., the effectiveness of the advertisement
for particular product categories, an advertisement
may be more effective in one category than another).
Ex. 1013, [0026].
Schroeder further discloses that a plurality of consumer
behavior data parameters are used to determine an effect
of promotions on future sales transactions (Ex. 1015,
110):
The business planner system 1 may also be adapted
to handle the forward buying behavior of customers. .
. . so the business planner system 1 may include a
module that tracks past forward buying behavior and
extrapolates to estimate the forward buying actions of
the customer for a given planned promotion. Ex.
1014, [0072].

[d] wherein the


monitoring consumer
behavior is performed
past completion of the
at least one sales
transaction performed
in the on-line
environment and the
analyzing is performed

Historical sales information embodied in a memory


device (e.g., a point-of-sales database) can be mined
by any suitable data mining method for relationships
between promotions and products, including crosselasticity factors, sales lift as a function of market
segment (demographic factors, etc.). Ex. 1014,
[0092].
Oldham discloses that the advertisements that can be later
tracked (i.e., monitoring consumer behavior) are
presented to the user with a transaction receipt (i.e., past
completion of the sales transaction) (Ex. 1015, 102):
The system presents one or more matching
advertisements to the user contemporaneously in time
with the transaction (308). . . . In one implementation,
the advertisement is presented to the user with the
65

based on consumer
behavior data generated
based on monitored
behavior occurring after
the at least one sales
transaction,

[e] wherein the at least


one sales transaction
involves determining
whether it is acceptable
to assume some or all of
a third party's
obligations in the at
least one sales
transaction.

transaction receipt (electronic or virtual). Ex. 1013,


[0065].
Schroeder discloses monitoring behavior in an on-line
environment after at least one sales transaction (Ex. 1015,
110):
The business planner system 1 may also be adapted
to handle the forward buying behavior of customers. .
. . so the business planner system 1 may include a
module that tracks past forward buying behavior and
extrapolates to estimate the forward buying actions of
the customer for a given planned promotion. Ex.
1014, [0072].
Oldham discloses that the advertisements can include an
incentive (Ex. 1015, 98):
The advertisement may include an incentive (e.g., a
coupon or other discount) to encourage the consumer
to purchase a particular product or service. Ex.
1013, [0002].
Woda discloses a transaction performance guaranty
used to underwrite a sales transaction (i.e., assume some
or all of a third party's obligations, as understood by a
POSA and as argued by buySAFE during the litigation
claim construction phase of the 019 patent) as a type of
incentive that can be included by the advertising system
of Oldham (Ex. 1015, 83):
FIG. 1 depicts a framework 100 in which a safe
transaction service provider provides a transaction
performance guaranty for a transaction involving a
party who obtains the safe transaction service through
an underwriting process, according to one
embodiment of the inventions. Ex. 1011, [0031].
The underwriter 140 may communicate with
different entities to gather relevant information in
66

order to make a qualification decision about each


service applicant. It may gather credit information
from different credit agencies 150. It may also collect,
either internally or externally, ratings of a merchant
from various rating information sources 160. Ex.
1011, [0048].
791 Patent Claims
2. The method of claim
1, wherein the
monitoring consumer
behavior is performed
continuously from the at
least one consumer's
first exposure to the online environment.

Oldham + Schroeder + Woda


Oldham discloses that the monitoring of consumer
behavior (i.e., a conversion of an advertisement) is
continuously tracked from the first exposure to the
advertisement using a tracking code (Ex. 1015, 103):
The conversion tracking module 112 collects
information associated with advertisement
conversions. The originating advertisement for the
conversion is tracked, for example, using a tracking
code provided with the advertisement impression.
Ex. 1011, [0024].
A POSA would understand that the tracking code would
be a cookie and would continually track online consumer
behavior from first exposure. (Ex. 1015, 103).

791 Patent Claims


3. The method of claim
1, wherein the
consumer behavior data
indicates details
pertaining to a
conversion of the at
least one consumer to a
customer in the on-line
environment.

Oldham + Schroeder + Woda


Oldham discloses tracking and storing details of conversions
(i.e., consumer behavior data), including product
categories (Ex. 1015, 99):

791 Patent Claims

Oldham + Schroeder + Woda

A table or other convenient data structure can be


generated to score conversion rates for particular
categories (i.e., the effectiveness of the advertisement
for particular product categories, an advertisement
may be more effective in one category than another).
Ex. 1013, [0026].

67

4. The method of claim


3, wherein the
consumer behavior data
indicates whether the at
least one consumer
accepted one or more
transaction related
offerings in connection
with the at least one
sales transaction.

Oldham discloses that the advertisement, for which a


conversion is tracked, may include an incentive (i.e., a
transaction related offering) (Ex. 1015, 98):

791 Patent Claims


5. The method of claim
1, wherein the
consumer behavior data
indicates whether the at
least one consumer
accepted one or more
sales transaction related
offerings.

Oldham + Schroeder + Woda


Oldham discloses that the tracked conversion includes
whether the consumer accepted the incentive (i.e., a
transaction related offering) (Ex. 1015, 99):

791 Patent Claims


6. The method of claim
1, further comprising:
identifying consumer
behavior data from at
least two different
sources to identify
consumer behavior data
that pertains to a same
consumer; and
correlating the
consumer behavior data
pertaining to the same
consumer.

Oldham + Schroeder + Woda


Oldham discloses identifying consumer behavior data based
on a least two different sources, including the geographic
location of the transaction, product information (e.g., UPC
code), and conversion information, such as whether the
consumer converted the transaction. At least one source is a
tracking code. The information is all associated with the
purchasing user (i.e., same consumer) (Ex. 1015, 105):

The advertisement may include an incentive (e.g., a


coupon or other discount) to encourage the consumer
to purchase a particular product or service. If the
consumer purchases the advertised product or service
in response to the advertisement, it can be called a
conversion. Ex. 1013, [0003].

The advertisement may include an incentive (e.g., a


coupon or other discount) to encourage the consumer
to purchase a particular product or service. If the
consumer purchases the advertised product or service
in response to the advertisement, it can be called a
conversion. Ex. 1013, [0003].

The information descriptive of the transaction can


include other data. For example, for a product, the
information can include product information such as a
UPC (Universal Product Code) code, product ID, or
product name. The information can also include the
price of the product, the form of payment used, or the
geographic location associated with the transaction
(e.g., the transaction location or the location
68

associated with the purchasing user). The information


can specifically identify the category of the item or
include the information from which the category or
categories associated with the item can be identified.
Ex. 1013, [0003].
The conversion tracking module 112 collects
information associated with advertisement
conversions. The originating advertisement for the
conversion is tracked, for example, using a tracking
code provided with the advertisement impression.
Ex. 1013, [0024].
791 Patent Claims
7. The method of claim
6, further comprising
deleting redundant data
in the consumer
behavior data pertaining
to the same consumer.

Oldham + Schroeder + Woda


Oldham discloses storing conversion information using a
database management system Ex. 1013, [0069]; Ex.
1015, 106.

791 Patent Claims


8. The method of claim
6, wherein the at least
two different sources
include seller reported
data and a consumer
behavior tracking
mechanism.

Oldham + Schroeder + Woda


Oldham discloses that the sources include whether the
consumer purchases the advertised product or service (i.e.,
seller reported data) (Ex. 1015, 99):

A POSA would recognize that a database management


system would delete redundant data. Ex. 1015, 102.

If the consumer purchases the advertised product or


service in response to the advertisement, it can be
called a conversion. Ex. 1013, [0003].
Oldham further discloses that the sources include a tracking
code (i.e., a consumer behavior tracking mechanism) (Ex.
1015, 103):
The conversion tracking module 112 collects
information associated with advertisement
conversions. The originating advertisement for the
conversion is tracked, for example, using a tracking
code provided with the advertisement impression.
Ex. 1013, [0024].
69

791 Patent Claims


9. The method of claim
8, wherein the
consumer behavior
tracking mechanism is a
shared object.

Oldham + Schroeder + Woda


A POSA would understand that the disclosed tracking
code in Oldham is a cookie or shared object. Ex. 1015,
103.

791 Patent Claims


10. The method of
claim 8, wherein the
consumer behavior
tracking mechanism is a
cookie.

Oldham + Schroeder + Woda


A POSA would understand that the disclosed tracking
code in Oldham is a cookie. Ex. 1015, 103.

791 Patent Claims


11. The method of
claim 8, wherein the at
least two different
sources include code
provided in the on-line
environment provided
in connection with the
at least one sales
transaction related
offering, the code being
executed to monitor and
record consumer
behavior.

Oldham + Schroeder + Woda


A POSA would understand that the disclosed tracking
code in Oldham is a cookie. Ex. 1015, 103.

The 791 patent construes a shared object as a cookie:


A Flash shared object (also referred to merely as a
shared object or local shared-object [sic], is essentially a
Flash implemented cookie. Ex. 1001, 7:50-52; Ex.
1015, 53.

The tracking code in Oldham is used to monitor and


record conversions (i.e., consumer behavior) (Ex. 1015,
103):
The conversion tracking module 112 collects
information associated with advertisement
conversions. The originating advertisement for the
conversion is tracked, for example, using a tracking
code provided with the advertisement impression.
Ex. 1013, [0024].

791 Patent Claims


12. A method for reorganizing of memory space,
by deallocating redundant, obsolete, or
unreferenced database and file information, in
order to increase the efficiency of memory space
usage, the method comprising:

70

Oldham + Schroeder + Woda


This preamble should be given
no patentable weight.
Oldham discloses storing
conversion information using a
database management system

Ex. 1013, [0069]; Ex. 1015,


106.
A POSA would recognize that a
database management system
would implement the recited
functionality. Ex. 1015, 106.
See Claim 1[b] above.

analyzing, at at least one server coupled to at least


one communication network included in an online environment, consumer behavior data
generated prior to, during and subsequent to at
least one sales transaction performed in the online environment;
See Claim 6 above.
identifying consumer behavior data from at least
two different sources to identify consumer
behavior data that pertains to a same consumer;
and correlating the consumer behavior data
pertaining to the same consumer for use in at least
one sales transaction related offering,
See Claim 1[d] above.
wherein the consumer behavior data is generated
based on behavior of the same consumer past
completion of the at least one sales transaction
performed in the on-line environment and the
analyzing is performed based on consumer
behavior data generated based on monitored
behavior occurring after the at least one sales
transaction,
wherein the at least one sales transaction involves See Claim 1[e] above.
determining whether it is acceptable to assume
some or all of a third party's obligations in the at
least one sales transaction.
791 Patent Claims
13. The method of claim 12, further comprising
deleting redundant data in the consumer behavior
data pertaining to the same consumer.
791 Patent Claims

Oldham + Schroeder + Woda


See Claim 7 above

Oldham + Schroeder + Woda

71

14. The method of claim 12, wherein the at least


two different sources include seller reported data
and a consumer behavior tracking mechanism.

See Claim 8 above.

791 Patent Claims


15. The method of claim 14, wherein the
consumer behavior tracking mechanism is a
shared object.

Oldham + Schroeder + Woda


See Claim 9 above.

791 Patent Claims


16. The method of claim 14, wherein the
consumer behavior tracking mechanism is a
cookie.

Oldham + Schroeder + Woda


See Claim 10 above.

791 Patent Claims


17. The method of claim 14, wherein the at least
two different sources includes code provided in
the on-line environment provided in connection
with the at least one sales transaction related
offering, the code being executed to monitor and
record consumer behavior.

Oldham + Schroeder + Woda


See Claim 11 above.

791 Patent Claims


18. The method of claim 12, wherein the
consumer behavior is generated continuously
from the at least one consumer's first exposure to
the on-line environment.

Oldham + Schroeder + Woda


See Claim 2 above.

791 Patent Claims


19. The method of
claim 12, wherein the
consumer behavior is
generated continuously
past completion of the
at least one sales
transaction performed
in the on-line
environment.

Oldham + Schroeder + Woda


Oldham discloses that the monitoring of consumer
behavior (i.e., a conversion of an advertisement) is
continuously tracked past completion of a sales
transaction (i.e., advertisements that are tracked that are
presented after a transaction) using a tracking code (Ex.
1015, 103):
The conversion tracking module 112 collects
information associated with advertisement
conversions. The originating advertisement for the
conversion is tracked, for example, using a tracking
code provided with the advertisement impression.
72

Ex. 1013, [0024].


The system presents one or more matching
advertisements to the user contemporaneously in time
with the transaction (308). . . . In one implementation,
the advertisement is presented to the user with the
transaction receipt (electronic or virtual). Ex. 1013,
[0065].
A POSA would understand that the tracking code (e.g., a
cookie) would continually track online consumer behavior
past completion. Ex. 1015, 103.
791 Patent Claims
20. The method of claim 12, wherein the
consumer behavior data indicates whether the
consumer accepted one or more sales transaction
related offerings.

Oldham + Schroeder + Woda


See Claim 5 above.

791 Patent Claims


21. The method of claim 12, wherein the
consumer behavior data indicates details
pertaining to a conversion of the at least one
consumer to a customer in the on-line
environment.

Oldham + Schroeder + Woda


See Claim 3 above.

791 Patent Claims


22. The method of claim 21, wherein the
consumer behavior data indicates whether the
consumer accepted one or more sales transaction
related offerings in connection with the at least
one sales transaction.

Oldham + Schroeder + Woda


See Claim 4 above.

791 Patent Claims


23. A method for performing systematic analysis
of consumer behavior data to predict consumer
demand via an on-line environment, the method
comprising:

Oldham + Schroeder + Woda


See Claim 1[a] above.

73

monitoring behavior of at least one consumer in


the on-line environment by at least one server
coupled to at least one communication network
included in the on-line environment prior to,
during and subsequent to at least one sales
transaction performed in the on-line environment
to generate consumer behavior data; and
analyzing the generated consumer behavior data
at at least one server coupled to the at least one
communication network included in the on-line
environment to determine efficacy of a plurality
of parameters relating to one or more sales
transaction related offerings,

See Claim 1[b] above.

wherein the monitoring consumer behavior is


performed past completion of the at least one
sales transaction performed in the on-line
environment and the analyzing is performed
based on consumer behavior data generated based
on monitored behavior occurring after the at least
one sales transaction,
wherein the at least one sales transaction involves
determining whether it is acceptable to assume
some or all of a third party's obligations in the at
least one sales transaction.

See Claim 1[d] above.

791 Patent Claims


24. A method for
performing systematic
analysis of consumer
behavior data to predict
consumer demand via
an on-line environment,
the method comprising:
monitoring behavior of
at least one consumer in
the on-line environment
by at least one server
coupled to at least one
communication network

See Claim 1[c] above.

See Claim 1[e] above.

Oldham + Schroeder + Woda


See Claim 1[a] above.

See Claim 1[b] above.

74

included in the on-line


environment prior to,
during and subsequent
to at least one sales
transaction performed
in the on-line
environment to generate
consumer behavior
data; and
analyzing the generated
consumer behavior data
at at least one server
coupled to the at least
one communication
network included in the
on-line environment to
determine efficacy of a
plurality of parameters
relating to one or more
sales transaction related
offerings,
wherein the monitoring
behavior is performed
past completion of the
at least one sales
transaction performed
in the on-line
environment, and the
analyzing is performed
based on consumer
behavior data generated
based on monitored
behavior occurring after
the at least one sales
transaction,
wherein the at least one
sales transaction
includes a transaction
performance guaranty

See Claim 1[c] above.

See Claim 1[d] above.

Oldham discloses that the advertisements can include an


incentive (Ex. 1015, 98):
The advertisement may include an incentive (e.g., a
75

service for some or all


of one party's
obligations in the at
least one sales
transaction.

coupon or other discount) to encourage the consumer


to purchase a particular product or service. Ex. 1013,
[0002].
Woda discloses a transaction performance guaranty
used to underwrite a sales transaction (i.e., for some or
all of one party's obligations, as understood by a POSA
and as argued by buySAFE during the litigation claim
construction phase of the 019 patent) as a type of
incentive that can be included by the advertising system
of Oldham (Ex. 1015, 83):
FIG. 1 depicts a framework 100 in which a safe
transaction service provider provides a transaction
performance guaranty for a transaction involving a
party who obtains the safe transaction service through
an underwriting process, according to one
embodiment of the inventions. Ex. 1011, [0031]
(emphasis added).
The underwriter 140 may communicate with
different entities to gather relevant information in
order to make a qualification decision about each
service applicant. It may gather credit information
from different credit agencies 150. It may also collect,
either internally or externally, ratings of a merchant
from various rating information sources 160. Ex.
1011, [0048].

791 Patent Claims


25. The method of
claim 24, wherein the
transaction performance
guaranty is one or more
of a surety bond, a
specialized bank
guaranty, a specialized
insurance policy, and a
safe transaction
guaranty

Oldham + Schroeder + Woda


Woda discloses the recited embodiments for transaction
performance guaranty (Ex. 1015, 84):
FIG. 2 illustrates different exemplary forms in which
a transaction performance guaranty 210 may be
provided, according to an embodiment of the
inventions. It may be offered in the form of a surety
bond 220, a specialized bank guaranty 230, . . . , a
specialized insurance policy 240, or in a form of a
safe transaction guaranty 250. Ex. 1011, [0035].
76

791 Patent Claims


26. A method for
performing systematic
analysis of consumer
behavior data to predict
consumer demand via
an online environment,
the method comprising:
monitoring behavior of
at least one consumer in
the on-line environment
by at least one server
coupled to at least one
communication network
included in the on-line
environment prior to,
during and subsequent
to at least one sales
transaction performed
in the on-line
environment to generate
consumer behavior
data; and
analyzing the generated
consumer behavior data
at at least one server
coupled to the at least
one communication
network included in the
on-line environment to
determine efficacy of a
plurality of parameters
relating to one or more
sales transaction related
offerings,

Oldham + Schroeder + Woda


See Claim 1[a] above.

See Claim 1[b] above.

See Claim 1[c] above.

77

wherein the monitoring


behavior is performed
past completion of the
at least one sales
transaction performed
in the on-line
environment, and the
analyzing is performed
based on consumer
behavior data generated
based on monitored
behavior occurring after
the at least one sales
transaction,
wherein a safe
transaction service
provider determines
whether it is acceptable
to assume
one or more obligations
of a party that provides
a product or a service
associated with the one
or more sales
transaction related
offerings

See Claim 1[d] above.

Oldham discloses that the advertisements can include an


incentive (Ex. 1015, 98):
The advertisement may include an incentive (e.g., a
coupon or other discount) to encourage the consumer
to purchase a particular product or service. Ex.
1013, [0002].
Woda discloses a safe transaction service used to
underwrite a sales transaction (i.e., determines whether
it is acceptable to assume one or more obligations of a
party, as understood by a POSA and as argued by
buySAFE during the litigation claim construction phase
of the 019 patent) as a type of incentive that can be
included by the advertising system of Oldham (Ex. 1015,
83):
FIG. 1 depicts a framework 100 in which a safe
transaction service provider provides a transaction
performance guaranty for a transaction involving a
party who obtains the safe transaction service
through an underwriting process, according to one
embodiment of the inventions. Ex. 1011, [0031]
(emphasis added).

78

The underwriter 140 may communicate with


different entities to gather relevant information in
order to make a qualification decision about each
service applicant. It may gather credit information
from different credit agencies 150. It may also collect,
either internally or externally, ratings of a merchant
from various rating information sources 160. Ex.
1011, [0048].
791 Patent Claims
27. The method of
claim 26, further
comprising providing a
transaction related
offering graphic.

Oldham + Schroeder + Woda


Woda discloses a graphic related to the transaction
guaranty (i.e., transaction related) (Ex. 1015, 88:
To render a seal in its graphical form, the guaranty
seal generation mechanism 1010 may produce code
that can be used to render a graphical symbol. Ex.
1011, [0074].

79

IX.

CONCLUSION
In view of the foregoing, it is respectfully submitted that there is a

reasonable likelihood that Petitioner would prevail with respect to at least one of
claims 1-27 of the 791 patent. Accordingly, the PTAB is requested to grant this
petition and to initiate a covered business method review.
Dated: May 9, 2014

Respectfully submitted,
By: /Barry S. Goldsmith/
Barry S. Goldsmith (Reg. No. 39,690)
bgoldsmith@milesstockbridge.com
Miles & Stockbridge P.C.
1751 Pinnacle Drive, Suite 500
Tysons Corner, VA 22102
Telephone: (703) 610-8680
Facsimile: (703) 610-8686
Attorney for Petitioner

80

Case CBM 2014-00122

Certificate of Service
Pursuant to 37 C.F.R. 42.6 and 42.105, I, Barry S. Goldsmith, an attorney,
certify that on the 9th day of May 2014, the foregoing PETITION FOR
COVERED BUSINESS METHOD REVIEW UNDER 35 U.S.C. 321 AND 18
OF THE LEAHY-SMITH AMERICA INVENTS ACT was served on the
attorney listed below via Federal Express:
Jason Vick
Sheridan Ross PC
1560 Broadway, Suite 1200
Denver, CO 80202

Date: May 9, 2014

By:

/Barry S. Goldsmith/
Barry S. Goldsmith
Attorney for Requester
Registration No. 39,690