Unified Patents Inc. v. Bridge and Post, Inc., IPR2017-01423 (PTAB May 16, 2017)

Inter Partes Review
United States Patent No. 7,657,594

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Unified Patents Inc.
Petitioner
v.
Bridge and Post, Inc.
Patent Owner
Patent No. 7,657,594

Filing Date: May 15, 2006
Issue Date: Feb. 2, 2010
Title: Directed Media Based on User Preferences
Case No. IPR2017-01423
PETITION FOR INTER PARTES REVIEW

Inter Partes Review
TABLE OF CONTENTS
I. MANDATORY NOTICES ...........................................................................1

A. Real Party-in-Interest ............................................................................1
B. Related Matters......................................................................................1
C. Lead and Back-Up Counsel and Service Information ..........................1
II. FEE PAYMENT ............................................................................................2

III. STATEMENT OF PRECISE RELIEF REQUESTED .............................2
A. Claims for Which Review Is Requested ...............................................2
B. Statutory Grounds of Challenge ............................................................2
IV. CERTIFICATION OF GROUNDS FOR STANDING .............................3
V. U.S. Patent 7,657,594 .....................................................................................3

A. Prosecution History Summary ..............................................................5
B. Level of Ordinary Skill in the Art .........................................................5
VI. CLAIM CONSTRUCTION ..........................................................................6

A. Proposed Constructions .........................................................................6
1. a group identifier (claims 1, 14, 15, 23, 24) ............................6
2. persistent device identifier (claims 1, 15, and 24) ..................6

3. access point information (claims 4 and 18).............................7
4. media tag (claim 7) ..................................................................7
VII. PRECISE RELIEF REQUESTED ..............................................................7

A. Overview of the Prior Art......................................................................7
1. Smith............................................................................................7
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2. Parekh .........................................................................................8
3. Stewart ........................................................................................9
4. Short ..........................................................................................10
5. Hosea.........................................................................................11
6. Mathai .......................................................................................11
7. Gupta .........................................................................................12
B. Smith and Parekh Render Obvious Claims 1-3, 5-10, 13, 15-17,
19-22, and 24 .......................................................................................12
1. Claims 1, 15, and 24 .................................................................12
2. Claims 2 and 17.........................................................................31
3. Claims 3 and 16.........................................................................32
4. Claims 5 and 21.........................................................................33
5. Claims 6 and 20.........................................................................34

6. Claim 7 ......................................................................................35
7. Claim 8 ......................................................................................36
8. Claim 9 ......................................................................................36
9. Claim 10 ....................................................................................37
10. Claims 13 and 22.......................................................................37

11. Claim 19 ....................................................................................38
C. Smith, Parekh, and Stewart Render Obvious Claims 1, 4, 15,

and 18 ..................................................................................................38
D. Smith, Parekh, and Short Render Obvious Claims 1, 11 and 12 ........40
E. Smith, Parekh, and Hosea Render Obvious Claims 1, 14, 15,

and 23 ..................................................................................................41
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F. Hosea, Mathai, Short, and Gupta Render Obvious Claims 1-3,

5-17, and 19-24....................................................................................42
1. Claims 1, 15, and 24 .................................................................42
2. Claims 2 and 17.........................................................................59
3. Claims 3 and 16.........................................................................60

4. Claims 5 and 21.........................................................................61
5. Claims 6 and 20.........................................................................63
6. Claim 7 ......................................................................................64
7. Claim 8 ......................................................................................65
8. Claim 9 ......................................................................................65
9. Claim 10 ....................................................................................65
10. Claims 11 and 12.......................................................................66
11. Claims 13 and 22.......................................................................67

12. Claims 14 and 23.......................................................................67
13. Claim 19 ....................................................................................68

G. Hosea, Mathai, Gupta, and Stewart Render Obvious Claims 1,
4, 15, and 18 ........................................................................................68
VIII. CONCLUSION ............................................................................................70
IX. CERTIFICATION UNDER 37 C.F.R. 42.24(d) ....................................71
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TABLE OF AUTHORITIES
Page(s)
Federal Statutes
35 U.S.C. 102 .................................................................................................... 7-12
35 U.S.C. 103 ...................................................................................................... 2-3
35 U.S.C. 311 ..........................................................................................................2
Regulations
37 C.F.R. 42.8(b)(1) ................................................................................................1
37 C.F.R. 42.15(a)...................................................................................................2
37 C.F.R. 42.24 .....................................................................................................71
37 C.F.R. 42.103(a).................................................................................................2
37 C.F.R. 42.104(a) .................................................................................................3
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LIST OF EXHIBITS
Exhibit 1001 U.S. Patent No. 7,657,594 B2 to Banga et al. (the 594 patent)
Exhibit 1002 Expert Declaration of Dr. Jon Weissman
Exhibit 1003 U.S. Patent Application Publication 2003/0083938 to Smith et

al. (Smith)
Exhibit 1004 International Publication WO 00/67450 to Parekh et al.
(Parekh)
Exhibit 1005 U.S. Patent Application Publication 2002/0173981 to Stewart
(Stewart)
Exhibit 1006 U.S. Patent Application 2005/0172154 to Short et al. (Short)

Exhibit 1007 U.S. Patent Application Publication 2002/0059094 to Hosea et
al. (Hosea)
Exhibit 1008 International Publication WO 00/67092 to Mathai et al.
(Mathai)
Exhibit 1009 U.S. Patent 6,487,538 to Gupta et al. (Gupta)
Exhibit 1010 Petitioners Voluntary Interrogatory Responses
Exhibit 1011 Amendment and Response to Final Office Action Dated June
18, 2008 and Request for Continued Examination Under 37
CFR 1.114
Exhibit 1012 Amendment and Response to Office Action dated October 19,
2007
Exhibit 1013 Amendment and Response to Office Action dated March 3,

2009
Exhibit 1014 Notice of Allowance and Fee(s) Due
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I. MANDATORY NOTICES
A. Real Party-in-Interest
Pursuant to 37 C.F.R. 42.8(b)(1), Unified Patents Inc. (Petitioner)
certifies that Unified is the real party-in-interest and no other party exercised
control or could exercise control over Petitioners participation in this proceeding,
the filing of this petition, or the conduct of any ensuing trial. In this regard, Unified
has submitted voluntary discovery. See EX1015.
B. Related Matters
U.S. Patent 7,657,594 (594 Patent (EX1001)) is owned by Bridge and
Post, Inc. (Bridge and Post or Patent Owner). Petitioner is aware of the
following case: Bridge and Post, Inc. v. Verizon Commcns, Inc., 3:17-cv-00094-
JAG (E.D. Va.).
C. Lead and Back-Up Counsel and Service Information

The signature block of this petition designates lead counsel, backup counsel,
and service information for each petitioner. Unified designates Lionel M. Lavenue
(Reg. No. 46,859) as lead counsel and designates Roshan Mansinghani (Reg. No.
62,429) as back up counsel. Unified also designates Cory Bell (Reg. No. 75,096),
Robert High (Reg. No. 75,786), and Sterling Waite (Reg. No. 74,875) as backup
counsel. All can be reached at Finnegan, Henderson, Farabow, Garrett & Dunner,
LLP, 901 New York Avenue, NW, Washington, DC 20001-4413 (phone:
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202.408.4000; fax: 202.408.4400). Petitioner consents to e-mail service at
UnifiedPatentsIPRs@finnegan.com.
II. FEE PAYMENT

The required fees are submitted under 37 C.F.R. 42.103(a) and 42.15(a).
If any additional fees are due during this proceeding, the Office may charge such
fees to Deposit Account No. 06-0916.
III. STATEMENT OF PRECISE RELIEF REQUESTED

A. Claims for Which Review Is Requested
Petitioner requests inter partes review and cancellation of claims 1-24 of the
594 Patent under 35 U.S.C. 311.
B. Statutory Grounds of Challenge

This Petition presents the following grounds:
Ground Proposed Statutory Rejections for the 594 Patent Exhibit

No(s).
Claims 1-3, 5-10, 13, 15-17, 19-22, and 24 are
obvious under pre-AIA 103(a) over U.S. Patent
EX1003
1 Application Publication 2003/0083938 by Smith in
EX1004
view of International Publication WO 00/67450 by
Parekh
Claims 1, 4, 15, and 18 are obvious under pre-AIA
EX1003
103(a) over Smith in view of Parekh and U.S.
2 EX1004
Patent Application Publication 2002/0173981 by
EX1005
Stewart
Claims 1, 11, and 12 are obvious under pre-AIA EX1003
3 103(a) over Smith in view of Parekh and U.S. EX1004
Patent Application 2005/0172154 by Short EX1006
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Claims 1, 14, 15, and 23 are obvious under pre-AIA

EX1003
103(a) over Smith in view of Parekh and U.S.
4 EX1004
Patent Application Publication 2002/0059094 by
EX1007
Hosea
Claims 1-3, 5-17, and 19-24 are obvious under pre- EX1006
AIA 103(a) over Hosea in view of International EX1007
5
Publication WO 00/67092 by Mathai, U.S. Patent EX1008
6,487,538 by Gupta, and Short EX1009
Claims 1, 4, 15, and 18 are obvious under pre-AIA EX1005
103(a) over Hosea in view of Mathai, Gupta, and EX1007
6
Stewart EX1008
EX1009
IV. CERTIFICATION OF GROUNDS FOR STANDING

Petitioner certifies pursuant to 37 C.F.R. 42.104(a) that the 594 patent is
available for inter partes review and that Petitioner is not barred or estopped from
requesting inter partes review challenging the patent claims on the grounds
identified in this Petition.
V. U.S. Patent 7,657,594

The 594 patent discloses providing directed media to a user, EX1001,
2:66, which may include advertisement, coupons, video, music, or any other
media which is tailored to the user preferences. Id., 2:41-43.
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Id., Fig. 1.
A user profile containing user preferences is associated with a persistent
device identifier, id., 2:67-3:4, 3:33-36, which identifies the users network access
device. Id. This device includes any digital device capable of communications
over [a] network, id., and may connect to the network through an access point.
Id., 4:54-55.
A history module collects and maintains historic information about the
network access device, including the number, date, and time of network accesses.
Id., 7:57-8:2. A profile engine generates user profiles based on the collected
information and associates it with the persistent device identifier. Id., 5:66-6:5,
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6:64-7:1. The profile engine can incorporate into the profiles group characteristics,
which have group identifiers indicating the associated group. Id., 6:24-27.
A media selection optimizer determines a directed media component based
on the user profile. Id., 2:15-30. The directed media is then provided to the users
network access device. Id., 8:53-64.
A. Prosecution History Summary

The examiner issued three rejections in view of U.S. Patent 7,027,801 by
Hall et al. (Hall) and U.S. Patent Publication 2007/0099701 by Simon et al.
(Simon). The applicant twice amended the claims with features allegedly missing
from Hall and Simon to no avail. See EX1011 at 7-9 and EX1012 at 9-11. In its last
response, the applicant argued for the first time that Hall failed to disclose placing
directed content in a website requested by the user because it instead described
push notifications, or ads, triggered by the users movement. EX1013 at 9-10.
This apparently secured allowance. EX1014 at 8. But this feature was explicitly
disclosed in multiple prior art references as discussed below.
B. Level of Ordinary Skill in the Art

The priority date of the 594 patent is May 12, 2005. A person of ordinary
skill in the art (POSITA) as of that date would have had at least a bachelors
degree in computer or electrical engineering, computer science, or an equivalent
degree, training, or experience, with at least two years of experience in computer
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programming and software development, including the development of software
for communication with other computers over a network. See EX1002, 35.
VI. CLAIM CONSTRUCTION

The broadest reasonable construction is provided below, and, for the
purposes of this Petition, no explicit construction is needed for any claim term not
addressed below.
A. Proposed Constructions
1. a group identifier (claims 1, 14, 15, 23, 24)
The 594 Patent states that a group identifier indicat[es] a group type that
the user is associated with, EX1001, 6:26-27, and provides examples where the
group identifier is a single characteristic or demographic. Id., 6:24-39.
Additionally, claim 14 recites a separate group identifier is assigned to each
common characteristic shared by the user and one or more of the plurality of
users. Id., 13:4-6 (emphases added). Hence, a group identifier should be construed
as a name for one or more characteristics shared by users. EX1002, 39-40.
2. persistent device identifier (claims 1, 15, and 24)

The 594 Patent states that [t]he user profile is associated with a device
identifier, which is persistent (e.g., may not be deleted nor changed), EX1001,
3:2-4. Hence, persistent device identifier should be construed as a device
identifier which may not be deleted or changed. EX1002, 41.
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3. access point information (claims 4 and 18)

Based on the 594 Patents disclosure, access point information should be
construed as any . . . information which may be obtained from the access point.
EX1001, 7:48-50. 1 EX1002, 42.
4. media tag (claim 7)

The 594 Patent states that a media tag identif[ies] the media or media
type, and may indicate [e.g] that an advertisement that is directed to a male
between 18-30 who likes baseball should be provided. EX1001, 9:34-36.
Accordingly, media tag should be construed as information identifying the media
or media type to be provided. EX1002, 43.
VII. PRECISE RELIEF REQUESTED
A. Overview of the Prior Art
1. Smith
U.S. Patent Application Publication 2003/0083938 by Smith et al. (Smith)
is prior art at least under pre-AIA 102(a), (b), and (e) because it was filed on
October 20, 2001, and published on May 1, 2003, while the priority date of the
594 Patent is May 12, 2005.
1
The 594 Patent defines an access point as a device that couples that network
access devices 110 to the network 130, such as a base station, router, hub, or
switch. Id., 4:54-56 and 7:51-56.
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Smith discloses establishing [a] communication session with a client
device, EX1003, [0034]; extracting user activity from a session log to compile
information useful for assessing a users interests, id., [0014]; build[ing] a
profile history from the extracted profile data[;] and associat[ing] it with the
terminal identifier, id., [0014], such as the terminals manufacturers
identification number, id., [0044].
Smith discloses selecting and including in the user-requested content
advertising content that corresponds to the identified user, id., [0014], and
us[ing] the profile data to select viewing content such as banner advertising that
may be of interest to the user and provid[ing] this content to CGI 70 or web server
60 for inclusion in the documents and other data returned to a client, id., [0038].
Thus, Smith discloses what was alleged as missing from the prior art during
prosecution.
2. Parekh
International Publication WO 00/67450 by Parekh et al. (Parekh) is prior
art at least under pre-AIA 102(a) and (b) because it was filed on May 2, 2000,
and published on November 9, 2000, while the priority date of the 594 Patent is
May 12, 2005.
Parekh discloses a system that can infer that a certain group of visitors
requesting a page or sequence of pages has a particular interest and can target an
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advertisement associated with the inferred interest of the individual or group.
EX1004, 3:21-4:3.
Parekh discloses gather[ing] information, including geographic
information, about specific IP addresses based upon the Internet users Internet
activity. Id., 31:10-14. It also checks whether the host has a MAC address, id.,
37:20, and store[s] this information in the high performance database 84 by IP
address and creates an elaborate profile of the IP address . . . , id., 31:15-17.
The database notifies a web site of the users geographic information,
EX1004, 32:13-16, which sends [the user] a web page that is tailored for her
geographic location, such as the weather forecast and the new headlines
corresponding to the geographic information, id., 32:16-18. Thus, Parekh also
discloses what was alleged as missing from the prior art during prosecution.
3. Stewart
U.S. Patent Application Publication 2002/0173981 by Stewart (Stewart) is
prior art at least under pre-AIA 102(a), (b), and (e) because it was filed on May
18, 2001, and published on November 21, 2002, while the priority date of the 594
Patent is May 12, 2005.
Stewart discloses providing services particular to the customer including
personalized offers, targeted advertising, offers based on frequency of past visits
or past purchases, and other services based on user demographic information.
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EX1005, [0086]. When [a personal computing device] PCD becomes close to an
access point, the PCD may provide the identification information [such as a MAC
ID] to the access point, which may transmit the identification information to the
businesss web site. Id., [0014]. [A] customer may be presented with
advertisements, including discounts or specials, for goods or services of the
business, and/or of nearby businesses. Id., [0047].
4. Short
U.S. Patent Application 2005/0172154 by Short et al. (Short) is prior art at
least under pre-AIA 102(e) because it was filed on January 28, 2005, and claims
priority to January 29, 2004, while the priority date of the 594 Patent is May 12,
2005.
Short discloses a method for providing digital content to wireless network
enabled devices. EX1006, Abstract. Shorts method includes encrypting the first
table of characteristics [associated with transformed content] using an identifier
uniquely associated with the client device. Id., [0009]-[0010]. The unique
identifier may include an IMEI (International Mobile Equipment Identifier)
number or an IMSI (International Mobile Subscriber Identification) number.
Id., [0105].
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5. Hosea
U.S. Patent Application Publication 2002/0059094 by Hosea et al.
(Hosea) is prior art under at least 35 U.S.C. 102(a), (b), and (e) because it was
filed on June 7, 2001, and published on May 16, 2002, while the priority date of
the 594 Patent is May 12, 2005.
Hosea discloses a method for profiling iTV users or clients based on their
viewing habits, interactions with the iTV, and Internet surfing habits, and for
selectively recommending and delivering content, such as advertising or
recommended programs, to the users based on their profiles EX1007, [0031].
[T]argeted advertisements may be banner ads displayed when the user is using the
Internet . . . . Id., [0224].
6. Mathai
International Publication WO 00/67092 to Mathai et al. (Mathai) is prior
art at least under pre-AIA 102(a) and (b) because it published on November 9,
2000 while the priority date of the 594 Patent is May 12, 2005.
Mathai discloses a method for directly engag[ing] actual and potential user-
consumers with selected advertising or marketing content based on each users
profile and usage history. EX1008, 6:13-15. [T]he users physical location and
the time of day are identified by the system each time the user logs on, and the
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user profile and user history, along with the users physical location and time of
using the system, provides pinpoint advertising capability in real time. Id., 9:6-9.
7. Gupta
U.S. Patent Number 6,487,538 by Gupta et al. (Gupta) is prior art at least
under pre-AIA 102(a), (b), and (e) because it was filed on November 16, 1998,
and issued on November 26, 2002 while the priority date of the 594 Patent is May
12, 2005.
Gupta discloses a method for local advertising in which Internet Service
Providers (ISPs) or proxies owned by an ISP insert advertisements transmitted
from a web host to a client. EX1009, Abstract. [C]lient 400 requests a URL from
web server 404 that is intercepted by proxy 402 which retrieves the relevant
information excluding the advertisements from web server 404 and inserts
advertisements and forwards the completed package to client 400. Id., 10:64-11:2.
[A]n ADDEMOGRAPHIC tag may specify demographic information about the
user that the advertisement will be presented to. Id., 15:57-65. Thus, Gupta also
discloses what was alleged as missing from the prior art during prosecution.
B. Smith and Parekh Render Obvious Claims 1-3, 5-10, 13, 15-17, 19-
22, and 24
1. Claims 1, 15, and 24
The limitations of independent claims 15 and 24 are substantially similar to
claim 1. Claim 1 is directed to a method for, Claim 15 to a system for, and
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Claim 24 to a machine-readable storage medium having stored thereon a program,
the program being executable to provide a method for performing a series of
nearly identical steps.
a. Elements [1.0], [15.0], and [24.0]: Smith discloses a

method, a system and a machine-readable
storage medium having stored thereon a program, the
program being executable to provide a method for
providing directed media to a user on a network
Smith discloses these elements because it discloses methods and systems
for tracking user activity at a terminal on a communication network, EX1003,
[0001], to identify a user during a session for purposes of targeting advertising to
the user. Id., [0019].
b. Elements [1.1], [15.1], and [24.1]: Smith discloses

receiving a request from the user to access a content
provider web site over a network through a network
access device operated by the user
Smith discloses various service providers coupl[ing] users through
computers and other communication devices to a communication network for the
purpose of exchanging information requests. EX1003, [0032]; see id. Fig. 1.
Content for these information requests may come from other client users or from
content communication sites such as Web server 60, and Universal Resource
Locators (URL) are included in the request and reply messages from client
devices. EX1003, [0033]. An Internet Service Provider (ISP) can receive such
requests. EX1003, [0014]-[0015].
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Element [15.1] additionally recites a network module performing this step.
The 594 Patent explains a network module is merely a communication
interface connecting the various components including the network access
devices, network, and content providers. EX1001, 7:33-37. Smith discloses, or at
least renders obvious, a network module by disclosing the software and
hardware interfaces that can be used, such as Ethernet and TCP/IP. EX1003,
[0037]; EX1002, 71.
c. Elements [1.2], [15.2], and [24.2]: Smith in view of

Parekh renders obvious retrieving a persistent device
identifier of the network access device
Smith discloses [a] system located at a users terminal, using [t]erminal
identification data such as manufacturers identification number [MIN] or the like
to determine whether a user profile exists and to retrieve it if it does. EX1003,
[0044]. Similarly, Parekh discloses check[ing] whether the host has a MAC
address and, if so, attempt[ing] to determine machine type and connection speed
based on known MAC address delegations. EX1004, 37:20-38:1. Both of these
identifiers do not change and are not deleted in Smith and Parekh. EX1002, 73-
74.
A POSITA would have been motivated to combine Parekhs host MAC
address with Smiths terminal identification data because the MAC address helps
determine machine type and connection speed, EX1004, 37:21-38:1, which can
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be used to dynamically adapt and tailor Internet advertising for targeting specific
Internet users based on their connection speed. EX1004, 28:20-29:1. A POSITA
would have understood this passage as indicating that a MAC address would yield
additional information about the device, thereby improving the advertisings
effectiveness. EX1002, 76.
Element [15.2] additionally recites an information collection engine
configured to perform this step. A POSITA would have understood this engine
to merely be a collection of software instructions for performing the step. EX1002,
75. Smith discloses this element because its process is implemented in software.
EX1003, [0041].
d. Elements [1.3], [15.4], and [24.3]: Smith discloses

determining a current network address of the
network access device
Smith discloses extracting terminal identifiers such as IP addresses. EX1003,
[0038]. That an IP addresses is a current network address is confirmed by claim
9: the assigned network address is an Internet Protocol (IP) address associated
with the network access device used by the user. EX1001, 12:58-60.
Element [15.4] additionally recites the information collection engine
configured to perform this step. A POSITA would have understood this engine
to merely be a collection of software instructions for performing the step. EX1002,
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78. Smith discloses this element because its process is implemented in software.
EX1003, [0041].
e. Elements [1.4], [15.3], [15.5], and [24.4]: Smith in view

of Parekh renders obvious retrieving and determining
one or more characteristics of the access device
Elements [15.3] and [15.4] are steps the information collection engine [is]
configured to perform, which Smith discloses. Supra VII.B.1.c. Element [15.3]
recites determine, and Element [15.4] recites retrieve, the above information.
Parekh discloses this because it discloses dynamically determin[ing] the
interface that a user 5 has to view the web site 60 so that the web site 60 [can]
tailor[] the information that is being sent to the user 5. EX1004, 36:4-13. For
example, Personal Digital Assistant (PDA) users are shown a web site 60 with
limited or no graphics in order to accommodate the PDAs limited storage
capabilities. Id., 36:7-8.
To elaborate, when a user accesses a web site, Parekh teaches quer[ying]
the interface database to retrieve[] the type of interface associated with [the
users] particular IP address and then inform[ing] the web site 60 of the [users]
display interface. Id., 36:9-12. The user interface information may be placed in
the database 84E through a registration process, may be known from the ISP, or
may be detected or discovered in other ways. Id., 36:5-7.
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Because a POSITA would understand that terminals, including personal
computers, work stations, desktop, portable, handheld, set top, personal digital
assistants, or wireless communication devices, EX1003, [0032], have different
interfaces, a POSITA would be motivated to add these features of Parekh to Smith
to improve the users experience. EX1002, 82.
f. Elements [1.5], [15.6], and [24.5]: Smith discloses the

current network address is assigned to the network
access device by a network service provider for a
present network access session
Element [15.6] recites the current network address is assigned to the
network access device by a network service provider. Elements [1.5] and [24.5]
additionally recite for a present network access session.
Smith discloses these elements by disclosing that the ISP [i.e., network
service provider] typically assigns a different IP address to a computer [i.e.,
network access device] each time a user accesses the ISP hub [i.e., network access
session]. EX1003, [0005].
g. Elements [1.6], [15.7], and [24.6]: Smith in view of

Parekh renders obvious retrieving historic
information for the user, the historic information
including patterns of usage for the network access
device
Element [15.7] is a step the information collection engine [is] configured
to perform, which Smith discloses. Supra VII.B.1.c.
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Smith discloses the claimed retrieving historic information by disclosing
analyz[ing] a browse period log, which is a database of user activity beginning
with the initial access of the ISP hub and the users logout from the ISP hub,
including the user activity data that has occurred between a user and the various
content communication sites visited by the user during the browse period.
EX1003, [0015].
Smith discloses the historic information including patterns of usage for the
network access device because it discloses extracted profile data may then be
compared to a profile history previously generated and associated with the terminal
identifier. EX1003, [0014]. Further, Smith discloses that known systems have
evaluated the collected data using Bayesian model analysis or [o]ther known
statistical and probabilistic models to construct a user profile for a single user
which a POSITA would have understood as disclosing pattern analysis. EX1003,
[0035]; EX1002, 87. Moreover, Smiths disclosure is substantially similar to the
historical information disclosed in the 594 Patent. EX1001, 7:59-65; EX1002,
88.
Parekh discloses gather[ing] information about specific IP addresses based
upon the Internet users interactions with the various web sites 60 and other
requestors 40, EX1004, 31:10-12; storing it in the high performance database 84
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by IP address[;] and creat[ing] an elaborate profile of the IP address based on sites
60 visited and actions taken within each site 60, EX1004, 31:15-18.
A POSITA would have been motivated to combine Parekhs disclosure with
Smiths profile history because Parekh describes dynamically tailor[ing]
advertisements based on the elaborate profile, and explains [t]his method
allows for more customized experiences for users, which also applies to Smith.
EX1004, 33:10-14; EX1002, 90.
h. Elements [1.7], [15.8], and [24.7]: Smith in view of

Parekh renders obvious the historic information
comprises network access information including times
and locations of network access and number of
previous network accesses by the network access
device
Element [15.8] performs this step using the information collection engine,
which Smith discloses. Supra VII.B.1.c.
Smith discloses recording the times and number of network accesses by
disclosing that [known] systems for generating user profiles collected the user
activity data such as length and time of a session [i.e., times of network access],
EX1003, [0035]. Further, Smith discloses analyz[ing] a browse period log,
which is a database of user activity beginning with the initial access of the ISP
hub and the users logout from the ISP hub containing user activity data that has
occurred between a user and the various content communication sites visited by the
user during the browse period. EX1003, [0015]. A POSITA would have
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Inter Partes Review
recognized that such logs would indicate the number of previous network
accesses by the network access device. EX1002, 93.
Parekh discloses obtaining locations of network access: gather[ing]
[geographic] information about specific IP addresses based upon the Internet users
interactions with the various web sites 60 and other requestors 40. EX1004,
31:10-14. Such information is stored in the high performance database 84 by IP
address and creates an elaborate profile of the IP address . . . . Id., 31:15-17.
A POSITA would have been motivated to add Parekhs locations of
network access to Smith to allow for more effective marketing to advertisers and
content providers. Id., 27:20-28:2; EX1002, 96.
i. Elements [1.8], [15.9], and [24.8]: Smith in view of

Parekh renders obvious retrieving location-centric
information for a location from which the user is
accessing the network
Element [15.9] requires this step to be performed by the information
collection engine perform, which Smith discloses. Supra VII.B.1.c.
Parekh discloses these limitations: [u]sing Alices geographic information
[i.e., a location from which the user is accessing the network,] [to] send[] Alice a
web page that is tailored for her geographic location, for instance it contains the
Atlanta weather forecast [i.e., location-centric information] and the new headlines
for Atlanta. EX1004, 32:16-18. The 594 Patent explains that location-centric
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information may comprise . . . information related to the location, including
weather. EX1001, 8:5-8.
A POSITA would have been motivated to add Parekhs location-centric
information to Smiths user activity data because analyzing geographic
information, which can lead to determining location-centric information allows for
effective[] market[ing of] the site to potential Internet site advertisers and external
content providers or provid[ing] media-rich content to users that have sufficient
bandwidth. EX1004, 27:20-28:2; EX1002, 99.
j. Elements [1.9], [15.10], and [24.9]: Smith in view of

Parekh renders obvious generating a user profile
based on the historic information for the user, the
location-centric information, and the one or more
characteristics of the access device
Element [15.10] additionally recites a user profile component performing
the above step. A POSITA would have understood this component to merely be
a collection of software instructions for performing the step. EX1002, 100. A
POSITA would understand Smith to disclose this element because its process is
implemented in software. EX1003, [0041]; EX1002, 100. User profile
component does not appear in the 594 patent other than in Claim 15.
Smith discloses build[ing] a profile history from the extracted profile data
[i.e., the historic information for the user;] associat[ing] it with the terminal
identifier; and comparing the profile data extracted from the user activity to the
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Inter Partes Review
current and previously-generated profile histories to determine which user is
navigating the site. EX1003, [0014].
Parekh discloses, or it would have been obvious to a POSITA to include,
additional information in the user profile, including locations of network access for
the historic information, supra VII.B.1.h; location-centric information, supra
VII.B.1.i; and characteristics of the access device, supra VII.B.1.e. EX1002, 103.
This data is stored in databases as part of creat[ing] an elaborate profile of the IP
address. EX1004, 31:10-17; see id., 32:9-18, 36:4-11. To the extent that the
different databases included in database 84 are not a part of the same user
profile, it would have been obvious to a POSITA to combine the databases into a
single user profile. EX1002, 103. Further, the 594 Patent does not disclose
including the location-centric information in the user profileit merely discloses
using location-centric information along with a user profile for targeted
advertising. See EX1001, 8:10-14; EX1002, 103. Presumably, the applicant
believed this level of detail was all that was needed to support the claim given the
knowledge of a POSITA. EX1002, 103. Parekhs example regarding location-
centric information factors in this information for targeted advertisement, supra
VII.B.1.i, just as the example disclosed in the 594 Patent. See EX1001, 11:1-12;
EX1002, 103. Thus, the combination of Smith and Parekh renders this element
obvious. EX1002, 103.
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A POSITA would have been motivated to add these aspects of Parekh to
Smiths profile history. See supra VII.B.1.e, VII.B.1.h, and VII.B.1.i. EX1002,
105.
k. Elements [1.10], [15.13], and [24.10]: Smith in view of

Parekh renders obvious storing the user profile as a
record that identifies the user through the current
network address and [the] persistent device identifier
associated with the network access device
Element [15.13] is a step performed by the user profile component, which
Smith discloses. Supra VII.B.1.j.
Smith discloses a profile history database 84 for storage of user profile
histories. EX1003, [0037]. Further, Smith discloses:
[T]he IP addresses and information available to the

ISP hub through its support software located on a
terminal may be useful in further identifying the
computer and user driving a browse period. For example,
a laptop identified by the support software may indicate
which family member is driving a browse period and that
persons identity may be used to supplement the data in
the profile history.
Id., [0015] (emphasis added). The IP address is a current network address.
Supra VII.B.1.f. The information available to the ISP hub through its support
software located on a terminal can be terminal identification data, as indicated by
the example, a laptop identified by the support software. Id., [0015]; EX1002,
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107. This information could be used as keys that are used to store profiles in
profile database 84. EX1003, [0038]. The terminal identification data includes
persistent device identifiers. Supra VII.B.1.c; --EX1002, 107.
l. Elements [1.11], [15.11], and [24.11]: Smith in view of

Parekh renders obvious incorporating into the user
profile one or more group characteristics identifying a
group with which the user is associated
Element [15.11] is a step performed by a user profile component, which
Smith discloses query[ing] other databases using personal information
recovered from the profile data for other data such as demographic data, which
may also be included in the profile. EX1003, [0038]. A POSITA would have
understood that demographic data qualifies as group characteristics identifying
a group with which the user is associated. EX1002, 109.
Smith further discloses, for a television embodiment, generat[ing] a parent
profile, a husband profile, and a wife profile, which arise[] from the similar
content viewed [i.e. group characteristics] by a group or individual on a repeated
basis. EX1003, [0046]. A POSITA would have incorporated this disclosure from
the television embodiment into the Internet embodiments of Smith because they
have the same purpose: using data to better target advertising and further enhance
the advertising potential of a communication content site, an ISP service, or a
CATV system. Id., [0017]; EX1002, 111. Further, a POSITA would understand
24
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that [s]ome content is more desirable to particular groups, e.g., age, gender,
income level. EX1003, [0008]; EX1002, 112.
Parekh discloses infer[ring] that a certain group of visitors requesting a
page or sequence of pages has a particular interest [i.e. group characteristic].
EX1004, 3:21-4:1. For example, information profiled includes tendency to
like/dislike any of news, weather, sports, entertainment, sporting goods, clothing
goods, etc. EX1004, 32:10-11. A POSITA would add Parekhs particular interest
of visitors to Smiths demographic data so that the web site can target an
advertisement associated with the inferred interest of the individual or group. Id.,
4:2-3; EX1002, 114.
m. Elements [1.12], [15.12], [24.12]: Smith discloses or

the combination of Smith and Parekh renders obvious,
assigning a group identifier to the group based on
the patterns of usage
Element [15.12] is a step performed by a user profile component, which
A group identifier should be construed as a name for one or more
characteristics shared by users. Supra VI.A.1.
Smith discloses these Elements because, for a television embodiment, it
discloses generat[ing] a parent profile, a husband profile, and a wife profile,
which arise[] from the similar content viewed by a group or individual on a
repeated basis. EX1003, [0046]. A POSITA would incorporate this disclosure

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Inter Partes Review
from the television embodiment into the Internet embodiments of Smith. Supra
VII.B.1.l; EX1002, 117.
In addition, Parekh states:
[P]references of users 5 similar to those of a current user

5 [i.e. group identifier] can be used to predict the content
that the current user 5 may prefer to view. The
information profiled could include, but is not limited to,
the following: geographic location, connection speed to
the Internet, tendency to like/dislike any of news,
weather, sports, entertainment, sporting goods, clothing
goods, etc [i.e. patterns of usage].
EX1004, 32:3-11. Parekh provides the following example:
[I]f the profile . . . shows that an IP Address has

previously hit several e-commerce sites and sports sites
in the network [i.e., patterns of usage,] and that the
address is located in California, the web site can be
dynamically tailored to show sports items for sale that are
more often purchased by Californians [i.e. a group
identifier], such as surf boards.
Id., 33:10-13. If a purchase occurs, Parekh discloses sending this information to
the [profile] server 80, thereby showing a greater propensity for that group to buy
that item. Id., 33:8-9.
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A POSITA would have been motivated to combine Parekhs group
identifier, EX1004, 32:3-11, with Smiths group identifier, EX1003, [0046],
because Parekh suggests detect[ing] patterns of behavior for different groups of
visitors to increase advertising revenues and to increase sales. EX1004, 3:18-21;
EX1002, 119.
n. Elements [1.13] and [24.13]: Smith in view of Parekh

renders obvious analyzing the retrieved device
identifier, historic information, and location-centric
information to determine a directed media component
to be provided to the user or the group on the
Smith discloses (1) using a retrieved device identifier to retrieve a user
profile and (2) using the user profile to determine a directed media component.
First, Smith discloses, in one embodiment, using [t]erminal identification data
such as [MIN] to determine whether a user profile exists and to retrieve it if it
does. EX1003, [0044]. This matches the 594 Patent, which discloses
recognizing the user through the device identifier. EX1001, 4:27-28. Second,
Smith discloses us[ing] the profile data to select viewing content such as banner
advertising that may be of interest to the user. EX1003, [0038]. As discussed
supra VII.B.1.j, a POSITA would incorporate historic information and location-
centric information into the user profile. See EX1003, [0015]; EX1004, -31:10-
18, 32:16-18; EX1002, 122.
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A POSITA would have understood steps (1) and (2) above, together to
qualify as analyzing the retrieved device identifier because it is used to retrieve
the user profile to determine a directed media component to be provided to the
user. EX1002, 123. A POSITA would have understood Smiths viewing content
such as a banner advertising to be a directed media component because the 594
Patent states the directed media component may be the directed media, itself.
EX1001, 2:23-24; EX1002, 123.
Parekh discloses check[ing] whether the host has a MAC address and, if so,
attempt[ing] to determine machine type and connection speed [i.e., analyzing the
retrieved MAC address] based on known MAC address delegations. EX1004,
37:20-38:1. A POSITA would have combined Parekhs disclosure of analyzing the
MAC address with Smith to dynamically adapt and tailor Internet advertising for
targeting specific Internet users based on their connection speed. EX1004, 28:20-
29:1; EX1002, 125.
o. Elements [15.14] and [15.15]: Smith in view of Parekh

renders obvious a media selection optimizer circuit
configured to determine a directed media component
to transmit to the user or the group based on a user
profile, the user profile being associated with the
device identifier and the information provided by the
information collection engine
Smith and Parekh render obvious a media selection optimizer circuit
configured to perform the above step because Smith discloses system 80 may be
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Inter Partes Review
comprised of a Pentium II processor having sufficient RAM and hard disk storage,
such as 64M of RAM and 20 GB hard drive, thus inherently disclosing one or
more circuits. EX1003, [0037]; EX1002, 126. Further, the system performs the
claimed steps, addressed below.
Smith in view of Parekh renders obvious determin[ing] a directed media
component to transmit to the user or the group based on a user profile. See supra
VII.B.1.n. EX1002, 127.
Element [15.15] recites that the user profile is associated with the device
identifier and the information provided by the information collection engine.
Although claim 15 recites no antecedent basis for information provided by the
information collection engine, it recites that the information collection engine
retrieves the following: (1) a current network address of the network access
device, (2) historic information for the user, and (3) location-centric information
for a location from which the user is accessing the network, and (4) one or more
characteristics of the network access device.
Smith in view of Parekh renders obvious a user profile associated with the
device identifier and a network address because they teach identifying a user based
on this information. Supra VII.B.1.k. Smith in view of Parekh render obvious a
user profile associated with items 2 through 4 above because they teach a user
profile including these pieces of information. Supra VII.B.1.j. Smith and Parekh
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also render obvious that the determining step is based on such a user profile
because Smith discloses us[ing] the profile data to select viewing content such as
banner advertising that may be of interest to the user. EX1003, [0038]; EX1002,
129.
p. Elements [1.14], [15.16], and [24.14]: Smith discloses

placing directed media referenced by the directed
media component in the web site requested by the
user request from the content provider
Element [15.16] recites the media selection optimizer performing this step,
which Smith discloses. Supra VII.B.1.o.
Smith discloses providing select[ed] viewing content, i.e. the directed
media component, to CGI 70 or web server 60 for inclusion in the documents and
other data returned to a client [i.e., in the web site requested by the user request
from the content provider]. EX1003, [0038].
q. Elements [1.15], [15.17], [24.15]: Smith in view of

Parekh renders obvious the directed media
comprises content that is customized to the user based
on the user profile
Element [15.17] requires the media selection optimizer performing this
step, which Smith discloses. Supra VII.B.1.o.
Smith discloses identifying a users profile history from extracted profile
data and selecting and including in the user-requested content advertising content
that corresponds to the identified user. EX1003, [0014].
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Parekh discloses the web site can dynamically adapt and tailor Internet
content to suit the needs of Internet users 5 based on their geographic location
and/or connection speed, EX1004, 28:18-20, which are part of the user profile.
EX1004, 31:1-3, 32:9-10.
A POSITA would have been motivated to combine Parekh with Smith
because [a]n advertisement for a product or service that matches or is closely
associated with the interests of a person or group will be much more effective.
EX1004, 3:14-15; EX1002, 135.
2. Claims 2 and 17
Smith and Parekh render obvious obtaining user preference information for
the user based on information provided directly by the user, as recited by claim 2.
Smith discloses extract[ing] profile data such as . . . personal data from returned
forms such as campaign responses, . . . identifiers for data objects clicked by the
user, items purchased by the user, and such other data that may be used to identify
preferences of a user. EX1003, [0038]. Further, Parekh discloses a mechanism
for end users 5 to register their need for certain types of information content to be
allowed or disallowed from being served to their systems. EX1004, 34:7-9.
A POSITA would have been motivated to combine Parekhs above
disclosure with Smiths profile data to allow[] end IP address owners to control
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the content that will be distributed and served to machines within their control.
EX1004, 35:2-4; EX1002, 137.
Claim 17 recites a user information module configured to perform the
above step, which Smith discloses because its process is implemented in software,
EX1003, [0041]. A POSITA would have understood this module to merely be a
collection of software instructions for performing the step. EX1002, 137.
3. Claims 3 and 16
a. Element [3.1]: Smith in view of Parekh renders
obvious the retrieved device identifier, historic
information, and location-centric information
comprises user profile information
Smith in view of Parekh renders obvious including the device identifier,
historic information, and location-centric information in the user profile. Supra
VII.B.1.j and VII.B.1.k; EX1002, 138.
b. Elements [3.2] and [16.0]: Smith discloses storing the

user profile information in an updateable device
record in a storage system and a profile engine
configured to update and maintain the user profile
Smith discloses storing profiles in a database, using extracted profile data to
compare new profiles to existing profiles, and merging the profile data into the
existing profiles if the comparison indicates the same user. EX1003, [0039]-
[0040]. A POSITA would have understood this to mean that each time the user
uses the terminal, the profile is updated and that storing and regularly updating a
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profile qualifies as maintaining the user profile. Id., [0040]; EX1002, 139.
Thus, Smith discloses an updateable device record.
Smith discloses a profile engine configured to perform the above steps.
The 594 Patent does not disclose that the profile engine is anything beyond a set
of software instructions configured to perform the above steps, see e.g., EX1001,
5:58-6:39, which Smith discloses. EX1003, [0041]; EX1002, 140-141.
4. Claims 5 and 21
Smith discloses providing the directed media component to at least one of a
media server coupled to the network, and a content provider coupled to the
network as recited in claim 5, and a media server configured to receive the direct
media component and provide directed media to a page of a content provider as
recited in claim 21. Smith discloses a computer gateway interface (CGI) coupled to
a web server, a content server, and a user differentiating system. EX1001, [0031].
This system can provide a users profile history, i.e., a directed media component,
to a content server, which can then provide targeted advertising into web pages
from the ISP or through the CGI and web server to users accessing publicly
available documents from the ISP. Id.; EX1002, 142; see EX1003, Fig. 1.
Figure 2 of Smith further discloses this system us[ing] the profile data to
select viewing content such as banner advertising that may be of interest to the user
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and provid[ing] this content [i.e., directed media component] to CGI 70 or web
server 60 [i.e., a media server,] for inclusion in the web site. EX1003, [0038].
The 594 Patent discloses that the directed media component can be a media
tag, defined supra VI.A.4, or the directed media, itself. EX1001, 9:31-42. Thus,
a POSITA would have interpreted these passages of Smith as providing the
directed media component to the content server, CGI, or web server, which can
then provide targeted advertising to a page of a content provider that the user is
accessing. EX1002, 144.
5. Claims 6 and 20
Parekh discloses the location-centric information comprises information
elements selected from the group consisting of: time, weather, special events, and
types of businesses located proximate the user, as recited in claims 6 and 20.
Parekh discloses [u]sing Alices geographic information, the web site sends Alice
a web page that is tailored for her geographic location, for instance it contains the
Atlanta weather forecast [i.e., weather located proximate the user] and the new
headlines for Atlanta. EX1004, 32:16-18.
A POSITA would have been motivated to combine this aspect of Parekh
with Smith. Supra VII.B.1.i; EX1002, 146.
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6. Claim 7
Smith in view of Parekh renders obvious the directed media component is a
media tag indicating a type of media to be provided to the user. A media tag
should be construed as information identifying the media or media type to be
provided. Supra VI.A.4; EX1002, 147.
Parekh uses the concept of tags or labels to indicate the type of media to be
presented. See EX1004, 32:12-33:15. For example, Parekh discloses labeling a
user as an Atlantan or Californian and providing media based on that label (ads for
umbrellas or surfing). Id., 32:12-33:15. A POSITA would have understood that
such labels could be captured as a tag-like data structure since such structures were
well-known before the 594 Patent priority date. EX1002, 148.
The 594 Patent supports this understanding. It describes an example of only
what a media tag does presumably because this is all a POSITA would have
needed to implement the tag without undue experimentation. EX1001, 9:33-36;
EX1002, 149. Moreover, Parekhs disclosure corresponds to the 594 Patents
example of the function of the media tag. Compare EX1004, 33:10-13, with
EX1001, 9:33-36.
A POSITA would have been motivated to combine Parekhs media tag with
Smiths directed media component because the media tag provides useful meta-
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data that can optimize the maintenance and delivery of the directed media
component. EX1002, 150.
7. Claim 8
Smith discloses wherein the directed media component is a directed
advertisement message including a graphics component displayed on the network
access device because it discloses us[ing] the profile data to select viewing
content such as banner advertising [i.e., a graphics component] that may be of
interest to the user and provid[ing] this content in the user-requested web site, i.e.,
displayed on the network access device. EX1003, [0038].
8. Claim 9
Smith discloses the assigned network address is an Internet Protocol (IP)
address associated with the network access device used by the user because it
discloses IP addresses associated with user terminals. EX1003, [0017], [0038].
Smith discloses the device identifier is determined based on the IP address
because it discloses identifying users by IP address that do not have a stored profile
and generating a new profile and a key that further provides a user identifier as
well as a computer identifier [i.e., device identifier] for storage of the profile. Id.,
[0038]. A POSITA would have understood this to disclose, or at least render
obvious, this limitation because Smith identifies the user, in part, by the IP address
before it provides a device identifier to the users device. EX1002, 154. This
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corresponds to the 594 Patents discussion of this element. See EX1001, 10:9-13;
EX1002, 154.
9. Claim 10
Parekh discloses the device identifier is a Media Access Control (MAC)
address. Supra VII.B.1.c. A POSITA would have been motivated to combine
Parekhs MAC host address with Smiths terminal identification data for the same
reasons stated supra VII.B.1.c. EX1002, 156.
10. Claims 13 and 22

Smith discloses wherein the group comprises a plurality of users sharing a
common characteristic including at least one of age, gender, residence, or hobby
because, for a television embodiment, it discloses generat[ing] a parent profile, a
husband profile, and a wife profile, which arise[] from the similar content
viewed by a group or individual on a repeated basis. EX1003, [0046]. In this
example, a parent profile comprises two users, the husband and the wife, sharing
a residence. Id. A POSITA would have incorporated this disclosure from the
television embodiment into the Internet embodiments of Smith. Supra VII.B.1.l;
EX1002, 157.
Parekh also discloses these limitations: [t]he web site . . . can target an
advertisement associated with [an] inferred interest of a certain group of visitors.
EX1004, 3:21-4:3. Further, [t]he information profiled could include . . .
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Inter Partes Review
geographic location [i.e., residence], or sporting goods [i.e., hobbies]. EX1004,
32:9-11.
Parekh discloses [a]n advertisement for a product or service that matches or
is closely associated with the interests of a person or group will be much more
effective, and thus more valuable to the advertisers, than an advertisement that is
blindly sent out to every visitor to the site. EX1004, 3:14-17. Thus, a POSITA
would have been motivated to combine Parekhs group characteristic data with
Smiths profile data to improve the user profile. EX1002, 160
11. Claim 19
Smith discloses a history module configured to maintain historical
information associated with the network access device. Supra VII.B.1.j. Further,
Smith discloses session logs containing the user activity data that has occurred
between a user and the various content communication sites visited by the user
during the browse period. EX1003, [0015]. A POSITA would have understood
this history module to merely be a collection of software instructions for
performing the step, which Smith discloses. EX1002, 161.
C. Smith, Parekh, and Stewart Render Obvious Claims 1, 4, 15, and

18
As addressed supra VII.B.1, the combination of Smith and Parekh renders
obvious claims 1 and 15.
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Claims 4 and 18 recite information associated with an access point from
which the network access device is accessing the network. Claim 4 recites
retrieving this information, and claim 18 recites an access point information
module configured to obtain this information. Claim 4 additionally recites the
network access device is coupled to the network through an access point.
Smith discloses client computers coupled to a network through Point-of-
Presence servers. EX1003, [0031].
Stewart discloses personal computing devices of customers wirelessly
communicat[ing] with the AP [i.e., access point] in the network system, the AP
located at shops and restaurants. EX1005, [0004], [0012], Fig. 1A.
Stewart discloses retrieving (claim 4) and obtain[ing] (claim 18) the
claimed information by disclosing the AP transmit[ting] the location information
[of the AP] to the system. EX1005, [0012]. A POSITA would have understood
location information to qualify as access point information, defined supra
VI.A.3. EX1002, 167.
A POSITA would have understood an access point information module to
merely be a collection of software instructions for performing the step because the
594 Patent provides no other meaning. See EX1001, 7:51-56, 10:14-19; EX1002,
168-169. Smith and Stewart render obvious this element because Smiths and
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Inter Partes Review
Stewarts process is implemented in software. EX1003, [0041]; EX1005, [0057];
EX1002, 168.
A POSITA would have been motivated to combine Stewarts access point
information retrieval with Smith because enabling businesses to register their
domain location allows them to provide services, including personalized offers,
targeted advertising, [and] offers based on frequency of past visits or past
purchases, to their customers, further enhancing the selected content of Smith.
EX1005, [0006], [0086]; EX1002, 170.
D. Smith, Parekh, and Short Render Obvious Claims 1, 11 and 12

obvious claim 1.
Claims 11 and 12 recite the device identifier is an International Mobile
Station Identity (IMSI), and an International Media Equipment Identity (IMEI),
respectively.
Smith and Parekh render obvious a device identifier, supra VII.B.1.c.
EX1002, 172.
Short discloses a unique identifier, including an IMEI (International Mobile
Equipment Identifier) number and an IMSI (International Mobile Subscriber
Identification) number. EX1006, [0105]. A POSITA would have understood that
IMSI and IMEI numbers provide additional security by the unique and forgery-
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resistant nature of a persistent unique identifier. EX1002, 175. Thus, a POSITA
would have been motivated to modify Smiths terminal identifiers, including
wireless communication devices, EX1003, [0032], to be Shorts IMSI or IMEI
numbers. EX1002, 175.
E. Smith, Parekh, and Hosea Render Obvious Claims 1, 14, 15, and
23
obvious claims 1 and 15.
Smith, Parekh, and Hosea render obvious a separate group identifier is
assigned to each common characteristic shared by the user and one or more of the
plurality of users, as recited in claims 14 and 23, because Hosea discloses user
profiles that can include multiple demographic categories based on common
characteristics as below. Infra VII.F.12. A POSITA would have combined Hoseas
demographic categories with Smith and Parekhs group identifier because
profil[ing] users by determining their demographics and interests and
selectively send[ing] advertisements to only those users having particular
profiles is a more effective means of advertising. EX1007, [0004]; EX1002,
177.
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F. Hosea, Mathai, Short, and Gupta Render Obvious Claims 1-3, 5-

17, and 19-24
1. Claims 1, 15, and 24
The combination of Hosea, Mathai, Short, and Gupta discloses or renders
obvious every element of claim 1:
a. Elements [1.0], [15.0], and [24.0]: Hosea discloses [a]

method for providing directed media to a user on a
network
Hosea discloses a method (Element [1.0]) and system (Element [15.0])
for providing directed media to a user by disclosing a method and system for
profiling iTV users and for providing selective content delivery, EX1007, Title.
Hoseas targeted content is provided on a network because the present
invention can be applied to any content delivery medium including but not limited
to TV, Internet, and wireless networks. Id., [0002]; EX1002, 180.
Hosea discloses [a] machine-readable storage medium having stored
thereon a program, the program being executable to provide a method for
(Element [24.0]) performing the above step: a computer profiling an iTV user . . .
compris[ing] a memory for storing a program and a processor operative with the
program. EX1007, [0012].
b. Elements [1.1], [15.1], and [24.1]: Hosea discloses

receiving a request from the user to access a content
provider web site over a network through a network
access device operated by the user
These elements are related as explained supra VII.B.1.b.
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Hosea discloses receiving a request . . . to access a content provider web
site, (Elements [1.1] and [24.1]) because it discloses detect[ing] an outgoing
Web page request from the client 10 [i.e., network access device] and
extract[ing] [i.e., receiving] the actual URL request. EX1007, [0040]
(emphases added).
Network Network
Access Request
Device
Id., Fig. 4 (annotations in red). The request is from the user because Hosea
discloses [a] user of a client machine 10 [i.e., a network access device] . . . can
retrieve [i.e., request] a Web page . . . of a Web site by specifying a link via the
URL . . . . Id., [0037] (emphasis added).
Hosea discloses receiving the request over a network through a network
access device operated by the user: detect[ing] and stor[ing] the users program
or URL requests if such requests pass through the ISP server 16 [i.e., over a
network]. Id., [0213] (emphases added); see Fig. 4.
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Hosea discloses a network module performing the above step, as recited in
Element [15.1], by disclosing a software interface that can be used, such as
TCP/IP. Id., [0037]. See supra VII.B.1.b.
c. Elements [1.2], [15.2], and [24.2]: Hosea discloses

retrieving a persistent device identifier of the
These elements are related as explained supra VII.B.1.c.
Hosea discloses this element by disclosing looking up the anonymous user
ID in a cross-reference table using an IP address. EX1007, [0213]. A POSITA
would have understood querying an IP address in the table containing persistent
device identifiers to qualify as retrieving the anonymous user ID. EX1002,
[0189]-[0190].
The anonymous user ID is a persistent device identifier of the network
access device because it is stored to an AID cross-reference table, which allows
identification of a particular client [i.e., network access device] in spite of a
changing IP address. EX1007, [0230] (emphases added). A POSITA would
have understood the permanent anonymous user ID to qualify as persistent
because it identifies a network access device despite a changing IP address, and
Hosea does not teach changing or deleting it. Id. EX1002, [0191]-[0192].
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d. Elements [1.3], [15.4], and [24.3]: Hosea discloses

determining a current network address of the
These elements are related as explained supra VII.B.1.d.
Hosea discloses these elements: IP addresses are typically assigned
dynamically, storing the IP address, and correlate[ing] an IP address with the
associated client 10. EX1007, [0213]. A POSITA would have understood these
actions as disclosing, or at least rendering obvious, determining the network
address first. EX1002, 194.
e. Elements [1.4], [15.3], [15.5], and [24.4]: Hosea

discloses determining and retrieving one or more
These elements are related as explained in VII.B.1.e.
Hosea discloses determining (Elements [1.4], [15.5], and [24.4]) and
retriev[ing] (Element [15.3]) one or more characteristics of the access device
by disclosing: monitor[ing] the client machine [i.e., access device] CPU usage,
the unused real estate on the display, [and] the currently active application
EX1007, [0232], and communicat[ing] to the ISP server 16 the details of a given
clients computer configuration (e.g., which multimedia plug-ins are installed, the
bandwidth of the Internet connection, etc.). Id., [0230].
Hosea also discloses determining and retrieving the network access devices
physical location, a characteristic of the device, because it discloses creating a
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profile based on the zip code corresponding to the physical location of the client
10. Id., [0044]. A POSITA would have understood the physical location client
machine 10 to qualify as a characteristic of the access device. EX1002, 199.
f. Elements [1.5], [15.6], and [24.5]: Hosea discloses the

current network address is assigned to the network
access device by a network service provider for a
present network access session
These elements are related as explained supra VII.B.1.f.
Hosea discloses these elements by disclosing IP addresses [i.e., current
network addresses] are typically assigned dynamically, they are not necessarily the
same every time a client [i.e., network access device] logs into the ISP [i.e.,
network service provider]. EX1007, [0213] (emphases added). A POSITA would
have understood the current network addresses to be assigned to the client by the
network service provider for a present network access session, e.g., each time the
client logged into the ISP. EX1002, 201.
g. Elements [1.6], [15.7], and [24.6]: Hosea discloses

retrieving historic information for the user, the
historic information including patterns of usage for
the network access device
These elements are related as explained supra VII.B.1.g.
Hosea discloses historic information for the user because it discloses
mak[ing] recommendations of content, such as programs, to a user based on the
users profile and history . . . . EX1007, [0217]. A POSITA would have
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understood Hosea to disclose retrieving the historic information before making
recommendations based on it. EX1002, 204.
Hosea discloses historic information includ[ing] patterns of usage for the
network access device by disclosing user behavior that is new from what the user
has done in the past may be built into the user profile . . . [, and] [i]nterest could be
measured by length of time spent at a URL address, . . . or repeated visits to the
same Web site . . . . EX1007, [0221].
A POSITA would have understood Hosea to describe patterns of usage for
the network access device because it describes monitoring user behavior through
the users actions with the network device, e.g., client 10. See e.g., Id., [0040].
EX1002, 206.
h. Elements [1.7], [15.8], and [24.7]: Hosea in view of

Mathai renders obvious the historic information
comprises network access information including times
and locations of network access and number of
previous network accesses by the network access
device
These elements are related as explained supra VII.B.1.h.
Mathai discloses these elements by disclosing the users physical location
and the time of day are identified [i.e., retrieved] by the system each time the user
logs on and the users physical location and time of using the system, provides
pinpoint advertising capability in real time. EX1008, 9:6-9.
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A POSITA would have been motivated to modify Hosea with these aspects
of Mathai to provide pinpoint advertising capability in real time. Id.; EX1002,
209.
i. Elements [1.8], [15.9], and [24.8]: Hosea in view of

Mathai renders obvious retrieving location-centric
information for a location from which the user is
accessing the network
These elements are related as explained supra VII.B.1.i.
Mathai discloses providing the user location-centric information for a
location from which the user is accessing the network by disclosing the local life
feature may provide opportunities for both online and brick and mortar shopping,
cultural events and activities, and local news and gossip. EX1008, 24:26-25:2.
[L]ocal implies the information is location-centric information for a location
from which the user is accessing the network. Mathai also discloses that the
users physical location and the time of day are identified by the system each time
the user logs on. Id., 9:6-7. A POSITA would have understood this to implicitly
disclose retrieving this location-centric information before providing it to the
user. EX1002, 212.
A POSITA would have been motivated to modify Hosea with Mathais
teachings because including location-centric information makes users more likely
to act favorably on advertising messages. Id., 11:24; EX1002, 213.
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j. Elements [1.9], [15.10], and [24.9]: Hosea in view of

Gupta and Mathai renders obvious generating a user
profile based on the historic information for the user,
the location-centric information, and the one or more
These elements are related as explained supra VII.B.1.j.
Hosea discloses generating a user profile: [i]f a user is new and no user
profile exists, a profile may be created. EX1007, [0044].
i. generating a user profile based on the historic

information for the user
Hosea discloses that the historic information addressed supra VII.F.1.g and
VII.F.1.h is included in the user profile. Id., [0221].
ii. generating a user profile based on . . . the

location-centric information
Mathai discloses location-centric information as addressed supra VII.F.1.i.
A POSITA would have considered it obvious to modify Hoseas user profile to
include Mathais location-centric information because Hoseas user profile
includes a large variety of information about the user, EX1007, [0046]-[0205],
including a geographic based source of demographics, EX1007, [0044].
EX1002, 218. Moreover, the 594 Patent does not disclose including the location-
centric information in the user profileit merely discloses using location-centric
information along with a user profile for targeted advertising. See EX1001, 8:10-
14. Presumably, the applicant believed this level of detail was all that was needed
to support the claim given the knowledge of a POSITA. Yet this same level of
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detail was disclosed by the combination of Hosea and Mathai. See e.g., EX1008,
24:26-25:2; EX1007, [0227] (analyzing profile data); infra VII.F.1.n.iv. Thus, a
POSITA would have found this limitation obvious in view of Hosea and Mathai.
EX1002, 218.
iii. generating a user profile based on . . . one or

more characteristics of the access device
Hosea renders obvious generating the user profile based on . . . one or more
characteristics of the access device because a POSITA would have understood the
access devices physical location to qualify as its characteristic, addressed above.
EX1002, 219. Hosea also discloses retrieving the computer configuration
including which multimedia plug-ins are installed to ensure that rich-media
content is delivered only to those client machines 10 that have the ability to easily
and quickly display such content. EX1007, [0230].
Gupta shows it was known in the art to include in the user profile other
characteristics of the access device by disclosing the profile may be limited to the
users recent history and information about the terminal [i.e., network access
device] and terminal location may be utilized. EX1009, 10:2-5.
A POSITA would have been motivated to modify Hosea based on these
teachings of Gupta to improve user profiles quality and thus the effectiveness of
the targeted advertisements. EX1002, 222.
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k. Elements [1.10], [15.13], and [24.10]: Hosea discloses

storing the user profile as a record that identifies the
user through the current network address and the
persistent device identifier associated with the
These elements are related as explained supra VII.B.1.k.
Hosea discloses storing the user profile as a record that identifies the user
through . . . the persistent device identifier associated with the network access
device by disclosing [t]he users profile along with ID may be stored . . . .
EX1007, [0214]. This users . . . ID is the same user ID cited above as the
persistent device identifier in VII.F.1.c and is referenced in the immediately
preceding paragraph as an anonymous user ID, EX1007, [0213] and referred to
as a clients permanent anonymous user ID. Supra VII.F.1.c. EX1007, [0230].
Hosea renders obvious storing the user profile as a record that identifies the
user through the current network address by disclosing an AID cross-reference
table [i.e., a different record], which identifies the user through the current network
address. EX1007, [0230]. EX1002, 225.
A POSITA would have been motivated to combine Hoseas user
profile which identifies the user through the persistent device identifier, EX1007,
[0214], with the users IP address instead of using Hoseas separate cross-
reference table, id., [0213], [0230]. EX1002, 226. This would have been
obvious because it would not only reduce the systems complexity but also
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improve the methods efficiency by eliminating the extra step of querying the
cross-reference table. Id.
l. Elements [1.11], [15.11], and [24.11]: Hosea discloses

incorporating into the user profile one or more
group characteristics identifying a group with which
the user is associated
These elements are related as explained supra VII.B.1.l.
Hosea discloses one or more group characteristics by disclosing [t]he
[Web site] profiles include a rating in each [demographic] category that reflects the
interest in the category of persons [i.e., group characteristics] who access the . . .
Web site. EX1007, [0205]; see also id., [0045]-[0204] (listing Demographic
Categories in user and web site profiles).
Hosea discloses that the group characteristics are incorporat[ed] into the
user profile by disclosing for each visit to a Web site having a stored profile, the
profile [i.e., including the ratings in each demographic category i.e., group
characteristics] for that Web site is averaged or combined [i.e., incorporated] into
the users profile . . . . Id., [0205] (emphases added).
m. Elements [1.12], [15.12], [24.12]: Hosea discloses

assigning a group identifier to the group based on
the patterns of usage
These elements are related as explained supra VII.B.1.m.
Hosea discloses these elements. Hosea discloses assigning a group
identifier by disclosing identifying a target group of said users who would be
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receptive to receiving certain content based on the profiles [containing historic
information including patterns of usage] of the target group. EX1007, [0016].
Hosea renders obvious assigning group identifiers to a group based on the
patterns of usage by disclosing for each visit to a Web site [i.e., patterns of
usage] having a stored profile, the profile for that Web site [containing
demographic categories] is averaged or combined into the users profile [i.e.,
assigned to that member of the group] . . . . Id., [0205]. A POSITA would have
understood the demographic category labels to qualify as group identifiers
because the 594 Patent states one group identifier may indicate the gender and
age, while a second group identifier may indicate the city, and the third group
identifier indicates a hobby. EX1001, 6:33-36 (emphasis added). EX1002, 236.
Similarly, Hosea indicates that demographic categories identify groups of users
with specific characteristics, such as specific [h]obbies. EX1007, [0148]; see
id., [0045]-[0204]. Updating users profiles for each visit to a web site
includes assigning the web site profiles demographic category labels (group
identifiers) based on the patterns of usage of the user visiting different web sites.
EX1002, 236.
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n. Elements [1.13] and [24.13]: Hosea in view of Mathai

renders obvious analyzing the retrieved device
information to determine a directed media component
to be provided to the user or the group on the
i. analyzing . . . to determine a directed media

component to be provided to the user . . . on the
Hosea discloses these elements by disclosing [t]he data analysis
system . . . matches [advertising profile data] to user profiles from the master user
profile database 50, EX1007, [0227], and profiles of the users may be used to
match advertising content to the users profiles, id., [0224]. Hosea further states
target[ing] content for the user based on a variety of factors considered in building
a user profile. EX1007, [0221].
A POSITA would have understood target[ing] content for the user to
qualify as determin[ing] a directed media component to be provided to the user
because the 594 Patent explains the directed media component may be the
directed media, itself. EX1001, 2:23-25, claim 8; EX1002, 240.
ii. analyzing the retrieved device identifier

Hosea discloses analyzing the user profile, as explained above, which
contains the user ID [i.e., persistent device identifier]. See EX1007, [0209]
(showing five sample user profiles identified by respective User IDs.) Hosea also
discloses pars[ing] through a master advertisement delivery database 54 looking
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for anonymous user IDs [i.e., device identifiers] that correspond to the local POP
[server 16] and creat[ing] the local advertisement delivery database 40 [i.e.,
determining directed media to provide to the user] on the ISP POP [server 16].
Id., [0233].
iii. analyzing . . . historic information

Hosea discloses analyzing the user profiles, as explained above, which
contain historic information by disclosing that the amount of time and frequency
the user visits certain web sites may be factored into the users profile so that such
content may be recommended to the user. EX1007, [0221].
iv. analyzing . . . location-centric information

Mathai discloses location-centric information as addressed supra VII.F.1.i
and VII.F.1.j. Moreover, Mathai discloses providing content reflecting location-
centric information to the user such as opportunities for both online and brick
and mortar shopping, cultural events and activities, and local news and gossip.
EX1008, 24:26-25:2. A POSITA would have been motivated to modify Hoseas
provision of targeted advertising by taking into account the location-centric
information disclosed by Mathai because it would make users more likely to act
favorably on advertising messages. Id., 11:24; EX1002, 245. A POSITA would
have noted that Hosea discloses several demographic categories that correspond to
the location-centric information identified by Mathai. For example, Hoseas
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Entertainment category (and many of its subcategories), EX1007, [0097]-
[0125], corresponds to Mathais local ticket sales presentation, EX1008, 24:26-
25:2; and Hoseas E-shopping category (and many of its subcategories),
EX1007, [0172]-[0181], correspond to Mathais online and brick-and-mortar
shopping presentation, EX1008, 24:26-25:2. A POSITA would have recognized
that Hoseas advertising would have been improved by including the location-
centric information, e.g., providing an option to buy local tickets to a user
interested in the theater and providing local or online shopping options to a user
interested apparel shopping. EX1002, 245.
o. Elements [15.14] and [15.15]: Hosea in view of Gupta

renders obvious a media selection optimizer circuit
configured to determine a directed media component
to transmit to the user or the group based on a user
profile, the user profile being associated with the
device identifier and the information provided by the
information collection engine
Hosea discloses a computer profiling an iTV user . . . compris[ing] a
memory for storing a program and a processor [i.e., circuit] operative with the
program. EX1007, [0012]. Thus, A POSITA would have understood Hosea to
inherently disclose a media selection optimizer circuit configured to perform the
claimed steps, addressed below. Id.; EX1002, 247.
Hosea discloses determin[ing] a directed media component to transmit to
the user or the group based on . . . the device identifier because it discloses
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analyzing the user profiles, EX1007, [0227], which contain the device identifier,
see id., [0209], as addressed supra VII.F.1.n.i.
As explained supra VII.B.1.o, Element [15.15] recites that the above
determining step is also based on a user profile associated with the device
identifier and the information provided by the information collection engine,
which includes (1) a current network address of the network access device, (2)
historic information for the user, and (3) location-centric information for a location
from which the user is accessing the network, and (4) one or more characteristics
of the network access device.
Hosea discloses a user profile associated with (1) the devices current
network address by disclosing an AID cross-reference table which identifies the
user through the current network address, EX1007, [0230], as addressed supra
VII.F.1.k.
Hosea and Mathai render obvious a user profile associated with items (2)
through (4) above as addressed supra VII.F.1.j and VII.F.1.n. Hosea discloses a
user profile associated with (2) historic information by disclosing, e.g., factoring
into the users profile the amount of time spent on certain websites. EX1007,
[0221].
Hosea and Mathai render obvious a user profile associated with (3) location-
centric information because a POSITA would have considered it obvious to modify
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Hoseas user profile, which includes a large variety of information about the user,
EX1007, [0046]-[0205], to further include Mathais location-centric
information, EX1008, 11:21-24, as addressed supra VII.F.1.j.ii. EX1002, 252.
Given that the 594 Patent does not disclose including the location-centric
information in the user profile and instead discloses using the location-centric
information along with the user profile to perform targeted advertising, see
EX1001, 8:10-14, a POSITA would have considered Mathai and Hosea to render
this element obvious because the combination similarly discloses using location-
centric information to target advertisements. See e.g., EX1008, 24:26-25:2;
EX1007, [0227]; EX1002, 252.
Regarding (4) one or more characteristics of the network access device,
Hosea discloses retrieving the computer configuration. EX1007, [0230]. A
POSITA would have considered it obvious to modify the user profile, which
includes a large variety of information about the user, id., [0046]-[0205], to
include the computer configuration. EX1002, 253.
p. Elements [1.14], [15.16], and [24.14]: Hosea in view of

Gupta renders obvious placing directed media
referenced by the directed media component in the
web site requested by the user request from the
content provider
Hosea discloses directed media by disclosing targeted advertisements
may be banner ads. EX1007, [0224], Fig. 8.
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Gupta discloses these elements by disclosing intercepting a clients URL
request and inserting advertisements in the web site, EX1009, 10:64-11:2; see also
id., 11:17-19, based on advertisement slot characteristics, i.e., a directed media
component. Id., 11:27-40.
A POSITA would have been motivated to modify Hosea with Guptas in-
website banner to prevent users from dismissing it because a pop-up window may
include a close button, which allows a user to dismiss the window if desired.
EX1007, [0226]; EX1002, 258.
q. Elements [1.15], [15.17], [24.15]: Hosea discloses the

directed media comprises content that is customized
to the user based on the user profile
Hosea discloses these limitations by disclosing select[ing] the most relevant
banner advertisements based on the profile of the user, EX1007, [0226], and
mak[ing] recommendations of content, such as programs, to a user based on the
users profile. Id., [0217].
2. Claims 2 and 17
Hosea discloses obtaining user preference information for the user based on
information provided directly by the user because it discloses determining users
interests, i.e., user preference information, from the users themselves through
questionnaires, EX1007, [0004].
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3. Claims 3 and 16
a. Element [3.1]: Hosea discloses the retrieved device

information comprises user profile information
Hosea discloses that the retrieved device identifier comprises user profile
information because it discloses storing the users profile along with ID [i.e.,
device identifier] in the local user profile database 34. EX1007, [0214]; see also
id., [0209] (sample user profiles identified by User IDs). As discussed supra
VII.F.1.k, this users . . . ID, id., [0214] is the clients permanent anonymous
user ID, [0230], which is the persistent device identifier as explained supra
VII.F.1.c. Id., [0230].
Hosea discloses historic information comprises user profile information
because it discloses that the amount of time spent on certain Web sites, i.e., historic
information, may factor into the users profile. EX1007, [0221], and for the
reasons addressed supra VII.B.1.j. See EX1007, [0221].
Hosea and Mathai renders obvious location-centric information
compris[ing] user profile information because Hoseas user profile includes a
large variety of information about the user, EX1007, [0046]-[0205], and Mathai
discloses location centric information by disclosing a local life feature, EX1008,
24:26-25:2, as addressed supra VII.F.1.j.ii..
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b. Elements [3.2] and [16.0]: Hosea discloses storing the

user profile information in an updateable device
record in a storage system and a profile engine
configured to update and maintain the user profile
Hosea discloses these elements by disclosing the users profile along with
ID may be stored in the local user profile database 34 [i.e., storage system],
EX1007, [0214], and the profile for [each visited] Web site is averaged or
combined into the users profile, id., [0205]. A POSITA would have understood
combining the web site profile into the user profile to qualify as updating the
user profile and to also disclose that the profile information is inherently stored in
an updateable device record. EX1002, 266. Similarly, the user profile is
maintain[ed] because it is updated for each visit. Id., 267. A POSITA would
have understood the above passage to render obvious a profile engine configured
to perform these steps because it discloses these steps as explained supra
VII.B.1.b. See also id.
4. Claims 5 and 21
Hosea discloses providing the directed media component to . . . a media
server coupled to the network (claim 5) and a media server configured to receive
the direct media component and provide directed media to a page of a content
provider (claim 21) by disclosing tak[ing] data from the advertisement database
62, resolv[ing] any conflicts, and writ[ing] the data to the master advertisement
delivery database 54 [i.e., media server], which may be used to schedule delivery
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of targeted advertisements to various users. EX1007, [0227]. The master
advertisement delivery database 54 is a media server because it delivers targeted
advertisements to the users. See EX1001, 5:41-42; EX1002, 268. It is coupled to
the network (internet 14) through master server 18:
Media Server
EX1007, Fig. 8 (annotations in red).
Gupta discloses a media server configured to receive the direct media
component and provide directed media to a page of a content provider, as recited
in claim 21, because Gupta discloses forward[ing] the selected advertisement
[i.e., directed media component], if any, to proxy 402 [i.e., media server] which
inserts the advertisement and forwards the web page text and local advertisement
to client. EX1009, 14:15-18. The proxy 402 is coupled to the network through
the server. See EX1007, Fig. 4. EX1002, 269. A POSITA would have been
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motivated to modify Hosea with Guptas proxy to speed[] up access for
commonly requested information. EX1009, 9:40-45. EX1002, 270.
5. Claims 6 and 20
Hosea and Mathai render obvious the location-centric information
comprises information elements selected from the group consisting of: time,
weather, special events, and types of businesses located proximate the user, as
recited in claims 6 and 20.
Mathai discloses location-centric information comprising time by disclosing
displaying advertising banners to users based on the physical location of the user,
and time of day. EX1008, 18:3-4.
The location-centric information comprises special events, and types of
businesses located proximate the user because the local life [i.e., located
proximate the user] feature may provide opportunities for both online and brick
and mortar shopping [i.e., types of businesses], id., 24:26-25:2, and the menu
may provide online ticket sales for local events, id., 24:22-24.
A POSITA would have been motivated to modify Hosea with Mathais
teachings because Mathai explains customers would be more likely to act
favorably on [such] advertising messages. EX1008, 11:21-24; EX1002, 274.
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6. Claim 7
Hosea discloses a directed media component as explained supra VII.F.4.
Gupta discloses the directed media component is a media tag indicating a type of
media to be provided to the user by disclosing the characteristics of the
advertisement [i.e., type of media] and advertisement slot are specified in tags [i.e.,
media tags] of the HTML. EX1009, 12:23-25.
The 594 Patent states a media tag indicates the media or type of media that
should be provided to the user and may indicate that an advertisement that is
directed to a male between 18-30 who likes baseball should be provided, i.e.,
based on demographics. EX1001, 9:30-35. EX1002, 276. Guptas media tag also
identifies the advertisement to insert using demographics: an
ADDEMOGRAPHIC tag may specify demographic information about the user that
the advertisement will be presented to. EX1009, 15:57-65.
A POSITA would have been motivated to combine Hoseas directed media
component with Guptas media tag because it was a well-known technique for
selecting ads based on demographics, which Hosea describes more broadly, and
results in the predictable result of delivering the ad. EX1002, 277.
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7. Claim 8
Hosea discloses the directed media component is a directed advertisement
message including a graphics component displayed on the network access device
by disclosing targeted advertisements may be banner ads. EX1007, [0224];
Id., Fig. 6 (an example of an advertisement).
8. Claim 9
Hosea discloses the assigned network address is an Internet Protocol (IP)
address associated with the network access device used by the user because it
discloses quer[ying] an IP address to [the] anonymous user ID (AID) cross-
reference table, EX1007, [0213], and associate[ing] a clients [i.e., network
access devices] permanent anonymous user ID and the currently assigned IP
address. EX1007, [0230].
9. Claim 10
Hosea discloses a device identifier as explained supra VII.F.1.c.
Short discloses the device identifier is a Media Access Control (MAC)
address because it discloses the unique identifier may be . . . a MAC address of a
modem associated with a computer. EX1006, [0010]. A POSITA would

65
Inter Partes Review
understand a modem to qualify as a network access device because the 594 Patent
states that the network access device 110 may comprise a cable or phone modem.
EX1001, 3:29-32.
A POSITA would have considered modifying Hoseas device identifier with
Shorts MAC to be obvious because the MAC address was a long used, well-
known option for implementing a device identifier. EX1002, 282.

Hosea and Short render obvious the device identifier is an International
Mobile Station Identity (IMSI), as recited in claim 11, and the device identifier is
an International Media Equipment Identity (IMEI), as recited in claim 12.
Hosea discloses a device identifier as set forth supra VII.F.1.c.
Short discloses the unique identifier may be . . . an IMEI (International
Mobile Equipment Identifier) number, . . . an IMSI (International Mobile
Subscriber Identification) number, . . . or any other identifier that provides a unique
identifier for the receiving device. EX1006, [0105].
A POSITA would have considered it obvious to use Shorts IMSI or IMEI in
the targeted advertising context because Hosea describes using a unique identifier,
a permanent anonymous user ID, in the targeted advertising context and Short
explains they are unique identifiers. A POSITA would have been motivated to
do so because Mathai also implies that unique identifiers provide additional
66
Inter Partes Review
security. EX1002, 286. Thus, A POSITA would have inferred that IMSI and
IMEI similarly provide additional security. EX1008, 33:24-26. EX1002, 286.

Hosea discloses the group comprises a plurality of users sharing a common
characteristic including age, gender, or hobby because it discloses identifying a
target group of said users who would be receptive to receiving certain content
based on the profiles of the target group, EX1007, [0016], and [u]ser profile
information may contain . . . demographic data (such as, e.g., the users age,
gender, income, and highest attained education level), id., [0041] (emphasis
added), and Recreation & Hobbies, id., [0148].
A POSITA would have understood that the target group shar[es] a common
characteristic including age, gender, or hobby because they are selected based
on their profiles which contain that information. Id; EX1002, 288.

Hosea discloses or renders obvious a separate group identifier is assigned
to each common characteristic shared by the user and one or more of the plurality
of users, as recited in claims 14 and 23, because Hosea discloses an example
User Profile listing multiple demographic categories including TV, Health,
and Gardening. EX1007, [0207]; see also [0046]-[0204]. A POSITA would
67
Inter Partes Review
have understood each category to be a group identifier, identifying the group of
users having a common characteristic, such as a specific interest. EX1002, 290.
13. Claim 19
Hosea discloses a history module configured to maintain historical
information associated with the network access device for the reasons presented
above supra VII.F.1.j. Hosea further discloses maintain[ing] the historical
information because it discloses for each visit to a Web site . . . combin[ing] [the
Web sites profile] into the users profile as previously discussed. EX1007,
[0205]. A POSITA would have understood repeatedly updating the user profile to
qualify as maintain[ing] historical information associated with the network access
device. EX1002, 291. A POSITA would have understood this history module
to merely be a collection of software instructions for performing the step, which
Hosea discloses. EX1007, [[10012] (memory for storing a program); EX1002,
291.
G. Hosea, Mathai, Gupta, and Stewart Render Obvious Claims 1, 4,

15, and 18
The combination of Hosea, Mathai, and Gupta renders obvious claims 1 and
15 as addressed supra VII.F.1. EX1002, 292.
Claims 4 and 18 are related as explained supra VII.C.
Hosea discloses retrieving (claim 4) and obtain[ing] (claim 18) access
point information for an access point from which the user is accessing the
68
Inter Partes Review
network because it discloses communicat[ing] to the ISP server 16 . . . the
bandwidth of the Internet connection, EX1007, [0230], and that the user access
the Internet through an access device, such as a cable modem. EX1007, [0033];
see EX1001, 4:54-56. The network access devices Internet connection bandwidth
is access point information because the client connects to the Internet through
the access point. See EX1007, Fig. 5; EX1001, 10:14-19. Hosea discloses
retrieving and obtain[ing] this information because it discloses using it to
help ensure that rich-media content is delivered only to those client machines 10
that have the ability to easily and quickly display such content, EX1007, [0230],
implicitly meaning obtaining and retrieving it first. EX1002, 294.
Stewart discloses a network access device coupled to the network through
an access point because it discloses access points 120, such as wireless access
point (AP) 120A located at a business 160, which may be operable to communicate
with a personal computing device (PCD). EX1006, [0031]; see also Fig. 1A.
A POSITA would have considered modifying Hosea with Stewarts
disclosure to be obvious because Stewart shows access points were a well-known
technique to connect network devices with the network. Id. EX1002, 296.
Hosea and Stewart render obvious an access point information module
configured to obtain the above information for the same reasons it discloses
obtaining it.
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Inter Partes Review
VIII. CONCLUSION
For the reasons set forth above, the challenged claims 1-24 are unpatentable,
so trial should be instituted and the claims should be cancelled.
Respectfully submitted,
Dated: May 16, 2017 By: /Lionel M. Lavenue/

Lionel M. Lavenue, Lead Counsel
Reg. No. 46,859
70
Inter Partes Review
IX. CERTIFICATION UNDER 37 C.F.R. 42.24(d)
This Petition complies with the requirements of 37 C.F.R. 42.24. As
calculated by the word count feature of Microsoft Word 2010 and manually
counted in the figures, it contains 13,958 words, excluding the words contained in
the following: Table of Contents, Table of Authorities, List of Exhibits, Mandatory
Notices, Certification Under 42.24(d), and Certificate of Service.
/Lionel M. Lavenue/
Lionel M. Lavenue, Lead Counsel
Reg. No. 46,859
71
Inter Partes Review
CERTIFICATE OF SERVICE
The undersigned certifies that the foregoing Petition for Inter Partes Review,
the associated Power of Attorney, and Exhibits 1001 through 1014 are being served
on May 16, 2017, by Federal Express at the following address of record for the
subject patent.
Barbara Courtney
Richard Gregory, Jr.
DERGOSITS & NOAH LLP
One Embarcadero Center
Suite 350
San Francisco, CA 94111
A courtesy copy of the same documents were also served at the following
address of record for Bridge and Posts litigation counsel for the subject patent in
the lawsuit in E.D. Va., no. 3:17-cv-00094-JAG, Bridge and Post, Inc. v. Verizon
Commcns, Inc.,
Daniel Johnson, Jr.

DAN JOHNSON LAW GROUP LLP
400 Oyster Point Boulevard
Suite 321
South San Francisco, CA 94080
/Lisa C. Hines/
Litigation Clerk
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP

Unified Patents Inc. v. Bridge and Post, Inc., IPR2017-01423 (PTAB May 16, 2017)

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Inter Partes Review

United States Patent No. 7,657,594

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Unified Patents Inc.

Bridge and Post, Inc.

Patent No. 7,657,594

Title: Directed Media Based on User Preferences

Case No. IPR2017-01423

PETITION FOR INTER PARTES REVIEW

I. MANDATORY NOTICES ...........................................................................1

II. FEE PAYMENT ............................................................................................2

B. Statutory Grounds of Challenge ............................................................2

IV. CERTIFICATION OF GROUNDS FOR STANDING .............................3

V. U.S. Patent 7,657,594 .....................................................................................3

VI. CLAIM CONSTRUCTION ..........................................................................6

1. a group identifier (claims 1, 14, 15, 23, 24) ............................6

2. persistent device identifier (claims 1, 15, and 24) ..................6

4. media tag (claim 7) ..................................................................7

VII. PRECISE RELIEF REQUESTED ..............................................................7

1. Claims 1, 15, and 24 .................................................................12

2. Claims 2 and 17.........................................................................31

3. Claims 3 and 16.........................................................................32

4. Claims 5 and 21.........................................................................33

5. Claims 6 and 20.........................................................................34

10. Claims 13 and 22.......................................................................37

C. Smith, Parekh, and Stewart Render Obvious Claims 1, 4, 15,

D. Smith, Parekh, and Short Render Obvious Claims 1, 11 and 12 ........40

E. Smith, Parekh, and Hosea Render Obvious Claims 1, 14, 15,

F. Hosea, Mathai, Short, and Gupta Render Obvious Claims 1-3,

1. Claims 1, 15, and 24 .................................................................42

2. Claims 2 and 17.........................................................................59

3. Claims 3 and 16.........................................................................60

10. Claims 11 and 12.......................................................................66

11. Claims 13 and 22.......................................................................67

13. Claim 19 ....................................................................................68

VIII. CONCLUSION ............................................................................................70

IX. CERTIFICATION UNDER 37 C.F.R. 42.24(d) ....................................71

35 U.S.C. 103 ...................................................................................................... 2-3

35 U.S.C. 311 ..........................................................................................................2

37 C.F.R. 42.104(a) .................................................................................................3

Exhibit 1002 Expert Declaration of Dr. Jon Weissman

Exhibit 1003 U.S. Patent Application Publication 2003/0083938 to Smith et

Exhibit 1006 U.S. Patent Application 2005/0172154 to Short et al. (Short)

Exhibit 1013 Amendment and Response to Office Action dated March 3,

control or could exercise control over Petitioners participation in this proceeding,

has submitted voluntary discovery. See EX1015.

JAG (E.D. Va.).

C. Lead and Back-Up Counsel and Service Information

LLP, 901 New York Avenue, NW, Washington, DC 20001-4413 (phone:

202.408.4000; fax: 202.408.4400). Petitioner consents to e-mail service at

II. FEE PAYMENT

fees to Deposit Account No. 06-0916.

III. STATEMENT OF PRECISE RELIEF REQUESTED

594 Patent under 35 U.S.C. 311.

B. Statutory Grounds of Challenge

Ground Proposed Statutory Rejections for the 594 Patent Exhibit

Claims 1, 14, 15, and 23 are obvious under pre-AIA

IV. CERTIFICATION OF GROUNDS FOR STANDING

identified in this Petition.

V. U.S. Patent 7,657,594

media which is tailored to the user preferences. Id., 2:41-43.

A user profile containing user preferences is associated with a persistent

A history module collects and maintains historic information about the