Ex Parte 7,974,912 et alDownload PDFPatent Trial and Appeal BoardMar 27, 201495001863 (P.T.A.B. Mar. 27, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/001,863 12/28/2011 7,974,912 106186.00003 1617 26875 7590 03/28/2014 WOOD, HERRON & EVANS, LLP 2700 CAREW TOWER 441 VINE STREET CINCINNATI, OH 45202 EXAMINER WORJLOH, JALATEE ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 03/28/2014 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ GOOGLE, INC. and MICROSOFT CORP. Requesters and Respondents, v. PAID SEARCH ENGINE TOOLS, LLC Patent Owner and Appellant. ____________________ Appeal 2014-002495 Reexamination Control 95/001,863 Patent No. US 7,974,912 B2 Technology Center 3900 ____________________ Before HUBERT C. LORIN, MARC S. HOFF, and DENISE M. POTHIER, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Patent Owner, Paid Search Engine Tools, LLC, appeals under 35 U.S.C. §§ 134(b) and 315(a) (2002) from the rejection of claims 1-62 as set forth in the Right of Appeal Notice (RAN) mailed February 27, 2013. Requesters, Google, Inc. and Microsoft Corp., filed a respondent brief on Appeal 2014-002495 Reexamination Control 95/001,863 Patent No. 7,974,912 B1 2 July 1, 2013. The Examiner mailed an Examiner’s answer on October 17, 2013 which incorporated the RAN by reference. We have jurisdiction under 35 U.S.C. §§ 134 and 315. We affirm. The ‘912 patent issued to patentee July 5, 2011, and is assigned to Paid Search Engine Tools, LLC. The ‘450 patent concerns providing search engine keyword bidders with information they need to optimize their use of paid search engines. The system accumulates bid amounts for a plurality of target keywords at one or more paid Internet search engines and presents the bid amounts to a user. The system also presents bid amounts for a keyword at one or more paid Internet search engines, in a manner highlighting one or more selected bid amounts of interest to a potential bidder. This permits a bidder to identify a differential in bid amounts that indicates an opportunity for bid optimization (Abstract). Claim 1 is exemplary of the claims on appeal: A method that manages pay-per-click advertising, by determining an amount to be charged in response to a click of a hyperlink associated with a target keyword, comprising accessing with a computer processor, a particular amount a first advertiser is willing to be charged in response to a click of a hyperlink associated with said first advertiser, accessing with a computer processor, a statistic of relevance to said first advertiser and a statistic of relevance to a second advertiser, said statistics being related to one or more of rate of use by users, number of times a hyperlink was viewed, data that relates to an increase or decrease in the use of a keyword by users, demographics of users associated with a keyword, or demographics of advertisers associated with a keyword, Appeal 2014-002495 Reexamination Control 95/001,863 Patent No. 7,974,912 B1 3 and without human intervention, determining with a computer processor, an amount to be charged to said second advertiser in response to a click of a hyperlink associated with said target keyword and said second advertiser, wherein said amount to be charged to said second advertiser is determined using said particular amount, and is also determined using said statistic of relevance to said first advertiser and said statistic of relevance to said second advertiser. The Examiner relies upon the following prior art in rejecting the claims on appeal: Bollay WO 2000/057333 September 28, 2000 Shi WO 2001/01217 January 4, 2001 Davis US 6,269,361 July 31, 2001 Ryan US 6,421,675 July 16, 2002 Kravets US 6,704,727 March 9, 2004 Beriker US Patent Pub. 2006/0253434 November 9, 2006 Konia US 7,225,151 May 29, 2007 K. Gallagher and J. Parson, "A Framework of Targeting Banner Advertising on the Internet"4 Proceedings of the Thirtieth Hawaii Int’l Conference on System Sciences 265-274 (March 1997) ("Gallagher"). I. Claims 1-4, 8-20, 24-35, 39-51, and 55-62 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Konia in view of Ryan. II. Claims 17-23, 25-29, 31, 48-51, 56-60, and 62 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Konia in view of Kravets. III. Claims 1-4, 8-15, 17-20, 24-30, 32-46, 48-51, and 55-61 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Beriker in view of Ryan. IV. Claims 2, 3, 15, 18, 19, 33, 34, 46, 49, and 50 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bollay, either alone or in view of Ryan. Appeal 2014-002495 Reexamination Control 95/001,863 Patent No. 7,974,912 B1 4 V. Claims 1-3, 5-13, 15, 17-29, 32-34, 36-44, 46, and 48-60 stand rejected under 35 U.S.C. § 102(a) as being anticipated by Shi. VI. Claims 1, 5-13, 16, 17, 20-29, 31, 32, 36-44, 47, 48, and 51-62 stand rejected under 35 U.S.C. § 102(a) as being anticipated by Bollay. ISSUES Patent Owner argues that the Examiner failed to properly consider the declaration evidence of nonobviousness submitted in November 2010 and May 2012. Patent Owner contends that these declarations establish a date of invention no later than May 28, 2000 (App. Br. 26-28). Patent Owner further asserts that the May 2012 declaration establishes the commercial success of Patent Owner’s invention, when practiced either by Patent Owner or their competitors (App. Br. 16-18). Patent Owner further argues that Konia does not lead to the claimed invention because Konia’s method is only concerned with bid position and does not involve the user of the amounts of bids of others (App. Br. 8). Patent Owner thus contends that Konia does not teach the claimed “without human intervention, determining with a computer processor, an amount to be charged to said second advertiser in response to a click of a hyperlink . . . wherein said amount to be charged to said second advertiser is determined using said particular amount [i.e., that a first advertiser is willing to be charged]” (App. Br. 7). Patent Owner contends that it would not have been obvious to combine Konia and Ryan (App. Br. 12-13). Patent Owner argues that Ryan is inapplicable to pay-per-click advertising because in Ryan, “the underlying principle is payment for presentation of content rather than payment for Appeal 2014-002495 Reexamination Control 95/001,863 Patent No. 7,974,912 B1 5 ‘clicks’” (App. Br. 12). Patent Owner argues that it would not have been obvious to combine Konia and Kravets (App. Br. 13-14). Patent Owner suggests that the “value scoring” presented by Kravets is not disclosed for the purpose of modifying the amounts advertisers bid for keywords (App. Br. 14). Patent Owner further contends that it is illogical to assert that GoTo, the “creator of the Kravets filing,” would have suggested bid optimization or bid management functions GoTo itself opposed (App. Br. 14). Patent Owner further asserts that the rejections involving Beriker, Shi, or Bollay are erroneous because the November 2010 declaration establishes a date of invention that disqualifies these references as prior art (App. Br. 26-28). Patent Owner’s contentions present us with the following issues: 1. Does Patent Owner’s Provisional Application disclose “without human intervention, determining with a computer processor, an amount to be charged to said second advertiser in response to a click . . . using said particular amount [a first advertiser is willing to be charged],” as recited in independent claim 1? 2. Does the November 2010 Declaration of Juan C. Velez and Darren Murrer establish a date of invention prior to July 5, 2001? 3. Is the May 2012 Declaration of Juan C. Velez and Darren Murrer persuasive to establish the commercial success of the claimed invention so as to overcome the obviousness rejections? 4. Does Konia teach accessing with a computer processor a particular amount a first advertiser is willing to be charged in response to a click of a Appeal 2014-002495 Reexamination Control 95/001,863 Patent No. 7,974,912 B1 6 hyperlink, and without human intervention, determining with a computer processor, an amount to be charged to a second advertiser in response to a click of a hyperlink, said amount to be charged to said second advertiser being determined using said particular amount? 5. Would it have been obvious to combine Konia in view of Ryan to achieve the claimed invention? 6. Would it have been obvious to combine Konia in view of Kravets to achieve the claimed invention? PRINCIPLES OF LAW “A rejection for anticipation under section 102 requires that each and every limitation of the claimed invention be disclosed in a single prior art reference.” See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007) (quoting In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994)). Section 103(a) forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’ KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550 U.S. at 407, (“While the sequence of these questions might be reordered in Appeal 2014-002495 Reexamination Control 95/001,863 Patent No. 7,974,912 B1 7 any particular case, the [Graham] factors continue to define the inquiry that controls.”) Our reviewing court has noted in the past that evidence related solely to the number of units sold provides a very weak showing of commercial success, if any. See In re Huang, 100 F.3d 135, 137 (Fed. Cir. 1996); Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1026-27 (Fed. Cir. 1985) (finding that sales of 5 million units represents a minimal showing of commercial success because “[w]ithout further economic evidence . . . it would be improper to infer that the reported sales represent a substantial share of any definable market”); see also In re Baxter Travenol Lab., 952 F.2d 388, 392 (Fed. Cir. 1991). ANALYSIS PATENT OWNER’S DECLARATION EVIDENCE OF NONOBVIOUSNESS We are not persuaded that Patent Owner has established a date of invention earlier than July 5, 2001. 1 First, we are not persuaded that the Patent Owner’s Provisional Application, U.S. App. No. 60/215,976, contains a disclosure of subject matter corresponding to “without human intervention, determining with a computer processor, an amount to be charged to said second advertiser in response to a click of a hyperlink associated with said target keyword and said second advertiser,” which is recited in independent claim 1. Patent Owner states that the Provisional Application discloses “[c]ompare the data 1 The ‘912 patent issued from Application No. 11/379,987, filed April 24, 2006, which is a continuation of Application No. 10/324,802, filed on December 20, 2002, which is a continuation of Application No. PCT/US01/41263, filed on July 5, 2001. Appeal 2014-002495 Reexamination Control 95/001,863 Patent No. 7,974,912 B1 8 looking for changes or opportunities to save money or time, or increase traffic or sales” and “[m]ake sure the customer is not over paying for the position they are holding” and states that information on changes or opportunities is delivered to the “people or computer” that will “make the decision about how to use the Paid Search Engines” (App. Br. 19-21). We do not agree with Patent Owner that these disclosures correspond to the claim language of, “without human intervention, determining with a computer processor an amount to be charged to said second advertiser . . . .” Second, we are not persuaded that Velez and Murrer’s Declaration of November 29, 2010 (“2010 Declaration”) establishes a date of invention earlier than July 5, 2001. Patent Owner argues that the invention was conceived of and reduced to practice by May 28, 2000, citing an e-mail message Jon Keel forwarded to himself on that date (2010 Declaration ¶ 62). The body of the email states “Jon, We lowered the bid of a word and it worked!” and is signed “Juan” (presumably co-inventor Juan Velez) (2010 Declaration Appendix E). We agree with Patent Owner that this email establishes that Mr. Velez communicated with Mr. Keel on or before May 28, 2000, and reported the result of lowering a bid on a keyword advertisement at goto.com. The evidence fails to establish what mechanism was used to lower this bid, or even whether it was done automatically or manually. We agree with Requesters that the evidence presented does not establish that the bid- lowering was done according to the limitation of the claimed invention, i.e., “without human intervention, determining with a computer processor, an Appeal 2014-002495 Reexamination Control 95/001,863 Patent No. 7,974,912 B1 9 amount to be charged to said second advertiser in response to a click of a hyperlink” (see Resp. Br. 9-10). We have also considered Patent Owner’s proffered evidence of commercial success, but we are not persuaded that the evidence is sufficient to outweigh the Examiner’s conclusion of obviousness. Velez and Murrer’s Declaration of May 15, 2012 (“2012 Declaration”) avers that paidsearchenginetools.com (“PSET”) accumulated “over 200 paying customers throughout the year 2000 and early 2001” (2012 Declaration ¶ 17). This showing is insufficient to outweigh the Examiner’s conclusion of obviousness for two reasons. First, the number of customers attracted by PSET is a very weak showing of commercial success in the absence of information concerning market share. See Huang, supra. Second, the 2012 Declaration does not establish the required nexus between the limitations of the claimed invention and the asserted commercial success. Patent Owner’s allegations that Yahoo! and Google also enjoyed commercial success, as a result of copying Patent Owner’s invention (2012 Declaration ¶¶ 31-40), are similarly unpersuasive, as they also lack any showing of a nexus between those companies’ commercial success and the claim limitations of the ’912 patent. We conclude that Patent Owner has not persuasively shown entitlement to a date of invention earlier than July 5, 2001. Accordingly, Patent Owner’s arguments that Bollay, Beriker and Shi should be disqualified as prior art, due to Patent Owner’s alleged establishment of a date of invention antedating these references (App. Br. 26-28), are not persuasive to show Examiner error. Appeal 2014-002495 Reexamination Control 95/001,863 Patent No. 7,974,912 B1 10 We further conclude that Patent Owner’s evidence of commercial success is not sufficient to outweigh the Examiner’s conclusion of obviousness. REJECTION I OVER KONIA IN VIEW OF RYAN Appellant’s argument that the combination of Konia and Ryan fails to teach all the limitations of the claims, because Konia’s method uses only the position of bids of others, not their amounts (App. Br. 8-11), is not persuasive to show Examiner error. Requesters point out, and we agree, that Konia discloses the use of bid amounts. “For example, the system checks for whether the bidder’s bid exceeds all other bids in the auction for determining continuing priority for listing the bidder’s web page” (col. 4, ll. 52-55; Resp. Br. 14). Konia further discloses that once a bidder “has achieved the proper position in the search engine with respect to the current term being processed, the system may reduce the bid to a minimum which allows the bidder to keep the position” (col. 4, ll. 57-60). Reducing a bid to a minimum that still allows the bidder to stay in its desired position is only possible if one knows the relevant bid amounts, not merely the bid positions. Thus, we do not agree with Patent Owner that Konia fails to teach the features of claim 1 because Konia does not teach “accessing with a computer processor, a particular amount a first advertiser is willing to be charged in response to a click,” and “without human intervention, determining with a computer processor, an amount to be charged to [a] second advertiser in response to a click of a hyperlink . . . . wherein said amount to be charged to Appeal 2014-002495 Reexamination Control 95/001,863 Patent No. 7,974,912 B1 11 said second advertiser is determined using said particular amount” (App. Br. 7). Patent Owner’s further argument that it would not have been obvious to combine Konia and Ryan, because they are directed to different bidding methods (App. Br. 12-13), is not persuasive to establish that the Examiner erred. We do not agree with Patent Owner that Ryan is not combinable with Konia because it is concerned with payment for presentation of content, rather than payment for clicks (App. Br. 12). Rather, we agree with Requesters that both references are directed to the field of automatic bidding systems for advertisements (Resp. Br. 19). We agree with Requesters that the Examiner has stated a rationale for combining the references that possesses a rational underpinning. Konia teaches efficient bidding for keywords, and combination with Ryan would have supplied the advantage of providing bidders with an indication of the effect of the number of views on their bids, providing some security against paying too much if the value changed (Resp. Br. 19-20; RAN 17). Because we do not agree with Patent Owner that the combined teachings of the references lack any claim elements, or that one would not have combined Konia with Ryan, we sustain the Examiner’s rejection of claims 1-4, 8-20, 24-35, 39-51, and 55-62 under § 103 as being unpatentable over Konia in view of Ryan. Appeal 2014-002495 Reexamination Control 95/001,863 Patent No. 7,974,912 B1 12 REJECTION II OVER KONIA IN VIEW OF KRAVETS Patent Owner argues that the “value scoring” presented by Kravets is not disclosed for the purpose of modifying the amounts advertisers bid for keywords (App. Br. 14). Patent Owner further argues that it is illogical to assert that GoTo, the “creator of the Kravets filing,” would have suggested bid optimization or bid management functions GoTo itself opposed (App. Br. 14). We are not persuaded by Patent Owner’s argument. We agree with Requester and the Examiner that Kravets is not relied upon for a disclosure of bid optimization, but rather for “statistics for valuing a keyword that can be used with a bidding system” (Ans. 7; RAN p. 59). Accordingly, we sustain the Examiner’s rejection of claims 17-23, 25- 29, 31, 48-51, 56-60, and 62 under § 103 as being unpatentable over Konia in view of Kravets. REJECTION III OVER BERIKER IN VIEW OF RYAN Patent Owner’s only argument with respect to the disclosure of Beriker is a single sentence that Beriker “lacks any teaching or suggestion of the use of a ‘particular amount’ of a competitive bid in determining a bid adjustment” (App. Br. 30). Patent Owner provides no citation or evidentiary support for this assertion. In any event, we agree with Requesters that Beriker discloses testing “whether the senior merchant’s proxy bid is greater than or equal to the junior merchant’s current bid” (Resp. Br. 22, citing Beriker ¶ [0099]). Patent Owner also argues that Ryan is not relevant and not combinable with Beriker (App. Br. 30). As discussed in the analysis of Appeal 2014-002495 Reexamination Control 95/001,863 Patent No. 7,974,912 B1 13 rejection I over Konia in view of Ryan supra, we are not persuaded by this argument. Patent Owner’s position that Beriker should be disqualified as prior art (App. Br. 26-28) is also unpersuasive, as explained supra. Patent Owner has not shown error in the Examiner’s rejection. We sustain the rejection of claims 1-4, 8-15, 17-20, 24-30, 32-46, 48-51, and 55- 61 as being unpatentable over Beriker in view of Ryan. REJECTIONS IV AND VI, OVER BOLLAY ALONE OR IN COMBINATION WITH RYAN Patent Owner’s only argument with respect to the disclosure of Bollay is a single sentence that Bollay “does not describe a system in which a statistic of relevant (sic) to a first advertiser and a statistic of relevance to a second advertiser are used to determine an amount to be charged to a second advertiser” (App. Br. 30). Patent Owner provides no citation or evidentiary support for this assertion. Nevertheless, we agree with Requesters that Bollay discloses automated agents that are sent user information, “which includes at least viewing habits, buying habits, income, e-mail, Internet Service Provider (ISP), zip code, and other address information” (Resp. Br. 23; Bollay p. 3). “Agents compare the user’s information with criteria, such as the advertiser’s target audience . . . . The agent’s bid price is determined by each agent in accordance with a value placed on a user with this user information, and any other information pertinent to an advertiser” (Resp. Br. 23-24; Bollay p. 3). We further agree with Requesters that bids are determined using information relevant to one advertiser (advertiser-specific information) and information relevant to another (user-specific information) (Resp. Br. 24). Appeal 2014-002495 Reexamination Control 95/001,863 Patent No. 7,974,912 B1 14 Patent Owner also argues that Ryan is not relevant and not combinable with Bollay (App. Br. 30-31). Similar to the discussion in the analysis of rejection I over Konia in view of Ryan supra, we are not persuaded by this argument. Patent Owner’s position that Bollay should be disqualified as prior art (App. Br. 26-28) is also unpersuasive, as explained supra. Patent Owner has not shown error in the Examiner’s rejections. We sustain the rejection of claims 2, 3, 15, 18, 19, 33, 34, 46, 49, and 50 as being unpatentable over Bollay either alone or in combination with Ryan. We also sustain the rejection of claims 1, 5-13, 16, 17, 20-29, 31, 32, 36-44, 47, 48, and 51-62 under § 102 as being anticipated by Bollay. REJECTION V OVER SHI Patent Owner’s only argument with respect to the disclosure of Shi is a single sentence that Shi does not teach a method that would “involve the use of the ‘particular amount’ of a first bidders (sic) bid, to determine a second bidders (sic) bid” (App. Br. 31). Patent Owner provides no citation or evidentiary support for this assertion. Nevertheless, we agree with Requesters that Shi discloses a database structure having a field to specify the ‘autobid’ preferences of an advertiser, “in which an advertiser is permitted to specify autobidding increments to maintain the advertiser’s relative bid amount to other advertisers. For example, an advertiser can maintain a specific bid ranking (e.g., as the highest bidder) or a range ranking (e.g., within the top five bidders) by indicating that its bid amount is to be substantially incremented, subject to an optional cap amount, to maintain that specified bid ranking” (Resp. Br. 25; Shi 23:22-28). We Appeal 2014-002495 Reexamination Control 95/001,863 Patent No. 7,974,912 B1 15 further agree with Requesters that Shi thus discloses comparing the advertiser’s bid amount to amounts submitted by other advertisers (Resp. Br. 25). Patent Owner’s position that Shi should be disqualified as prior art (App. Br. 26-28) is also unpersuasive, as explained supra. Patent Owner has not shown error in the Examiner’s rejection. We sustain the rejection of claims 1-3, 5-13, 15, 17-29, 32-34, 36-44, 46, and 48-60 under § 102 as being anticipated by Shi. CONCLUSIONS 1. Patent Owner’s Provisional Application does not disclose “without human intervention, determining with a computer processor, an amount to be charged to said second advertiser in response to a click . . . using said particular amount [a first advertiser is willing to be charged],” as recited in independent claim 1. 2. The November 2010 Declaration of Juan C. Velez and Darren Murrer does not establish a date of invention prior to July 5, 2001. 3. The May 2012 Declaration of Juan C. Velez and Darren Murrer is not persuasive to establish the commercial success of the claimed invention so as to overcome the obviousness rejections. 4. Konia teaches accessing with a computer processor a particular amount a first advertiser is willing to be charged in response to a click of a hyperlink, and without human intervention, determining with a computer processor, an amount to be charged to a second advertiser in response to a Appeal 2014-002495 Reexamination Control 95/001,863 Patent No. 7,974,912 B1 16 click of a hyperlink, said amount to be charged to said second advertiser being determined using said particular amount. 5. It would have been obvious to combine Konia in view of Ryan to achieve the claimed invention. 6. It would have been obvious to combine Konia in view of Kravets to achieve the claimed invention. ORDER The Examiner’s rejection of claims 1-62 is affirmed. In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79. AFFIRMED Appeal 2014-002495 Reexamination Control 95/001,863 Patent No. 7,974,912 B1 17 ack Patent Owner: WOOD, HERRON & EVANS, LLP 2700 CAREW TOWER 441 VINE STREET CINCINNATI, OH 45202 Third Party Requester: MILES & STOCKBRIDGE P.C. GOOGLEINC. 1751 PINNACLE DRIVE, SUITE 500 TYSONS CORNER, VA 22102-3833 Copy with citationCopy as parenthetical citation