Beruflich Dokumente
Kultur Dokumente
_______________
I. INTRODUCTION .............................................................................................1
FORMALITIES .............................................................................................4
II.
A.
B.
C.
FEE ................................................................................................................4
D.
E.
F.
B.
IV.
A.
V.
VI.
CONCLUSION ............................................................................................80
LIST OF EXHIBITS
Exhibit No. Description
Exhibit 1001 U.S. Patent No. 8,515,791 (the 791 patent)
SAP America, Inc. v. Versata Development Group, Inc., CBM
Exhibit 1002 2012-00001, Paper No. 36, Decision Institution of Covered
Business Method Review (January 9, 2013)
Congressional Record - Senate, Patent Reform Act of 2011, 157
Exhibit 1003
Cong. Rec. S1360-1394 (daily edition, March 8, 2011)
Volusion, Inc. v. Versata Software, Inc. and Versata Development
Exhibit 1004 Group, Inc., CBM 2013-00017, Paper No. 8, Decision Institution of
Covered Business Method Review (October 24, 2013)
Exhibit 1005 77 Fed. Reg. 157 (August 14, 2012) 48734-48773
Classification Definitions, Class 705, Data Processing: Financial,
Exhibit 1006 Business Practice, Management, or Cost/Price Determination.
January 2012
Exhibit 1007 Prosecution History for U.S. Patent Application No. 12/263,778
Complaint for Patent Infringement, buySAFE, Inc. v. Google Inc.,
Exhibit 1008
Civil Action No. 3:13-cv-00781-HEH (E.D. Va.)
Plaintiff buySAFEs Opening Claim Construction Brief,
Exhibit 1009 Document 39 from buySAFE, Inc. v. Google Inc., Civil Action No.
1:11-cv-01282-LPS (D. Del., Aug. 10, 2012)
Exhibit 1010 U.S. Patent No. 7,644,019 (the 019 patent)
Exhibit 1011 U.S. Patent Publication No. 2004/0210527 (Woda)
Exhibit 1012 U.S. Patent No. 7,228,287 (Samson)
Exhibit 1013 U.S. Patent Publication No. 2008/0103887 (Oldham)
Exhibit 1014 U.S. Patent Publication No. 2003/0130883 (Schroeder)
Declaration of Dr. Edward J. Cherian Concerning the Invalidity of
Exhibit 1015
U.S. Patent No. 8,515,791
ii
I.
INTRODUCTION
Through counsel, Google Inc. (Google or Petitioner) hereby petitions
for initiation of a covered business method review of U.S. Patent No. 8,515,791
(the 791 patent, Ex. 1001), for which an assignment to buySAFE, Inc.
(buySAFE) was recorded in the U.S. Patent and Trademark Office (USPTO)
database on November 3, 2008.
The 791 patent is directed to methods that perform web analytics to
measure consumer-to-customer conversion continuously throughout surfing,
through conversion and past completion of a purchase on-line. Ex. 1001, 5:24-26.
Cookies and other known tracking mechanisms are used to track consumer
behavior before and during the on-line purchase. Ex. 1001, 4:4-21. In
conjunction with the purchase, the 791 patent discloses that a financial product, or
transaction performance guaranty, may underwrite the obligations of the product
or service provider to reduce the risk of the consumer. Ex. 1001, 4:36:53. The
guaranty also allows tracking of consumer behavior after the on-line purchase
based on, for example, whether a party makes a claim against the obligations, or
through code related to the guaranty. Ex. 1001, 6:14-38.
While prosecuting the 791 patent, the applicants initially argued that the
prior art failed to disclose the monitoring of post-transaction activity.1 After two
Office Actions that rejected the claims in light of prior art that showed such a
limitation, the applicants amended all claims to add the limitation of determining
whether it is acceptable to assume some or all of a third partys obligation, and
added new claims that all included similar limitations.2 The applicants further
argued, in at least three different instances, that the prior art failed to disclose the
determining limitation. 3 Based on these amendments and arguments, the 791
patent was allowed.
Concurrently, buySAFE was asserting (and continues to assert) U.S. Pat. No.
7,644,019 by Woda et al. (the 019 patent, Ex. 1010) against Google.4 The 019
patent was, and continues to be, assigned to buySAFE, and includes inventors
Ex. 1007, August 17, 2012 Amendment after Final, amended independent claims
See, e.g., Ex. 1007, June 11, 2012 Applicant-Initiated Interview Summary;
August 17, 2012 Amendment after Final, and p. 4; and May 30, 2013 ApplicantInitiated Interview Summary.
4
buySAFE, Inc. v. Google Inc., Civil Action No. 1:11-cv-01282-LPS (D. Del.).
2
common with the 791 patent (i.e., Steven L. Woda and Jeffrey E. Grass). The
019 patent was not disclosed to the USPTO during the prosecution of the 791
patent.
The 019 patent, as discussed below,5 discloses the identical limitations that
caused the 791 patent to be allowed, namely a transaction performance guaranty
service that is provided as part of an on-line transaction that includes a
determination of whether to accept third party obligations. See, e.g., Ex. 1010,
Abstract. BuySAFE itself made this argument during the claim construction
portion of the litigation.6
Therefore, one of the grounds of unpatentability herein (Ground 2) adds
the disclosure of the 019 patent in the form of Woda to the previous combination
The corresponding patent publication to the '019 patent, U.S. Pat. Pub. No.
2004/0210527 (Woda, Ex. 1011) is used for the below discussion and proposed
grounds because the '019 patent qualifies as prior art under 35 U.S.C. 102(e),
which may not be allowed for a CBM review. Woda was also not disclosed to the
USPTO during the prosecution of the 791 patent.
6
See Ex. 1009, Plaintiff buySAFEs Opening Claim Construction Brief, dated
Aug. 10, 2012, p. 11 (arguing that the '019 patent discloses [d]etermining that it is
acceptable to assume a risk on behalf of [the first party]).
3
of prior art asserted by the Examiner during prosecution of the 791 patent to show
a reasonable likelihood of prevailing. Another ground of unpatentability (Ground
1) uses a single prior art primary reference (Samson, Ex. 1012) that was not
before the Examiner during prosecution of the 791 patent in combination with
Woda.
II.
FORMALITIES
A.
RELATED MATTERS
The 791 patent has been asserted against Google in buySAFE, Inc. v.
Google Inc., Civil Action No. 3:13-cv-00781-HEH (E.D. Va.). See Ex. 1008.
C.
FEE
Lead Counsel
Back-Up Counsel
E.
POWER OF ATTORNEY
SERVICE INFORMATION
A.
The data obtained from the TRO related tracking disclosed in the 791 patent
can be used to determine consumer behavior. Ex. 1001, 7:4-7; Ex. 1015, 23. For
example, the information may be used to determine how to increase consumer
likelihood to engage with a website by understanding, for example, actual
conversion to usage, time spent on a website or particular webpage, CTR (Click
Through Rate) to a TRO related environment, e.g., a website associated with a
TRO provider, number of page views, etc. Ex. 1001, 7:8-12; Ex. 1015, 23.
Further, it may be determined how one or more TROs (such as those illustrated in
FIG. 1) impact current and future consumer behavior from point of entry of a
consumer in an on-line environment. Ex. 1001, 7:13-16; Ex. 1015, 23. The
791 patent further discloses that the impact or effect of various parameters of the
TROs are determined: a TRO impact report may be generated to indicate impact
and efficacy of one or more TROs offered in the on-line environment and/or
parameters associated with such TROs, e.g., placement of TRO graphic, type of
TRO graphic, cost of TRO, frequency of placement, duration of TRO, etc. Ex.
1001, 11:23-28; Ex. 1015, 23.
However, the alleged novelty of the 791 patent of measuring consumer-tocustomer conversion and tracking consumer behavior continuously throughout
surfing, through conversion and past completion of a purchase on-line was well
known before the priority date of the 791 patent. Ex. 1015, 24. First, as
7
acknowledged in the 791 patent, and consistent with the prior art discussed below,
the concept of determining consumer behavior using a clickstream during surfing
and a conversion/sale was well known. Ex. 1001, 4:11-21; Ex. 1015, 24.
Further, the concept of tracking consumer behavior past completion of the
purchase and using a transaction performance guarantee for on-line transactions is
disclosed in buySAFEs own 019 patent and other prior art discussed below. Ex.
1015, 24. The prior art discussed below also discloses tying together pre- and
post- transaction activity to determine consumer behavior. Ex. 1015, 25. For
example, Samson (Ex. 1012) discloses incentives that are offered to facilitate a
sale, and the tracking of the effects of the incentives when an incentive is
accepted/redeemed in conjunction with a sales transaction. Ex. 1015, 25.
Therefore, as explained in detail below and in the corresponding declaration
of Dr. Edward J. Cherian (Ex. 1015), the claims of the 791 patent would not have
been considered new or non-obvious to a person of ordinary skill in the art at the
time of filing.7
All references to a person of ordinary skill in the art (POSA) refer to the
B.
cited, for the most part, for the disclosure of monitoring consumer behavior past
completion of a sales transaction. See, e.g., id., p. 7.
In response, the applicants conducted an Examiner interview on June 11,
2012. During the interview, the applicants argued that the prior art does not
disclose (1) monitoring of [a] consumer following a sales transaction and
analyzing that behavior to generate consumer behavior data"; and (2) the at least
one sales transaction related offering is the underwriting of one party's obligations
in a sales transaction." Ex. 1007, June 11, 2012 Applicant-Initiated Interview
Summary.
Further in response to the Final Office Action, on August 17, 2012 the
applicants filed a Request for Continued Examination (RCE) with an amendment
to all independent claims. The amendment added the limitation wherein the at
least one sales transaction involves determining whether it is acceptable to assume
some or all of a third partys obligation in the at least one sales transaction to all
pending independent claims. Ex. 1007, August 17, 2012 Amendment after Final,
pp. 2-5. New claims that included similar limitations and that resulted in issued
claims 24-27 were also added. Id., pp. 5-7. In the Remarks section, the
applicants stated that [b]y this amendment, the independent claims have been
focused to more specifically claim aspects of the invention as discussed during the
telephone interview. Id., p. 8.
10
Final, pp. 2-5, 8. Unfortunately, buySAFE failed to submit both the 019 patent
and its claim construction arguments to those Examiners.
IV.
The Patent Trial and Appeal Board (PTAB) may institute a transitional
post-grant review proceeding for review of the validity of covered business method
patents. AIA 18(a)(1). A covered business method patent is a patent that
claims a method or corresponding apparatus for performing data processing or
other operations used in the practice, administration, or management of a financial
product or service, except that the term does not include patents for technological
inventions. AIA 18(d)(1) and 37 C.F.R. 42.301(a). As discussed below, the
791 patent has one or more claims that are directed to a covered business method.
Thus, the 791 patent is eligible for covered business method patent review.
1.
THE 791 PATENT CLAIMS METHODS USED IN THE
PRACTICE, ADMINISTRATION, OR MANAGEMENT OF FINANCIAL
PRODUCTS OR SERVICES
The claims of the 791 patent are directed to monitoring and analyzing
consumer sales data. Ex. 1001, 17:56 - 20:56. This falls within the definition of
financial products or services. To qualify as a covered business method patent, the
claims need not to have a literal recitation of the terms financial products or
services. Ex. 1002, p. 23. Instead, the term financial is an adjective that simply
12
means relating to monetary matters. Ex. 1002, p. 23. Activity that is incidental
and complementary to a financial activity falls within the definition of AIA
18(d)(1). Ex. 1002, p. 23 (citing 77 Fed. Reg. 157 (August 14, 2012) 48734,
48736). If even a single claim of a patent, interpreted in light of the specification
of the patent and the knowledge of ordinary skill in the art, encompasses the
practice, administration, or management of a financial product or service, then the
patent satisfies the financial product or service requirement for a covered
business method patent. See, e.g., Ex. 1004, pp. 5-6; Ex. 1002, pp. 22-24; Ex.
1005, pp. 48735-36.
Claim 24 of the 791 patent is directed to a method for performing
systematic analysis of consumer behavior data to predict consumer demand. Ex.
1001, 20:1-3. In the claimed method, the at least one sales transaction includes a
transaction performance guaranty service for some or all of one partys obligations
in the at least one sales transaction. Ex. 1001, 20:21-24. In view of the 791 patent
specification, and as recited in claim 25, the transaction performance guaranty can
be a surety bond, a specialized bank guaranty, or a specialized insurance policy.
Ex. 1001, 15:36-39; Claim 25. Such products are clearly considered financial
products and services as contemplated by the AIA. See Ex. 1008, p. 6 (discussing
method claims directed to offering insurance as financial products or services).
13
falls within the definition of a covered business method. Claims 2-11, 23 and 2627 recite substantially similar limitations to those noted above with respect to
claim 1. See Ex. 1001, 18:12-45, 19:34-57, and 20:29-56. A POSA would
recognize that claims 1-11, 23, and 26-27, as well as the remaining claims, also
encompasses the practice, administration, or management of a financial product or
service. Ex. 1015, 34.
The patent classification further supports the assertion that the 791 patent
qualifies as a covered business method patent. The USPTO has recognized that
patents subject to covered business method patent review are anticipated to be
typically classifiable in Class 705. Ex. 1005, 48739. Based on the issued claims,
the 791 patent has been classified by the USPTO in USPC 705/7.11, which relates
to data processing for operations research or analysis with automated electrical
financial or business practice or management arrangement. See Ex. 1001 and Ex.
1006, 705-7. The 791 patent has also been classified in USPC 705/7.29, which is
a subclass of 705/7.11 and relates to market data gathering, market analysis or
market modeling. See Ex. 1001 and Ex. 1006, 705-12. Since the 791 patent has
not been classified in any other USPC class and in view of the discussion above
regarding the claims, the 791 patent clearly claims data processing or other
operations used in the practice, administration or management of a financial
product or service, as required under the statute.
16
17
(c)
38. To the contrary, the specification of the 791 patent only discusses well known
examples of software and hardware that can be used to practice the claimed
methods. Ex. 1015, 38. For example, the patent describes the technology for
monitoring consumer behavior as including cookies, Macromedia Flash, Microsoft
Silverlight, or JavaFX, which are all known technologies. Ex. 1001, 8:4-49; Ex.
1015, 39. The patent also indicates that:
a plurality of appropriate tracking methods may be utilized to
measure consumer behavior and TRO-related activity including
tracking of consumer based on presentation of a graphic associated
with the TRO (also referred to as a TRO graphic) and seller
provided TRO related information.
Ex. 1001, 6:25-30; Ex. 1015, 40. Consequently, according to the 791
patent, no specific unconventional software, computer equipment, tools, or
processing capabilities are required in performing the claimed methods.
Ex. 1015, 41.
Moreover, the claims all make reference to known technologies, such as a
server and communication network, which cannot qualify the patent as a
technological invention. Ex. 1015, 38. As noted in the legislative history of the
AIA, a patent is not a technological invention because it combines known
technology in a new way to perform data processing operations. Ex. 1003,
S1364. Indeed, the mere recital of known prior art technology to effect a method,
19
even if the method itself is novel and unobvious, is insufficient to render the patent
to be a technological invention. See Ex. 1004, pp. 7-8. A POSA would recognize
that subject matter claimed in the 791 patent does no more than combine known
technology to perform data processing operations. Ex. 1015, 42.
The claimed methods also do not solve a technical problem using a technical
solution. One problem addressed by the 791 patent of determining efficacy of
parameters related to a transaction related offering by monitoring consumer
behavior subsequent to a transaction is not a technical one. Rather, the
determination of efficacy of parameters related to a transaction related offering is a
business problem. Ex. 1015, 43. The 791 patent further emphasizes that it is the
monitoring of the consumer behavior with respect to the sales transaction that the
alleged invention seeks to address, not any particular deficiency in current
monitoring technologies. See e.g., Ex. 1001, 1:10-18, 3:50-4:33. Nor do the
claims offer any technical solution for this problem. Ex. 1015, 45. The claims
merely recite conventional servers and communication networks where the
monitoring and analysis occurs. Ex. 1015, 45. In addition, during prosecution,
the Examiner did not consider claim 1 to be allowable over the prior art until
buySAFE included the limitation of wherein the at least one sales transaction
involves determining whether it is acceptable to assume some or all of a third
partys obligations in the at least one sales transaction. Ex. 1007, August 17,
20
2012 Amendment after Final, p. 2. Similar features were also recited in claims 12,
23 and 26. Ex. 1001, 18:66-19:2, 19:53-57, 20:49-53. Claim 24 recites a similar
feature of the at least one sales transaction includes a transaction performance
guaranty service for some or all of one partys obligations in the at least one sales
transaction. Ex. 1001, 20:21-24. Yet these features that supposedly distinguished
over the prior art of record are not technical solutions to technical problems.
Rather, these features merely recite determining or including a performance
guaranty service associated with a sales transaction, which may be performed by a
human intermediary. Accordingly, the claims of the 791 patent fail to provide a
technical solution to a technical problem. Ex. 1015, 43.
For at least the foregoing reasons, at least claims 1, 12, 23, 24 and 26 of the
791 patent are not directed to a technological invention.
B.
The 791 patent has been asserted against Google in buySAFE, Inc. v.
Google Inc., No. 3:13-cv-00781 (E.D. Va.). See Ex. 1008.
Google certifies that estoppel does not prohibit review on the grounds
identified in this petition. Further, Google has not been a party to any other postgrant review of the challenged claims. Google is thus eligible under 37 C.F.R.
42.302 to file this petition.
21
In addition, a petition for post grant review of the 791 patent is not available
because the 791 patent is not subject to the first inventor-to-file provisions, so the
filing of this petition is not precluded.
V.
Claims
1-27
Description
Invalid under 35 U.S.C. 103 as being obvious
based on Samson in view of Woda
1-27
VI.
22
42.304(b)(3) and pursuant to the USPTOs final Office Practice Guide, a party
may provide a simple statement that the claims terms are to be given their
broadest reasonable interpretation, as understood by one of ordinary skill in the art
and constituent with the disclosure. 77 FR 48764, Aug. 14, 2012, effective Sept.
16, 2012.
Any proposed constructions in this Petition are not binding on Google in
litigation or in other forums that apply different standards of claim construction
than the broadest reasonable construction standard applied by the PTAB in covered
business method review proceedings. Also, while Google believes these are all the
terms requiring construction, Google reserves the right to request that additional
terms be construed, for example, in response to arguments by buySAFE.
Petitioner hereby provides the simple statement that the claims terms are to
be given their broadest reasonable interpretation, as understood by one of ordinary
skill in the art and constituent with the disclosure. To supplement the simple
statement, the broadest reasonable constructions for the following claim terms of
the 791 patent are provided below and are incorporated into the patentability
challenges raised herein:
Determine efficacy of a plurality of parameters relating to one or more
sales transaction related offerings: Under the broadest reasonable
interpretation, this term should mean determine the impact on consumer behavior
23
1.
each visit per each auction, number of auctions visited/participated, and frequency
of revisiting auctions. Ex. 1012, 4:24-30; Fig. 2; Ex. 1015, 58. Samson
discloses that consumer profile 16 further includes the behavior of bidders during
and subsequent to sales transactions: the bidding and behavior values 12
includes bidding history, start bid, bid frequency, bid increment, final bid, winning
bid, target product, coupon redemption rate . . . whether the consumer's bid was a
successful bid, which is the winning bid, or an unsuccessful bid. Ex. 1012, 4:3040; Fig. 2; Ex. 1015, 59. For example, a POSA would understand that a coupon
would be redeemed after/subsequent the sale. Ex. 1015, 60.
Samson discloses that system 20 will generate incentives 24 using a
learning model. Ex. 1012, 6:43-44; Ex. 1015, 61. The learning model
calculates the incentives based on the information in the consumer profile,
classification, product consideration set, seller's inventory position 36, and
incentive options 37. Ex. 1012, 6:44-47; Ex. 1015, 61. The incentives may be
in the form of a coupon, discount, rebate, additional product, reward, or any other
type of offer. Ex. 1012, 8:50-53; Ex. 1015, 61. The incentives may also include
free add-ons, such as more warranty or free or otherwise discounted additional
goods or services. Ex. 1012, 6:21-22; Ex. 1015, 61.
In connection with the incentives, Samson discloses that parameters
(referred to as incentive options 37), such as the amount of a discount to offer for
26
a discount incentive, are determined. See, e.g., Ex. 1012, 6:8; Ex. 1015, 62.
When the consumer profile is classified 18, the unsold item from inventory is
chosen 17, and the seller's inventory position 36 and incentive options 37 are
determined, the system 20 will generate incentives 24 using a learning model.
Ex. 1012, 6:40-44; Ex. 1015, 62.
Examples of the incentive options disclosed in Samson include additional
percentage or specified amount discounts from manufacturers to help the seller or
retailer move the inventory, such as where the retailer gives an additional 5%
incentive on all Model 1234 goods or services moved out of inventory, and free
add-ons, such as more warranty or free or otherwise discounted additional goods or
services. Ex. 1012, 6:16-28; Ex. 1015, 63. Examples of inventive/incentive
options generated include: a coupon for $91 off a J brand product A with a MSRP
(manufacturer's suggested retail price) of $299.95 from Stereo Store, a coupon for
$71 off a P brand product A with a MSRP of $349.99 from Electronic Retailer, a
coupon for $46 off a S brand product A with a MSRP of $299.99 from Ed's
Manufacturer, and a coupon for a S brand product B with a MSRP of $249.99 from
Stereo Store. Ex. 1012, 8:57-63; Ex. 1015, 63. A POSA would understand that
in Samson, parameters/incentive options would correspond to each incentive
offered, such as an amount of discount for a discount incentive, the number of
27
additional years for a more warranty incentive, the brand of the product subject
to an incentive, etc. Ex. 1015, 64.
Once generated, system 20 will then offer the incentive 25 to the
consumer. Ex. 1012, 8:39-40; Ex. 1015, 65. Samson discloses that the
incentive, and associated incentive option, is determined, generated and provided
for a specific sales transaction to a specific consumer: The incentive may be a
general incentive for any product or a specific incentive for a specific product. In
addition, the notification may contain one or more incentives offered at the same
time to the same consumer. Ex. 1012, 8:43-45; Ex. 1015, 65.
When the incentive is delivered to the consumer, the consumer has the
option of selecting the incentive 27. Ex. 1012, 9:3-4; Ex. 1015, 66. If the
incentive is redeemed, the behavior of the customer is then updated (i.e.,
subsequent or past completion to the sales transaction): if the consumer
chooses to select the incentive, specified by yes 29, the consumer profile will be
updated 50 with information that the incentive was redeemed and the redemption
will be processed 52. Ex. 1012, 9:12-15; Ex. 1015, 66. The redemption
information is then used to determine how accurate the learning model is
performing so that it can be adjusted for future incentives and therefore determine
the efficacy of the incentives. Ex. 1012, 9:15-17; Ex. 1015, 67. In the preferred
embodiment, the redemption rate is among the primary indicators monitored and
28
updated in order to improve the accuracy of the attributes, of the data, and their
weightings in the learning model. Ex. 1012, 6:59-63; Ex. 1015, 67.
As with coupon redemptions, a POSA would understand that incentives such
as rebate, additional product, reward, or any other type of offer would also be
redeemed after/subsequent the sale. Ex. 1015, 68. Samson further discloses
that the learning model of consumer behavior generates data after/subsequent to
sales transactions: The learning model is constantly monitored and updated to
improve accuracy. When the system 20 is turned on at Day 0, it has minimal
information on which to base incentive generation decisions. As time goes by and
redemption data is accumulated, statistics will be used in the learning model to
determine what information, or attributes, add to the ability to accurately produce
incentives and which attributes do not add value. Ex. 1012, 6:49-56 (emphasis
added); Ex. 1015, 69.
Samson discloses that the attributes of consumer behavior are analyzed to
determine the impact on the incentives: Over time, it is possible to more
accurately understand how important each attribute is in computing the proper
incentive. Ex. 1012, 6:57-59; Ex. 1015, 70. The attributes include redemption
rate, as well as intensity (how often the consumer bid, checked on the current bid
price, viewed the website in general), competitiveness (if the consumer responded
each and every time he or she was outbid), final bid-price (as a percentage or full29
retail price of an item, where the higher the final bid, the less of an incentive a
consumer will receive), and zip code driven demographics (higher level annual
income zip-codes will receive less of a discount than lower annual income zip
codes). Ex. 1012, 7:10-18; Ex. 1015, 70. Therefore, a POSA would understand
that Samson discloses the impact of a plurality of attributes/parameters on the
incentives. Ex. 1015, 70.
Samson further discloses that there are many different incentive and award
programs to influence consumers to purchase on-line. Ex. 1012, 1:56-57; Ex.
1015, 71. As discussed, Samson discloses that one of the incentives may be
more warranty. Ex. 1012, 6:21-22; Ex. 1015, 78. Arguably, an additional
warranty may not be considered a disclosure of the limitations of assume some or
all of a third partys obligations, recited in claims 1-23 of the 791 patent, a
transaction performance guaranty, recited in claims 24 and 25 of the 791 patent,
or assume one or more obligations of a party that provides a product or a service,
recited in claims 26 and 27; Ex. 1015, 79. Regardless, Samson discloses that the
incentives may be any other type of offer. Ex. 1012, 8:50-53; Ex. 1015, 79.
2.
U.S. Patent Pub. No. 2004/0210527 to Woda et al. (Woda) (Ex. 1011) was
filed on April 21, 2003, was published on October 21, 2004, and issued as the 019
30
transaction guaranty 250. Ex. 1011, [0035]; Ex. 1015, 84. The safe
transaction service provider 130 may also provide a performance guaranty in forms
supported by other institutions such as the specialized bank guaranty 230 supported
by a bank or the specialized insurance policy 240 (or surety bond) supported by an
insurance company. Ex. 1011, [0035]; Ex. 1015, 84.
Woda discloses a framework 600 in which the safe transaction service
provider 130 may interact with a marketspace provider 610 in order to effectively
facilitate a transaction performance guaranty service to parties involved in
transactions posted in a marketspace provided by the marketspace provider 610.
Ex. 1011, [0053]; Ex. 1015, 85. As indicated by the disclosed marketspace
providers, the transaction is an on-line transaction using a communication network:
Examples of such a marketspace provider may be eBay, uBid, Amazon Auctions,
or Yahoo Auctions. Ex. 1011, [0053]; Ex. 1015, 85.
Woda discloses an underwriting process to determine service subscribers:
the safe transaction service provider 130 determines service subscribers according
to their qualifications measured using different approaches. Ex. 1011, [0047];
Ex. 1015, 86. In framework 100, the safe transaction service provider 130
underwrites each applicant requesting different services. Ex. 1011, [0047]; Ex.
1015, 86. The underwriter 140 may communicate with different entities to
32
buySAFE, Inc. v. Google Inc., Civil Action No. 1:11-cv-01282-LPS (D. Del.).
33
Further details of how Samson in view of Woda discloses each and every
claim element of claims 1-27 of the 791 patent are shown in the charts below.
791 Patent Claims
1. [a] A method for
performing systematic
analysis of consumer
behavior data to predict
consumer demand via
an on-line environment,
the method comprising:
Samson + Woda
Samson discloses a system 20 that creates a customer profile
16 and a learning model for creating incentives used to
induce purchasing of products by consumers (i.e., analysis
of consumer behavior data to predict demand) (Ex. 1015,
56-57):
As shown in FIG. 1, the method, or incentive system
20, includes creating a consumer profile 16 for at least
one consumer, choosing at least one unsold item, or
product to offer, 17 from an inventory based on the
information in the consumer profile, generating, or
calculating, an incentive for the chosen unsold item 24
based on the consumer profile, and offering the
chosen unsold item and the incentive to the consumer
25 to induce purchasing of the chosen unsold
item. Ex. 1012, 3:17-25; Fig. 1 (emphasis added).
The learning model will also determine the products
that meet the criteria of both the product consideration
set and the seller's inventory position 36. The learning
model calculates incentives for products determined
to be part of an individual consumer's product
consideration set. The product consideration set may
be constrained in two ways. First, the set may be
constrained by the available inventory from the
seller's or retailer's shelves. Second, the set may be
chosen based on the behavior of the individual
consumers. Ex. 1012, 7:60-8:1.
Samson discloses that system 20 monitors the behavior of the
consumers for an online auction prior to and during a sales
transaction (Ex. 1015, 58):
In the preferred embodiment, as the consumer explores
the site and places bids on auction items, the auction
house records the consumer's browsing behavior 3,
35
74):
40
Samson + Woda
Samson discloses the monitored behavior data includes
details of successful bids (i.e., a conversion) (Ex. 1015,
73):
Samson + Woda
Samson discloses updating the consumer profile (i.e.,
consumer behavior data) regarding whether incentives
are redeemed (Ex. 1015, 74):
Samson + Woda
Samson discloses updating the consumer profile (i.e.,
consumer behavior data) regarding whether incentives
are redeemed (Ex. 1015, 74):
Samson + Woda
Samson discloses identifying consumer behavior data
from at least two different sources (e.g., browsing
behavior 11, personal computer information 13, coupon
redemption and demographics) and correlating the data to
form consumer profile 16 (Ex. 1015, 75):
Samson + Woda
Samson discloses storing consumer behavior data in a
database. See e.g., Ex. 1012, 4:46-59; Fig. 2; Ex. 1015,
76.
Samson + Woda
44
Samson + Woda
See claim 6 and 8 above.
Samson + Woda
Samson + Woda
This preamble should be given no patentable weight.
Further, Samson discloses that the customer profile is
stored in a database. A POSA would understand that a
known database would include a database management
45
analyzing, at at least
one server coupled to at
least one
communication network
included in an on-line
environment, consumer
behavior data generated
prior to, during and
subsequent to at least
one sales transaction
performed in the on-line
environment;
identifying consumer
behavior data from at
least two different
sources to identify
consumer behavior data
that pertains to a same
consumer; and
correlating the
consumer behavior data
pertaining to the same
consumer for use in at
least one sales
transaction related
offering,
wherein the consumer
behavior data is
generated based on
behavior of the same
consumer past
46
completion of the at
least one sales
transaction performed
in the on-line
environment and the
analyzing is performed
based on consumer
behavior data generated
based on monitored
behavior occurring after
the at least one sales
transaction,
wherein the at least one
sales transaction
involves determining
whether it is acceptable
to assume some or all of
a third party's
obligations in the at
least one sales
transaction.
Samson + Woda
See Claim 7 above
Samson + Woda
See Claim 8 above.
Samson + Woda
See Claim 9 above.
Samson + Woda
47
Samson + Woda
See Claim 11 above.
Samson + Woda
See Claim 2 above.
Samson + Woda
Samson discloses that the learning model of consumer
behavior continuously generates data after redemption
data is accumulated (i.e., past completion) of sales
transactions (Ex. 1015, 69):
The learning model is constantly monitored and
updated to improve accuracy. When the system 20 is
turned on at Day 0, it has minimal information on
which to base incentive generation decisions. As time
goes by and redemption data is accumulated,
statistics will be used in the learning model to
determine what information, or attributes, add to the
ability to accurately produce incentives and which
attributes do not add value. Ex. 1012, 6:49-56
(emphasis added).
Samson + Woda
See Claim 5 above.
Samson + Woda
See Claim 3 above.
Samson + Woda
See Claim 4 above.
Samson + Woda
See Claim 1[a] above.
Samson + Woda
See Claim 1[a] above.
50
Samson + Woda
Woda discloses the recited embodiments for transaction
performance guaranty (Ex. 1015, 84):
FIG. 2 illustrates different exemplary forms in which
a transaction performance guaranty 210 may be
provided, according to an embodiment of the
inventions. It may be offered in the form of a surety
bond 220, a specialized bank guaranty 230, . . . , a
specialized insurance policy 240, or in a form of a
safe transaction guaranty 250. Ex. 1011, [0035].
Samson + Woda
See Claim 1[a] above.
52
53
based on consumer
behavior data generated
based on monitored
behavior occurring after
the at least one sales
transaction,
wherein a safe
transaction service
provider determines
whether it is acceptable
to assume
one or more obligations
of a party that provides
a product or a service
associated with the one
or more sales
transaction related
offerings
Samson + Woda
Woda discloses a graphic related to the transaction
guaranty (i.e., transaction related) (Ex. 1015, 88):
To render a seal in its graphical form, the guaranty
seal generation mechanism 1010 may produce code
that can be used to render a graphical symbol. Ex.
1011, [0074].
B.
Oldham in view of Schroeder and Woda discloses each and every claim
element of claims 1-27 of the 791 patent. Ex. 1015, 95.
1.
U.S.C. 102(a). Oldham was cited during prosecution of the 791 patent, and was
applied as the primary reference for all of the prior art rejections. See, e.g., Ex.
1007, March 1, 2012 Final Office Action.
Oldham discloses an advertisement system 100 provides one or more
advertisements to an individual (e.g., a user of a product or service, both physical
and online) at the time of a user transaction using information associated with the
transaction itself. Ex. 1013, [0015]; Ex. 1015, 97. The advertisements can be
provided in electronic form, for example, as a banner advertisement on a web
page. Ex. 1013, [0002]; Ex. 1015, 97. The advertisement may include an
incentive (e.g., a coupon or other discount) to encourage the consumer to purchase
a particular product or service. Ex. 1013, [0003]; Ex. 1015, 98. If the
consumer purchases the advertised product or service in response to the
advertisement, it can be called a conversion. Ex. 1013, [0003]; Ex. 1015, 98.
Oldham discloses that the provided advertisements are tracked for later
conversion by the user. Ex. 1013, [0015]; Ex. 1015, 99. A conversion
tracking module 112 collects information associated with advertisement
conversions. Ex. 1013, [0024]; Ex. 1015, 99. The conversion information
(i.e., whether a sales transaction occurs) and the efficacy of each
advertisement/incentive is tracked and stored: A table or other convenient data
structure can be generated to score conversion rates for particular categories (i.e.,
56
the advertisement using a tracking code: The conversion tracking module 112
collects information associated with advertisement conversions. The originating
advertisement for the conversion is tracked, for example, using a tracking code
provided with the advertisement impression. Ex. 1013, [0024]; Ex. 1015, 103.
A POSA would understand that the tracking code would be a cookie and/or a
shared object that would continually track online consumer behavior continuously
from first exposure throughout. Ex. 1015, 103.
2.
1014, [0058]; Ex. 1015, 108. Prediction of increased sales, or sales lift, due to
a promotion is achieved using mathematical models for market response to a set of
promotion conditions, with a plurality of promotion types being available in the
model. Ex. 1014, [0058]; Ex. 1015, 109. The models may be derived from
correlations of point-of-sale (POS) data with past promotions and, in some
embodiments, may be updated continuously as POS data is obtained for each
promotion. Ex. 1014, [0058]; Ex. 1015, 109.
Schroeder discloses analyzing past sales performance of a product (i.e.,
consumer behavior data) to predict consumer demand for a product: Such
information can be used to correlate past sales performance for a product to
promotion activity. Ex. 1014, [0029]; Ex. 1015, 110. Schroeder discloses
monitoring behavior in an on-line environment prior to, during and subsequent to
at least one sales transaction: The business planner system 1 may also be adapted
to handle the forward buying behavior of customers. . . . so the business planner
system 1 may include a module that tracks past forward buying behavior and
extrapolates to estimate the forward buying actions of the customer for a given
planned promotion. Ex. 1014, [0072]; Ex. 1015, 110.
3.
to include more incentives and facilitate more transactions. Ex. 1015, 114. The
addition of the transaction performance guaranty of Woda into Oldham would
operate in a predictable manner to facilitate the transactions and can be combined
using known methods. Ex. 1015, 115. A POSA would further consider the
substitution of the transaction performance guaranty of Woda as one of the
incentives of Oldham as a simple substitution of one known element for another to
obtain predictable results. Ex. 1015, 115.
5.
based on consumer
behavior data generated
based on monitored
behavior occurring after
the at least one sales
transaction,
67
70
71
73
74
77
78
79
IX.
CONCLUSION
In view of the foregoing, it is respectfully submitted that there is a
reasonable likelihood that Petitioner would prevail with respect to at least one of
claims 1-27 of the 791 patent. Accordingly, the PTAB is requested to grant this
petition and to initiate a covered business method review.
Dated: May 9, 2014
Respectfully submitted,
By: /Barry S. Goldsmith/
Barry S. Goldsmith (Reg. No. 39,690)
bgoldsmith@milesstockbridge.com
Miles & Stockbridge P.C.
1751 Pinnacle Drive, Suite 500
Tysons Corner, VA 22102
Telephone: (703) 610-8680
Facsimile: (703) 610-8686
Attorney for Petitioner
80
Certificate of Service
Pursuant to 37 C.F.R. 42.6 and 42.105, I, Barry S. Goldsmith, an attorney,
certify that on the 9th day of May 2014, the foregoing PETITION FOR
COVERED BUSINESS METHOD REVIEW UNDER 35 U.S.C. 321 AND 18
OF THE LEAHY-SMITH AMERICA INVENTS ACT was served on the
attorney listed below via Federal Express:
Jason Vick
Sheridan Ross PC
1560 Broadway, Suite 1200
Denver, CO 80202
By:
/Barry S. Goldsmith/
Barry S. Goldsmith
Attorney for Requester
Registration No. 39,690