NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
B.E. TECHNOLOGY, L.L.C.,
Appellant
v.
GOOGLE, INC., MATCH.COM LLC, PEOPLE
MEDIA, INC.,
Appellees
______________________
2015-1827
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2014-
00038, IPR2014-00699.
----------------------------------------------------------------------
B.E. TECHNOLOGY, L.L.C.,
Appellant
v.
MICROSOFT CORPORATION, GOOGLE, INC.,
Appellees
______________________
2015-1828
______________________
2 B.E. TECHNOLOGY, L.L.C. v. GOOGLE, INC.
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2014-
00039, IPR2014-00738.
----------------------------------------------------------------------
B.E. TECHNOLOGY, L.L.C.,
Appellant
v.
FACEBOOK, INC., GOOGLE, INC., MATCH.COM
LLC, PEOPLE MEDIA, INC.,
Appellees
______________________
2015-1829, 2015-1879
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2014-00052, IPR2014-00053, IPR2014-00698,
IPR2014-00743, IPR2014-00744.
______________________
Decided: November 17, 2016
______________________
ROBERT E. FREITAS, JASON S. ANGELL, Freitas Angell
& Weinberg LLP, Redwood City, CA, argued for appel-
lant. Also represented by DANIEL J. WEINBERG.
ANDREW JOHN PINCUS, Mayer Brown LLP, Washing-
ton, DC, argued for all appellees as to 15-1827. Google,
Inc. also represented by BRIAN ROSENTHAL, PAUL
WHITFIELD HUGHES, CLINTON BRANNON.
B.E. TECHNOLOGY, L.L.C. v. GOOGLE, INC. 3
MICHAEL SUMNER. FORMAN, Office of the Solicitor,
United States Patent and Trademark Office, Alexandria,
VA, argued for intervenor Michelle K. Lee as to 15-1827.
Also represented by THOMAS W. KRAUSE, SCOTT
WEIDENFELLER, KAKOLI CAPRIHAN.
JEFFREY PAUL KUSHAN, Sidley Austin LLP, Washing-
ton, DC, argued for all appellees as to 15-1828. Microsoft
Corporation also represented by SCOTT BORDER, SAMUEL
DILLON, RYAN C. MORRIS, ANNA MAYERGOYZ WEINBERG.
HEIDI LYN KEEFE, Cooley LLP, Palo Alto, CA, argued
for all appellees as to 15-1829, 15-1879. Facebook, Inc.,
also represented by MARK R. WEINSTEIN; ORION ARMON,
PETER SAUER, Broomfield, CO.
JASON ALEXANDER ENGEL, K&L Gates LLP, Chicago,
IL, for appellees Match.com LLC, People Media, Inc. Also
represented by KACY DICKE.
______________________
Before LOURIE, CHEN, and STOLL, Circuit Judges.
CHEN, Circuit Judge.
B.E. Technology, L.L.C. (B.E.) appeals from three fi-
nal written decisions of the U.S. Patent and Trademark
Office, Patent Trial and Appeal Board (Board), across
nine inter partes reviews (IPRs), in which the Board found
unpatentable claims 11–22 of B.E.’s U.S. Patent No.
6,628,314. See Google, Inc. v. B.E. Tech., LLC, Nos.
IPR2014-00038, IPR2014-0069, 2015 WL 1735099, at *1
(P.T.A.B. Mar. 31, 2015) (Google Written Decision); Mi-
crosoft Corp. v. B.E. Tech., LLC, Nos. IPR2014-00039,
IPR2014-00738, 2015 WL 1735100, at *1 (P.T.A.B. Mar.
31, 2015) (Microsoft Written Decision); Facebook, Inc. v.
B.E. Tech., LLC, Nos. IPR2014-00052; IPR2014-00053,
IPR2014-00698, IPR2014-00743, IPR2014-00744, 2015
WL 1735098, at *2 (P.T.A.B. Mar. 31, 2015) (Facebook
4 B.E. TECHNOLOGY, L.L.C. v. GOOGLE, INC.
Written Decision). Because the above-captioned appeals
all address overlapping claims of the ’314 patent, we
address them in a single opinion, and we affirm, for the
reasons stated herein. 1 We agree with the Board that
claims 11–22 of the ’314 patent are unpatentable based on
anticipation by U.S. Patent No. 6,119,098 (Guyot) and
obviousness in view of Guyot, U.S. Patent No. 5,918,014
(Robinson), and How to Use Anonymous FTP, IAFA Work-
ing Group, 1–13 (May 1994) (RFC 1635). Microsoft Writ-
ten Decision at *4–14. We also affirm the Board’s denial
of B.E.’s contingent motion to amend. Id. at *16–17.
Because we affirm based on Microsoft’s petition, we do not
address the merits of Google’s and Facebook’s parallel
petitions and dismiss them as moot. 2
BACKGROUND
The ’314 patent relates to user interfaces that provide
advertising over a global computer network such as the
Internet. See ’314 patent col. 1, ll. 12–16. It describes a
client software application comprising a graphical user
interface (GUI) and an advertising and data management
1 We recently issued a separate opinion addressing
similar appeals from four final written decisions of the
Board finding all three claims of B.E.’s U.S. Patent No.
6,771,290 unpatentable as anticipated. B.E. Tech., L.L.C.
v. Sony Mobile Commc’ns (USA) Inc., Nos. 2015-1882,
2015-1883, 2015-1884, 2015-1887, 2015-1888, 2016 WL
4255008, at *1 (Fed. Cir. Aug. 12, 2016). We addressed
the appeals concerning the ’290 patent separately because
they did not involve claims directed to targeted advertis-
ing over a global computer network (as in this case), but
to a computer program that allows remote access to data
stored on a server via a user’s personal computer. See id.
2 Unless otherwise indicated, all citations to the
record and the parties’ briefs refer to the documents filed
in B.E.’s appeal from the Microsoft Written Decision.
B.E. TECHNOLOGY, L.L.C. v. GOOGLE, INC. 5
(ADM) module. Id. col. 6, ll. 64–67. The GUI comprises a
first region comprising a number of user-selectable items
and a second region comprising an information display
region, which includes banner advertisements. Id. col. 4,
ll. 24–37. To target a user with advertisements, program
modules in the GUI collect statistical data based on the
user’s activity within the GUI. Id. col. 4, ll. 43–51.
When a user first accesses the client software applica-
tion, the user enters demographic information into a form,
which is used in selecting advertising to be displayed to
the user. Id. col. 8, ll. 57–62, col. 16, l. 60 – col. 17, l. 2.
The ADM server checks the form’s completeness, assigns
a unique identification (ID) to the user, and stores the
unique ID with the user’s demographic information. Id.
col. 6, l. 67, col. 16, l. 60 – col.17, l. 15. The user’s comput-
er downloads the client software application, which then
monitors and reports to the ADM server the user’s activi-
ty, and displays advertising banners to the user based on
the user’s input or activity at periodically timed intervals.
Id. col. 12, ll. 55–59, col. 14, ll. 40–46, col. 17, ll. 17–23.
I. Representative Claim
Claim 11 is representative and is reproduced below:
11. A method of providing demographically-
targeted advertising to a computer user, compris-
ing the steps of:
providing a server that is accessible via a comput-
er network,
permitting a computer user to access said server
via said computer network,
acquiring demographic information about the us-
er, said demographic information including infor-
mation specifically provided by the user in
response to a request for said demographic infor-
mation,
6 B.E. TECHNOLOGY, L.L.C. v. GOOGLE, INC.
providing the user with download access to com-
puter software that, when run on a computer, dis-
plays advertising content, records computer usage
information concerning the user’s utilization of
the computer, and periodically requests additional
advertising content,
transferring a copy of said software to the comput-
er in response to a download request by the user,
providing a unique identifier to the computer,
wherein said identifier uniquely identifies infor-
mation sent over said computer network from the
computer to said server,
associating said unique identifier with demo-
graphic information in a database,
selecting advertising content for transfer to the
computer in accordance with the demographic in-
formation associated with said unique identifier;
transferring said advertising content from said
server to the computer for display by said pro-
gram,
periodically acquiring said unique identifier and
said computer usage information recorded by said
software from the computer via said computer
network, and
associating said computer usage information with
said demographic information using said unique
identifier.
Id. col. 22, l. 41 – col. 23, l. 7 (emphases added). Although
numerous petitioners, including Google, Inc., Microsoft
Corp., and Facebook, Inc. filed separate IPR petitions
against various claims of the ’314 patent, we agree with
Microsoft that all of the challenged claims are unpatenta-
ble based on anticipation by Guyot and obviousness in
view of Guyot, Robinson, and RFC 1635. Microsoft Writ-
B.E. TECHNOLOGY, L.L.C. v. GOOGLE, INC. 7
ten Decision, at *1. We briefly review Guyot, Robinson,
and RFC 1635, before discussing claim construction,
anticipation, obviousness, and B.E.’s contingent motion to
amend.
II. Guyot
Guyot describes a system and method for targeting
and distributing advertisements over a distributed infor-
mation network that allows information to be exchanged
between a server and multiple subscriber systems. Id. at
*6. The server stores and manages an advertisement
database, and each subscriber system has a unique pro-
prietary identifier. Id. at *6–7. The subscriber systems
periodically access the server to download targeted adver-
tisements based on the server-stored personal profile,
before displaying the targeted advertisements to the
subscriber. Id. at *6. The subscriber can select a “connec-
tion button” to connect to the server, which determines if
the latest software version is needed, and if yes, a uniform
resource locator (URL) is provided to the subscriber
computer, which downloads the software. Id. at *10.
III. Robinson
Robinson describes a system for displaying advertis-
ing to users using a cookie stored on the user’s computer.
Id. at *11. “The cookie contains the identifier of the user,
and the user ID in a central database is updated with
tracking information from the cookie,” which allows the
central server to associate information with a user. Id.
IV. RFC 1635
RFC 1635 describes File Transfer Protocol (FTP), a
protocol on the Internet for transferring files from one
computer host to another. Id. at *12. The user of the FTP
program logs into both hosts with a user account and a
password. Id. RFC 1635 also describes anonymous FTP,
in which an archive site acts as a repository for a wealth
of information, akin to a library. Id. To provide general
8 B.E. TECHNOLOGY, L.L.C. v. GOOGLE, INC.
access, a special user account called “anonymous” allows
the user to log in using FTP to view and retrieve a limited
set of files from the archive site. Id.
DISCUSSION
I. Standard of Review
“We review intrinsic evidence and the ultimate con-
struction of the claim de novo.” SightSound Techs., LLC
v. Apple Inc., 809 F.3d 1307, 1316 (Fed. Cir. 2015). In
construing claims, the Board applies the broadest reason-
able interpretation. Cuozzo Speed Techs., LLC v. Lee, 136
S. Ct. 2131, 2142 (2016). Anticipation is a question of
fact. Eli Lilly & Co. v. Bd. of Regents of Univ. of Wash.,
334 F.3d 1264, 1267 (Fed. Cir. 2003). “[O]bviousness
under § 103 is a question of law based on underlying
factual findings.” Nike, Inc. v. Adidas AG, 812 F.3d 1326,
1334 (Fed. Cir. 2016). “We review the Board’s conclusions
of law de novo and its findings of fact for substantial
evidence.” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d
1331, 1337 (Fed. Cir. 2016). Substantial evidence is “such
relevant evidence [that] a reasonable mind might accept
as adequate.” Id.
II. Claim Construction
We begin with claim construction. B.E. appeals the
Board’s constructions of three claim limitations: “demo-
graphic information,” “unique identifier,” and “transfer-
ring a copy of said software to the computer in response to
a download request by the user.” We find no error in
these constructions, and we address each, in turn.
The Board first adopted the parties’ agreed-upon con-
struction of “demographic information” as “collected
characteristic information about a user that does not
identify the user.” Microsoft Written Decision, at *4. Yet
B.E. now appears to seek a different construction by
arguing that the agreed-upon construction of “demograph-
ic information” must exclude “computer usage infor-
B.E. TECHNOLOGY, L.L.C. v. GOOGLE, INC. 9
mation.” B.E. asserts that claim 11 recites that the
demographic information is obtained from the user via a
request for that information, whereas computer usage
information is collected from the user’s computer activity.
B.E., however, did not argue this position to the Board or
object to the Board’s construction. Id. The Board found
that demographic information need not be solely infor-
mation specifically requested from the user nor exclude
Internet browsing history because demographic infor-
mation means “collected information about a subscriber,
such as Internet sites accessed, and this information does
not identify the subscriber.” Id. Even though demograph-
ic information includes data specifically requested from a
user, that does not mean that demographic information
necessarily excludes computer usage information, as
reflected in the broad, agreed-upon claim construction.
We affirm.
The Board next construed “providing a unique identi-
fier to the computer” and the “identifier uniquely identi-
fies information sent over said computer network from the
computer to the server” to mean “any system, process, or
entity provides a unique identifier to the computer, where
the unique identifier identifies any information that is
sent over the computer network.” Id. at *11. B.E. argues
that (1) the unique identifier must be unique to the “com-
puter,” and (2) the server must “provide” the unique
identifier to the computer. Claim 11, in pertinent part,
reads:
[P]roviding a unique identifier to the computer,
wherein said identifier uniquely identifies infor-
mation sent over said computer network from the
computer to said server,
’314 patent, col. 22, ll. 58–62 (emphases added).
We affirm because B.E.’s proposed construction of
unique identifier does not comport with the disclosure of
the ’314 patent, which describes collecting demographic
10 B.E. TECHNOLOGY, L.L.C. v. GOOGLE, INC.
information from a user, and there is no requirement that
the server provide the unique identifier. B.E. agrees that
“[c]laim 11 does not require, or inevitably forbid, that the
unique identifier identify a user.” Appellant Br. at 25–26,
Appeal No. 2015-1827. 3 But, B.E. argues that the re-
mainder of the claim phrase, “said identifier uniquely
identifies information sent . . . from the computer,” re-
quires the unique identifier to identify the computer. Id.
According to B.E., whether the unique identifier identifies
the user is immaterial, because the unique identifier
“tolerates a user identifier if, but only if, the identifier
‘uniquely identifies information sent . . . from the comput-
er.’” Id.
We disagree. B.E. does not appreciate that the re-
mainder of claim 11 establishes that the unique identifier
is associated with “demographic information” that is
“specifically provided by the user in response to a request
for said demographic information.” ’314 patent, col. 22, ll.
48–51, 58–64. B.E. does not point to any exclusionary
language in the ’314 patent’s claims or specification that a
unique identifier cannot be solely a user ID. To the
contrary, dependent claim 16 expressly recites “associ-
at[ing] a different unique identifier with each of a number
of valid users of said software.” ’314 patent, col. 23, ll. 24–
25. The ’314 patent specification also confirms that the
unique identifier could be a “user” ID because “[t]he user
ID . . . is used to anonymously identify the user for the
purpose of demographically targeting advertising to that
user.” ’314 patent, col. 17, ll. 29–31. This is achieved by
“assign[ing] a unique ID to the user and then stor[ing]
that ID along with the received demographic data.” Id.
col. 17, ll. 13–14. B.E. alternatively argues that the
3 This opinion refers to the documents filed in B.E.’s
appeal from the Google Written Decision using the desig-
nation “Appellant Br. at __, Appeal No. 2015-1827.”
B.E. TECHNOLOGY, L.L.C. v. GOOGLE, INC. 11
specification explains that “server 22 assigns” the “unique
ID,” id. col. 17, l. 13, and the client “receives an assigned
ID from the server,” id. col. 18, l. 14, but nothing in the
claims requires that the unique identifier be assigned by
the server. Claim 11, for example, expressly recites
“transferring said advertising content from said server to
the computer,” whereas the unique identifier is just
“provid[ed] . . . to the computer.” We agree that claim 11
does not preclude the unique identifier from being provid-
ed by “any system, process, or entity,” and we affirm the
Board’s construction of unique identifier.
The Board construed “transferring a copy of said soft-
ware to the computer in response to a download request
by the user” to mean “sending a request for downloading
data from a user’s computer to the server.” Id. at *5. It
rejected B.E.’s position that the claims have an “intent”
requirement in the sense that “a user knowingly asks for
a copy of software to be downloaded from a server to the
user’s computer.” Id. at *5, 10. The Board found that the
claims do not require a user to “knowingly” ask for a copy
of software, and the broadest reasonable interpretation of
“download request by the user” is “sending a request from
the user’s computer to a server.” Id. We agree with the
Board because the claims do not require that a user
“knowingly” download the software. The claims require
only that the user download the software, which means
sending a request from the user’s computer to the server.
We agree with the Board’s construction of this limitation
to mean “sending a request for downloading data from a
user’s computer to the server.” Id. at *5.
III. Anticipation of Claims 11–14 and 16–19 by Guyot
B.E. argued to the Board that Guyot did not disclose
three limitations of claims 11–14 and 16–19: (1) a “meth-
od of providing demographically-targeted advertising to a
computer user”; (2) “providing a unique identifier to the
12 B.E. TECHNOLOGY, L.L.C. v. GOOGLE, INC.
computer”; and (3) “transferring a copy of the software ‘in
response to a download request by the user.’” Id. at *7.
The Board rejected B.E.’s argument that Guyot does
not disclose demographically targeted advertising simply
because Guyot does not use the word “demographic.” Id.
at *7–8. It found that Guyot discloses a database with
subscriber data and subscriber statistics, and the sub-
scriber data includes the subscriber’s identification infor-
mation, password, and “personal profile . . . used to target
specific advertisements to the subscriber.” Id. at *8. The
subscriber statistics include “advertisements distributed
to the subscriber, the number of times each advertisement
has been displayed,” and “information on Internet sites
that the subscriber has accessed over a predetermined
period.” Id. The Board concluded that the subscriber
statistics are within the broadest reasonable interpreta-
tion of “demographic information” because the statistics
contain collected information about the subscriber, e.g.,
Internet sites accessed, without identifying the subscrib-
er. Id. at *9. Internet sites accessed is a behavior charac-
teristic within the scope of “demographic information.”
Id.
B.E. argues on appeal that (1) Guyot does not disclose
any form of the word “demographic” or provide any other
express or inherent disclosure of the use of demographic
information in targeting advertising, and (2) a subscrib-
er’s Internet usage cannot be “demographic information”
because Internet usage falls under “computer usage
information,” which is a different claim term. Both of
these arguments lack merit because B.E. ignores the
agreed-upon claim construction for demographic infor-
mation. It is not necessary for Guyot to use the word
“demographic” to disclose “collected characteristic infor-
mation about a user that does not identify the user”
because “demographic information” is not part of the
construction. Id. “Computer usage information” is also
within the scope of “demographic information,” as con-
B.E. TECHNOLOGY, L.L.C. v. GOOGLE, INC. 13
strued, and B.E. did not request before the Board that
demographic information exclude computer usage infor-
mation. 4 Id. at *9. Substantial evidence supports the
Board’s finding that Internet usage information is a
behavior characteristic, and that Guyot teaches the use of
collected characteristic information to target advertising
to subscribers, within the scope of “providing demograph-
ically-targeted advertising to a computer user.” Id.
The Board also rejected B.E.’s position that the limi-
tation, “providing a unique identifier to the computer,”
requires that (1) the unique identifier be provided by the
server, and (2) the unique identifier identify the comput-
er. Id. at *10. We agree with the Board because we
rejected B.E’s claim construction position that the “unique
identifier” is limited to identifying the user’s “computer”
or that the server be the “source” of the unique identifier.
Rather, because the claim language is unrestricted, the
unique identifier could be provided by “any system, pro-
cess, or entity,” and it requires only that the information
be uniquely identified. Id. at *11. We also agree that
Guyot’s subscriber data is a unique identifier that identi-
fies the subscriber statistics associated with each user.
Id. B.E. itself concedes that “Guyot’s Subscriber Data
uniquely identifies the information associated with the
subscriber.” Reply Br. at 19. The Board correctly found
that Guyot uses subscriber data and subscriber statistics
to provide targeted advertising; the subscriber data
includes the subscriber’s personal profile; and the sub-
4 Microsoft asserts that B.E. waived its argument
that Guyot’s Internet browsing history fails to disclose the
use of demographic information in targeting advertise-
ments, but B.E. did argue to the Board that Guyot’s
personal profile contains Internet browsing history and
does not contain demographic information, so we decline
to find this argument waived.
14 B.E. TECHNOLOGY, L.L.C. v. GOOGLE, INC.
scriber statistics contain Internet usage information.
Microsoft Written Decision, at *11. Thus, we agree with
the Board that Guyot’s subscriber data is a unique identi-
fier.
Finally, the Board rejected B.E.’s position that “trans-
ferring a copy of said software to the computer in response
to a download request by the user” requires the user to be
aware that he has requested a new version of the software
for download. Id. at *9–10. We agree with the Board that
Guyot teaches “transferring a copy of the software in
response to a download request by the user” because the
claims do not have an intent requirement. B.E.’s argu-
ments that a subscriber is unaware of a download request
by his computer is unavailing because this limitation does
not require a user’s intent to request a download, only
that the download request occurs as a result of the user’s
actions through his computer. Guyot explains that a
subscriber can click a “connection button” to connect to
the server, which evaluates the necessity of downloading
the latest version of software, and if yes, a URL address is
provided to the subscriber’s computer, which downloads
the software. Id. The manual selection of Guyot’s “con-
nection button” by a subscriber causes his computer to
request a download of the latest version of the software,
which is sufficient to meet the requirements of this claim
limitation. Id.
We affirm because the Board had substantial evidence
to find that Guyot anticipates claims 11–14 and 16–19.
IV. Obviousness of Claims 20–22 in View of RFC 1635
Obviousness requires assessing (1) the “level of ordi-
nary skill in the pertinent art,” (2) the “scope and content
of the prior art,” (3) the “differences between the prior art
and the claims at issue,” and (4) “secondary considera-
tions” of non-obviousness such as “commercial success,
long felt but unsolved needs, failure of others, etc.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
B.E. TECHNOLOGY, L.L.C. v. GOOGLE, INC. 15
Claim 20 depends on claim 11 and recites requesting
and receiving demographic information in response to a
user request to download software, prior to providing the
user with download access. ’314 patent col. 24, ll. 9–14.
Claims 21–22 recite examining demographic information
for required information before providing a user with
download access, or providing anonymous download
access in exchange for demographically-relatable comput-
er usage information. ’314 patent col. 24, ll. 15–27.
B.E. assigns error to the Board for failing to establish
a motivation to combine Guyot and RFC 1635, arguing
that a person of ordinary skill in the art would not have
considered an FTP protocol in seeking a solution to ob-
taining answers to a user questionnaire. 5 Microsoft
responds that RFC 1635 is analogous art because it was
“reasonably pertinent to the particular problem with
which the inventor is involved.” K-TEC, Inc. v. Vita-Mix
Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012). Microsoft
explains that B.E. misstates the ’314 patent’s field of
invention as “collect[ing] information using a question-
naire” because RFC 1635 is actually from the same field,
i.e., “provid[ing] a user . . . with access to information
resources via the Internet.” Appellee Br. at 65.
We agree with Microsoft. The ’314 patent is not di-
rected to a questionnaire, but to a “Computer Interface
Method and Apparatus with Targeted Advertising.” ’314
patent Title. It provides a “method and apparatus for
providing an automatically upgradeable software applica-
5 We affirm the Board’s finding that claim 15 would
have been obvious based on Guyot and Robinson, which
B.E. does not challenge. Claim 15 depends on claim 11
and recites the use of a cookie to identify a user. We
agree that a person of ordinary skill would have been
motivated to combine Guyot and Robinson to arrive at
claim 15.
16 B.E. TECHNOLOGY, L.L.C. v. GOOGLE, INC.
tion that includes targeted advertising based upon de-
mographics and user interaction with the computer.” ’314
patent Abstract. Claim 20 recites not only requesting and
receiving demographic information, but also accessing
and downloading software. Claim 22 recites anonymous
download access. A person of ordinary skill in the art
would have considered FTP protocols, including RFC
1635, in creating or improving upon a system to access
and download software. B.E. concedes that the FTP
protocol “was designed to make it easy to download soft-
ware and files without having to answer questions.”
Reply. Br. at 22. The Board properly found that a person
of ordinary skill would have been motivated to combine
Guyot with RFC 1635 because he or she would not have
been looking at “questionnaires,” but at methods of input
and output in GUI systems that allow for the access and
download of software between a client computer and a
server. The FTP protocol fits squarely within this field.
Appellee Br. at 65. B.E. makes no separate arguments for
claims 21–22.
Therefore, we affirm the Board’s finding that claims
20–22 would have been obvious in view of Guyot and RFC
1635.
V. B.E.’s Motion to Amend
The Board denied B.E.’s contingent motion to amend,
based on B.E.’s failure to provide a claim construction or
point out with particularity the written description sup-
port for B.E.’s proposed new limitations. B.E. simply used
a string citation to support its proposed substitute limita-
tions, which included “selecting advertising content for
transfer to the computer in accordance with real-time.”
J.A. 1602–03. The Board found that it was unclear
whether the “selecting” or “transfer” was in accordance
with “real-time.” It also found that B.E.’s motion did not
meet B.E.’s burden to establish written description sup-
port under 37 C.F.R. § 42.121(b) (2015), which explained
B.E. TECHNOLOGY, L.L.C. v. GOOGLE, INC. 17
that a “motion to amend claims must . . . set forth: (1) The
support in the original disclosure of the patent for each
claim that is added or amended . . . .”
In reviewing the Board’s interpretation of Patent and
Trademark Office regulations, we apply “the standards
set forth in the Administrative Procedure Act, 5 U.S.C.
§ 706.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292,
1306 (Fed. Cir. 2015). “[W]e set aside actions of the Board
that are arbitrary, capricious, an abuse of discretion, or
otherwise not in accordance with law.” Id. “We accept
the Board’s interpretation of Patent and Trademark
Office regulations unless that interpretation is ‘plainly
erroneous or inconsistent with the regulation.’” Id.
We agree with the Board that B.E. did not meet its
burden to show written description support for the pro-
posed substitute limitations. 6 B.E. argues that had the
Board simply read page 10, lines 1–13 of the original
specification, it would have understood that the “identifi-
ers permit real time, reactively-targeted advertising since
the program can respond to user interaction with the
computer to determine whether the input relates to a
particular category of information, and, if so, can select
advertising related to that category of information.” ’314
patent col. 6, ll. 3–7. But B.E. did not present this argu-
ment to the Board. B.E. only provided a string citation to
eighteen different pages of the ’314 patent’s original
specification, without explaining how those various pages
supported each of the proposed substitute limitations.
B.E. also argues that the Board previously allowed a
patent owner to support a motion to amend using a string
citation in International Flavors & Fragrances Inc. v.
6 B.E. does not challenge the Board’s conclusion
that B.E. bears the burden to show written description
support for the proposed substitute claims.
18 B.E. TECHNOLOGY, L.L.C. v. GOOGLE, INC.
United States, No. IPR2013-00124, 2014 WL 2120542
(P.T.A.B. May 20, 2014). International Flavors, however,
is not controlling, and other Board decisions have found
that such a bare string citation is insufficient to establish
written description support. See Greene’s Energy Grp.,
LLC v. Oil States Energy Services, LLC, No. IPR2014-
00216, 2015 WL 2089371, at *14 (P.T.A.B. May 1, 2015)
(“A string citation does not explain how the original
disclosure of the application relied upon reasonably
conveys to a person the features intended to be encom-
passed by the proposed substitute claims.”); Respironics,
Inc. v. Zoll Med. Corp., No. IPR2013-00322, 2014 WL
4715644, at *13 (P.T.A.B. Sept. 17, 2014) (“Zoll’s string
citations amount to little more than an invitation to us
(and to Respironics, and to the public) to peruse the cited
evidence and piece together a coherent argument for
them. This we will not do; it is the province of advoca-
cy.”), vacated and remanded on other grounds, No. 2015-
1485, 2016 WL 4056094, at *1 (Fed. Cir. July 29, 2016).
We find that the Board did not err in denying B.E.’s
motion to amend. Because B.E. did not meet its burden to
show written description support for its proposed substi-
tute claims, we need not reach the issue of claim construc-
tion. 7
CONCLUSION
For the foregoing reasons, we affirm the Board’s find-
ing that Guyot anticipates claims 11–14 and 16–19 of the
’314 patent. We also affirm its finding that claim 15
would have been obvious in view of Guyot and Robinson,
and that claims 20–22 would have been obvious in view of
Guyot and RFC 1635. Finally, we affirm the Board’s
denial of B.E.’s motion to amend.
7 We also reject B.E.’s complaint of a fifteen-page
limit for motions to amend because B.E. used only thir-
teen pages for its motion.
B.E. TECHNOLOGY, L.L.C. v. GOOGLE, INC. 19
Because we affirm the Board’s finding that claims 11–
22 are unpatentable based on Microsoft’s petition, we
need not resolve B.E.’s appeals relating to Google’s and
Facebook’s parallel petitions and dismiss them as moot.
AFFIRMED-IN-PART, DISMISSED-IN-PART