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UNITED STATES PATENT AND TRADEMARK OFFICE_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD_______________

GOOGLE INC.Petitioner

v.

BUYSAFE, INC.Patent Owner

_______________

U.S. Patent No. 8,515,791Issue Date: August 20, 2013

Title: METHOD, SYSTEM AND COMPONENTS FOR OBTAINING,EVALUATING AND/OR UTILIZING SELLER, BUYER AND TRANSACTION

DATA

_______________

Covered Business Method Review No. CBM2014-00122

________________________________

PETITION FOR COVERED BUSINESS METHOD REVIEW

UNDER 35 U.S.C. 321 AND 18 OF THE LEAHY-SMITH

AMERICA INVENTS ACT

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

B.

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

C. FEE ................................................................................................................4

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

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

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

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

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

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

1. The 791 Patent Claims Methods Used in the Practice, Administration,or Management of Financial Products or services ............................................ 12

2. At Least Claims 1 and 24 of the 791 Patent are not Directed to aTechnological Invention ................................................................................17

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

A. GROUND 1: CLAIMS 1-27OF THE 791PATENT ARE UNPATENTABLE UNDER35U.S.C.103BASED ON SAMSON IN VIEW OF WODA ......................................... 24

B. GROUND 2: CLAIMS 1-27OF THE 791PATENT ARE UNPATENTABLE UNDER35 U.S.C.103BASED ON OLDHAM IN VIEW OF SCHROEDER AND WODA............. 55

I. INTRODUCTION .............................................................................................1

II. FORMALITIES .............................................................................................4

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

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

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

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

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

VIII. FULL STATEMENT OF THE REASONS FOR THE RELIEF

REQUESTED ......................................................................................................... 24

IX. CONCLUSION ............................................................................................ 80

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LIST OF EXHIBITS

Exhibit No. Description

Exhibit 1001 U.S. Patent No. 8,515,791 (the 791 patent)

Exhibit 1002 SAP America, Inc. v. Versata Development Group, Inc., CBM2012-00001, Paper No. 36, Decision Institution of CoveredBusiness Method Review (January 9, 2013)

Exhibit 1003Congressional Record - Senate, Patent Reform Act of 2011, 157Cong. Rec. S1360-1394 (daily edition, March 8, 2011)

Exhibit 1004Volusion, Inc. v. Versata Software, Inc. and Versata Development

Group, Inc., CBM 2013-00017, Paper No. 8, Decision Institution ofCovered Business Method Review (October 24, 2013)

Exhibit 1005 77 Fed. Reg. 157 (August 14, 2012) 48734-48773

Exhibit 1006

Classification Definitions, Class 705, Data Processing: Financial,

Business Practice, Management, or Cost/Price Determination.January 2012

Exhibit 1007 Prosecution History for U.S. Patent Application No. 12/263,778

Exhibit 1008Complaint for Patent Infringement, buySAFE, Inc. v. Google Inc.,Civil Action No. 3:13-cv-00781-HEH (E.D. Va.)

Exhibit 1009Plaintiff buySAFEs Opening Claim Construction Brief,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)

Exhibit 1015Declaration of Dr. Edward J. Cherian Concerning the Invalidity ofU.S. Patent No. 8,515,791

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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.

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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

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

2Ex. 1007, August 17, 2012 Amendment after Final, amended independent claims

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

3See, e.g.,Ex. 1007, June 11, 2012 Applicant-Initiated Interview Summary;

August 17, 2012 Amendment after Final, and p. 4; and May 30, 2013 Applicant-

Initiated Interview Summary.

4buySAFE, Inc. v. Google Inc., Civil Action No. 1:11-cv-01282-LPS (D. Del.).

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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,5discloses 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

5The 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.

6SeeEx. 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]).

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of prior art asserted by the Examiner during prosecution of the 791 patent to show

a reasonable likelihood of prevailing. Another ground of unpatentability (Ground

1) uses a single prior art primary reference (Samson, Ex. 1012) that was not

before the Examiner during prosecution of the 791 patent in combination with

Woda.

II.

FORMALITIES

A.

REAL PARTY IN INTEREST

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

B.

RELATED MATTERS

The 791 patent has been asserted against Google in buySAFE, Inc. v.

Google Inc., Civil Action No. 3:13-cv-00781-HEH (E.D. Va.). SeeEx. 1008.

C.

FEE

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

C.F.R. 42.15(b). The Office is hereby authorized to charge any further fees that

may be required by this petition to Deposit Account No. 50-1165.

D.

DESIGNATION OF LEAD AND BACKUP COUNSEL

Lead Counsel Back-Up Counsel

Barry S. Goldsmith, Reg. No. 39,690Miles & Stockbridge P.C.1751 Pinnacle Drive, Suite 500Tysons Corner, VA 22102

[email protected]: (703) 610-8680Facsimile: (703) 842-6464

Keith M. Mullervy, Reg. No. 62,382Miles & Stockbridge P.C.1751 Pinnacle Drive, Suite 500Tysons Corner, VA [email protected]: (703) 610-8680Facsimile: (703) 610-8686

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E.

POWER OF ATTORNEY

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

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

F. SERVICE INFORMATION

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

petition, in its entirety, is being served to the address of the attorney or agent of

record. Google may be served at its counsel, Miles & Stockbridge P.C.

III.

OVERVIEW OF THE 791PATENT

A.

SUMMARY OF THE ALLEGED INVENTION OF THE 791PATENT

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

measure consumer-to-customer conversion continuously throughout surfing,

through conversion and past completion of a purchase on-line. Ex. 1001, 5:24-26;

Ex. 1015, 20. As for tracking before and up to the purchase, the 791 patent

discloses that a consumer's click-stream can include an indication of every

website and every page of every website that the consumer visits. Ex. 1001, 4:5-

7; Ex. 1015, 20. However, click-streams consistently end at the time that

payment is tendered for a purchased item. Ex. 1001, 4:4-5; Ex. 1015, 20.

As a mechanism used to facilitate the tracking of post-transaction activity,

the 791 patent discloses a financial product referred to as a Transaction Related

Offering or TRO. Ex. 1001, 4:36; Ex. 1015, 21. The TRO is any product or

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

with a transaction, such as an on-line transaction to purchase products or services,

for at least the purpose of motivating the consumer to purchase products or

services at the present time and/or in the future. Ex. 1001, 4:37-40; Ex. 1015,

21. Examples of a TRO disclosed in the 791 patent include a transaction

performance guaranty, wherein a safe transaction service provider underwrites the

obligations of the product or service provider to reduce risk to the consumer. Ex.

1001, 4:43-46; Ex. 1015, 21. Other examples include free shipping of a

purchased product, a warranty for the product that is not automatically provided by

the manufacturer, preferred or alternative product or service pricing, coupons or

offers for additional products and/or services, etc. Ex. 1001, 4:47-50; Ex. 1015,

21.

The TRO allows for post-transaction tracking of consumer behavior. Ex.

1015, 22. For example, if the TRO is the underwriting of the seller's

obligations, post-transaction activity may include determining whether a claim has

been made by the beneficiary (e.g., the customer), and processing of the claim.

Ex. 1001, 5:1-4; Ex. 1015, 22. Further, code related to the TRO may facilitate

data gathering: TRO related graphic code may also be incorporated with an

applet (e.g., a Java applet) that may be designed to perform certain data gathering

tasks related to the transaction or the TRO. Ex. 1001, 6:55-58; Ex. 1015, 22.

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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-to-

customer 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

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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

7All references to a person of ordinary skill in the art (POSA) refer to the

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

2, 2007 (the earliest priority date of the 791 patent). A POSA would have at least

a bachelor degree in electrical engineering, systems engineering, computer

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B. SUMMARY OF THE PROSECUTION HISTORY OF THE 791PATENT

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

resulted in the 791 patent was filed on November 3, 2008 and claims priority to

U.S. Provisional Application No. 60/985,001 (filed November 2, 2007).

In response to the first Office Action dated August 23, 2011, rejecting all

pending claims based on a primary reference Oldham (Ex. 1013), the applicants

amended all claims and argued that [a]s indicated by the Examiner and his

supervisor, these amendments effectively distinguish the claimed invention from

the asserted prior art because the art fails to teach or suggest monitoring of

consumer following a sales transaction and analyzing that behavior to generate

consumer behavior data. Ex. 1007, November 4, 2011 Amendment, p. 6.

On March 1, 2012, a Final Office Action was issued, again rejecting all

pending claims in the application. Ex. 1007, March 1, 2012 Final Office Action.

In the March 1, 2012 Final Office Action, the Examiner combined prior art

reference Schroeder (Ex. 1014) with Oldham to reject the claims. Schroeder was

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

work experience in the field of Internet technology and computer software for

modeling and managing business or financial activities and e-commerce. Ex.

1015, 14.

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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.

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

Interview Summary stating: Examiner acknowledged the prior examinations of

other examiners and the additional claim limitation regarding the determination of

whether to accept third-party obligations associated with the claim amendments

and barring any further discovery in a search of the prior art, a Notice of

Allowance would issue. Ex. 1007, May 30, 2013 Notice of Allowance, p. 6. The

791 patent was ultimately issued on August 20, 2013.

While prosecuting the 791 patent, buySAFE was asserting U.S. Pat. No.

7,644,019 by Woda et al. (the 019 patent, Ex. 1010) against Google. The 019

patent discloses the identical limitations that caused the 791 patent to be allowed.

Ex. 1015, 31. For instance, during the claim construction phase of the litigation,

buySAFE argued that the 019 patent discloses [d]etermining that it is acceptable

to assume a risk on behalf of [the first party]). SeeEx. 1009, Plaintiff

buySAFEs Opening Claim Construction Brief, dated Aug. 10, 2012, p. 11.

Despite making this argument regarding the 019 patent, a mere one week later

during its prosecution of the 791 patent buySAFE amended its claims to require

nearly identical language (i.e., determining whether it is acceptable to assume

some or all of a third partys obligation in the at least one sales transaction) and

stated that the Examiners agreed that the prior art did not address the underwriting

as recited in some of the claims. Ex. 1007, August 17, 2012 Amendment after

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Final, pp. 2-5, 8. Unfortunately, buySAFE failed to submit both the 019 patent

and its claim construction arguments to those Examiners.

IV.

GROUNDS FOR STANDING

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

The Patent Trial and Appeal Board (PTAB) may institute a transitional

post-grant review proceeding for review of the validity of covered business method

patents. AIA 18(a)(1). A covered business method patent is a patent that

claims a method or corresponding apparatus for performing data processing or

other operations used in the practice, administration, or management of a financial

product or service, except that the term does not include patents for technological

inventions. AIA 18(d)(1) and 37 C.F.R. 42.301(a). As discussed below, the

791 patent has one or more claims that are directed to a covered business method.

Thus, the 791 patent is eligible for covered business method patent review.

1. THE 791PATENT 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

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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).

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

one consumer prior to, during, and subsequent to at least one sales transaction to

generate consumer behavior data, and analyzing the generated consumer behavior

data. Ex. 1001, 20:4-15. Thus, claim 24 requires data processing of consumer

sales data covering financial activity. In addition, the analysis is to determine the

efficacy of a plurality of parameters relating to one or more sales transaction

related offerings. Ex. 1001, 20:13-15. As discussed in the 791 patent

specification, the invention improves management and assessment of the efficacy

of delivery of Transaction Related Offering (TROs). Ex. 1001, 1:15-17. A TRO

refers to any product or service of perceived or actual value that is provided to a

customer in connection with a [sales] transaction. Ex. 1001, 4:36-39 (emphasis

added). Therefore, claim 24 covers subject matter that is financial in nature,

incidental to a financial activity or complementary to a financial activity. Ex.

1002, pp. 21-22.

Claim 1 of the 791 patent is also directed to a method for performing

systematic analysis of consumer behavior data to predict consumer demand. Ex.

1001, 17:56-58. In the claimed method, the at least one sales transaction involves

determining whether it is acceptable to assume some or all of a third partys

obligations in the at least one sales transaction. Ex. 1001, 18:8-11. In other words,

claim 1 relates to underwriting. As noted in the legislative history, practice,

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administration, and management is intended to cover any ancillary activities

related to a financial product or service, including, without limitation, marketing,

customer interfaces, Web site management and functionality, transmission or

management of data, servicing, underwriting, customer communications, and back

office operations - e.g., payment processing, stock clearing. Ex. 1003, S1365

(statement of Sen. Schumer) (emphasis added). Thus, even if the underwriting of

claim 1 could not be considered a financial product in and of itself, it is an

ancillary activity to a financial product or service. Accordingly, the claimed

assumption of third party obligations in a sale transaction clearly falls within the

scope contemplated by AIA 18(d)(1).

Moreover, the method of claim 1 includes monitoring behavior of at least

one consumer prior to, during, and subsequent to at least one sales transaction to

generate consumer behavior data, and analyzing the generated consumer behavior

data to determine efficacy of a plurality of parameters relating to one or more sales

transaction related offerings. Ex. 1001, 17:59-18:2. Thus, similar to claim 24,

claim 1 involves data processing of consumer sales data covering financial activity

and covers subject matter that is financial in nature, incidental to financial activity

or complementary to a financial activity.

Claim 1 therefore recites a method directed to data processing used in the

practice, administration, or management of a financial product or service, and thus

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falls within the definition of a covered business method. Claims 2-11, 23 and 26-

27 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.

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

DIRECTED TO A TECHNOLOGICAL INVENTION

One or more of the claims of the 791 patent are also not directed to a

technological invention. See AIA 18(d)(1). The PTAB rules provide the

following definition of technological invention:

(b) Technological invention. In determining whether a patent is

for a technological invention , the following will be considered on

a case-by-case basis: whether the claimed subject matter as a whole

recites a technological feature that is novel and unobvious over the

prior art; and solves a technical problem using a technical solution.

37 C.F.R. 42.301(b).

The presence of a single claim that is not directed to a technological invention is

sufficient to institute a CBM review. See Ex. 1002, p. 26.

The PTAB Office Trial Practice Guide provides guidance with respect to

claim content that would not render a patent a technological invention as follows:

(a) Mere recitation of known technologies, such as computer

hardware, communication or computer networks, software, memory,

computer readable storage medium, scanners, display devices, or

databases, or specialized machines, such as ATM or point of sale

device.(b) Reciting the use of known prior art technology to accomplish

a process or method, even if the process or method is novel and non-

obvious.

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(c) Combining prior art structures to achieve the normal,

expected or predictable result of that combination.

Ex. 1005, 48763-64.

Thus, a technological invention is one that has both (1) a novel, unobvious

technological feature and (2) a technical solution to a technical problem. In this

context, it is apparent that the 791 patent cannot qualify as a technological

innovation.

At least claims 1 and 24 of the 791 patent lack a novel and unobvious

technological feature. Those claims are each directed to a method of performing

systematic analysis of consumer behavior to predict consumer demand, wherein

consumer behavior is monitored and analyzed to determine efficacy of a sales

transaction related offering. Ex. 1001, 17:56-18:2, 19:34-47, 20:1-15; 20:29-43.

While the claims discuss monitoring by at least one server coupled to at least one

communication network and analyzing at at least one server coupled to the least

one communication network, these recitations merely define the context of the

method. See id. The alleged novelty of the 791 patent is in the performance of

the method, i.e., analyzing consumer behavior and determining efficacy of

parameters relating to a transaction related offering, and not in any particular

hardware or software employed.

Indeed, the claims do not require, nor have the inventors proposed, any

novel computer software or hardware to achieve the claimed methods. Ex. 1015,

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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,

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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,

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2012 Amendment after Final, p. 2. Similar features were also recited in claims 12,

23 and 26. Ex. 1001, 18:66-19:2, 19:53-57, 20:49-53. Claim 24 recites a similar

feature of the at least one sales transaction includes a transaction performance

guaranty service for some or all of one partys obligations in the at least one sales

transaction. Ex. 1001, 20:21-24. Yet these features that supposedly distinguished

over the prior art of record are not technical solutions to technical problems.

Rather, these features merely recite determining or including a performance

guaranty service associated with a sales transaction, which may be performed by a

human intermediary. Accordingly, the claims of the 791 patent fail to provide a

technical solution to a technical problem. Ex. 1015, 43.

For at least the foregoing reasons, at least claims 1, 12, 23, 24 and 26 of the

791 patent are not directed to a technological invention.

B.

GOOGLE IS ELIGIBLE TO FILE THIS PETITION

The 791 patent has been asserted against Google in buySAFE, Inc. v.

Google Inc., No. 3:13-cv-00781 (E.D. Va.). SeeEx. 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 post-

grant review of the challenged claims. Google is thus eligible under 37 C.F.R.

42.302 to file this petition.

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In addition, a petition for post grant review of the 791 patent is not available

because the 791 patent is not subject to the first inventor-to-file provisions, so the

filing of this petition is not precluded.

V. STATEMENT OF RELIEF REQUESTED

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

the 791 patent based on the following grounds of unpatentability:

Ground Claims Description

1 1-27 Invalid under 35 U.S.C. 103 as being obvious

based on Samson in view of Woda

2 1-27 Invalid under 35 U.S.C. 103 as being obvious

based on Oldham in view of Schroeder and Woda

VI.

IDENTIFICATIONOFPRIORARTRELIEDUPON

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

Exhibit 1012 U.S. Patent No. 7,228,287 (Samson)

Exhibit 1013 U.S. Patent Publication No. 2008/0013887 (Oldham)

Exhibit 1014 U.S. Patent Publication No. 2003/0130883 (Schroeder)

VII. CLAIM CONSTRUCTION

In covered business method reviews, claim terms are interpreted under the

broadest reasonable construction in light of the specification of the patent in

which it appears standard. 37 C.F.R. 42.300(b). In compliance with 37 C.F.R.

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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

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

Ex. 1001, 11:23-28; 13:58-62; Ex. 1015, 50.

Sales transaction related offering: Under the broadest reasonable

interpretation, this term should mean any product or service of perceived or actual

value that is provided to a consumer in connection with a sales transaction for at

least the purpose of motivating the consumer to purchase products or services. Ex.

1001, 4:35-43; Ex. 1015, 51.

Transaction performance guaranty: Under the broadest reasonable

interpretation, this term should meanpromise to assume one or more obligations of

a party to a sales transaction. Ex. 1001, 4:42-46, 20:22-24; Ex. 1007, August 17,

2012 Amendment after Final; Ex. 1015, 52.

Shared object: Under the broadest reasonable interpretation, this term

should mean the same as cookie. Ex. 1001, 7:50-52 (A Flash shared object

(also referred to merely as a shared object or local shared-object, is essentially a

Flash implemented cookie.); Ex. 1015, 53.

VIII.FULL STATEMENT OF THE REASONS FOR THE RELIEF REQUESTED

A.

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

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

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

buySAFE's 019 patent, discloses each and every claim element of claims 1-27 of

the 791 patent. Ex. 1015, 54.

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1. OVERVIEW OF SAMSON (EX.1012)

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

November 13, 2000 and issued on June 5, 2007. Samson is available as prior art at

least under 35 U.S.C. 102(a). Samson was not cited during prosecution of the

791 patent.

Samson discloses that an incentive system 20 is incorporated to an overall

product sales system with a data provider system 10 and a product supplier system

30. Ex. 1012, 3:28-30; Fig. 2; Ex. 1015, 56. As a consumer bids on items

through the Internet, the consumer's browsing behavior 3, bidding behavior 4,

and other data 5 is recorded and sent to system 20. Ex. 1012, 3:56-4:9; Fig. 2; Ex.

1015, 56. System 20 records this received data for all bidders, including

browsing behavior 11, bidding and behavior values 12, personal computer

information 13, such as an Internet service provider and modem speed, and

transaction history 14. Ex. 1012, 4:19-24; Fig. 2; Ex. 1015, 57. The

information received by system 20 in connection with all bidders is used to create

a consumer profile 16. Ex. 1012, 4:44-45; Fig. 2; Ex. 1015, 57.

Samson discloses that consumer profile 16 includes the behavior of bidders

priortoand duringsales transactions: the browsing behavior 11 has click

stream information, which includes other components of the auction site that were

visited by the consumer, number of pages visited, time spent on each page during

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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 subsequentto 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, 4:30-

40; Fig. 2; Ex. 1015, 59. For example, a POSA would understand that a coupon

would be redeemed after/subsequentthe 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

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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

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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

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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/subsequentthe 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 full-

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retail price of an item, where the higher the final bid, the less of an incentive a

consumer will receive), and zip code driven demographics (higher level annual

income zip-codes will receive less of a discount than lower annual income zip

codes). Ex. 1012, 7:10-18; Ex. 1015, 70. Therefore, a POSA would understand

that Samson discloses the impact of a plurality of attributes/parameters on the

incentives. Ex. 1015, 70.

Samson further discloses that there are many different incentive and award

programs to influence consumers to purchase on-line. Ex. 1012, 1:56-57; Ex.

1015, 71. As discussed, Samson discloses that one of the incentives may be

more warranty. Ex. 1012, 6:21-22; Ex. 1015, 78. Arguably, an additional

warranty may not be considered a disclosure of the limitations of assume some or

all of a third partys obligations, recited in claims 1-23 of the 791 patent, a

transaction performance guaranty, recited in claims 24 and 25 of the 791 patent,

or assume one or more obligations of a party that provides a product or a service,

recited in claims 26 and 27; Ex. 1015, 79. Regardless, Samson discloses that the

incentives may be any other type of offer. Ex. 1012, 8:50-53; Ex. 1015, 79.

2.

OVERVIEW OF WODA (EX.1011)

U.S. Patent Pub. No. 2004/0210527 to Woda et al. (Woda) (Ex. 1011) was

filed on April 21, 2003, was published on October 21, 2004, and issued as the 019

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

prior art at least under 35 U.S.C. 102(b).

As discussed above, Woda and the 019 patent have some common

inventors (i.e., Woda and Grass), and have a common assignee (i.e., buySAFE)

with the 791 patent. However, neither Woda or the 019 patent was cited during

prosecution of the 791 patent, despite buySAFE's amendments adding language

based on the 019 patent to the claims of the 791 patent.

Woda discloses that Fig. 1 depicts a framework 100 in which a safe

transaction service provider provides a transaction performance guarantyfor a

transaction involving a party who obtains the safe transaction service through an

underwriting process, according to one embodiment of the inventions. Ex. 1011,

[0031] (emphasis added); Ex. 1015, 83. The transaction performance guaranty

service, which may be obtained for a fee, provides a separate performance

guaranty on behalf of its subscriber for each transaction involving the subscriber.

Ex. 1011, [0033]; Ex. 1015, 83.

Examples of the transaction performance guarantee disclosed in Woda

include a surety bond 220, a specialized bank guaranty 230, . . . , a specialized

insurance policy 240, or in a form of a safe transaction guaranty 250. Ex. 1011,

[0035]; Ex. 1015, 84. The safe transaction service provider 130 may provide its

own guaranty in the form of, for instance, the surety bond 220 and the safe

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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

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

service applicant. Ex. 1011, [0048]; Ex. 1015, 86.

Therefore, a POSA would understand that Woda discloses determining

whether it is acceptable to assume some or all of a third party's obligations in the at

least one sales transaction (as recited in independent claims 1, 12 and 23 of the

791 patent), wherein the at least one sales transaction includes a transaction

performance guaranty service for some or all of one party's obligations in the at

least one sales transaction (as recited in independent claim 24 of the 791 patent),

and determines whether it is acceptable to assume one or more obligations of a

party that provides a product or a service associated with the one or more sales

transaction related offerings (as recited in independent claim 26 of the 791

patent). Ex. 1015, 87.

During the litigation involving Woda/the 019 patent, buySAFE has agreed

with the above description of the disclosure of Woda.8 Specifically, buySAFE

argued that the 019 patent discloses [d]etermining that it is acceptable to assume

a risk on behalf of [the first party]). Ex. 1009, p. 11.

3.

APOSA WOULD BE MOTIVATED TO COMBINE SAMSON AND

WODA

8buySAFE, Inc. v. Google Inc., Civil Action No. 1:11-cv-01282-LPS (D. Del.).

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A POSA would combine Samson and Woda based on multiple rationale

described inKSR International Co. v. Teleflex Inc.,550 U.S. 398, 82 USPQ2d

1385 (2007) ("KSRrationale"). Ex. 1015, 90. Samson and Woda are analogous

art as they are both directed to conducting transactions over the Internet between

customers and sellers, and are both directed to providing incentives to customers

during the purchasing process. Further, both Samson and Woda are directed to

transactions using online auctions. See, e.g.,Ex. 1012, 3:56-4:9; 8:39-40; Ex.

1011, [0033], [0053]; Ex. 1015, 91. Samson discloses a list of possible

incentives that can be used, and discloses that any other type of offer can be used

as an incentive. Ex. 1012, 8:50-53; Ex. 1015, 92. A POSA, when implementing

a system described in Samson, and having knowledge of Woda, would be

motivated to include the additional incentive disclosed in Woda in order to include

more incentives and facilitate more transactions. Ex. 1015, 92. The addition of

the transaction performance guaranty of Woda into Samson, which already

discloses a warranty, would operate in a predictable manner to facilitate the

transactions and can be combined using known methods. Ex. 1015, 93. A POSA

would further consider the substitution of the transaction performance guaranty

of Woda as one of the incentives of Samson as a simple substitution of one known

element for another to obtain predictable results. Ex. 1015, 94.

4.

CLAIM CHARTS FOR SAMSON +WODA

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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 Samson + Woda1. [a] A method forperforming systematicanalysis of consumer

behavior data to predictconsumer demand viaan on-line environment,the method comprising:

Samson discloses a system 20 that creates a customer profile16 and a learning model for creating incentives used toinduce purchasing of products by consumers (i.e., analysisof consumer behavior data to predict demand) (Ex. 1015,

56-57):

As shown in FIG. 1, the method, or incentive system20, includes creating a consumer profile 16 for at leastone consumer, choosing at least one unsold item, or

product to offer, 17 from an inventory based on theinformation in the consumer profile, generating, orcalculating, an incentive for the chosen unsold item 24

based on the consumer profile, and offering thechosen unsold item and the incentive to the consumer25 to induce purchasing of the chosen unsolditem. Ex. 1012, 3:17-25; Fig. 1 (emphasis added).The learning model will also determine the productsthat meet the criteria of both the product consideration

set and the seller's inventory position 36. The learningmodel calculates incentives for products determinedto be part of an individual consumer's productconsideration set. The product consideration set may

be constrained in two ways. First, the set may beconstrained by the available inventory from theseller's or retailer's shelves. Second, the set may bechosen based on the behavior of the individualconsumers. Ex. 1012, 7:60-8:1.

[b] monitoring behaviorof at least one consumerin the on-lineenvironment by at leastone server coupled to atleast onecommunication network

Samson discloses that system 20 monitors the behavior of theconsumers for an online auction prior to and during a salestransaction (Ex. 1015, 58):

In the preferred embodiment, as the consumer exploresthe site and places bids on auction items, the auctionhouse records the consumer's browsing behavior 3,

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included in the on-lineenvironment prior to,during and subsequentto at least one sales

transaction performedin the on-lineenvironment to generateconsumer behaviordata; and

bidding behavior 4, and other data 5. The browsingbehavior 3 may include the auction items the consumerhas considered and the bidding behavior 4 may includestart bids and bid frequency. The other data 5 may

include information about the consumer's personalcomputer, such as Internet service provider and modemspeed. The recorded information is stored in a data file 6

by the auction house. The auction house continuouslymonitors all bidders and records their behavior, while theauction is still open or there is still time remaining 7,specified by yes 7a. When there is no time remaining 7,specified by no 8a, the auction is closed 8 and the datafile 6 is then sent 9 to the incentive system 20. Ex.1012, 3:56 4:9; Fig. 2.

The sent data received by the incentive system 20,preferably, has price-sensitivity indicators for all bidders,including browsing behavior 11, bidding and behaviorvalues 12, personal computer information 13, such as anInternet service provider and modem speed, andtransaction history 14. Preferably, the browsing behavior11 has click stream information, which includes othercomponents of the auction site that were visited by the

consumer, number of pages visited, time spent on eachpage during each visit per each auction, number ofauctions visited/participated, and frequency of revisitingauctions. Ex. 1012, 4:19-30; Fig. 2.

Samson discloses updating the consumer profile (i.e.,consumer behavior) afteran incentive is redeemed (i.e.,subsequent to at least one sales transaction). Some orall of the incentives disclosed in Samson are redeemedsubsequent to sales transactions (Ex. 1015, 59, 60):

If, however, the consumer chooses to select theincentive, specified by yes 29, the consumer profilewill be updated 50 with information that the incentivewas redeemed and the redemption will be processed52. The redemption information is then used todetermine how accurate the learning model is

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performing. For example, if approximately 50% of theconsumers in a classification expected to act on anincentive do not, the learning model may then split theclassification into two other and/or new

classifications. Ex. 1012, 9:12-20; Fig. 2.

The incentive options 37 include additionalpercentage or specified amount discounts frommanufacturers to help the seller or retailer move theinventory, such as where the retailer gives anadditional 5% incentive on all Model 1234 goods orservices moved out of inventory, and free add-ons,such as more warranty or free or otherwise discountedadditional goods or services. Ex. 1012, 6:16-22; Fig.

2.

The incentives may also be in the form of a coupon,discount, rebate, additional product, reward, or anyother type of offer. Ex. 1012, 8:50-53.

Samson further discloses that the learning model ofconsumer behavior generates data subsequent to salestransactions (Ex. 1015, 61, 67, 68):

The learning model is constantly monitored andupdated to improve accuracy. When the system 20 isturned on at Day 0, it has minimal information onwhich to base incentive generation decisions. As timegoes by and redemption data is accumulated,statistics will be used in the learning model todetermine what information, or attributes, add to theability to accurately produce incentives and whichattributes do not add value. Ex. 1012, 6:49-56

(emphasis added).

In the preferred embodiment, the redemption rate isamong the primary indicators monitored and updatedin order to improve the accuracy of the attributes, ofthe data, and their weightings in the learning model.Ex. 1012, 6:59-63.

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[c] analyzing thegenerated consumer

behavior data at at leastone server coupled to

the at least onecommunication networkincluded in the on-lineenvironment todetermine efficacy of a

plurality of parametersrelating to one or moresales transaction relatedofferings,

Samson discloses that incentives such as a coupon,discount, or more warranty are offered as part of thesales transaction (i.e., sales transaction relatedofferings) (Ex. 1015, 61):

The incentive may be a general incentive for anyproduct or a specific incentive for a specific product.In addition, the notification may contain one or moreincentives offered at the same time to the sameconsumer. These incentives may be based on a retail

price of the auction item or an unsuccessful bid,which is less than a lowest successful bid in theauction. The incentives may also be in the form of acoupon, discount, rebate, additional product, reward,

or any other type of offer. Ex. 1012, 8:50-52; Fig. 2.

Incentives include free add-ons, such as morewarranty or free or otherwise discounted additionalgoods or services. Ex. 1012, 6:16-22.

In connection with the incentives, Samson discloses thatincentive options 37 (i.e., a plurality of parameters)are determined, such as the amount of a discount to offer

for a discount incentive (Ex. 1015, 62, 63, 64):

The incentive options 37 include additionalpercentage or specified amount discounts frommanufacturers to help the seller or retailer move theinventory, such as where the retailer gives anadditional 5% incentive on all Model 1234 goods orservices moved out of inventory, and free add-ons,such as more warranty or free or otherwise discountedadditional goods or services. Ex. 1012, 6:16-28.

When the consumer profile is classified 18, theunsold item from inventory is chosen 17, and theseller's inventory position 36 and incentive options 37are determined, the system 20 will generate incentives24 using a learning model. Ex. 1012, 6:40-44.

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Samson discloses that attributes within the consumerprofile (i.e., consumer behavior data) are analyzed todetermine the impact (i.e., efficacy) of incentives andincentive options (i.e., plurality of parameters related

to sales transaction related offerings), includingredemption rates, intensity, competitiveness, etc. (Ex.1015, 70):

The learning model is constantly monitored andupdated to improve accuracy. When the system 20 isturned on at Day 0, it has minimal information onwhich to base incentive generation decisions. As timegoes by and redemption data is accumulated, statisticswill be used in the learning model to determine what

information, or attributes, add to the ability toaccurately produce incentives and which attributes donot add value. . . Over time, it is possible to moreaccurately understand how important eachattribute is in computing the proper incentive. Inthe preferred embodiment, the redemption rate isamong the primary indicators monitored and updatedin order to improve the accuracy of the attributes, ofthe data, and their weightings in the learning model.

. . . .

Preferred attributes includeintensity (how often theconsumer bid, checked on the current bid price,viewed the website in general), competitiveness (if theconsumer responded each and every time he or shewas outbid), final bid-price (as a percentage or full-retail price of an item, where the higher the final bid,the less of an incentive a consumer will receive), andzip code driven demographics (higher level annual

income zip-codes will receive less of a discount thanlower annual income zip codes). Ex. 1012, 6:49-7:18 (emphasis added).

Samson discloses that redemption rates (i.e., consumerbehavior data) are analyzed to determine the accuracy(i.e., efficacy) of the learning model (Ex. 1015, 67,

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74):

The redemption information is then used todetermine how accurate the learning model is

performing. For example, if approximately 50% ofthe consumers in a classification expected to act on anincentive do not, the learning model may then split theclassification into two other and/or newclassifications. Ex. 1012, 9:15-20 (emphasis added).

[d] wherein themonitoring consumer

behavior is performedpast completion of theat least one sales

transaction performedin the on-lineenvironment and theanalyzing is performed

based on consumerbehavior data generatedbased on monitoredbehavior occurring afterthe at least one sales

transaction,

Samson discloses updating the consumer profile (i.e.,consumer behavior) afterincentives, such as coupons, areredeemed (i.e., after the at least one sales transaction)(Ex. 1015, 59, 60, 65, 67-70):

Preferably, the bidding and behavior values 12includes bidding history, start bid, bid frequency, bidincrement, final bid, winning bid, target product,coupon redemption rate, and keywords used inauction searches. Ex. 1012, 4:30-34.

If, however, the consumer chooses to select theincentive, specified by yes 29, the consumer profilewill be updated 50 with information that the incentive

was redeemed and the redemption will be processed52. The redemption information is then used todetermine how accurate the learning model is

performing. For example, if approximately 50% of theconsumers in a classification expected to act on anincentive do not, the learning model may then split theclassification into two other and/or newclassifications. Ex. 1012, 9:12-20.

In the preferred embodiment, the redemption rate is

among the primary indicators monitored and updatedin order to improve the accuracy of the attributes, ofthe data, and their weightings in the learning model.Ex. 1012, 6:59-63.

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[e] wherein the at leastone sales transactioninvolves determiningwhether it is acceptable

to assume some or all ofa third party'sobligations in the atleast one salestransaction.

Samson discloses that the incentive is determined andgenerated by the seller and provided for a specific salestransaction to a specific consumer (Ex. 1015, 65):

When an incentive is generated 24, or created, thesystem 20 will then offer the incentive 25 to theconsumer. In the preferred embodiment, an incentivenotification is created and sent to the consumer. Theincentive notification may be in the form of e-mail orany other type of delivery. The incentive may be ageneral incentive for any product or a specificincentive for a specific product. In addition, thenotification may contain one or more incentivesoffered at the same time to the same consumer. Ex.

1012, 8:38-47.

Samson discloses that the incentive can include morewarranty. Ex. 1012, 6:21-22 (i.e., assume anobligation)

A POSA would recognize that more warranty is anincentive offered to the consumer that involves assuminga third partys obligation. Ex. 1015, 78.

Woda discloses a transaction performance guarantyused to underwrite a sales transaction (i.e., assume someor all of a third party's obligations, as understood by aPOSA and as argued by buySAFE during the litigationclaim construction phase of the 019 patent) as a type ofincentive that can be included by system 20 of Samson(Ex. 1015, 83):

FIG. 1 depicts a framework 100 in which a safe

transaction service provider provides a transactionperformance guaranty for a transaction involving aparty who obtains the safe transaction service throughan underwriting process, according to oneembodiment of the inventions. Ex. 1011, [0031].

The underwriter 140 may communicate with

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different entities to gather relevant information inorder to make a qualification decision about eachservice applicant. It may gather credit informationfrom different credit agencies 150. It may also collect,

either internally or externally, ratings of a merchantfrom various rating information sources 160. Ex.1011, [0048].

791 Patent Claims Samson + Woda

2. The method of claim1, wherein themonitoring consumer

behavior is performedcontinuously from the at

least one consumer'sfirst exposure to the on-line environment.

Samson discloses the continuous monitoring of biddersbehavior from the initial exposure (Ex. 1015, 72):

In the preferred embodiment, as the consumerexplores the site and places bids on auction items, the

auction house records the consumer's browsingbehavior 3, bidding behavior 4, and other data 5. Thebrowsing behavior 3 may include the auction itemsthe consumer has considered and the bidding behavior4 may include start bids and bid frequency. . . Theauction house continuouslymonitors all bidders andrecords their behavior . . . Ex. 1012, 3:61 4:6; Fig.2.


3. The method of claim1, wherein theconsumer behavior dataindicates details

pertaining to aconversion of the atleast one consumer to acustomer in the on-lineenvironment.

Samson discloses the monitored behavior data includesdetails of successful bids (i.e., a conversion) (Ex. 1015,

73):

Preferably, the bidding and behavior values 12 alsocontain whether the consumer's bid was a successful

bid, which is the winning bid, or an unsuccessful bid.Ex. 1012, 4:38-40.


4. The method of claim3, wherein theconsumer behavior dataindicates whether the atleast one consumer

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

If, however, the consumer chooses to select the

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accepted one or moretransaction relatedofferings in connectionwith the at least one

sales transaction.

incentive, specified by yes 29, the consumer profilewill be updated 50 with information that theincentive was redeemedand the redemption will be

processed 52. The redemption information is then

used to determine how accurate the learning model isperforming. For example, if approximately 50% of theconsumers in a classification expected to act on anincentive do not, the learning model may then split theclassification into two other and/or newclassifications. Ex. 1012, 9:12-20 (emphasis added).


5. The method of claim1, wherein the

consumer behavior dataindicates whether the atleast one consumeraccepted one or moresales transaction relatedofferings.

Samson discloses updating the consumer profile (i.e.,consumer behavior data) regarding whether incentives

are redeemed (Ex. 1015, 74):

If, however, the consumer chooses to select theincentive, specified by yes 29, the consumer profilewill be updated 50 with information that theincentive was redeemedand the redemption will be

processed 52. The redemption information is thenused to determine how accurate the learning model is

performing. For example, if approximately 50% of theconsumers in a classification expected to act on an

incentive do not, the learning model may then split theclassification into two other and/or newclassifications. Ex. 1012, 9:12-20; Fig. 2 (emphasisadded).


6. The method of claim1, further comprising:identifying consumer

behavior data from atleast two differentsources to identifyconsumer behavior datathat pertains to a sameconsumer; andcorrelating the

Samson discloses identifying consumer behavior datafrom at least two different sources (e.g., browsing

behavior 11, personal computer information 13, couponredemption and demographics) and correlating the data toform consumer profile 16 (Ex. 1015, 75):

Preferably, the browsing behavior 11 has clickstream information, which includes other componentsof the auction site that were visited by the consumer,number of pages visited, time spent on each page

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consumer behavior datapertaining to the sameconsumer.

during each visit per each auction, number of auctionsvisited/participated, and frequency of revisitingauctions. Preferably, the bidding and behavior values12 include bidding history target product, coupon

redemption rates . . . . The personal computerinformation 13 includes Internet service provider,referring URL link, web browser make and model,operating system, bookmarks, zip code, accesslocation (work or home) and credit card type.Demographics, psychographics, market conditions,and any other relevant information from otherdatabases 15 or any other relevant informationidentified through contact with the consumer may also

be recorded. From this information 11, 12, 13, 14 and

15, the system 20 creates a consumer profile 16. Ex.1012, 4:24-45; Fig. 2.


7. The method of claim6, further comprisingdeleting redundant datain the consumer

behavior data pertainingto the same consumer.

Samson discloses storing consumer behavior data in adatabase. See e.g.,Ex. 1012, 4:46-59; Fig. 2; Ex. 1015,

76.

A POSA would recognize that a database would includea database management system that deletes redundant

data. Ex. 1015, 76.


8. The method of claim6, wherein the at leasttwo different sourcesinclude seller reporteddata and a consumer

behavior trackingmechanism.

Seeclaim 6 above. At least two different sourcesinclude click stream information (i.e., a consumer

behavior tracking mechanism) and whether incentivesare redeemed (i.e., seller reported data) Ex. 1015, 77.

A POSA would recognize that browsing behavior 11 andpersonal computer information 13 are collected byknown tracking mechanisms at the time of the filing ofSamson, such as cookies and shared objects. Ex. 1015, 77.


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9. The method of claim8, wherein theconsumer behaviortracking mechanism is a

shared object.

The two sources disclosed by Samson, described abovefor claim 6, include click stream information (i.e., acookie or a consumer behavior tracking mechanismthat is a shared object).

A POSA would recognized that browsing behavior 11and personal computer information 13 are collected byknown tracking mechanisms at the time of the filing ofSamson, such as cookies and shared objects. Ex. 1015, 77.


10. The method ofclaim 8, wherein the

consumer behaviortracking mechanism is acookie.

Seeclaim 6 and 8 above.

A POSA would recognized that browsing behavior 11and personal computer information 13 are collected byknown tracking mechanisms at the time of the filing ofSamson, such as cookies and shared objects. Ex. 1015, 77.


11. The method ofclaim 8, wherein the atleast two different

sources include codeprovided in the on-lineenvironment providedin connection with theat least one salestransaction relatedoffering, the code beingexecuted to monitor andrecord consumer

behavior.

Seeclaim 6 above.

A POSA would recognize that browsing behavior 11 and

personal computer information 13 are collected byknown tracking mechanisms that include code providedin the on-line environment. Ex. 1015, 77.


12. A method forreorganizing of memoryspace, by deallocatingredundant, obsolete, orunreferenced database

This preamble should be given no patentable weight.

Further, Samson discloses that the customer profile isstored in a database. A POSA would understand that aknown database would include a database management

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and file information, inorder to increase theefficiency of memoryspace usage, the method

comprising:

system and would be organized as recited in claim 12,including deallocating redundant data (Ex. 1015, 76):

In creating an updated consumer profile 16b, which

includes a classification, the initial consumer profile iscompared with existing consumer classifications 19,or index of consumer behavior indicators, in adatabase of the system 20. Ex. 1012, 4:52-55; Fig. 2.

analyzing, at at leastone server coupled to atleast onecommunication networkincluded in an on-lineenvironment, consumer

behavior data generatedprior to, during andsubsequent to at leastone sales transaction

performed in the on-lineenvironment;

SeeClaim 1[b] above.

identifying consumerbehavior data from atleast two different

sources to identifyconsumer behavior datathat pertains to a sameconsumer; andcorrelating theconsumer behavior data

pertaining to the sameconsumer for use in atleast one salestransaction related

offering,

SeeClaim 6 above.

wherein the consumerbehavior data isgenerated based on

behavior of the sameconsumer past

SeeClaim 1[d] above.

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completion of the atleast one salestransaction performedin the on-line

environment and theanalyzing is performedbased on consumerbehavior data generatedbased on monitoredbehavior occurring afterthe at least one salestransaction,

wherein the at least onesales transaction

involves determiningwhether it is acceptableto assume some or all ofa third party'sobligations in the atleast one salestransaction.

SeeClaim 1[e] above.


13. The method of claim 12, further comprisingdeleting redundant data in the consumer behaviordata pertaining to the same consumer.

SeeClaim 7 above


14. The method of claim 12, wherein the at leasttwo different sources include seller reported dataand a consumer behavior tracking mechanism.

SeeClaim 8 above.


15. The method of claim 14, wherein theconsumer behavior tracking mechanism is ashared object.

SeeClaim 9 above.


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16. The method of claim 14, wherein theconsumer behavior tracking mechanism is acookie.

SeeClaim 10 above.


17. The method of claim 14, wherein the at leasttwo different sources includes code provided inthe on-line environment provided in connectionwith the at least one sales transaction relatedoffering, the code being executed to monitor andrecord consumer behavior.

SeeClaim 11 above.


18. The method of claim 12, wherein the

consumer behavior is generated continuouslyfrom the at least one consumer's first exposure tothe on-line environment.

SeeClaim 2 above.


19. The method ofclaim 12, wherein theconsumer behavior isgenerated continuously

past completion of the

at least one salestransaction performedin the on-lineenvironment.

Samson discloses that the learning model of consumerbehavior continuously generates data after redemptiondata is accumulated (i.e., past completion) of salestransactions (Ex. 1015, 69):

The learning model is constantly monitored andupdated to improve accuracy. When the system 20 isturned on at Day 0, it has minimal information onwhich to base incentive generation decisions. As timegoes by and redemption data is accumulated,statistics will be used in the learning model todetermine what information, or attributes, add to theability to accurately produce incentives and whichattributes do not add value. Ex. 1012, 6:49-56(emphasis added).


20. The method of claim 12, wherein theconsumer behavior data indicates whether theconsumer accepted one or more sales transactionrelated offerings.

SeeClaim 5 above.

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21. The method of claim 12, wherein theconsumer behavior data indicates details

pertaining to a conversion of the at least one

consumer to a customer in the on-lineenvironment.

SeeClaim 3 above.


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

SeeClaim 4 above.

791 Patent Claims Samson + Woda23. A method for performing systematic analysisof consumer behavior data to predict consumerdemand via an on-line environment, the methodcomprising:

SeeClaim 1[a] above.

monitoring behavior of at least one consumer inthe on-line environment by at least one servercoupled to at least one communication networkincluded in the on-line environment prior to,during and subsequent to at least one salestransaction performed in the on-line environmentto generate consumer behavior data; and


analyzing the generated consumer behavior dataat at least one server coupled to the at least onecommunication network included in the on-lineenvironment to determine efficacy of a pluralityof parameters relating to one or more salestransaction related offerings,

SeeClaim 1[c] above.

wherein the monitoring consumer behavior isperformed past completion of the at least onesales transaction performed in the on-lineenvironment and the analyzing is performed

based on consumer behavior data generated basedon monitored behavior occurring after the at leastone sales transaction,


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wherein the at least one sales transaction involvesdetermining whether it is acceptable to assumesome or all of a third party's obligations in the atleast one sales transaction.

SeeClaim 1[e] above.

791 Patent Claims Samson + Woda24. A method for

performing systematicanalysis of consumer

behavior data to predictconsumer demand viaan on-line environment,the method comprising:

SeeClaim 1[a] above.

monitoring behavior of

at least one consumer inthe on-line environment

by at least one servercoupled to at least onecommunication networkincluded in the on-lineenvironment prior to,during and subsequentto at least one salestransaction performedin the on-lineenvironment to generateconsumer behaviordata; and


analyzing the generatedconsumer behavior dataat at least one servercoupled to the at leastone communication

network included in theon-line environment todetermine efficacy of a

plurality of parametersrelating to one or moresales transaction relatedofferings,

SeeClaim 1[c] above.

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wherein the monitoringbehavior is performedpast completion of theat least one sales

transaction performedin the on-lineenvironment, and theanalyzing is performed

based on consumerbehavior data generatedbased on monitoredbehavior occurring afterthe at least one salestransaction,


wherein the at least onesales transactionincludes a transaction

performance guarantyservice for some or allof one party'sobligations in the atleast one salestransaction.

Samson discloses that the incentive is included for salestransactions (Ex. 1015, 65):

When an incentive is generated 24, or created, thesystem 20 will then offer the incentive 25 to theconsumer. In the preferred embodiment, an incentivenotification is created and sent to the consumer. Theincentive notification may be in the form of e-mail orany other type of delivery. The incentive may be a

general incentive for any product or a specificincentive for a specific pro

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