NOTE: This disposition is nonprecedential.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 Trademark 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 appellant. Also represented by DANIEL J. WEINBERG. 

ANDREW JOHN PINCUS, Mayer Brown LLP, Washington, 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, Washington, 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 final 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); Microsoft 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 Working Group, 1–13 (May 1994) (RFC 1635). Microsoft Written 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 advertising 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 application, 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 computer downloads the client software application, which then 

monitors and reports to the ADM server the user’s activity, 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 demographicallytargeted advertising to a computer user, comprising the steps of:

providing a server that is accessible via a computer network,

permitting a computer user to access said server 

via said computer network,

acquiring demographic information about the user, said demographic information including information specifically provided by the user in 

response to a request for said demographic information,
6 B.E. TECHNOLOGY, L.L.C. v. GOOGLE, INC. 

providing the user with download access to computer software that, when run on a computer, displays 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 computer in response to a download request by the user, 

providing a unique identifier to the computer, 

wherein said identifier uniquely identifies information sent over said computer network from the 

computer to said server, 

associating said unique identifier with demographic information in a database,

selecting advertising content for transfer to the 

computer in accordance with the demographic information associated with said unique identifier;

transferring said advertising content from said 

server to the computer for display by said program,

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 unpatentable 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 information 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 proprietary identifier. Id. at *6–7. The subscriber systems 

periodically access the server to download targeted advertisements based on the server-stored personal profile, 

before displaying the targeted advertisements to the 

subscriber. Id. at *6. The subscriber can select a “connection 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 advertising 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 construction 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 reasonable 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: “demographic information,” “unique identifier,” and “transferring 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 construction 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 “demographic 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 information specifically requested from the user nor exclude 

Internet browsing history because demographic information means “collected information about a subscriber, 

such as Internet sites accessed, and this information does 

not identify the subscriber.” Id. Even though demographic 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 identifier to the computer” and the “identifier uniquely identifies 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 “computer,” 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 information 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 remainder of the claim phrase, “said identifier uniquely 

identifies information sent . . . from the computer,” requires 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 computer.’” Id.

We disagree. B.E. does not appreciate that the remainder 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 “associat[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 designation “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 provided by “any system, process, or entity,” and we affirm the 

Board’s construction of unique identifier. 

The Board construed “transferring a copy of said software 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 “method 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 subscriber data includes the subscriber’s identification information, 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 interpretation of “demographic information” because the statistics

contain collected information about the subscriber, e.g., 

Internet sites accessed, without identifying the subscriber. Id. at *9. Internet sites accessed is a behavior characteristic 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 subscriber’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 information. It is not necessary for Guyot to use the word 

“demographic” to disclose “collected characteristic information 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 information.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 demographically-targeted advertising to a computer user.” Id. 

The Board also rejected B.E.’s position that the limitation, “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 computer. 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, process, 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 identifies 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 advertisements, 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 identifier. 

Finally, the Board rejected B.E.’s position that “transferring 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 arguments 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 “connection 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 ordinary 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 considerations” 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 computer 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 obtaining 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 questionnaire” 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 directed 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 demographics 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 software 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 support for B.E.’s proposed new limitations. B.E. simply used

a string citation to support its proposed substitute limitations, 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 support 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 proposed 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 “identifiers 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 argument 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 encompassed 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 advocacy.”), 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 substitute claims, we need not reach the issue of claim construction.7

CONCLUSION

For the foregoing reasons, we affirm the Board’s finding 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 thirteen 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