PTAB

CBM2014-00019

American Express Co v. MeTASearch Systems LLC

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Metasearching A Client's Request For Displaying At Least One List Comprising At Least One Advertisement On The Client
  • Brief Description: The ’091 patent describes a metasearch engine that receives a keyword query from a client, sends it to multiple server devices, and incorporates the received search results and at least one keyword-associated advertisement into a display list that is returned to the client.

3. Grounds for Unpatentability

Ground 1: Patent Ineligibility under 35 U.S.C. §101 - All Challenged Claims are directed to an abstract idea.

  • Core Argument for this Ground: Petitioner argued that all challenged claims are directed to the abstract business idea of marketing on a metasearch website using keyword-phrase triggered advertisements. This practice, Petitioner contended, was a well-known marketing method implemented on generic computer hardware long before the patent’s priority date.
    • The claims allegedly add no inventive concept beyond the abstract idea itself, merely reciting conventional computer functions like receiving a request, sending a query, receiving results, and incorporating information into a list for display. Petitioner asserted these steps are generic and amount to insignificant pre- or post-solution activity.
    • Petitioner further argued the claims fail the machine-or-transformation test. The claims were not tied to any particular machine, as terms like "client device," "server devices," and "metasearch engine" were described functionally and not limited to a specific apparatus. The process also did not transform any article into a different state or thing, as it only involved the manipulation of data and information.

Ground 2: Obviousness over Mamma.com in view of Knowledge Broker - Claims 1, 16, 32, 38, 44, 50, 55, and 60 are obvious under 35 U.S.C. §103.

  • Prior Art Relied Upon: Mamma.com (archived website from 1998), Knowledge Broker (1996 and 1997 technical papers).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Mamma.com, a commercial metasearch engine from 1998, disclosed the core limitations of independent claim 1. It taught a system that accepted unstructured keyword and keyword-phrase queries, sent them to multiple search engines (e.g., Alta Vista, Lycos), received results, organized them into a uniform format for display, and crucially, sold and displayed keyword-triggered banner advertisements alongside the results. Knowledge Broker, an academic metasearch project, taught additional features like integrated online ordering of items found in search results and organizing results into distinct lists based on the query.
    • Motivation to Combine: A POSITA would combine these references to enhance a commercial metasearch offering. The Knowledge Broker papers expressed a desire to explore commercially viable business models for its technology. Mamma.com provided a well-established and successful commercial model: selling keyword-triggered advertisements. Therefore, a POSITA would have been motivated to implement the known advertising model of Mamma.com into a system like Knowledge Broker to create a more feature-rich commercial metasearch service that included both advertising and ordering capabilities.
    • Expectation of Success: A POSITA would have had a high expectation of success. Both references described functionalities implemented using standard web technologies of the era. Integrating a known method of displaying advertisements (Mamma.com) with another web-based metasearch system (Knowledge Broker) was a predictable application of existing technologies.

Ground 3: Obviousness over Lunenfeld PCT in view of Mamma.com - All Challenged Claims are obvious under 35 U.S.C. §103.

  • Prior Art Relied Upon: Lunenfeld PCT (WO 01/163406), Lunenfeld 2000 App. (Application # 09/510,749), Mamma.com (archived website from 1998), and Meta-Search Workshop (1999 publication).
  • Core Argument for this Ground: Petitioner argued that the patent owner's own prior art publications (Lunenfeld PCT and Lunenfeld 2000 App.) described a system for posing queries to multiple search engines, but only vaguely referenced advertising. Mamma.com, however, explicitly taught the key missing element: incorporating keyword-phrase-based advertisements into the search results display. Petitioner asserted it would have been obvious to supplement the general system described in the Lunenfeld references with the specific, commercially proven keyword advertising method taught by Mamma.com. This ground is further supported by the Meta-Search Workshop publication, which described the state of the art for metasearch engines at the time, confirming that the claimed features were common.

4. Key Claim Construction Positions

  • "metasearch engine": Petitioner argued for a broad construction based on the specification's expansive language, defining it as anything capable of performing metasearching, including entities capable of "an infinite number of simultaneous searches" of a "substantially infinite variety of hosts," including "grain-of-dust sized servers and social networks." This broad construction was argued to be necessary to assess enablement and written description for priority purposes.
  • "keyword phrase": Petitioner proposed this term be construed as "an ordered sequence of one or more keywords matched only by the same words in the same sequence and order." This construction was based on the common understanding in the art at the time, as evidenced by Mamma.com's "Phrase Search" option, which forced an exact sequence match.
  • "display list": Proposed as "a collection of search results, at the metasearch engine location." Petitioner argued that the claim language indicates the list is compiled at the engine before being incorporated into a response sent to the client, and does not require the list itself to be "displayed" at the engine.

5. Key Technical Contentions (Beyond Claim Construction)

  • Lack of Entitlement to Earlier Filing Date: A central contention was that the ’091 patent was not entitled to the 2001 priority date it effectively needed to predate key prior art. Petitioner argued that the parent applications from 2001 lacked adequate written description and enablement for the full scope of the challenged claims. Specifically, the patent specification was substantially expanded in later continuation-in-part applications to include new matter, such as searching "social networks" and "grain-of-dust" sized servers, which were not described or enabled in the 2001 application. Without the benefit of the earlier filing date, publications like the Lunenfeld PCT (published Aug. 2001) would qualify as prior art against the claims.

6. Relief Requested

  • Petitioner requested institution of a Covered Business Method post-grant review and cancellation of claims 1-3, 5, 7, 9-10, 12, 14, 16-18, 20, 22, 24-26, 28, 30, 32-36, 38-42, 44-48, 50-53, 55-58, and 60-63 of the ’091 patent as unpatentable.