PTAB

CBM2014-00122

Google Inc v. BuySafe Inc

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Method, System and Components for Obtaining, Evaluating and/or Utilizing Seller, Buyer and Transaction Data
  • Brief Description: The ’791 patent discloses methods for performing web analytics to measure and predict consumer demand by tracking online consumer behavior before, during, and after a purchase. The system uses a "Transaction Related Offering" (TRO), such as a transaction performance guaranty, to facilitate post-purchase data gathering and analysis of consumer behavior.

3. Grounds for Unpatentability

Ground 1: Claims 1-27 are obvious over Samson in view of Woda.

  • Prior Art Relied Upon: Samson (Patent 7,228,287) and Woda (Application # 2004/0210527).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Samson disclosed all elements of the independent claims except for the specific limitation that secured allowance of the ’791 patent. Samson taught an incentive system that tracks consumer behavior before, during, and after a sale by monitoring the redemption of incentives like coupons or warranties. This data was used to update a learning model and determine the efficacy of those incentives. Petitioner asserted that Woda, which was not before the Examiner, disclosed the precise limitation that was added to the ’791 patent claims to overcome rejections: a “transaction performance guaranty” that involves an underwriting process to “determine whether it is acceptable to assume” a third party’s obligations.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine Samson and Woda because they are analogous arts concerning online transaction incentives. Samson’s system was designed to offer various incentives and explicitly included the possibility of “any other type of offer.” A POSA would have been motivated to incorporate the known transaction performance guaranty from Woda as another type of incentive into Samson’s framework to increase transaction security and volume.
    • Expectation of Success: The combination represented a simple substitution of one known element (Woda’s guaranty) into an existing system (Samson) to obtain a predictable result.
    • Key Aspects: Petitioner highlighted that Patent Owner, buySAFE, was concurrently asserting the patent corresponding to Woda against Google, and in that litigation, argued that Woda taught the very "determining" limitation that it added to the ’791 patent claims to secure allowance. However, Patent Owner failed to disclose Woda to the USPTO during prosecution of the ’791 patent.

Ground 2: Claims 1-27 are obvious over Oldham in view of Schroeder and Woda.

  • Prior Art Relied Upon: Oldham (Application # 2008/0103887), Schroeder (Application # 2003/0130883), and Woda (Application # 2004/0210527).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented an alternative combination based on prior art that was before the Examiner during prosecution, supplemented with the previously undisclosed Woda reference. Oldham, a primary reference during prosecution, taught an advertisement system that tracked online "conversions" (purchases) resulting from ads or incentives to determine their effectiveness. Schroeder, also cited during prosecution, taught analyzing past sales data to predict the impact of future promotions, thereby supplying the element of analyzing behavior "past completion" of a transaction. As in Ground 1, Petitioner argued that Woda supplied the key missing limitation of a transaction guaranty involving an underwriting process to determine whether to assume third-party obligations.
    • Motivation to Combine: A POSA would combine Oldham and Schroeder to enhance Oldham’s ad system with Schroeder’s predictive analytics, allowing for better selection of advertisements and incentives. This combination was, in fact, proposed by the Examiner during prosecution. A POSA would be further motivated to add Woda’s transaction guaranty to the available incentives in the Oldham/Schroeder system to facilitate more transactions and increase consumer confidence.
    • Expectation of Success: Combining these known elements would have yielded predictable results, as it involved applying known techniques (predictive analytics, transaction guaranties) to an existing online advertising framework.

4. Key Claim Construction Positions

  • “Transaction performance guaranty”: Petitioner proposed this term should mean a "promise to assume one or more obligations of a party to a sales transaction." This construction was central to mapping Woda’s disclosure of underwriting and risk assumption onto the claim language.
  • “Determine efficacy of a plurality of parameters relating to one or more sales transaction related offerings”: Petitioner proposed this term should mean to "determine the impact on consumer behavior of two or more characteristics of one or more sales transaction related offerings." This construction defined the core analytical step of the claimed method, which Petitioner argued was taught by the prior art’s analysis of incentive redemption and conversion rates.
  • “Shared object”: Petitioner proposed this term should be construed as a "cookie," based on the patent’s own specification, which states a Flash shared object "is essentially a Flash implemented cookie."

5. Relief Requested

  • Petitioner requests institution of a Covered Business Method Review and cancellation of claims 1-27 of the 8,515,791 patent as unpatentable.