PTAB

CBM2015-00113

Google Inc v. Network 1 Technologies Inc

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1. Case Identification

2. Patent Overview

  • Title: Method For Tagging An Electronic Media Work To Perform An Action
  • Brief Description: The ’464 patent discloses methods for identifying an electronic media work, such as a television advertisement, and linking it to a related action without modifying the original media work. The system correlates the media work with an identifier, generates a "tag," and provides the media and tag to a user device, which can then request an action related to the tag.

3. Grounds for Unpatentability

Ground 1: Patent Ineligibility under 35 U.S.C. §101 - Claims 1-34 are directed to an abstract idea

  • Prior Art Relied Upon: Not applicable (§101 ground). Petitioner referenced historical business practices like magazine "Reader Service Cards" as analogous manual processes.
  • Core Argument for this Ground:
    • Abstract Idea: Petitioner argued claims 1-34 are directed to the abstract idea of linking a media work to a business action. This concept, Petitioner asserted, is a fundamental, longstanding business practice, analogous to manually circling numbers on a magazine postcard to request information about an advertisement.
    • Lack of Inventive Concept: The petition contended that the claims merely implement this abstract idea using conventional and generic computer components (e.g., "a computer system," "a user electronic device") without adding an inventive concept. The patent itself allegedly admits that its components are well-known and that its advantage lies in using routine equipment without modification. The claimed steps of receiving, correlating, generating, and providing data were described as routine data manipulation insufficient to transform the abstract idea into a patent-eligible application under the Alice framework.

Ground 2: Obviousness over Core Media References - Claims 1-11, 13-15, 18-28, and 30-32 are obvious over Ferris in view of Lambert and Gionis

  • Prior Art Relied Upon: Ferris (WO 99/04568), Lambert (Patent 4,381,522), and Gionis (a 1999 conference paper titled "Similarity Search in High Dimensions via Hashing").
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Ferris, the primary reference, discloses a communication system that teaches most of the claimed elements. Ferris describes identifying broadcast content (a "first electronic media work"), matching it against a database of samples ("electronic media work identifier"), associating it with data like a unique ID ("tag"), and sending that data to a user's remote control ("user electronic device") to enable interactive actions like purchasing a product. To the extent Ferris did not explicitly teach certain details, Lambert and Gionis supplied the missing elements. Lambert taught implementing a broadcaster with a computer system, and Gionis taught using a "non-exhaustive, near neighbor search" for efficient media matching.
    • Motivation to Combine: A POSITA would combine Ferris with Lambert to enable more advanced, bidirectional features like on-demand viewing, which was a well-known benefit of using a computer-based broadcaster. A POSITA would combine the resulting system with Gionis's search method because it was a well-known, more robust, and efficient technique for the exact problem addressed in Ferris (matching media against a database), leading to the predictable result of a faster and more powerful system.
    • Expectation of Success: The combination involved substituting known elements to perform their predictable functions, creating a high expectation of success.

Ground 3: Obviousness over Core Media References and Philyaw - Claims 16 and 33 are obvious over Ferris in view of Lambert, Gionis, and Philyaw

  • Prior Art Relied Upon: Ferris (WO 99/04568), Lambert (Patent 4,381,522), Gionis (1999 conference paper), and Philyaw (WO 00/16205).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground builds on the combination of Ferris, Lambert, and Gionis and adds Philyaw to address the specific limitation of claims 16 and 33, which require that the "machine-readable instructions comprise a hyperlink to a URL." Philyaw was cited for its teaching of a system that links analog audio signals to advertiser URLs.
    • Motivation to Combine: Petitioner argued that while Ferris teaches sending information to a user to enable an action, it does not explicitly mention a URL. A POSITA would combine the teachings of Philyaw with the Ferris system because providing a URL was a well-known technique to improve communication devices. This would predictably create a more robust system by giving advertisers another channel to provide information and solicit viewers via web pages.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 12, 17, 29, and 34 based on the core combination plus Goldstein (Patent 5,410,326), which taught providing electronic coupons and instructions to dial a telephone number. Petitioner also argued that all claims are unpatentable under 35 U.S.C. §112 for indefiniteness (due to the ambiguous term "tag") and for lacking written description support.

4. Key Claim Construction Positions

  • "near neighbor" / "neighbor": Petitioner argued against the Patent Owner's proposed construction from a related litigation, which required the match to be "within a defined threshold of a query." Petitioner contended this improperly imported a limitation from the specification. Under the broadest reasonable construction standard, Petitioner argued the term should be construed more simply as a "close, but not necessarily exact or the closest, match." This broader construction is critical to Petitioner's obviousness arguments, as it allows prior art search algorithms that do not rely on a fixed threshold (like Gionis) to meet the claim limitation.

5. Relief Requested

  • Petitioner requests institution of a Covered Business Method Review and cancellation of claims 1-34 of the ’464 patent as unpatentable under 35 U.S.C. §§ 101, 103, and 112.