PTAB

CBM2016-00049

Google LLC v. Performance Pricing Holdings LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System and Method for the Presentation of Advertisements
  • Brief Description: The ’195 patent discloses a business method and system for structuring advertising contracts. The method involves a pricing model where an advertiser pays a fixed fee for a predetermined number of ad impressions and can earn additional "bonus impressions" at no extra cost if viewers interact with the advertisement, thereby rewarding more effective ads.

3. Grounds for Unpatentability

Ground 1: Unpatentable Subject Matter under §101 - Claims 1-20 are directed to an abstract idea

  • Prior Art Relied Upon: The challenge was based on 35 U.S.C. §101 and legal precedent under the Alice framework, rather than specific prior art documents. Petitioner cited general knowledge of pre-internet advertising and business practices to establish the abstract nature of the claimed concept.
  • Core Argument for this Ground:
    • Abstract Idea (Alice Step 1): Petitioner argued that claims 1-20 are directed to the patent-ineligible abstract idea of a fundamental economic practice: a pricing model for advertising. The core concept—providing bonus exposure based on ad performance—was framed as a long-standing business concept for incentivizing sellers and buyers. Petitioner asserted this is analogous to other pricing and advertising models previously found to be abstract by courts, such as offer-based pricing or showing an ad before delivering content. The method simply describes the terms of a contract for selling advertising space.
    • Lack of Inventive Concept (Alice Step 2): Petitioner contended that the claims lack an inventive concept sufficient to transform the abstract idea into a patent-eligible application. The claims merely recite implementing the advertising model on generic and conventional computer components. Petitioner performed a step-by-step analysis of independent claim 1, arguing that each element—agreeing to a price, providing impressions from a server, automatically recording user actions, and determining a number of bonus impressions—describes routine, well-understood functions of internet advertising technology that existed long before the patent's priority date. The implementation on a generic computer network was argued to be a quintessential example of merely applying an abstract idea, which does not confer patent eligibility.
    • Key Aspects: Petitioner emphasized that the dependent claims add only trivial, well-known limitations, such as using a cursor to click a link, completing a purchase, or specifying the network as the internet. None of these limitations were argued to add the required inventive concept to overcome the §101 rejection.

4. Key Claim Construction Positions

  • Impression: Petitioner proposed that this term should be construed as “a presentation of the advertising message.” This construction was based on the patent’s specification and presented as the term’s ordinary meaning, which Petitioner argued would be consistent under either the Broadest Reasonable Interpretation or Phillips standard.

5. Key Technical Contentions (Beyond Claim Construction)

  • Inapplicability of DDR Holdings: A central contention was that the challenged claims do not solve a problem unique to the internet, distinguishing them from the patent-eligible claims in DDR Holdings. Petitioner argued the problem addressed by the ’195 patent—attracting advertisers and managing ad inventory—is a general business problem applicable to all media. This was supported by the patent’s own specification, which explicitly states the invention can be extended to non-internet environments like billboard, television, and print advertising.
  • Not "Rooted in Computer Technology": Petitioner further contended that the claimed solution is not "necessarily rooted in computer technology." To illustrate this, Petitioner provided a "manual analogue" showing how each step of claim 1 could be performed in the context of billboard advertising. For example, a billboard owner could agree to extend an ad’s display time based on the number of calls received on a special telephone number printed on the ad, thus manually tracking "actions" and providing "bonus exposure" without requiring a computer network.

6. Relief Requested

  • Petitioner requested the institution of a Covered Business Method review and the cancellation of claims 1-20 of Patent 7,089,195 as unpatentable under 35 U.S.C. §101.