PTAB

CBM2016-00049

Google LLC v. Performance Pricing Holdings, LLC

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1. Case Identification

2. Patent Overview

  • Title: System and Method for the Presentation of Advertisements
  • Brief Description: The ’195 patent discloses a business method for online advertising where a buyer pays a fixed fee for a predetermined number of ad impressions. The method provides an incentive for creating effective ads by allowing the buyer to earn additional "bonus impressions" at no extra cost if viewers interact with the ad, for example, by clicking on it.

3. Grounds for Unpatentability

Ground 1: Claims 1-20 are unpatentable under 35 U.S.C. § 101 as being directed to patent-ineligible abstract ideas.

  • Prior Art Relied Upon: This ground was not based on traditional prior art references under 35 U.S.C. §102 or §103. Instead, Petitioner relied on judicial precedent, primarily Alice Corp. v. CLS Bank Int'l, to argue that the claims were directed to a long-standing, fundamental economic practice implemented using only generic computer technology.
  • Core Argument for this Ground: Petitioner's argument followed the two-step framework from Alice.
    • Step 1 (Abstract Idea): Petitioner asserted that claims 1-20 are directed to the abstract idea of a "pricing model for advertising," which is a fundamental economic practice. The specific concept of providing bonus advertising exposure based on performance (viewer interaction) was argued to be a form of "offer-based pricing," a long-existing commercial concept. Petitioner contended that framing the claims as a model for presenting advertisements does not change their abstract nature, citing precedent that such business methods are squarely within the realm of abstract ideas.
    • Step 2 (Inventive Concept): Petitioner argued that the claims lack an inventive concept sufficient to transform the abstract idea into a patent-eligible application. The claims merely recite implementing the abstract pricing model using generic computer components and routine internet functions. An analysis of independent claim 1 showed that each step recites conventional activities:
      • (a) Agreeing to a sale price and terms for bonus impressions is the core abstract agreement itself.
      • (b) Providing a predetermined number of impressions from a server over a network was a routine function of internet advertising.
      • (c) Automatically recording user actions (like clicks) at a server was a standard, well-understood data-gathering activity in online advertising.
      • (d) Automatically determining the number of bonus impressions is a simple arithmetic calculation that does not add an inventive step.
      • (e) Automatically providing the earned bonus impressions is merely the execution of the abstract agreement using the same conventional ad-serving technology.
    • Key Aspects: Petitioner argued that the independent claims (method claim 1, system claim 11, and storage medium claim 6) were substantively identical for the §101 analysis, as they all recited the same abstract idea implemented with generic computer hardware. The dependent claims were argued to add only other conventional internet features, such as using a cursor to click a link, completing a purchase, or specifying the network is the "Internet," none of which provide an inventive concept.

4. Key Claim Construction Positions

  • Impression: Petitioner proposed that this central term be construed as “a presentation of the advertising message.” This construction, supported by the patent’s specification and expert declaration, was used to anchor the argument that the core of the claimed invention is simply the display of an advertisement, a conventional and fundamental activity in the advertising industry, whether online or offline.

5. Key Technical Contentions (Beyond Claim Construction)

  • Inapplicability of DDR Holdings: Petitioner dedicated significant argument to distinguishing the ’195 patent from the patent-eligible claims in DDR Holdings, LLC v. Hotels.com, L.P. Petitioner argued that DDR Holdings was inapposite because the claims of the ’195 patent do not solve a problem that is "necessarily rooted in computer technology" or unique to the internet. The petition asserted that the problem addressed—attracting advertisers by linking payment to performance—is a general business problem that exists across all advertising media. To support this, Petitioner highlighted that the ’195 patent's own specification describes applying the invention to billboard, television, and print advertising, demonstrating the concept is not inherently technological or internet-specific. The solution was therefore argued to be a mere application of an old business idea using generic computers, rather than a specific technological improvement to the functioning of the internet itself.

6. Relief Requested

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