PTAB

CBM2016-00050

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 ’059 patent describes a system for pricing online advertisements. The claimed invention involves establishing a predetermined cost for advertising and then decreasing that cost as the quantity of viewer actions (e.g., clicks) in response to the advertisement increases.

3. Grounds for Unpatentability

Ground 1: Ineligibility Under 35 U.S.C. § 101 - Claims 1-14 are directed to patent-ineligible subject matter.

  • Prior Art Relied Upon: Not applicable (challenge under § 101).
  • Core Argument for this Ground: Petitioner argued that the challenged claims are directed to the abstract idea of a performance-based pricing model for advertising and lack an inventive concept sufficient to transform them into patent-eligible subject matter.
    • Abstract Idea Analysis: The petition asserted that pricing models are fundamental economic practices, and the specific model of decreasing an advertisement's cost based on its performance is a classic abstract idea. Petitioner contended that merely applying this long-standing business concept to the context of the internet does not make it less abstract. The claims were compared to other pricing and advertising models previously found to be abstract by the courts.
    • Inventive Concept Analysis: Petitioner argued the claims lack an inventive concept because they merely recite the implementation of the abstract pricing idea on generic, conventional computer components. The claims call for using a standard processor and storage device to ascertain costs, present ads on a website, detect user actions, and decrease costs accordingly. Petitioner asserted that these steps represent routine and conventional activities of computers and the internet, which are insufficient to supply the inventive concept required under the Alice framework. The petition further argued that dependent claims add only minor, non-inventive limitations, such as specifying the action as a "click-through" or identifying the parties as advertisers and buyers.

Ground 2: Lack of Written Description Under 35 U.S.C. § 112 - Claims 1-14 are invalid for failing to meet the written description requirement.

  • Prior Art Relied Upon: Not applicable (challenge under § 112).
  • Core Argument for this Ground: Petitioner argued that the claims are directed to subject matter that is directly contradicted by the patent’s specification. The invention described in the specification is fundamentally different from, and opposed to, the invention recited in the claims.
    • Specification vs. Claims Analysis: The petition highlighted that the ’059 patent specification repeatedly describes its invention as a solution to the financial risk sellers face with performance-based pricing. The specification’s solution is a hybrid model that helps sellers "secure fixed-fee pricing" to "guarantee revenue," while buyers receive a performance-based incentive in the form of "bonus impressions" at no additional cost. Under the specification's model, the total revenue received by the seller remains constant and guaranteed. In direct contrast, the petition argued that the challenged claims (e.g., claim 1) recite a purely performance-based model where the "cost per impression" decreases as user actions increase. This directly results in variable, non-guaranteed revenue for the seller, which is the very problem the specification purports to solve.
    • Contradiction of Purpose: Petitioner contended that a person of ordinary skill in the art would not recognize that the inventor possessed the claimed variable-revenue system, given that the specification consistently denigrates such models as risky and presents a fixed-revenue model as the solution. The petition asserted that the claims encompass the exact type of "performance-based pricing models" that the specification teaches away from, rendering the claims invalid for lack of written description.

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 its explicit definition within the ’059 patent's specification and was presented as the term's ordinary meaning.

5. Key Technical Contentions (Beyond Claim Construction)

  • Petitioner argued that the claimed invention is not a "technological invention" and is not necessarily rooted in computer technology, a point central to its argument that the patent was eligible for Covered Business Method (CBM) review and that its claims are abstract. The petition asserted that the core idea of decreasing advertising cost based on customer response could be, and has been, applied in non-computer environments. For example, the cost of a billboard advertisement could be reduced based on the number of calls received on a special tracking telephone number listed on the billboard, demonstrating that the claimed concept is a business method rather than a specific technological solution.

6. Relief Requested

  • Petitioner requested institution of a Covered Business Method review and cancellation of claims 1-14 of the ’059 patent as unpatentable under § 101 and § 112.