PTAB

CBM2016-00075

Kayak Software Corp v. IBM Corp

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1. Case Identification

2. Patent Overview

  • Title: Method for Presenting Advertising in an Interactive Service
  • Brief Description: The ’849 patent relates to methods for presenting advertising on a computer network. The core concepts involve generating partitioned screen displays to show applications and advertisements concurrently, and presenting targeted advertising, using information selectively stored on the user's local computer.

3. Grounds for Unpatentability

Ground 1: Patent Ineligibility under §101 - Claims 1-9, 12-22, and 25 are patent-ineligible under 35 U.S.C. §101.

  • Core Argument for this Ground: Petitioner argued the claims are directed to abstract ideas without an inventive concept, following the two-step framework from Alice Corp. v. CLS Bank Int’l.
    • Abstract Idea (Step 1): Petitioner contended the claims are directed to two longstanding, fundamental economic and advertising practices: (1) generating a partitioned display with primary content and advertisements (analogous to a newspaper layout), and (2) presenting a user with targeted advertising based on their characteristics. It was argued that implementing these ideas using local storage (caching) on a generic computer does not make the underlying idea less abstract, as caching was a well-known and conventional computer function.
    • Inventive Concept (Step 2): Petitioner asserted the claims lack an inventive concept because they merely instruct the use of generic, conventional computer components (e.g., a network, reception systems, a monitor, a data store) to perform their ordinary functions. The patent did not claim to improve the functioning of the computer or the network itself, but rather applied abstract business ideas using conventional technology. Petitioner further argued that the dependent claims add only other conventional concepts, such as triggering local storage based on predetermined levels or using demographic data for ad targeting, which fail to transform the claims into a patent-eligible application.

Ground 2: Obviousness over Reference 7 and Simon - Claims 1-3, 5-6, 8-9, 12-16, 18-19, 21-22, and 25 are obvious over Reference 7 in view of Simon.

  • Prior Art Relied Upon: Reference 7 ("Trintex to Aim On-Line Ads At Demographic Segments," The American Banker, June 30, 1987) and Simon (Patent 4,575,579).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Reference 7, which described the Trintex/Prodigy videotex service, taught displaying advertisements concurrently with editorial content ("applications") on a partitioned screen and targeting those ads to specific demographic segments. Simon was cited for teaching a videotex system that selectively stores information, including advertising pages, on a user's local terminal to be displayed later. This local storage, a form of caching, was performed automatically to ensure the latest information could be offered. Petitioner argued the combination of these references taught all limitations of the independent claims.
    • Motivation to Combine: A POSITA would combine Simon’s local storage method with Reference 7’s targeted, partitioned display system to improve system performance. The motivation was to leverage the well-known caching technique taught by Simon to reduce network traffic and improve responsiveness for the interactive advertising system of Reference 7, which would be a predictable result.
    • Expectation of Success: A POSITA would have had a high expectation of success because both references operate in the same technical field (videotex systems), and the combination involved applying a known technique (caching) to improve a known system for a predictable benefit.

Ground 3: Obviousness over Reference 7, Simon, and Alber - Claims 4, 7, 17, and 20 are obvious over Reference 7 in view of Simon and Alber.

  • Prior Art Relied Upon: Reference 7, Simon, and Alber ("Videotex/Teletext: Principles & Practices," 1985).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground built upon the combination of Reference 7 and Simon. Petitioner argued that Alber supplied the additional limitation required by this claim group: basing user characterizations on "applications requested by the respective users." Alber explicitly taught that developing a user profile by monitoring the frames (applications) a subscriber views enables targeted advertising because it helps determine "what people are really interested in acquiring."
    • Motivation to Combine: A POSITA seeking to enhance the targeting capabilities of the combined Reference 7/Simon system would be motivated to incorporate Alber's teaching. Using a user's content viewing history to refine ad targeting was a logical and known method for improving advertising relevance and effectiveness in videotex systems.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Wilson (Patent 3,991,495). Wilson taught an "order point" concept for inventory management, which Petitioner argued rendered obvious the claims directed to replenishing the local store of advertisements when the quantity falls below a predetermined level.

4. Key Claim Construction Positions

  • "structuring": Petitioner proposed this term be construed as "formatting," requiring no more than arranging applications and advertising in different portions of a screen display. This broad construction was argued to be consistent with the prosecution history, where the Patent Trial and Appeal Board had previously found that concurrent display necessarily implied such a structure.
  • "selectively storing advertising objects at a store established at the reception system": Petitioner argued this phrase should be construed to mean that advertising objects are selected by the system for local storage, as opposed to being stored simply because they are part of a page requested by the user. This construction distinguishes system-initiated caching from user-initiated downloads.
  • "object": Petitioner contended this term should be given its plain and ordinary meaning or construed broadly as "a collection of data." This position was asserted in opposition to the Patent Owner's narrower proposed construction, which Petitioner argued improperly imported limitations from a preferred embodiment described in the specification.

5. Relief Requested

  • Petitioner requests institution of a Covered Business Method review and cancellation of claims 1-9, 12-22, and 25 of the ’849 patent as unpatentable.