Microsoft Corp v. Improved Search LLC

1. Case Identification

• Case #: IPR2017-01613
• Patent #: 7,516,154
• Filed: June 23, 2017
• Petitioner(s): Microsoft Corporation
• Patent Owner(s): Improved Search LLC
• Challenged Claims: 1-12

2. Patent Overview

• Title: Cross Language Advertising
• Brief Description: The ’154 patent discloses a method and system for providing cross-language advertising services over the internet. The technology centers on receiving a user's search query, performing "dialectal standardization" to conform the query to a more common term, translating it into a target language for searching, and concurrently searching a database of "advertising cues" to return relevant advertisements along with the search results.

3. Grounds for Unpatentability

Ground 1: Obviousness over Chan in view of Skillen - Claims 1-12 are obvious over Chan in view of Skillen.

• Prior Art Relied Upon: Chan (Patent 6,604,101) and Skillen (Patent 6,098,065).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Chan, which is directly related to the ’154 patent, teaches every element of the challenged claims except for the advertising-related features. Chan discloses a cross-language search system that receives a query in a first language, extracts a content word, performs "dialectal standardization" on the word, translates it into a second language, and then performs a contextual search using the translated word. Petitioner asserted that Skillen teaches the missing elements: a system that provides advertisements to a user by correlating their search query with a database of advertisement-related information and returning a relevant advertisement along with the primary search results. The combination of Chan’s cross-language search functionality with Skillen’s search-based advertising model allegedly renders all limitations of the challenged claims obvious. For example, Skillen's "product database" was argued to be a "database of advertising cues" that is searched based on the user's query, and its delivery of an "advertisement insert" was mapped to the limitation of returning advertising cues to the user.
  • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSITA) would combine Chan and Skillen for clear economic reasons. By 2006, search-based targeted advertising, as taught by Skillen, was a well-established and highly profitable method for monetizing search engines. A POSITA would have been motivated to integrate Skillen’s advertising functionality into Chan’s cross-language search system to generate revenue. The petition argued this was not a novel inventive step but a predictable application of a known business model (search advertising) to a known technical system (cross-language search) to achieve a predictable result (a monetized search service).
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining these systems. Petitioner contended that both references describe internet-based search systems, making their integration straightforward. The combination involved applying a known technique (Skillen's advertising method) to a similar system (Chan's search method) to yield predictable results, namely relevant cross-language search results accompanied by relevant advertisements.

4. Key Claim Construction Positions

• "Dialectical Standardization": Petitioner noted the District Court's construction of this term as "[r]eplacing the at least one content word in the first language with a commonly-known word in the first language so that the second-language search engine will recognize it." Petitioner argued that Chan's disclosure of standardizing query terms to a more commonly known word (e.g., "truck" for "lorry") fully meets this limitation under the court's construction.
• "advertising cues": Petitioner adopted the Patent Owner's proposed construction from district court litigation: "advertisements, as well as signals or references that direct a user to an advertisement." Petitioner argued that Skillen’s disclosure of a "product database" containing advertisement information and providing an "advertisement insert" squarely meets this definition.
• Means-Plus-Function Terms: For several means-plus-function terms (e.g., "means to search the database of the advertising cues"), Petitioner adopted the functions and corresponding structures ("server or equivalents") proposed by the Patent Owner. It then argued that Skillen disclosed the claimed function and that its "advertising machine," implemented on a "data processing server platform," constituted the corresponding structure.

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: A central argument of the petition was that claims 1-12 of the ’154 patent are not entitled to the priority date of their parent application. Petitioner asserted that the parent application completely lacks any mention of "advertising cues" or performing a second search for advertisements. Therefore, the parent application allegedly fails to provide adequate written description support under 35 U.S.C. §112 for the advertising limitations present in all challenged claims. As a result, Petitioner argued the effective filing date for the challenged claims is February 8, 2006. This contention is critical because it makes Chan, which issued in 2003 and is part of the same patent family, available as prior art under 35 U.S.C. §102(b).

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-12 of Patent 7,516,154 as unpatentable under 35 U.S.C. §103.