Alphonso Inc v. Free Stream Media Corp

1. Case Identification

• Case #: IPR2017-01730
• Patent #: 9,386,356
• Filed: July 3, 2017
• Petitioner(s): Alphonso, Inc.
• Patent Owner(s): Free Stream Media Corp D/B/A Samba TV
• Challenged Claims: 1, 2, 10, 11, 13, 14, 15, 17, 18, and 19

2. Patent Overview

• Title: Targeting With Television Audience Data Across Multiple Screens
• Brief Description: The ’356 patent describes a system for delivering targeted data, such as advertising, to a second-screen device (e.g., a mobile phone) based on content being displayed on a first-screen device (e.g., a smart TV). A "relevancy-matching server" identifies the content on the first device and sends related, targeted content for display on the second device.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 10, 11, 13, 14, 15, 17, 18, and 19 are obvious over Arini in view of Delirium.

• Prior Art Relied Upon: Arini (Patent 8,843,584) and Delirium (“Java and Java Virtual Machine Security Vulnerabilities and their Exploitation Techniques,” a 2002 publication by the Last Stage of Delirium Research Group).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Arini taught all elements of the challenged claims except for those related to executing an application within a security sandbox and bypassing its access controls. Arini disclosed a two-screen system where a server identifies content on a first device (TV) using fingerprinting and sends related content to a second device (mobile phone). Delirium, a well-known publication on Java security, was argued to supply the missing elements by explicitly teaching the use of a security sandbox for applets and describing various techniques to bypass sandbox restrictions to enable communication and access system resources.
  • Motivation to Combine: A POSITA would combine Arini and Delirium because they are in the same field of content delivery to networked devices and address the analogous problem of enabling communication between them. Petitioner contended that implementing Arini’s system on modern mobile devices, which ubiquitously use sandboxing for security (a fact taught by Delirium), would have required a POSITA to employ methods to bypass sandbox controls to allow the cross-device communication central to Arini’s invention. Therefore, adding the security and bypass techniques from Delirium to Arini's system was presented as a simple and necessary design choice.
  • Expectation of Success: Petitioner asserted a POSITA would have had a reasonable expectation of success because combining the references involved applying a known security solution (Delirium's sandboxing and bypass techniques) to a known content delivery system (Arini) to achieve the predictable and desired result of a functional and secure two-screen system.

Ground 2: Claims 1, 2, 10, 11, 13, 14, 15, 17, 18, and 19 are obvious over Arini in view of the state of the art.

• Prior Art Relied Upon: Arini (Patent 8,843,584) and the general knowledge of a POSITA regarding the state of the art in mobile application security.
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that Arini taught the core system, and the missing sandboxing and bypassing limitations were obvious based on the common knowledge of a POSITA at the time. Petitioner argued that by the alleged invention date, security sandboxing was a conventional and nearly ubiquitous feature in all major mobile operating systems (e.g., Android and iOS).
  • Motivation to Combine: A POSITA implementing Arini's method on a mobile device would have been compelled by market and design realities to use the standard sandboxing features of the target mobile OS. To make Arini's system functional—requiring communication between the TV, a remote server, and the sandboxed mobile application—it would have been a matter of common sense and common knowledge to implement known techniques (like cross-site scripting or custom protocol handlers) to bypass the sandbox's inherent restrictions.
  • Expectation of Success: Petitioner argued the combination would yield a predictable result. Applying well-known, conventional sandboxing and bypass techniques to the Arini system was not an inventive step but a routine implementation detail necessary to make the system work on standard mobile platforms.

4. Key Technical Contentions (Beyond Claim Construction)

• Contested Priority Date: A central contention of the petition was that the ’356 patent was not entitled to its claimed priority date earlier than May 28, 2013. Petitioner argued that crucial limitations required by all challenged claims—specifically the "relevancy-matching server," matching data based on a relevancy factor, and searching storage for targeted data—were not described or enabled in any of the seven parent applications filed before that date. This argument was foundational, as establishing this later priority date was necessary to qualify Arini (filed in 2011) as prior art under §102(e).

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 2, 10, 11, 13, 14, 15, 17, 18, and 19 of the ’356 patent as unpatentable.