Cellco Partnership v. Bridge Post Inc

1. Case Identification

• Patent #: 8,862,747
• Filed: October 11, 2017
• Petitioner(s): Cellco Partnership d/b/a Verizon Wireless
• Patent Owner(s): Bridge and Post, Inc.
• Challenged Claims: 1–9

2. Patent Overview

• Title: Method and Apparatus for Tagging Network Traffic Using Extensible Fields in Message Headers
• Brief Description: The ’747 patent describes methods for identifying and tracking users for targeted advertising without relying on cookies. The system involves a routing device intercepting a user's network request, extracting non-personal device information (e.g., MAC address) to create a unique and persistent user identifier, combining it with other data (demographic, location, timing), encrypting the combined data into a "Request ID," and embedding this ID into an extensible field of the HTTP request header for processing by a destination server or ad partner.

3. Grounds for Unpatentability

Ground 1: Claims 1–9 are obvious over Harada, Roker, and Brijesh.

• Prior Art Relied Upon: Harada (WO 00/73876), Roker (WO 2006/081680), and Brijesh (Application # 2006/0265507).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of these references teaches every element of the challenged claims. Harada was asserted to teach the foundational system: a proxy server that intercepts HTTP requests, retrieves user profile information (including user identifiers, geographic data, and demographic data), encrypts it, and embeds it into unused HTTP header fields to facilitate targeted content. However, Harada did not explicitly disclose using information from the MAC layer. Roker was argued to improve upon Harada by teaching a similar system that uses a "static unique identifier" and "obscures" the user's profile to enhance privacy. Roker recognized that the specific identification method was arbitrary. To implement Roker's concept of a static, unique identifier, Petitioner argued a POSITA would turn to Brijesh, which explicitly teaches using a persistent Media Access Control (MAC) address as a device identifier to build a user profile for delivering directed media. The combination of Harada's architecture, Roker's privacy and static identifier motivation, and Brijesh's specific use of a MAC address renders the claims obvious.
  • Motivation to Combine: A POSITA would combine these references as they all address the same problem of providing targeted content via a network intermediary. Petitioner contended it would have been an obvious improvement to Harada's system to incorporate Roker's teaching of a more private, static identifier. To implement this, a POSITA would have looked to known persistent identifiers and found Brijesh's express teaching of using a MAC address for this exact purpose, resulting in a predictable combination of known elements.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references, as it involved applying a known type of identifier (MAC address from Brijesh) to a known system (Harada) to achieve a known goal (a static, private identifier as suggested by Roker).

Ground 2: Claims 1–9 are obvious over Harada, Roker, and Candelore.

• Prior Art Relied Upon: Harada (WO 00/73876), Roker (WO 2006/081680), and Candelore (Patent 6,996,238).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presents Candelore as a direct substitute for Brijesh from Ground 1. The teachings of Harada and Roker serve the same purpose as in the first ground. Candelore was asserted to be analogous art that teaches using a device's unique MAC address as a "distinctive device identification" in an IP network. Candelore further teaches that this MAC address can be used to generate keys and that a one-way hash algorithm (SHA-1) can be applied to protect data integrity. Petitioner argued that Candelore provides an alternative, and equally obvious, source for the two key features missing from Harada: using a MAC address as a unique identifier and hashing it to protect privacy.
  • Motivation to Combine: Petitioner argued that a POSITA, seeking to implement Roker's arbitrary "static unique identifier" within Harada's framework, would have been motivated to use Candelore's MAC address-based identification method. Candelore addressed analogous problems of unique device identification and security in IP networks. The motivation to hash the identifier is supplied by both Roker's general goal of obscuring user identity and Candelore's explicit disclosure of using a one-way hash (SHA-1) for security. Substituting Candelore's identifier solution into the Harada/Roker system would have been a predictable design choice.
  • Expectation of Success: A POSITA would have expected success because combining Harada's and Roker's targeted advertising system with Candelore's well-known method of using a hashed MAC address for unique and secure device identification would predictably yield the claimed invention.

4. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: A central contention of the petition was that the ’747 patent is not entitled to the March 10, 2007 filing date of its provisional application. Petitioner argued the provisional application fails to provide adequate written description support for several key limitations that were added during prosecution to achieve allowance, including (1) extracting information during a "Media Access Control (MAC) layer process," (2) basing the unique identifier on a MAC address, and (3) generating the request identifier as an "alphanumeric string." Petitioner further argued that the provisional's attempt to incorporate the Brijesh application by reference was ineffective under the "bright line" rule in effect at the time, as it failed to use express incorporation language (e.g., "incorporate by reference"). This contention is critical, as a successful challenge to the priority date establishes both Roker (published Aug. 2006) and Brijesh (published Nov. 2006) as prior art under §102(b).

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1–9 of the ’747 patent as unpatentable.