Expedia Inc v. IBM Corp

1. Case Identification

• Case #: IPR2018-01743
• Patent #: 7,072,849
• Filed: September 17, 2018
• Petitioner(s): Expedia, Inc.; Homeaway.com, Inc.; Hotels.com L.P.; Hotwire, Inc.; and Orbitz, LLC
• Patent Owner(s): International Business Machines Corp.
• Challenged Claims: 1-25

2. Patent Overview

• Title: Presenting Advertising in an Interactive Service
• Brief Description: The ’849 patent relates to methods for presenting advertising concurrently with service applications over an interactive computer network. The invention involves a reception system that structures applications and advertising into objects, pre-fetches advertising objects to a local store based on user characterizations, and presents them together in different portions of a display screen.

3. Grounds for Unpatentability

Ground 1: Obviousness over the CommInS System and NYT - Claims 1-25 are obvious over Architecture and BCIS in view of New York Times Editions.

• Prior Art Relied Upon: Architecture (a 1985 ACM paper on large scale information systems), BCIS (a 1985 user manual for the Boston Community Information System), and NYT Editions (various New York Times newspaper editions from 1985-1987).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Architecture and BCIS collectively described the "CommInS" system, an information retrieval system developed at MIT that anticipated the core functionalities of the ’849 patent. Architecture described the server-side and network infrastructure, which ingested content from sources like the New York Times, formatted it into standardized files (objects), and broadcast it over a network. BCIS, the user manual for CommInS, described the client-side software that received the broadcasted content, filtered it based on user-defined queries (a "filter list"), and selectively stored relevant articles locally. Petitioner contended this local storage constituted the claimed "pre-fetching." The NYT Editions provided concrete examples of the advertising content—such as movie reviews, home video release announcements, and classified ads—that the CommInS system ingested and presented to users. Petitioner asserted that the CommInS system displayed summaries of articles (the "application") concurrently with summaries of advertisements (e.g., a movie review) in the same user interface, meeting the core limitations of independent claims 1 and 8. Dependent claims were allegedly met by further details in the prior art, such as using a "budget" to replenish the local store of articles (claim 2) and basing user characterizations on geography or demographics (claims 5-6).
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine Architecture and BCIS because they were contemporaneous works by the same researchers at MIT describing the server-side and client-side aspects of the same CommInS system. A POSA would naturally consult both to understand the complete system. The motivation to incorporate advertising content from the NYT Editions was strong and explicit, as the CommInS system was specifically designed to process and distribute NYT content. A POSA would be motivated to include advertising sections like classifieds to satisfy known user demand (evidenced by a 1986 survey of CommInS users) and for economic reasons, as advertising was the primary revenue source for newspapers and thus a natural content source for an online news system.
  • Expectation of Success: A POSA would have a reasonable expectation of success in implementing the combined system. The CommInS system already demonstrated the technical feasibility of ingesting, structuring, and displaying text-based articles from the NYT. Because the advertising content in the NYT Editions (e.g., classifieds, regional event listings) was also text-based and followed a consistent format, incorporating it into the existing, robust ingestion process would be a predictable and straightforward modification. The general concept of putting newspaper classifieds online had also been demonstrated by other prior art systems, confirming its technical feasibility.

4. Key Claim Construction Positions

• "object(s)": Petitioner proposed construing this term as "data structure(s)." This construction was argued as consistent with the specification and was critical for mapping the term to the prior art's disclosure of article files and summaries, which were described in Architecture and BCIS as having a predefined set of fields and a consistent format.
• "selectively storing advertising objects at a store established at the reception system": Petitioner argued this phrase should be construed as "pre-fetching advertising objects and storing at a store... in anticipation of display concurrently with the applications." This construction was central to the invalidity case, as it equated the claim language with the CommInS system's background process of receiving broadcasted articles and locally storing only those that matched a user's pre-defined filter list, in advance of any specific user request to view them.
• "structuring advertising in a manner compatible to that of the applications": Petitioner proposed this be construed as "formatting advertising for potential use with a plurality of applications." This broad construction was important for arguing that the CommInS system's use of a single, common file format for all ingested content—both advertising and non-advertising—inherently met this limitation, as any formatted advertisement could potentially be displayed with any application.

5. Relief Requested

• Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1-25 of the ’849 patent as unpatentable.