PTAB

IPR2018-01743

Expedia, Inc. v. International Business Machines Corporation

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1. Case Identification

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 in an interactive computer network environment. The invention describes a reception system, such as a personal computer, that can pre-fetch and store advertising objects for presentation alongside application content in different partitions of a display screen.

3. Grounds for Unpatentability

Ground 1: Claims 1-25 are obvious over Architecture and BCIS in view of NYT Editions.

  • Prior Art Relied Upon: Architecture (D. Gifford et al., "An Architecture for Large Scale Information Systems," a 1985 ACM Symposium paper), BCIS (J. Lucassen et al., "Boston Community Information System User Manual," a 1985 user manual), and NYT Editions (various 1985-1987 editions of The New York Times).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of Architecture and BCIS, which describe the server-side and client-side aspects of the same MIT information retrieval system ("CommInS"), discloses every element of the challenged claims. The CommInS system delivered content from various sources, explicitly including The New York Times, over a network to a multiplicity of user PCs (reception systems). Petitioner contended that BCIS teaches a client-side application that allowed users to create queries (a "filter list") to selectively pre-fetch and store articles in a local database, which meets the limitation of "selectively storing" objects. The NYT Editions reference was used to show that the content delivered by this system necessarily included various forms of advertising, such as movie reviews, home video release announcements, classifieds, and regional event listings. Petitioner asserted that the CommInS system presented summaries of these articles, including the advertising articles, in a single display window, thereby presenting advertising concurrently with applications (the list of article summaries). The system structured all content, including ads, as data objects (files with standard fields), satisfying the "structuring" limitations.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Architecture and BCIS because they describe complementary parts of the same CommInS project, created by the same researchers at MIT, and a POSITA would need both to understand the complete system. A POSITA would combine these with the NYT Editions because the CommInS system was expressly designed to ingest and deliver content from The New York Times. To understand the full scope of content available, a POSITA would have naturally looked to the newspaper itself, which was replete with advertising. Furthermore, market demand and user surveys cited in the prior art showed a strong interest in accessing classified advertising online, providing a clear economic and practical motivation to ensure such content was included in the system.
    • Expectation of Success: A POSITA would have had a high expectation of success in implementing the claimed features. The CommInS system already demonstrated the technical capability to ingest, format, broadcast, and display text-based articles from the NYT. Since the advertising content in the NYT (e.g., classifieds, event listings) was also text-based and followed predictable formats, incorporating it into the existing CommInS data pipeline would have been a straightforward extension using known methods. Other prior art systems had already demonstrated the feasibility of putting newspaper classifieds online, confirming success was predictable.

4. Key Claim Construction Positions

  • “object(s)”: Petitioner argued this term should be construed as “data structure(s).” This construction was central to their argument, as the prior art CommInS system described its content (articles and summaries) as individual files with a standardized format, which Petitioner contended are types of data structures.
  • “selectively storing advertising objects at a store established at the reception system”: Petitioner proposed this be construed as “pre-fetching advertising objects and storing...in anticipation of display concurrently with the applications.” This construction was critical for mapping to the BCIS system, where a background process on a user's PC pre-fetched and stored articles based on a user-defined filter list before any specific request to view them.
  • “structuring advertising in a manner compatible to that of the applications...”: Petitioner argued this should be construed as “formatting advertising for potential use with a plurality of applications.” This broad construction supported the argument that because both news articles and advertisements in the prior art were formatted as text files with similar metadata fields (e.g., date, subject), they were structured in a "compatible" manner as required by the claims.

5. Key Technical Contentions (Beyond Claim Construction)

  • The petition’s central technical contention was that the prior art CommInS system, as detailed in Architecture and BCIS, was not merely a collection of disparate concepts but a functioning, real-world system that was a direct embodiment of the claimed invention. Petitioner argued that any system designed in the mid-1980s to deliver the full content of a newspaper like The New York Times would have inherently delivered, structured, and displayed advertising, as advertising was an inseparable and economically vital part of newspaper content. Therefore, the routine operation of the CommInS system necessarily resulted in the concurrent presentation of advertising and applications as claimed.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-25 of the ’849 patent as unpatentable under 35 U.S.C. §103.