PTAB

IPR2019-00044

Groupon Inc v. Kroy IP Holdings LLC

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Incentive Program Builder Application and Award Fulfillment System
  • Brief Description: The ’660 patent discloses networked systems and methods for generating incentive programs and fulfilling awards. The technology allows sponsors to use a "builder application" on a host computer to create and offer incentive programs to consumers over a network like the Internet.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kelly and Stanek - Claims 1, 7, 14, 16-21, 25, 27-30, 67-69, 87, and 101 are obvious over Kelly in view of Stanek.

  • Prior Art Relied Upon: Kelly (Patent 5,816,918) and Stanek ("Microsoft® FrontPage Unleashed" (1996)).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kelly disclosed the core networked system for promotional gaming, including a host server providing games from a plurality of sponsors to consumers, issuing prizes, and validating awards. However, Kelly’s interface for sponsors to input promotional content was rudimentary. Stanek was argued to cure this deficiency by disclosing Microsoft FrontPage, a widely available WYSIWYG editor that allows users without programming experience to build interactive webpages, such as quizzes and forms, by entering parameters into a simple graphical user interface. The combination, Petitioner asserted, disclosed all limitations, including the "builder application," interface for sponsor entry, and database of objects.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Stanek with Kelly to improve Kelly’s system. Providing sponsors with a self-service tool like FrontPage would reduce the operational burden on the host, ensure content compatibility with the host’s system, and extend programming capability to inexperienced sponsors, a goal Petitioner noted was shared by the ’660 patent itself.
    • Expectation of Success: Petitioner asserted that combining a known web-authoring tool (Stanek) with a networked gaming system (Kelly) was technologically feasible and widely known, giving a POSITA a reasonable expectation of success.

Ground 2: Obviousness over Kelly, Stanek, and Halter - Claims 10 and 12 are obvious over Kelly and Stanek in view of Halter.

  • Prior Art Relied Upon: Kelly (Patent 5,816,918), Stanek ("Microsoft® FrontPage Unleashed" (1996)), and Halter (Patent 5,905,895).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the Kelly/Stanek combination to address specific limitations in claims 10 and 12 related to code generation and execution. These claims recite an editor, a classifying application that classifies code into numbers, a generator application for creating tables of those numbers, and an executor application to interpret the tables and execute the code. Petitioner argued that while Kelly and Stanek taught building promotional programs that could be implemented in Java, Halter taught the specific method of optimizing and executing such code. Halter discloses a system for optimizing Java bytecodes by replacing bytecode pairs with a single, optimized bytecode stored in a table, which is then interpreted and executed. This process was alleged to map directly to the claimed classifying, generating, and executing steps.
    • Motivation to Combine: Since the promotional programs in the Kelly/Stanek system could be implemented in Java, a POSITA would be motivated to improve their performance. Halter expressly identified a need for optimizing slow, non-optimal Java bytecode. Therefore, a POSITA would have been motivated to apply Halter's known optimization technique to the Java files generated by the combined Kelly/Stanek system to improve efficiency and speed.
    • Expectation of Success: Petitioner contended that applying a known code optimization technique to a known type of application was a predictable and straightforward implementation with a high expectation of success.

Ground 3: Obviousness over Kelly and Wong - Claims 1, 7, 14, 87, and 101 are obvious over Kelly in view of Wong.

  • Prior Art Relied Upon: Kelly (Patent 5,816,918) and Wong (Patent 5,890,175).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented an alternative to Ground 1, substituting Wong for Stanek. As before, Kelly provided the foundational networked promotional gaming system. Petitioner argued that Wong, like Stanek, disclosed a system that allows non-technical users (merchants) to create promotional web pages. Wong’s system uses online forms to receive input, stores the parameters in a database, and dynamically generates HTML pages. This combination allegedly met the limitations for a "builder application," an interface for sponsor input, and a database of objects associated with parameters. Wong was also argued to teach searching for promotional programs, a feature of claim 87.
    • Motivation to Combine: The motivation was identical to that for combining Kelly and Stanek: to provide an easy-to-use, self-service interface for sponsors to create promotional content for Kelly’s system. Wong represented another well-known, commercially desirable approach to simplifying web content creation for non-technical users that a POSITA would have readily integrated into Kelly's platform.
    • Expectation of Success: Given the known benefits and straightforward technical implementation of using form-based web generation tools, a POSITA would have reasonably expected success in combining Wong with Kelly.
  • Additional Grounds: Petitioner asserted an additional obviousness challenge to claims 10 and 12 based on the combination of Kelly, Wong, and Halter, which paralleled the logic of Ground 2 by substituting Wong for Stanek.

4. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 7, 10, 12, 14, 16-21, 25, 27-30, 67-69, 87, and 101 of Patent 6,061,660 C1 as unpatentable.