PTAB

IPR2019-00050

Fidelity Information Services LLC v. Groove Digital Inc

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1. Case Identification

2. Patent Overview

  • Title: System for Delivering Information to a Networked Device
  • Brief Description: The ’762 patent describes a system for delivering content, such as advertisements, to a user's networked device. The system deploys a non-intrusive software "applet" that appears as a small notification in a predetermined portion of the user's display, such as the corner of the screen, without interrupting the user's other activities.

3. Grounds for Unpatentability

Ground 1: Obviousness over Wilson, Backus, and Tandetnik - Claims 1, 3, 7-9, 14, 18-20, 22, 24-25, 29-31, 33, and 35-37 are obvious over Wilson in view of Backus and Tandetnik.

  • Prior Art Relied Upon: Wilson (Application # 2002/0083138), Backus (Application # 2006/0085758), and Tandetnik (Application # 2006/0053048).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Wilson served as the primary reference, disclosing a system for delivering "push-style" advertising notifications to a user's PC via a "resident media application." Wilson's system displayed the notification icon in the corner of the screen, enabled user interaction to open a browser, and utilized databases for user targeting. However, Petitioner contended Wilson lacked explicit teachings on certain non-intrusive deployment features. Backus was introduced to teach a "passive" deployment where the notification is displayed unobtrusively, allowing the user to continue interacting with other active applications without interruption. Tandetnik was introduced to supply the teaching of how the resident application is delivered (downloaded and installed) to the user's device and to teach that applets can be deployed either independent of or in conjunction with a web browser.
    • Motivation to Combine: A POSITA would combine Wilson and Backus to enhance user experience by implementing a non-intrusive notification that does not interrupt the user's workflow, a known objective in the art. Petitioner argued a POSITA would look to Tandetnik for a conventional method of delivering and installing the resident application taught by Wilson. Furthermore, incorporating Tandetnik's flexible deployment (independent of or with a browser) would further the shared goal of minimizing user disruption while effectively capturing user attention.
    • Expectation of Success: Petitioner asserted that combining these features would have been routine for a POSITA. The underlying techniques—non-intrusive alerts, software downloads from a server, and flexible applet deployment—were all well-known and commonplace at the time of the invention. Therefore, a POSITA would have reasonably expected to succeed in integrating these conventional functionalities to arrive at the claimed invention.

Ground 2: Alternative Obviousness Ground over Wilson, Backus, Tandetnik, and Carney

  • Prior Art Relied Upon: Wilson (Application # 2002/0083138), Backus (Application # 2006/0085758), Tandetnik (Application # 2006/0053048), and Carney (Application # 2002/0120518).
  • Core Argument for this Ground: This ground was presented as an alternative in the event the Board adopts a narrow construction of the "comparing" limitation that requires "geotargeting."
    • Prior Art Mapping: Petitioner argued that the primary combination of Wilson, Backus, and Tandetnik provides all claim elements except for an explicit "geotargeting" comparison. Petitioner pointed out that Wilson's user database already included users' IP addresses, a key component for geotargeting. Carney was introduced to explicitly teach using a user's IP address for geotargeting advertisements, thereby providing a direct mapping for the "comparing" element under the narrower construction.
    • Motivation to Combine: A POSITA would be motivated to combine Carney's geotargeting method with the Wilson system to deliver more geographically relevant advertisements, thereby increasing the effectiveness of the advertising campaign. Since Wilson already collected the necessary data (IP addresses), Petitioner argued that applying Carney's known technique would have been a logical and advantageous improvement to the base system.
    • Expectation of Success: The combination was presented as a mere substitution of one type of comparison (geotargeting) for another, using data already available in the primary reference system. As geotargeting was a known technique for improving ad relevance, a POSITA would have reasonably expected success in its implementation.

4. Key Claim Construction Positions

  • Petitioner argued that while the claim terms should be given their plain and ordinary meaning, an alternative ground was provided in the event the Board construes the "comparing" limitation narrowly. Based on the patent's specification and prosecution history, Petitioner acknowledged the "comparing" steps could be interpreted to require "geotargeting," and argued that even under this narrower construction, the claims remained obvious.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1, 3, 7-9, 14, 18-20, 22, 24-25, 29-31, 33, and 35-37 of the ’762 patent as unpatentable under 35 U.S.C. § 103.