PTAB

IPR2019-00061

Groupon Inc v. Kroy IP Holdings LLC

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Incentive Program Generation and Award Fulfillment
  • Brief Description: The ’660 patent discloses networked systems and methods for building and managing incentive programs. The technology allows multiple sponsors to use a central host computer and a "builder application" to create and offer customized promotions (e.g., discounts, coupons) to consumers over a network like the Internet.

3. Grounds for Unpatentability

Ground 1: Anticipation by Chelliah - Claims 1, 7, 14, 16-21, 25, 27-30, 67-69, 87, and 101 are anticipated by Chelliah

  • Prior Art Relied Upon: Chelliah (Patent 5,710,887).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Chelliah discloses every element of the challenged claims. Chelliah describes a centralized electronic commerce system, analogous to an "electronic mall," that hosts multiple electronic storefronts for a plurality of sponsors. This system includes an "Incentives Subsystem" and a "Store Management Dashboard" interface that function as the claimed "incentive program builder application." Through this dashboard, sponsors can create various incentive programs (e.g., coupons, frequent-buyer discounts) by inputting parameters such as duration and discount amounts. Chelliah further disclosed a database for storing incentive program objects, a mechanism for consumers to select from the plurality of available programs, the issuance of awards, and the validation of those awards against a redemption database. Petitioner contended this prior art system meets all limitations of the independent claims, including the host, sponsor, and consumer being different entities operating over a network.

Ground 2: Obviousness over Chelliah and Christensen - Claims 1, 7, 14, 16-21, 25, 27-30, 67-69, 87, and 101 are obvious over Chelliah in view of Christensen

  • Prior Art Relied Upon: Chelliah (Patent 5,710,887) and Christensen (Patent 6,035,280).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner presented this ground as an alternative, asserting that if the Board finds Chelliah fails to disclose the claim limitation requiring receipt of a request to validate an award and subsequent validation, Christensen remedies this deficiency. Christensen taught a system for distributing and redeeming electronic coupons for multiple manufacturers, which included validating awards against a central database in real-time at a retail location during checkout. The combination of Chelliah’s incentive-building platform with Christensen’s real-time validation method would result in the claimed invention.
    • Motivation to Combine: A POSITA would combine Chelliah and Christensen to enhance the security and integrity of the electronic incentive system. Both references addressed the known problem of potential fraud associated with electronic coupons. Incorporating Christensen's robust, real-time validation scheme into Chelliah's comprehensive platform was a logical step to create a more secure and commercially viable system for a plurality of sponsors.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in combining the references, as it involved integrating a known validation software module into a known e-commerce framework, a predictable and common task in software engineering.

Ground 3: Obviousness over Chelliah and Halter - Claims 10 and 12 are obvious over Chelliah in view of Halter

  • Prior Art Relied Upon: Chelliah (Patent 5,710,887) and Halter (Patent 5,905,895).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground specifically addressed the detailed code generation limitations recited in claims 10 and 12, which Chelliah did not explicitly disclose. These claims require an "editor for generating an electronic file containing code," a "classifying application" to represent code as numbers, a "generator application" for creating tables of these numbers, and an "executor application" to interpret the tables and execute the code. Petitioner argued that Halter disclosed these exact features in the context of optimizing and executing Java bytecode. Halter taught compiling code (editor), replacing bytecode pairs with optimized codes from a table (classifying/generator applications), and using an interpreter to execute the optimized code (executor application).
    • Motivation to Combine: A POSITA would have been motivated to combine Halter's teachings with Chelliah's system to improve performance. Chelliah’s object-oriented system could be implemented using Java. Halter expressly addressed the problem of slow, non-optimal Java bytecode and provided a solution for optimizing it. A POSITA would thus apply Halter’s optimization and execution process to the incentive programs generated by Chelliah’s system to make them run faster and more efficiently, a clear and desirable advantage.
    • Expectation of Success: Integrating a known code optimization technique (Halter) into a larger software application (Chelliah) was a well-understood and predictable engineering task, ensuring a high expectation of success.

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 the ’660 patent as unpatentable.