PTAB

IPR2019-00193

Fidelity Information Services LLC v. Groove Digital Inc

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1. Case Identification

2. Patent Overview

  • Title: System and Method 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 device via a software application that deploys small, non-obtrusive "applets" or notifications. These applets are designed to display in a predetermined portion of the user's screen without interrupting the user's primary activities.

3. Grounds for Unpatentability

Ground 1: Claims 2, 4-6, 10-13, 15-17, 21, 23, 26-28, 32, and 34 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 taught the foundational system for delivering targeted advertisements as non-intrusive notifications (applets) to a user's computer from a remote server. Wilson's system included a resident application on the user's PC, push-style notifications, user databases for targeting, and the ability to launch a browser upon user interaction. Petitioner contended that Backus supplemented Wilson by explicitly teaching a less-intrusive, "passive" deployment where a user can continue interacting with other applications while the notification is displayed in a predetermined screen location. Finally, Tandetnik was introduced to teach deploying an applet either independent of or in conjunction with a browser and making the applet "idle" after a user interacts with it to launch a browser, a feature Petitioner argued was not explicitly detailed in Wilson.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Wilson and Backus to improve user experience—a primary goal in the field—by ensuring Wilson's notifications were minimally disruptive, as taught by Backus. A POSITA would further incorporate Tandetnik's teachings to provide flexible deployment options (with or without a browser) and to properly manage the applet's lifecycle by making it idle after use, thereby preventing user confusion and improving system efficiency. These combinations represented the pursuit of known goals using predictable solutions.
    • Expectation of Success: Petitioner asserted a POSITA would have a reasonable expectation of success because combining the references involved applying conventional programming techniques for displaying notifications and managing application states (e.g., idle states), which were well-known and commonplace at the time of the invention.

Ground 2: Contingent Ground - Claims 2, 4-6, 10-13, 15-17, 21, 23, 26-28, 32, and 34 are obvious over Wilson, Backus, and Tandetnik in view of 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, contingent on a narrow construction of the "comparing" limitation in the claims to specifically require "geotargeting."
    • Prior Art Mapping: Petitioner argued that the base combination of Wilson, Backus, and Tandetnik rendered the claims obvious under a plain and ordinary meaning of "comparing." However, if the term required geotargeting, Carney was introduced to supply this specific teaching. Carney explicitly disclosed using a user's IP address—which Wilson already collected and stored—to perform geotargeting for delivering location-relevant advertisements. The addition of Carney's method would satisfy the narrowly construed "comparing" limitation.
    • Motivation to Combine: A POSITA would be motivated to integrate Carney's geotargeting into the system of Wilson/Backus/Tandetnik to enhance advertisement relevance. Using geographic location to target ads was a known and powerful method for increasing campaign effectiveness, providing a clear reason to modify Wilson's existing targeting system.
    • Expectation of Success: A POSITA would have reasonably expected to succeed in this combination because it involved using existing data (IP addresses in Wilson) for a known purpose (geotargeting as taught by Carney) to achieve a predictable improvement in advertising performance.

4. Key Claim Construction Positions

  • Petitioner's primary position was that all claim terms should be given their plain and ordinary meaning. However, the petition dedicated a substantial alternative argument to the term "comparing" as recited in the independent claims.
  • "Comparing": Petitioner anticipated that the Patent Owner might argue for a narrow construction requiring "geotargeting." While Petitioner's main ground relied on a broader construction satisfied by Wilson's comparison of user demographics to campaign criteria, it presented the contingent ground with Carney to demonstrate obviousness even under the narrower, geotargeting-specific interpretation.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 2, 4-6, 10-13, 15-17, 21, 23, 26-28, 32, and 34 of the ’762 patent as unpatentable under 35 U.S.C. §103.