PTAB

IPR2019-00419

LinkedIn Corp v. DiStefano Patent Trust III LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Reciprocal Linking Arrangement Between Web Pages
  • Brief Description: The ’760 patent relates to a computer-implemented method and server system for establishing a reciprocal linking arrangement between web pages associated with two different users. The system receives separate "opt-in" indications from both users, establishes the specific arrangement within a database, and then includes bi-directional links on each user's respective web page.

3. Grounds for Unpatentability

The petition asserted a single ground of unpatentability, predicated on the argument that the challenged claims are not entitled to their claimed priority date, which makes an ancestral patent in the same family available as prior art.

Ground 1: Obviousness over DiStefano - Claims 1-20 are obvious over DiStefano.

  • Prior Art Relied Upon: DiStefano (Patent 7,996,259).
  • Core Argument for this Ground: Petitioner's core argument was that the ’760 patent is not entitled to claim priority to its 2011 Application (or any earlier application) because the challenged claims contain new matter not supported by the earlier specifications. This break in the priority chain rendered the ancestral DiStefano (’259) patent, which issued on August 9, 2011, an intervening prior art reference under 35 U.S.C. §102. Petitioner argued that while the DiStefano disclosure was insufficient to provide written description support for the new limitations (a demanding standard), it disclosed enough of the core technology to make those same limitations obvious to a Person of Ordinary Skill in the Art (POSITA).
    • Prior Art Mapping: Petitioner asserted that DiStefano teaches the preamble limitations of a computer hardware system configured to serve web pages for a first and second user. Independent claim 1 recites a method for receiving opt-in indications from two users, establishing a reciprocal linking arrangement in a database based on the opt-ins, and including bi-directional links on each user's web page. Petitioner argued that while DiStefano does not explicitly teach receiving two opt-in indications for a common arrangement, its disclosure of establishing a "reciprocal arrangement" between a first website and a preexisting second website would have made the claimed steps obvious. DiStefano further discloses databases (e.g., a "third party user database") and implementing "functional marketing elements" (links) between websites.
    • Motivation to Combine (Modify): The argument centered on modifying the system taught in DiStefano. A POSITA would modify the DiStefano system to require explicit opt-in indications from both users as a matter of common sense and to ensure user permission before modifying their web pages, a routine aspect of website functionality. Petitioner also argued a POSITA would find it obvious to store the resulting reciprocal arrangement data in one of DiStefano’s disclosed databases to track, manage, and monetize these agreements efficiently. To support this, Petitioner cited Horstmann (Patent 5,995,099) as evidence of the state of the art, which disclosed a process where one entity must explicitly approve a reciprocal link with another.
    • Expectation of Success: A POSITA would have a high expectation of success, as implementing user consent workflows and storing relational data in a database were standard, well-understood web development tasks at the time.

4. Key Claim Construction Positions

Petitioner argued that constructions for three key features, which were central to its priority date challenge, should be adopted. Petitioner contended these features were introduced into the claims late in prosecution and lacked written description support in the priority applications.

  • Two Users Opting Into a Common Arrangement: Petitioner asserted the claims explicitly require receiving two separate indications from two different users to opt into the same single, common "reciprocal linking arrangement."
  • Reciprocal Linking Arrangement Database: The claims require "establishing, within a database... the reciprocal linking arrangement." Petitioner argued this means the specific arrangement itself, based on the mutual opt-in, must be stored in the database, not just general user or website information.
  • Bi-Directional, Linked Web Pages: Petitioner contended the claims require that each of the two web pages includes a functional hyperlink to the other, creating a truly reciprocal, two-way link structure.

5. Key Technical Contentions (Beyond Claim Construction)

Petitioner's unpatentability case was founded on two central technical-legal contentions that go beyond standard claim construction.

  • Broken Priority Chain: The primary contention was that the ’760 patent’s claims are not entitled to an effective filing date earlier than the 2012 application. This is because the 2011 Application (and its predecessors) allegedly lack the required written description to support the three key features outlined above: two users opting into a common arrangement, storing that specific arrangement in a database, and creating bi-directional linked pages.
  • Ancestor Patent as Intervening Prior Art: As a direct consequence of the broken priority chain, Petitioner argued that the DiStefano (’259) patent, which issued in 2011, qualifies as intervening prior art against the challenged claims, which could not claim priority before that date.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of Patent 8,768,760 as unpatentable.