LinkedIn Corporation v. DiStefano Patent Trust III, LLC

1. Case Identification

• Case #: IPR2019-00419
• Patent #: 8,768,760
• Filed: December 14, 2018
• Petitioner(s): LinkedIn Corporation
• Patent Owner(s): DiStefano Patent Trust III, LLC
• Challenged Claims: 1-20

2. Patent Overview

• Title: Reciprocal Linking Arrangement Between Web Pages
• Brief Description: The ’760 patent describes a computer-implemented method and system for establishing a reciprocal linking arrangement between web pages associated with two different users. The system receives separate "opt-in" indications from each user, establishes the arrangement in a database, and then includes functional identification elements (links) on each user's web page pointing to the other.

3. Grounds for Unpatentability

The petition's central thesis is that the Challenged Claims are not entitled to their claimed priority date of 2000 (or even 2011) due to a lack of written description support in the priority applications. Petitioner contended this break in the priority chain makes the inventor's own earlier patent, DiStefano (’259), which issued in August 2011, invalidating prior art under 35 U.S.C. §102/§103.

Ground 1: Obviousness over DiStefano - Claims 1-20 are obvious over DiStefano (’259)

• Prior Art Relied Upon: DiStefano (Patent 7,996,259). Petitioner also cited Horstmann (Patent 5,995,099) and a 1995 book, HTML & CGI UNLEASHED, as evidence of the knowledge of a person of ordinary skill in the art (POSITA) regarding common website functionality.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that because the Challenged Claims are not entitled to a pre-2012 priority date, DiStefano (’259)—an ancestor patent in the same family with a nearly identical specification—qualifies as intervening prior art. Petitioner contended that DiStefano (’259) discloses the core elements of the claimed invention, including a system for establishing a linking arrangement between a first and second website. The primary differences between the claims and the DiStefano (’259) disclosure are the explicit requirements for (1) receiving separate opt-in indications from both users for a common arrangement, and (2) establishing this specific reciprocal arrangement within a database.
  • Motivation to Combine (Modify): Petitioner asserted a POSITA would be motivated to modify the system in DiStefano (’259) to include these missing features. It would have been common sense and routine design to require explicit consent (an "opt-in") from a second user before modifying their web page, as it is undesirable to create links without permission. Citing Horstmann, Petitioner noted that systems for obtaining user approval for reciprocal links were well-known. A POSITA would also be motivated to store the opt-in information in a database to track agreed-upon arrangements, distinguish them from other links, ensure the arrangements were honored, and facilitate marketing and monetization.
  • Expectation of Success: Petitioner argued a POSITA would have had a high expectation of success because implementing explicit user opt-ins and storing related data in a database were routine, well-understood website programming tasks at the time.
  • Key Aspects: Petitioner argued that independent claims 1 (method) and 11 (apparatus) are substantively identical. The dependent claims were argued to be obvious as they add conventional features also taught or suggested by DiStefano (’259), such as requiring registered users, identifying the target web page, dynamically generating pages, and using an image as a link.

4. Key Claim Construction Positions

Petitioner asserted that specific claim constructions are critical to determining that the priority applications lack the required written description support.

• "Two Users Each Opting Into A Common Reciprocal Linking Arrangement": Petitioner argued this phrase requires two separate opt-in indications for the same bi-directional arrangement. The use of "a first indication" and "a second indication to opt into the reciprocal linking arrangement" dictates a single, common arrangement that both parties agree to.
• "Reciprocal Linking Arrangement Database": Petitioner contended this requires a database that explicitly stores information defining the specific reciprocal arrangement that the two users have opted into.
• "Bi-Directional, Linked Web Pages": Petitioner argued this language requires that the first user's web page must contain a link to the second user's page, and the second user's web page must contain a link back to the first.

5. Key Technical Contentions (Beyond Claim Construction)

The petition's invalidity case rests on the technical contention that the Challenged Claims lack written description support in the priority applications, particularly the 2011 Application, thereby breaking the priority chain.

• No Mutual Opt-In: Petitioner contended the 2011 Application fails to describe two distinct users opting into a common arrangement with each other. The priority specification only describes a single user opting to participate in a general linking program or having their site's links displayed on other sites; it does not disclose a second user opting into a specific, mutual arrangement with the first.
• No Reciprocal Linking Database: Petitioner argued that while the 2011 Application discloses several databases (e.g., a "third party user database"), none are described as storing information about a specific reciprocal linking arrangement that two users have mutually opted into. The disclosed databases store general user information or web assets, not the state of a mutual agreement.
• No Bi-Directional Linking: Petitioner asserted the 2011 Application describes only uni-directional linking (e.g., displaying links to other websites on one user's "reciprocal link site") or placing one user's banner ad on another's site. It allegedly fails to disclose the claimed requirement that both websites must link back to each other.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate because the specific unpatentability ground—obviousness over the inventor's own intervening DiStefano (’259) patent—was never addressed by the Examiner during prosecution. The Examiner never considered whether the Challenged Claims were entitled to their effective priority date or whether DiStefano (’259) qualified as prior art.

7. Relief Requested

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