PTAB

IPR2019-00762

Free Stream Media Corp., d/b/a Samba TV v. Alphonso Inc.

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1. Case Identification

2. Patent Overview

  • Title: Method and System for Capturing Clickstream Data
  • Brief Description: The ’384 patent disclosed a system for capturing user commands (clickstream data) from a viewer appliance, such as a set-top box (STB). The system forwarded these commands concurrently to a remote component for storage and analysis, purportedly eliminating the need for the viewer appliance to store the clickstream data locally.

3. Grounds for Unpatentability

Ground 1: Claims 1-2, 6-7, 17, 20, and 23 are obvious over Swix-PCT in view of Grauch-PCT.

  • Prior Art Relied Upon: Swix-PCT (International Publication No. WO 01/47156) and Grauch-PCT (International Publication No. WO 98/31114).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Swix-PCT taught a system for providing targeted advertisements by tracking and storing viewer selections from an STB, which are sent to a remote head-end for processing and demographic profiling. This was alleged to teach the core limitations of independent claims 1, 17, and 20, including receiving content, receiving a command at a viewer appliance, and forwarding it to a remote component for demographic profiling. Petitioner asserted that Grauch-PCT taught a more comprehensive method of tracking a wider variety of user interactions beyond channel changes, such as volume adjustments, which are also useful for demographic profiling. The combination, therefore, allegedly rendered the claimed invention obvious.
    • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSA) would combine these references because they were from the same field, addressed the same problem of improving targeted advertising through clickstream analysis, and taught complementary solutions. Swix-PCT explicitly referenced the U.S. application corresponding to Grauch-PCT, which would have led a POSA to consider its teachings. A POSA would combine Grauch-PCT's more detailed data collection with Swix-PCT's ad-targeting system to create a more complete and effective viewership profile, thereby improving ad targeting.
    • Expectation of Success: A POSA would have had a reasonable expectation of success because the combination involved applying a known data collection technique (Grauch-PCT) to improve a similar, known system (Swix-PCT), which was a predictable integration of complementary technologies.

Ground 2: Claims 3-5, 18-19, and 21-22 are obvious over Swix-PCT in view of Grauch-PCT and Matz-PCT.

  • Prior Art Relied Upon: Swix-PCT (WO 01/47156), Grauch-PCT (WO 98/31114), and Matz-PCT (International Publication No. WO 03/052662).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination in Ground 1 to address dependent claims requiring "matching the command to a present context" (claim 3) and "determining a result of the command" (claim 5). Petitioner argued that Matz-PCT taught advanced consumer profiling by correlating subscriber clickstream data with content databases (e.g., what program was showing) and subscriber attribute databases. This process of cross-referencing user actions with programming and demographic data was argued to meet the "matching" and "result determining" limitations. For example, Matz-PCT taught creating subscriber content-choice data by merging subscriber actions with content data, which determined the context of the command and the result (i.e., what content the user chose to watch).
    • Motivation to Combine: Petitioner asserted that a POSA would be motivated to incorporate Matz-PCT's teachings into the Swix/Grauch system to enhance its profiling capabilities. Scott Swix was a named inventor on both Swix-PCT and Matz-PCT, suggesting a common lineage of inventive concepts. A POSA would have recognized that the advanced profiling taught by Matz-PCT—identifying "desirable subscribers" based on deeper context—was a natural and beneficial improvement to the targeted advertising system of Swix-PCT, providing a more granular understanding of viewer behavior.
    • Expectation of Success: Success was expected because Matz-PCT's teachings represented a logical, incremental improvement to the Swix/Grauch system. Combining these compatible systems to achieve more effective ad targeting was a predictable design choice for a POSA.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §325(d) was not warranted because the obviousness grounds presented in the petition were never considered by the Examiner during the original prosecution.
  • Ground 1 (Swix/Grauch): While the Examiner was aware of Swix-PCT and a related U.S. patent version of Grauch-PCT (the ’478 patent), the Examiner never combined them. The Examiner was precluded from using the ’478 patent in an obviousness rejection because it was §102(e) prior art commonly owned with the ’384 patent, barring its use under §103(c). Petitioner argued the Examiner overlooked that the Grauch-PCT publication was §102(b) prior art, which was not subject to the same disqualification and was available for an obviousness combination.
  • Ground 2 (Swix/Grauch/Matz): Matz-PCT was never disclosed to or considered by the Examiner. The Examiner did consider a related U.S. patent (Matz ’979) but withdrew an obviousness rejection after the applicant argued it was disqualified under §103(c) due to common ownership. Petitioner contended that, like Grauch-PCT, the earlier-published Matz-PCT was §102(a) prior art and was not disqualified, meaning the Examiner never evaluated the merits of the combination presented in the petition.

5. Relief Requested

  • Petitioner requested that the Board institute an inter partes review (IPR) of claims 1-7 and 17-23 of the ’384 patent and find them unpatentable.