PTAB

IPR2019-00762

Free Stream Media Corp v. Alphonso Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System for Network-Based Clickstream Data Capture
  • Brief Description: The ’384 patent discloses a system for capturing viewer commands (clickstream data) from a television viewer appliance, such as a set-top box. The system forwards these commands to a remote network component for storage and analysis, which purports to eliminate the need for local data storage on the viewer's device, and uses the captured data for demographic profiling and targeted advertising.

3. Grounds for Unpatentability

Ground 1: Obviousness over Swix-PCT and Grauch-PCT - 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 the core system of the independent claims. Swix-PCT discloses a head-end system that receives user commands from a set-top box (STB) for remote demographic profiling and targeted advertising. Critically, Petitioner asserted that an alternative embodiment in Swix-PCT teaches a remote file server recording command data "instead of" the STB, thereby eliminating the need for local storage and meeting a key limitation of the challenged claims. Grauch-PCT was argued to supplement Swix-PCT by teaching the capture of a wider variety of "non-channel change" commands (e.g., volume adjustments, power on/off), which provides a more complete viewership profile than tracking channel changes alone.
    • Motivation to Combine: A POSITA would combine these references as they address the same problem of improving ad targeting, share a common inventor, and Swix-PCT explicitly cross-references the application corresponding to Grauch-PCT. Petitioner contended that combining Grauch-PCT's more granular command tracking with Swix-PCT's core system was a simple, predictable step to improve the quality and accuracy of the demographic profiles used for ad targeting.
    • Expectation of Success: The proposed combination involved applying a known data collection technique to an existing, similar system to achieve a predictable improvement, providing a strong expectation of success.

Ground 2: Obviousness over Swix-PCT, Grauch-PCT, and Matz-PCT - 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 on the Swix/Grauch combination to address dependent claims requiring contextual analysis. Petitioner asserted that Matz-PCT taught the claimed concept of "matching the command to a present context" (e.g., claim 3). Matz-PCT discloses a system that correlates subscriber actions not just with demographic data but also with specific content databases (e.g., what program was being viewed) and other subscriber attributes (e.g., purchase history) to better identify "desirable subscribers." This contextual analysis was argued to be the same as that required by the dependent claims.
    • Motivation to Combine: A POSITA would be motivated to add Matz-PCT's advanced profiling techniques to the Swix/Grauch system to improve its effectiveness. Matz-PCT and Swix-PCT share a common inventor, and incorporating Matz-PCT's contextual analysis would directly serve the primary goal of delivering more effective targeted advertising, which was a strong design incentive. The combination would allow the system to better understand viewer behavior relative to specific content, leading to more relevant ad placements.
    • Expectation of Success: Petitioner argued that implementing Matz-PCT’s teachings represented a predictable variation, as it involved applying more advanced, but known, data correlation techniques to the base system to achieve the self-evident benefit of more precise and effective ad targeting.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under 35 U.S.C. §325(d), asserting that the obviousness grounds presented in the petition were not substantively considered during prosecution. The petition explained that while the Examiner reviewed U.S. versions of the Grauch and Matz references, those versions were disqualified from being used in obviousness combinations due to common ownership under pre-AIA 35 U.S.C. §103(c). Petitioner contended the Examiner overlooked the earlier-published PCT versions of this art, which are not subject to the same disqualification and were therefore available for the obviousness combinations asserted in the petition. Thus, the core patentability question over these prior art combinations was never decided on its merits.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-7 and 17-23 of the ’384 patent as unpatentable.