PTAB
IPR2019-00940
Facebook Inc v. BlackBerry Ltd
1. Case Identification
- Case #: IPR2019-00940
- Patent #: 8,676,929
- Filed: April 6, 2019
- Petitioner(s): Facebook, Inc., Instagram, LLC, and WhatsApp Inc.
- Patent Owner(s): BlackBerry Limited
- Challenged Claims: 1, 5, 8-10, 13, and 16
2. Patent Overview
- Title: System and Method for Pushing Information to a Mobile Device
- Brief Description: The ’929 patent describes a system for pushing information to mobile devices. The system utilizes a server that detects a triggering event (e.g., a timer), determines relevant information from categorized "memory location channels," inserts a "meta tag" for advertisements into the content information, and transmits the combined information to the mobile device.
3. Grounds for Unpatentability
Ground 1: Obviousness of Claims 1-2, 5, 8-10, 13, and 16 over Langseth, Walther, Zeff, and Mann
- Prior Art Relied Upon: Langseth (Patent 6,671,715), Walther (a 2000 book on e-commerce programming), Zeff (a 1999 book on internet advertising), and Mann (a 1998 book on SQL Server 7).
- Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Langseth disclosed the core push-based system, including a server that detects a time-based triggering event to send categorized content from "channels" to a mobile device. However, Langseth did not detail how advertisements were inserted into the content, which was typically an HTML email. Petitioner contended Walther and Zeff supplied this missing element, teaching the well-known use of HTML tags (e.g.,
<IMG>) to insert banner ads into web documents and HTML emails. Petitioner mapped this HTML tag to the claimed "meta tag" that identifies an advertisement and its display requirements (e.g., width, height). Finally, Petitioner argued that Mann, which describes the Microsoft SQL Server 7 database system expressly mentioned in Langseth, confirmed that data stored in Langseth's "channels" resided in a "memory location." - Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) implementing Langseth’s system would have been motivated to use the standard, commercially prevalent HTML techniques taught by Walther and Zeff to insert advertisements, rather than developing a proprietary method. Zeff provided an explicit motivation by explaining that graphical ads in HTML emails attract more attention than text. Langseth’s explicit reference to Microsoft SQL Server 7 provided a direct motivation to consult Mann for implementation details on database storage.
- Expectation of Success: A POSITA would have had a high expectation of success, as the combination relied on integrating standard, off-the-shelf technologies like HTML and SQL databases that were designed to work together.
- Prior Art Mapping: Petitioner argued that Langseth disclosed the core push-based system, including a server that detects a time-based triggering event to send categorized content from "channels" to a mobile device. However, Langseth did not detail how advertisements were inserted into the content, which was typically an HTML email. Petitioner contended Walther and Zeff supplied this missing element, teaching the well-known use of HTML tags (e.g.,
Ground 2: Obviousness of Claims 1, 5, and 8 over Langseth, Walther, Zeff, and Mann, in Further View of Gilhuly
- Prior Art Relied Upon: The combination from Ground 1, in further view of Gilhuly (WO 01/22669).
- Core Argument for this Ground:
- Prior Art Mapping: This ground was presented to preemptively address any argument that Langseth did not explicitly teach "pushing" information. Gilhuly was introduced because it unambiguously discloses a "system and method for pushing information from a host system to a mobile data communication device upon sensing a triggering event." Petitioner argued that Gilhuly’s push methodology could be applied to the transmission step in Langseth’s system. The mapping for all other claim limitations remained the same as in Ground 1.
- Motivation to Combine: Both Langseth and Gilhuly recognized the importance of timely information delivery. A POSITA would combine Gilhuly's explicit push technique with Langseth’s content delivery system to ensure that valuable, time-sensitive information (like stock market updates) was delivered promptly to the user's mobile device, thereby improving the utility of Langseth's system.
- Expectation of Success: A POSITA would have expected success, as Gilhuly taught that its push technique was designed to integrate with other host systems, such as email systems like the one disclosed in Langseth.
Ground 3: Obviousness of Claims 9, 10, 13, and 16 over Langseth, Walther, Zeff, and Mann, in Further View of Laux
- Prior Art Relied Upon: The combination from Ground 1, in further view of Laux (Patent 7,406,697).
- Core Argument for this Ground:
- Prior Art Mapping: This ground specifically targeted the limitation in independent claim 9 requiring "a database organized into a plurality of memory location channels." While Petitioner asserted Langseth taught this, Laux was added as an alternative to show obviousness. Laux disclosed a "merging driver" that could treat multiple separate databases as a single, large logical database. Petitioner argued a POSITA would apply Laux's technique to Langseth’s system, where each content channel could be a separate database, to make them appear and function as a single unified database.
- Motivation to Combine: A POSITA would have been motivated to combine Laux with Langseth to increase efficiency and simplify database management. Laux’s technique would allow Langseth's server to access multiple distinct channel databases with a single query instead of connecting to each one individually, which would be particularly valuable for a large-scale system with many channels and subscribers.
- Expectation of Success: A POSITA would have expected success, as Laux taught an easily deployable software solution that did not require altering the underlying data storage, making it straightforward to implement with Langseth's database structure.
4. Key Claim Construction Positions
- "memory location channel": Petitioner noted the parties in co-pending litigation stipulated this term means "memory location" and requested the Board adopt this construction.
- "meta tag": This was a central disputed term. For the purposes of the IPR, Petitioner agreed to adopt the Patent Owner's proposed construction of an "embedded control sequence inserted to indicate when advertising should be inserted." Petitioner argued that even under this narrower construction, the prior art's disclosure of standard HTML image tags (e.g.,
<IMG SRC=...>) for inserting banner ads met the limitation.
5. Arguments Regarding Discretionary Denial
- Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was unwarranted because none of the prior art references asserted in the petition were cited during the original prosecution of the ’929 patent. Further, the asserted prior art and arguments were not the same or substantially the same as those presented in a separate IPR petition filed by another party (Snap, Inc.).
6. Relief Requested
- Petitioner requests institution of an inter partes review and cancellation of claims 1, 5, 8-10, 13, and 16 of the ’929 patent as unpatentable.