PTAB

IPR2019-00941

Facebook Inc v. BlackBerry Ltd

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1. Case Identification

2. Patent Overview

  • Title: System and Method for Pushing Information to a Mobile Device
  • Brief Description: The ’351 patent describes a system for pushing information, such as advertisements, to a mobile device. The system features a "proxy content server" that receives information from various sources, stores it into categorized "channels" (defined as memory locations), and transmits the information to a mobile device based on feedback signals like the device's geographical location or other triggering events.

3. Grounds for Unpatentability

Ground 1: Obviousness over Noble and Hassett - Claims 1-2, 9, 14-15, and 21 are obvious over Noble in view of Hassett.

  • Prior Art Relied Upon: Noble (International Publication No. WO 01/61559) and Hassett (Patent 6,807,558).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Noble disclosed a push-based system for delivering promotional information to mobile devices based on location or time triggers. Noble’s server corresponded to the claimed "proxy content server," which received information from merchants ("information source") over a network. Noble also taught receiving a location update from the mobile device, which acted as a "feedback signal" to trigger the push of relevant promotional information. However, Petitioner contended Noble did not explicitly detail how information was organized and stored. Hassett, an earlier push-technology patent, allegedly supplied this missing element by describing a LAN server that stores information in an information database. Hassett explicitly taught organizing information, like news stories and advertisements, into pre-defined categories (e.g., "News," "Sports") using data access tables, where each advertisement file represented a "channel" or memory location.
    • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would combine Noble and Hassett because they addressed the same field of push technology. A POSITA implementing Noble's system would have looked to known, analogous systems like Hassett to find a conventional method for organizing and storing the promotional data. Hassett’s category-based storage using data tables offered a predictable solution to the problem of managing information for retrieval in Noble. This combination would have enhanced Noble’s system by enabling better organization and prioritization of content, such as creating queues of advertisements for specific categories.
    • Expectation of Success: A POSITA would have a high expectation of success, as the combination involved applying a well-established and predictable data organization method from Hassett to the analogous server system in Noble.

Ground 2: Obviousness over Noble, Mann, and Johnson - Claims 1-2, 9, 14-15, and 21 are obvious over Noble in view of Mann and Johnson.

  • Prior Art Relied Upon: Noble (WO 01/61559), Mann (a 1998 book, Microsoft SQL Server 7 for Dummies), and Johnson (Patent 6,456,234).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground presented an alternative rationale, arguing that the claimed category-based storage was merely the obvious application of pervasive, off-the-shelf relational database technology. Noble again provided the primary system. Mann was cited for its teachings on the fundamental structure of relational databases, explaining that information is stored in tables comprised of columns (pre-defined categories) and rows (records). Storing a piece of data in a specific column of a record corresponded to storing information in a "channel" (memory location) "based on" a "pre-defined information category." Johnson, which described a push-delivery system strikingly similar to Noble's, was used to confirm the obviousness of this approach by disclosing a server that uses a relational database with specific fields (e.g., location, time criteria, content) to store and push promotional information to mobile devices.
    • Motivation to Combine: Petitioner argued a POSITA would be strongly motivated to implement Noble's database storage using the standard relational database techniques taught by Mann. Using a readily available, well-understood, and stable technology like a relational database would have been an obvious design choice over creating a custom data storage solution. Johnson’s disclosure of a similar system using a relational database confirmed that this was a common and logical approach in the field. The popularity and ease of use of systems like Microsoft SQL Server provided express motivation to use such tools.
    • Expectation of Success: Success would be virtually assured, as this ground involved applying the most common and predictable form of database storage to Noble's system.

  • Additional Grounds: Petitioner asserted additional obviousness challenges (Grounds 3 and 4) by adding De Boor (WO 99/59283) to the combinations of Grounds 1 and 2, respectively. De Boor was cited to address a potentially narrow interpretation of the claim limitation requiring a "combination of the static advertising information with one of the dynamic...advertising information comprises an advertisement."

4. Key Claim Construction Positions

  • "channel": Petitioner requested the Board adopt the construction "memory location," noting this was stipulated by the parties in parallel district court litigation and is consistent with the patent's specification.
  • "proxy content server": Petitioner identified this term as disputed in litigation but argued that the Board did not need to formally construe it. Petitioner asserted that the servers disclosed in the prior art would satisfy the claim limitation under the plain and ordinary meaning of the term as well as under either party's proposed construction from the parallel litigation.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §325(d) would be inappropriate. It was contended that the petition did not present the same or substantially the same prior art or arguments previously presented to the USPTO. The primary reference, Noble, was never cited during prosecution. While Hassett was listed on an Information Disclosure Statement (IDS), it was never the subject of an Office Action or substantively discussed by the Examiner, which Petitioner argued is insufficient to trigger denial under §325(d).

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-2, 9, 14-15, and 21 of the ’351 patent as unpatentable.