Twitter Inc v. BlackBerry Ltd

1. Case Identification

• Case #: IPR2019-01510
• Patent #: 8,296,351
• Filed: August 16, 2019
• Petitioner(s): Twitter, Inc.
• Patent Owner(s): BlackBerry Limited
• Challenged Claims: 1-11, 14-23

2. Patent Overview

• Title: System for Pushing Information to a Mobile Device
• Brief Description: The ’351 patent discloses a system for transmitting information, such as advertising, to a mobile device. The system pushes this information automatically from a server, selecting it based on a "feedback signal" indicating the device's position or in response to a time-based triggering event.

3. Grounds for Unpatentability

Ground 1: Claims 1, 3-5, 9-11, 14-17, and 21-23 are obvious over Unnold

• Prior Art Relied Upon: Unnold (WO 2001/011507).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Unnold, published before the ’351 patent’s priority date, discloses all elements of the independent claims. Unnold describes a system that automatically provides a "Tagged Message" to a wireless communication device (WCD). This message combines a personal information service message (e.g., sports score) with an advertising message. The system pushes this information based on either a pre-set schedule (a time trigger) or the occurrence of an event, such as the WCD's location. Unnold's "data processor 600" acts as the claimed "proxy content server," receiving information over the internet and storing it in an "Advertising Message Database" organized by pre-defined categories like "ADVERTISER," which function as the claimed "channels." Unnold further discloses that the transmitted information can comprise static (e.g., graphic logo), dynamic (e.g., real-time content), and default advertising information, which are combined to form a complete advertisement.
  • Motivation to Combine: Not applicable (single reference ground).
  • Expectation of Success: Not applicable (single reference ground).

Ground 2: Claims 2-3 are obvious over Unnold in view of Zellner

• Prior Art Relied Upon: Unnold (WO 2001/011507), Zellner (Patent 7,110,749), and Comer (Patent 5,588,042, incorporated by reference into Zellner).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on Unnold by adding Zellner to explicitly teach the limitations of claims 2 and 3, which specify how the location-based "feedback signal" is generated. While Unnold teaches using the location of the "nearest wireless base station," Zellner provides specific, advantageous methods for generating this signal. Claim 2 requires the signal to be generated by the mobile device itself. Petitioner asserted that Zellner discloses this, teaching a cell phone equipped with a GPS receiver that generates and transmits its location information. Claim 3 requires the signal to be generated by a base station. Petitioner argued Zellner, through its incorporation of Comer, teaches this alternative, where a mobile device registers with a cell site, and the base station automatically sends the cell's identification number to a central server, thereby generating a signal indicating the device's location.
  • Motivation to Combine: A POSITA would combine Unnold with Zellner to implement Unnold's location-based advertising system with a more precise and well-known location-determination technique. Using Zellner's GPS-based or network-based location generation would provide Unnold's system with more accurate location data, improving ad targeting and providing a clear implementation path for a known feature.
  • Expectation of Success: The combination involved applying known location-generation techniques (Zellner) to a known location-based advertising system (Unnold), so a POSITA would have a high expectation of success.

Ground 3: Claims 6-9 and 18-21 are obvious over Unnold in view of Chen

• Prior Art Relied Upon: Unnold (WO 2001/011507) and Chen (Application # 2002/0073235).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground uses Chen to supplement Unnold for claims related to the information source and how data is obtained. Claim 6 requires the information source to be a World-Wide-Web (WWW) server. While Unnold teaches receiving information via "advertiser email input," Chen explicitly discloses a system where the information source is a web server. Chen's system is configured to "distill Internet content from the web server" and transfer it to a wireless device. Claim 7 adds that the proxy server "polls" the information source at regular intervals. Chen teaches this directly, describing a "cache controller" that automatically "pulls" internet content from host systems at periodic times without a user request.
  • Motivation to Combine: A POSITA would be motivated to modify Unnold’s system using Chen's teachings to reduce the burden on advertisers. Instead of requiring advertisers to repackage content as email (per Unnold), Chen's approach allows the system to pull existing web content (e.g., HTML) directly from WWW servers. This would streamline the process, leverage existing content formats, and enable the use of more sophisticated advertising, which was a known goal.
  • Expectation of Success: Combining a WWW server source and polling mechanism (Chen) with an advertising delivery system (Unnold) was a predictable integration of known technologies to improve efficiency.

• Additional Grounds: Petitioner asserted that claims 1-11 and 14-23 are also obvious over the three-way combination of Unnold, Zellner, and Chen, relying on the same rationale presented in the grounds above.

4. Key Claim Construction Positions

• "channel": Petitioner proposed the construction "memory location," arguing the patent and prosecution history support that a channel is simply a memory location on a server or database used to store information.
• "static advertising information": Proposed as "advertising information that relates to the identity of an advertiser or that does not often change," such as a logo or address.
• "dynamic advertising information": Proposed as "advertising information that regularly changes," such as a special offering or other time-sensitive content.
• "pushing information to a mobile device": Proposed as "transmitting information to a mobile device without the transmission being initiated by a command on the mobile device to retrieve the information from the transmitter."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under §314(a) or §325(d). It contended that the Fintiv factors weighed against denial because Twitter was sued almost a year after other petitioners in related cases, was not a co-defendant, and had not coordinated its prior art strategy. Petitioner further asserted that its litigation was far behind the others by the Patent Owner's own choosing. Additionally, Petitioner argued that the prior art presented in its grounds (Unnold, Zellner, Chen) was not substantively considered during the original prosecution of the ’351 patent, making it non-cumulative and appropriate for review.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-11 and 14-23 of Patent 8,296,351 as unpatentable.