Google LLC v. Uniloc 2017 LLC

1. Case Identification

• Case #: IPR2020-00115
• Patent #: 8,407,609
• Filed: October 31, 2019
• Petitioner(s): Google LLC
• Patent Owner(s): Uniloc 2017 LLC
• Challenged Claims: 1-3

2. Patent Overview

• Title: Tracking Digital Media Presentations
• Brief Description: The ’609 patent describes a method for tracking user viewing of digital media presentations. The system uses a "timer applet" on the user's computer to periodically send identifier data back to a server system, allowing the system to determine the duration of media consumption, which can be used to value advertising space.

3. Grounds for Unpatentability

Ground 1: Anticipation over Hayward - Claim 1 is anticipated by Hayward under 35 U.S.C. §102.

• Prior Art Relied Upon: Hayward (Application # 2004/0045040).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Hayward disclosed every element of claim 1. Hayward taught a system for displaying video data using an embedded media player page provided by a "first computer system" (customer and log system) to a user's computer. The embedded page included "scripting" that functioned as a timer, instructing the user's computer to transmit messages containing a unique media file identifier back to the log system at predetermined intervals. This allowed the system to calculate the approximate length of time the media player page was open. The media itself was streamed directly to the user from a "second computer system" (a distinct media file source) independent of the first system, satisfying all limitations of claim 1. Petitioner contended that a POSA would have understood Hayward's use of "Java" scripting to inherently include the use of an applet.

Ground 2: Obviousness over Hayward and Middleton - Claim 1 is obvious over Hayward in view of Middleton under 35 U.S.C. §103.

• Prior Art Relied Upon: Hayward (Application # 2004/0045040) and Middleton (Application # 2002/0111865).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that even if Hayward’s "scripting" was not explicitly an "applet," the combination with Middleton rendered the "applet" limitation obvious. Hayward disclosed the core system of tracking viewing duration by sending periodic messages from a client. Middleton taught using a Java applet to track user interactions with web page objects, such as advertisements, including "how long an object...is displayed."
  • Motivation to Combine: A POSITA would combine Middleton's teaching of using a Java applet with Hayward's system as a predictable design choice. Hayward itself identified Java as a potential scripting language, and applets were a known and common implementation of Java for client-side programming. A POSITA would have been motivated to implement Hayward's tracking functionality using an applet to gain its known technical benefits, such as superior performance, threading capabilities for concurrent tasks, and class-based inheritance for more modular and maintainable code compared to alternatives like JavaScript.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because implementing client-side tracking logic using a well-understood technology like a Java applet was a straightforward application of known principles to achieve a predictable result.

Ground 3: Obviousness over Hayward, Middleton, and Ryan - Claims 2 and 3 are obvious over Hayward (or Hayward and Middleton) in combination with Ryan under §103.

• Prior Art Relied Upon: Hayward (Application # 2004/0045040), Middleton (Application # 2002/0111865), and Ryan (Patent 6,421,675).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed dependent claims 2 and 3, which required "incrementing a stored value" upon receiving data indicative of a "temporal cycle passing." Hayward's system stored timestamps for each periodic message (a temporal cycle) to calculate total viewing time. Ryan taught a search engine that tracked how long a user spent on a webpage to gauge its relevance. Ryan disclosed incrementing a "weighting factor X" based on the time spent on the page, with longer times corresponding to a higher value. Claim 3's limitation that the received data is indicative of a temporal cycle passing was met by Hayward's periodic messages.
  • Motivation to Combine: A POSITA would combine Ryan’s teachings with the Hayward/Middleton system to provide more valuable data to advertisers. While Hayward’s system could determine how long a user viewed content, Ryan’s method provided a way to quantify user interest. A POSITA would have been motivated to modify Hayward's log system to increment a stored value with each received message, similar to Ryan's weighting factor, to create a more nuanced metric for ad valuation beyond simple duration.
  • Expectation of Success: The combination involved applying a known data processing technique (incrementing a value from Ryan) to a known data collection system (Hayward/Middleton) to enhance its functionality. This was a simple and predictable modification with a high expectation of success.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) or related doctrines would be inappropriate. The petition asserted it raised new grounds of unpatentability, as no reference relied upon was considered during the original prosecution.
• Petitioner also addressed two earlier-filed IPRs against the ’609 patent by different petitioners (Sling TV, Netflix, and Roku). It argued this petition was not redundant because it presented a different invalidity theory (anticipation under §102) and relied on different prior art references than the obviousness combinations asserted in the other petitions. Petitioner stated it had no relationship with the other petitioners and had not benefited from those proceedings, as no institution decision or Patent Owner response had been issued at the time of filing.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-3 of Patent 8,407,609 as unpatentable.