Amazon.com Inc v. VB Assets LLC

1. Case Identification

• Case #: IPR2020-01374
• Patent #: 8,886,536
• Filed: July 28, 2020
• Petitioner(s): Amazon.com, Inc. et al.
• Patent Owner(s): VB Assets, LLC
• Challenged Claims: 1, 3-6, 13-16, 24-40, 43-46, 49-50, and 53-55

2. Patent Overview

• Title: System and Method for Delivering Targeted Advertisements and Tracking Advertisement Interactions in Voice Recognition Contexts
• Brief Description: The ’536 patent describes a system for selecting and presenting advertisements by processing natural language voice inputs. The system interprets a user's voice commands to determine context and then delivers promotional content relevant to the interpreted request.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kennewick in view of Yonebayashi - Claims 1, 3-6, 13-16, 24-40, 43-46, 49-50, and 53-55 are obvious over Kennewick in view of Yonebayashi.

• Prior Art Relied Upon: Kennewick (Application # 2004/0193420) and Yonebayashi (Japanese Application # 2002/297626).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kennewick discloses a foundational interactive natural language speech system that provides the framework for the claimed invention. Kennewick teaches a system that receives spoken queries, makes significant use of context and user profile data to interpret them, and responds with relevant information, including promotional offers. For example, Kennewick discloses using multiple "domain agents" to generate and score different possible interpretations of an utterance (e.g., distinguishing "temperature" as a weather query versus a measurement query) and selecting the highest-scoring one. However, Petitioner contended that Kennewick's disclosure of providing promotions is general. Yonebayashi was argued to supply the specific teachings for selecting and presenting targeted advertisements within such a system. Yonebayashi discloses a voice recognition system that interprets keywords from a user's speech (e.g., "fatigued") and uses conditional rules to present a corresponding advertisement (e.g., for an energy drink). Yonebayashi further teaches monitoring the user's subsequent voice interactions with the advertisement (e.g., "I want a different one") to reinterpret the user's request and provide alternative promotional content. Petitioner asserted that combining Yonebayashi's targeted ad-selection and interaction-monitoring logic with Kennewick's robust conversational context management system renders the challenged claims obvious. The combination was alleged to teach all limitations, including receiving multiple related utterances, using context from a first utterance to interpret a second, determining promotional content based on the interpretation, and presenting it to a user. Dependent claims were argued to be obvious as they recited conventional features also taught by the combination, such as using user profile information (Kennewick) to select ads based on item categories (Yonebayashi).
  • Motivation to Combine: Petitioner asserted a POSITA would combine Kennewick and Yonebayashi to improve upon Kennewick's system. A POSITA would have been motivated to refine Kennewick's generalized promotional feature by incorporating Yonebayashi's more sophisticated methods for selecting advertisements based on specific keywords and user interaction. This combination would achieve the predictable result of providing more relevant, timely, and interactive advertisements within Kennewick's conversational framework, which was a known goal in the art.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references. Both Kennewick and Yonebayashi describe systems with a similar high-level architecture: a voice input device, a speech recognition engine, processing logic to interpret user intent, and an output device to present information. Integrating Yonebayashi's ad-selection rules into Kennewick's processing logic was presented as a straightforward implementation for a skilled artisan.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under 35 U.S.C. §314(a) or §325(d). It was argued that denial based on the parallel district court litigation (Fintiv factors) would be improper because the litigation asserted only claim 44, whereas the IPR petition challenges a substantially broader set of claims. Denying the petition would thus undermine the AIA's objective of providing an effective alternative to litigation for the vast majority of the challenged claims.
• Petitioner further contended that denial under §325(d) was inappropriate because the primary prior art reference, Kennewick, was not substantively considered by the examiner during prosecution. Although Kennewick was cited in an Information Disclosure Statement (IDS), it was one of over 650 references listed and was not applied in any rejection, meaning the examiner did not previously evaluate the specific invalidity arguments presented in the petition.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 3-6, 13-16, 24-40, 43-46, 49-50, and 53-55 of the ’536 patent as unpatentable.