Amazon.com Inc v. VB Assets LLC

1. Case Identification

• Case #: IPR2020-01377
• Patent #: 8,886,536
• Filed: July 29, 2020
• Petitioner(s): Amazon.com, Inc. and affiliated entities
• Patent Owner(s): VB Assets, LLC
• Challenged Claims: 1-2, 7-13, 16-23, 25, 27, 30, 39, 41-42, 44, 47-48, and 50-52

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 targeted advertisements to a user by processing natural language voice-based inputs. The system interprets the user's spoken commands to determine relevant promotional content and presents it to the user.

3. Grounds for Unpatentability

Ground 1: Claims 1, 13, 16, 25, 27, 30, 39, 44, and 50 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 mobile, interactive natural language speech system that provides promotional offers and services. For example, Kennewick teaches a system that can receive spoken queries for a travel route and provide promotional offers from merchants along that route. However, Kennewick's promotion selection is broad. Yonebayashi was argued to supply the missing limitations by teaching an interactive speech system that selects and presents appropriate advertisements based on interpreting the user's voice input, using conditional rules based on keywords, dialog history, and user preferences (e.g., likes/dislikes).
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Kennewick and Yonebayashi to improve Kennewick's system. Specifically, a POSITA would incorporate Yonebayashi’s teachings on interpreting user voice input and dialog history to refine the selection of promotions in Kennewick's system. This would allow the combined system to select from a wider and more relevant range of advertisements, providing a better user experience consistent with the goals of both references.
  • Expectation of Success: Both references describe similar architectures for interactive speech systems, providing a clear path for integration. A POSITA would have reasonably expected success in using Yonebayashi's more sophisticated ad-selection criteria to enhance Kennewick's existing framework for providing location-based promotional offers.

Ground 2: Claims 2, 7-12, 17-18, 21-23, 41-42, 47-48, and 51-52 are obvious over Kennewick and Yonebayashi, further in view of Cohen.

• Prior Art Relied Upon: Kennewick (Application # 2004/0193420), Yonebayashi (Japanese Application # 2002/297626), and Cohen (Patent 6,859,776).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the Kennewick/Yonebayashi combination to address dependent claims requiring the determination of an "activity" from the user's utterances and basing promotional content on that activity. Petitioner argued Cohen discloses a voice-activated browser that determines and performs activities in response to user speech (e.g., making an airline reservation) and then provides promotional content based on that activity (e.g., offering a rental car promotion after the flight is booked). This supplies the limitations not explicitly taught by Kennewick or Yonebayashi.
  • Motivation to Combine: A POSITA would have been motivated to modify the Kennewick/Yonebayashi system with Cohen's teachings to improve promotional targeting. Basing promotional content on a completed user activity, rather than just an interpretation of an utterance, results in more timely and relevant advertisements. For example, offering a rental car after a flight to that destination is booked is more effective than offering it based on a mere query about flights.
  • Expectation of Success: Incorporating Cohen's activity-based promotion method would be a logical enhancement to the base system. This would reduce the amount of information a user needs to provide, making the speech dialog "quicker and more pleasant," which is a stated goal in Cohen and a predictable outcome of the combination.

Ground 3: Claims 19 and 20 are obvious over Kennewick, Yonebayashi, and Cohen, further in view of Treyz.

• Prior Art Relied Upon: Kennewick (Application # 2004/0193420), Yonebayashi (Japanese Application # 2002/297626), Cohen (Patent 6,859,776), and Treyz (Patent 6,526,335).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targets claims 19 and 20, which depend from claim 17 and add limitations related to navigation routes and media items. Petitioner argued that Treyz discloses an in-automobile computer system that determines and calculates a navigation route in response to a voice command and provides targeted promotional content based on that route (e.g., information on nearby restaurants). Treyz also discloses presenting media items (e.g., song previews) and then offering different promotional content based on that media item (e.g., an offer to purchase the full CD).
  • Motivation to Combine: A POSITA would combine Treyz with the other references to add specific, valuable functionalities to the voice-advertising system. Kennewick already disclosed location-based marketing, and a POSITA would find it obvious to incorporate Treyz's more specific method of targeting promotions based on a user's calculated navigation route. This represents a natural and predictable improvement for a system designed for in-vehicle use.
  • Expectation of Success: The four references share common goals of improving user interaction with speech-enabled systems for accessing goods and services. A POSITA would have reasonably expected that incorporating Treyz's proven techniques for navigation-based promotions and interactive media would successfully enhance the capabilities of the base Kennewick/Yonebayashi/Cohen system.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under §314(a) or §325(d).
• The petition challenged 38 claims of the ’536 patent, whereas the parallel district court litigation only involved an allegation of infringement for a single claim (claim 44). Denying institution would deprive the Petitioner of the AIA’s intended efficient alternative to litigation for the 37 other challenged claims.
• Regarding §325(d), Petitioner asserted that although the Kennewick reference was cited in an Information Disclosure Statement (IDS) during prosecution, it was part of a list containing over 650 references and was never substantively considered or applied by the examiner. Therefore, the examiner did not have a meaningful opportunity to review the reference in the manner presented in the petition.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-2, 7-13, 16-23, 25, 27, 30, 39, 41-42, 44, 47-48, and 50-52 of the ’536 patent as unpatentable under 35 U.S.C. §103.