Zillow Inc v. IBM Corp

1. Case Identification

• Patent #: 7,076,443
• Filed: September 18, 2020
• Petitioner(s): Zillow Group, Inc. and Zillow, Inc.
• Patent Owner(s): International Business Machines Corp.
• Challenged Claims: 1-7, 9-17, 19, and 20

2. Patent Overview

• Title: System and Technique for Automatically Associating Related Advertisements to Individual Search Results Items of a Search Result Set
• Brief Description: The ’443 patent describes methods for targeting advertisements in an e-commerce context. The core technology involves receiving search results, using those results to find related advertisements from a repository, and presenting those advertisements to the user, often in conjunction with the original search results.

3. Grounds for Unpatentability

Ground 1: Anticipation over Linden - Claims 1-7, 9-17, 19, and 20 are anticipated by Linden under 35 U.S.C. §102.

• Prior Art Relied Upon: Linden (Patent 6,266,649).
• Core Argument:
  • Prior Art Mapping: Petitioner argued that Linden taught every limitation of the challenged claims. Linden described a recommendation service for an e-commerce website (e.g., Amazon.com) that recommends items to users based on a set of items known to be of interest. Petitioner contended that these "recommendations" are equivalent to the "advertisements" of the ’443 patent. The "items of known interest" in Linden, such as items a user places in a shopping cart, were equated with the "search result items" of the ’443 patent, as they are the direct result of a user's search and selection activities.
  • Linden taught a process of identifying these search result items (e.g., books added to a cart) and then searching a repository (a "similar items table") for related advertisements (other recommended books). This search used content-based filtering, comparing item descriptions to find matches, thus meeting the limitation of matching based on keywords. The resulting advertisements were then correlated with the search result by being displayed on the same webpage, such as the shopping cart page, often as hypertextual links. For independent claim 15, Petitioner argued Linden’s system matched search result items to related advertisements and provided a graphical user interface (GUI), like a "More Recommendations" button, to retrieve and display them.
  • Dependent claims were allegedly met by Linden's disclosure of providing recommendations on-demand (e.g., via an "Instant Recommendations" hyperlink), associating the repository with an internet server, and using user-selectable icons. Linden also taught using unique user IDs to track purchase histories and storing recommendation data, including identifiers like URLs, for later use.

Ground 2: Anticipation over Bull - Claims 1-7, 9-17, 19, and 20 are anticipated by Bull under 35 U.S.C. §102.

• Prior Art Relied Upon: Bull (Patent 5,995,943).
• Core Argument:
  • Prior Art Mapping: Petitioner asserted that Bull disclosed all elements of the challenged claims through its description of an "information aggregation and synthesization system" for contextual advertising. The system analyzed a user's real-time online activity—the "text stream of the user's interactive session"—to determine user interests. Petitioner equated a web page requested by a user with a "search result item" from the ’443 patent.
  • Bull's system then identified an associated advertisement by searching an "ad DataStore" (the repository) for ads that matched the content of the user's viewed page. This matching was based on "software text agents" that looked for word-based patterns, thereby meeting the keyword matching limitation. The system correlated the advertisement with the search result by inserting it directly into the web page being viewed. For independent claim 15, Petitioner contended that Bull taught matching search results to ads, using a GUI (e.g., clickable image icons or "hot links"), and retrieving the ad when the GUI is selected.
  • Dependent claims were allegedly met by Bull's disclosure of providing ads "on demand" when a user requests a web page, using an internet server to host the system, and storing "hot links" (URLs) in its advertising datastore. Bull also described an off-line "Post Session Activity" analysis to identify ads for future sessions and a "true/false" logic (a "flag") to determine if an ad should be inserted.

4. Key Claim Construction Positions

• "using said at least one search result item" (Claim 1): Petitioner argued this term should be given its plain and ordinary meaning, which does not require "inputting a keyword" as proposed by the Patent Owner. They contended the claim language does not restrict how a search result item is used to find an advertisement.
• "on demand by said user" (Claim 2): Petitioner asserted that the Patent Owner’s proposed construction ("upon the user selecting the graphical user interface") was nonsensical. They argued it improperly implied a user must select the entire interface (e.g., a whole browser window) rather than a specific element within it, such as an icon or link, to trigger the on-demand action.
• "storing" (Claim 12): Petitioner argued against the Patent Owner's attempt to limit "storing" to "caching." They contended that "caching" is just one narrow form of storage and that the term "storing" should be given its broader, plain meaning, which is not limited to temporary storage.
• "a user identifier" (Claim 10): Petitioner argued the Patent Owner's proposed construction ("a session value") was contradicted by the specification, which explicitly mentions using a URL as an identifier for an advertisement, not a user.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be improper because the prior art references, Linden and Bull, were not cited or considered during the original prosecution of the ’443 patent. Therefore, the petition raised new art and new arguments.
• Petitioner also argued against discretionary denial under §314(a) based on the Fintiv factors. They asserted that: (1) no stay was yet in place in the parallel district court case; (2) no trial date had been set, and a trial was not expected until after a Final Written Decision (FWD) in the IPR; (3) investment in the parallel litigation was minimal, with no claim construction briefing or substantial discovery completed; and (4) the petition's merits were exceptionally strong, weighing in favor of institution to streamline the district court case.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-7, 9-17, 19, and 20 of Patent 7,076,443 as unpatentable.