Zillow Inc v. IBM Corp

1. Case Identification

• Case #: IPR2020-01656
• Patent #: 8,315,904
• Filed: September 18, 2020
• Petitioner(s): Zillow Group, Inc. and Zillow, Inc.
• Patent Owner(s): International Business Machines Corp.
• Challenged Claims: 1-5, 7-10

2. Patent Overview

• Title: Organization for Promotion Management
• Brief Description: The ’904 patent relates to marketing automation software systems. The core technology involves generating message templates, automatically populating those templates with data from a database to create promotion instances, and tracking campaign results to compile statistics.

3. Grounds for Unpatentability

Ground 1: Claims 1-5 and 7-10 are anticipated by Reuning.

• Prior Art Relied Upon: Reuning (Application # 2002/0087573).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner conducted a detailed, element-by-element mapping, arguing the Reuning ’573 application discloses every limitation of the challenged claims. Petitioner asserted Reuning’s "Automated Prospector and Targeted Advertisement Assembly and Delivery System" teaches the claimed marketing campaign method. Specifically, Reuning’s system compiles a database of candidate contact information and uses this data as variable inputs in a mail merge with an advertising template to create customized advertisements; Petitioner equated this to the claimed method of "producing... a promotion list for a promotion management campaign." The petition argued that Reuning’s use of advertising templates (with selectable media types, images, and headlines) and professional profile records (with normalized data fields) inherently teaches "generating... a promotion instance from a promotion template."
  • Reuning’s "Postal Marketer" software interface, which allows an operator to search for advertisements by date or advertiser and search contact databases using keywords, was argued to directly teach the claim limitations of "receiving... a search query," "searching one or more data repositories," and "returning a list" of matching instances. Petitioner mapped Reuning's process—where an operator reviews a returned list of contacts, decides whether to expand or narrow it, and then submits the final list to an advertisement database—to the claimed steps of "receiving... a selection of one or more promotion instances" and "assigning the selected promotion instances to the promotions list." Finally, Reuning's disclosure of storing the assembled advertisement and the lists of targets was argued to meet the limitation of "storing the promotion list in an electronic medium."
  • Dependent Claims: Petitioner argued Reuning anticipates the dependent claims by teaching their specific additional limitations. For claim 2 (querying at runtime), the search and list-building steps in Reuning's software necessarily occur while the program is running. For claim 4 (limiting results to N), Reuning explicitly discloses a "maximum results per search" field. For claim 5 (sorting), Reuning's system is described as having a function to sort advertisements by date or firm name. For claim 7 (security policy), Reuning’s interface requires a password to access advertisement lists. For claim 9 (Boolean queries), Reuning expressly discloses an interface with 'AND' and 'OR' operators for building search queries. For claim 10 (different attribute values), Petitioner argued it is inherent that a returned list of multiple promotion instances in Reuning would have different attribute values.

4. Key Claim Construction Positions

• "promotion template" (claim 1): Petitioner argued the Patent Owner’s proposed construction ("an object with customizable attribute fields...") is amorphous and unsupported. Citing arguments made during prosecution to overcome prior art, Petitioner asserted a person of ordinary skill in the art (POSA) would understand the term to mean a template used internally by an entity's marketers that must be searchable by its attributes. This construction was positioned to distinguish from customer-facing templates that the applicant had disclaimed.
• "promotion instance" (claims 1-5, 10): Petitioner contended the Patent Owner’s construction ("a specific marking communication generated from promotion templates...") is not supported by the specification and ignores prosecution history disclaimers. Petitioner argued that the applicant, when distinguishing prior art, explicitly clarified what a "promotion instance" is not: it is not based on product lists, sales promotion data, or information related to specific retail events. Petitioner asserted a POSA, guided by these disclaimers, would adopt a narrower construction consistent with the applicant’s representations to the USPTO.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial of institution would be improper under both 35 U.S.C. §325(d) and §314(a).
• Under §325(d), Petitioner asserted that the sole prior art reference, Reuning, was not cited or considered during the original prosecution. Therefore, the petition presented new art and arguments that had not been previously evaluated by the Office.
• Under §314(a) and the Fintiv factors, Petitioner argued against denial based on the status of a parallel district court case. The petition contended that: (1) the court case was in its infancy, with no trial date set and minimal investment by the parties in discovery or claim construction; (2) invalidating the ’904 patent would streamline the broader district court litigation, where eleven other patents were also asserted; and (3) the substantive merits of the anticipation ground are exceptionally strong, weighing in favor of institution.

6. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-5 and 7-10 of the ’904 patent as unpatentable.