Quantum Metric Inc v. Content Square Israel Ltd

1. Case Identification

• Case #: IPR2021-00363
• Patent #: 9,508,081
• Filed: December 31, 2020
• Petitioner(s): Quantum Metric, Inc. and Decibel Insight, Ltd.
• Patent Owner(s): Content Square SAS
• Challenged Claims: 1-22

2. Patent Overview

• Title: Method and System for Monitoring an Activity of a User
• Brief Description: The ’081 patent discloses methods and systems for tracking a user's activity on a web page. The system uses tracking code to record user interactions (e.g., scrolling, mouse movements) and capture information about web page elements (e.g., position, size), compresses this information, and transmits it to a tracking server for analysis and playback, which includes compensating for display differences between the user's original display and the playback display.

3. Grounds for Unpatentability

Ground 1: Claims 1-22 are obvious over Koeppel, Hentzel, and Smith.

• Prior Art Relied Upon: Koeppel (Application # 2005/0177401), Hentzel (Patent 6,877,007), and Smith (Patent 7,484,182).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Koeppel teaches the core system of monitoring and collecting detailed user activity on a web page, including collecting coordinate and size information of page components to analyze their effectiveness. Petitioner contended that Hentzel complements Koeppel by teaching the compression of this user activity data before transmission and the subsequent server-side playback of the recorded user session. To address the "compensating for differences" limitation, Petitioner asserted that Smith teaches a method for dynamically resizing web application elements using linear or non-linear formulas to adapt the layout for display in windows of different sizes, a problem encountered when replaying a session on a device with a different screen size.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Koeppel and Hentzel because Koeppel's collection of an "enormous amount" of data makes Hentzel's compression a logical and known step for transmission efficiency, and Hentzel's session playback provides a well-known visualization tool to complement Koeppel's statistical analysis. A POSITA would further incorporate Smith because replaying a session on a different device (as in Hentzel) with a potentially smaller display presents a known problem of fitting content; Smith provides a known and obvious solution for resizing web content for different display dimensions.
  • Expectation of Success: Combining these known techniques for their intended purposes—data compression for efficiency, session replay for visualization, and dynamic resizing for cross-device compatibility—would have predictably resulted in an improved and more robust user activity monitoring system.

Ground 2: Claims 1-22 are obvious over Koeppel, Hentzel, Smith, and Montero.

• Prior Art Relied Upon: Koeppel (Application # 2005/0177401), Hentzel (Patent 6,877,007), Smith (Patent 7,484,182), and Montero (Patent 6,133,912).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground relied on the same combination of Koeppel, Hentzel, and Smith as Ground 1. Petitioner added Montero to provide an explicit teaching for the server-side decompression of the received user activity data, a step argued as inherent or obvious in Ground 1. Montero discloses compressing a "clicked event report packet" for efficient transmission and subsequently decompressing the packet at the server before storing and analyzing the data.
  • Motivation to Combine: The motivation to combine Koeppel, Hentzel, and Smith remained the same as in Ground 1. A POSITA would be further motivated to incorporate Montero's teaching because, after receiving the compressed data packet from the user's client as taught by Hentzel, it is a necessary and predictable step to decompress that data at the server to make it usable for the analysis (Koeppel) and playback (Hentzel) functions. Montero explicitly teaches this decompression step in a similar context.
  • Expectation of Success: Adding a standard decompression step (Montero) to a system that uses compression (Hentzel) would predictably enable the server-side components (from Koeppel and Hentzel) to properly function and analyze the collected data.

4. Arguments Regarding Discretionary Denial

• Arguments against §314(a) Discretionary Denial (Fintiv Factors): Petitioner argued that all Fintiv factors weighed in favor of institution. The parallel district court litigations were in a very early stage with no substantive progress, making a stay likely. The Final Written Decision (FWD) in the inter partes review (IPR) would issue months before any speculative trial date, a timeline difference likely exacerbated by court delays. Petitioner asserted diligence in filing the IPR well within the statutory bar, and the parties' investment in the court litigation was minimal. Finally, Petitioner stipulated not to pursue the IPR grounds in district court if the IPR is instituted, eliminating overlap, and argued the strong merits of the petition served the interest of system efficiency.
• Arguments against §325(d) Discretionary Denial: Petitioner argued denial under §325(d) was inappropriate because the petition relied on art and arguments substantially different from those considered during prosecution. The primary references of Hentzel, Smith, and Montero were never before the Examiner. While Koeppel was previously cited as a secondary reference for a discrete feature, this petition used it as a primary reference in a new combination. Critically, Smith was argued to teach the "compensating for differences" limitation, which the Examiner had previously concluded was missing from the art of record, thus presenting a new issue for consideration.

5. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 1-22 of Patent 9,508,081 as unpatentable.