Quantum Metric Inc v. Content Square Israel Ltd

1. Case Identification

• Case #: IPR2021-00464
• Patent #: 7,941,525
• Filed: January 29, 2021
• Petitioner(s): Quantum Metric, Inc., Decibel Insight, Ltd., and Decibel Insight, Inc.
• Patent Owner(s): Arik Yavilevich
• Challenged Claims: 1-18

2. Patent Overview

• Title: Method and System for Monitoring an Activity of a User
• Brief Description: The ’525 patent describes techniques for recording, analyzing, and replaying a user's interactions with a webpage. The system uses a tracking code to collect user activity information, which is then compressed and transmitted to a server for playback and analysis, including a feature to compensate for differences in display sizes between the original user and the playback device.

3. Grounds for Unpatentability

Ground 1: Obviousness over Koeppel, Hentzel, and Smith - Claims 1, 2, 4, 6, 8-9, 12-16, 18 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 taught a system for monitoring user responses to webpages to determine content effectiveness. Koeppel’s client-side scripts collected detailed user activity (mouse movements, scrolling) and associated it with properties like the position and size of visible page elements, creating an "invariant form" of data relative to page components. However, Koeppel only described statistical analysis, not session playback, and did not explicitly teach compressing the "enormous amount" of collected data. Hentzel taught a system that explicitly recorded and played back user web sessions, including all inputs from mouse and keyboard, and disclosed compressing this data before transmission. The key limitation added during prosecution, compensating for visual differences during playback via a "non-linear transformation" in a "piece-wise-linear fashion," was not taught by Koeppel or Hentzel. Petitioner asserted Smith supplied this missing element by teaching a method for dynamically resizing user interface elements for different-sized displays using interpolative formulas based on two or more constraint images, which results in a piece-wise linear resizing of individual elements and a non-linear resizing of the page as a whole.
  • Motivation to Combine: A POSITA would combine Koeppel with Hentzel to add the well-known benefit of session playback/visualization to Koeppel's statistical analysis, providing a more robust system for analyzing user behavior. The motivation to add Hentzel's compression was to efficiently manage the large volume of data Koeppel's system was designed to collect. A POSITA would then be motivated to incorporate Smith's resizing technology to solve the obvious problem that arises during playback: the playback device (e.g., an analyst's monitor) may have a different display size than the original user's device. Smith provided a known solution for resizing user interfaces for different-sized windows.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because combining the references involved applying known techniques (session playback, data compression, UI resizing) to their conventional fields of use to achieve predictable results and improve the overall system.

Ground 2: Obviousness over Koeppel, Hentzel, Smith, and Zwicky - Claims 3, 5, and 17 are obvious over the combination of Ground 1 and Zwicky.

• Prior Art Relied Upon: Koeppel (Application # 2005/0177401), Hentzel (Patent 6,877,007), Smith (Patent 7,484,182), and Zwicky (Patent 8,832,055).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the combination in Ground 1. Dependent claims 3, 5, and 17 require determining whether to track user activity based on a "feature of the user" or a "previous visit of the user." While the primary combination taught determining whether to track activity, it did not explicitly disclose making this determination based on repeat visits. Zwicky taught a tracking system that used client-side cookies to "efficiently detect repeat visits" and could ignore or discount recording these repeat sessions to avoid collecting extraneous or duplicated data.
  • Motivation to Combine: A POSITA would be motivated to add Zwicky's teachings to the primary combination to make the data collection more efficient. By using Zwicky's method of detecting repeat visitors, the system could avoid tracking sessions that might be duplicative or provide an incomplete view of a user's activity (e.g., a user who leaves and quickly returns), thereby creating a more resource-efficient and actionable dataset.
  • Expectation of Success: The combination involved implementing a known technique (using cookies to detect repeat visits) into a similar user-tracking system to gain a predictable benefit (more efficient data collection).

• Additional Grounds: Petitioner asserted additional obviousness challenges based on the core combination of Koeppel, Hentzel, and Smith, with the addition of single prior art references to meet specific dependent claim limitations. These included challenges over:

  • Booth (Patent 6,345,307) for claim 7’s "variable length compression scheme."
  • Thomason (Patent 7,526,530) for claim 10’s "hashing textual information."
  • Ernst (Application # 2004/0103215) for claim 11’s "transmitting an uncompressed portion" of data, arguing for selective compression.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv was inappropriate because the parallel district court litigations were in a very early stage, with no discovery or claim construction, making a stay likely. Petitioner asserted a Final Written Decision (FWD) would issue months before any potential trial date. Further, Petitioner stipulated it would not pursue the same grounds in district court if the IPR was instituted.
• Petitioner also argued against denial under §325(d), contending that the petition raised new issues and art not before the Examiner. Specifically, the petition relied on Smith, which was never cited during prosecution, to teach the key "compensation of differences" limitation that was dispositive for the patent's allowance. Petitioner asserted this presented a substantially different challenge than what the Office previously considered.

5. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-18 of the ’525 patent as unpatentable.