Twitter Inc v. Be Technology LLC

1. Case Identification

• Case #: IPR2021-00482
• Patent #: 8,769,440
• Filed: February 24, 2021
• Petitioner(s): Twitter, Inc. and Google LLC
• Patent Owner(s): B.E. Technology, L.L.C.
• Challenged Claims: 1, 5-12, and 25-27

2. Patent Overview

• Title: Method of Reactive Targeted Advertising
• Brief Description: The ’440 patent describes a method for displaying targeted advertisements to users over a network. The method involves transferring software to a user's computer, which records computer usage information (including programs run), determines a unique identifier for that computer, and allows for the selection and delivery of advertisements based on information associated with that unique identifier.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 5-7, 10-12, and 26-27 by Guyot

• Prior Art Relied Upon: Guyot (Patent 6,119,098).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Guyot discloses every limitation of claim 1. Guyot describes a system for distributing targeted advertisements over the Internet between a server and multiple "subscriber systems." Guyot teaches downloading a "client application" (software) to the subscriber's computer, which is configured to display advertisements and record computer usage by tracking the user's Internet browsing history. Each subscriber system is assigned a "unique proprietary identifier," and the server selects targeted ads based on a personal profile associated with this identifier. The client application then periodically accesses the server to request and download the selected advertisements for display, thus meeting the core limitations of receiving a request and providing the ad in response. Petitioner noted that the Board and Federal Circuit previously found Guyot to disclose very similar limitations in a related patent.

Ground 2: Obviousness of Claims 1, 5-7, 9-12, and 25-27 over Robinson, Kobata, and Angles

• Prior Art Relied Upon: Robinson (Patent 5,918,014), Kobata (Patent 6,058,418), and Angles (Patent 5,933,811).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Robinson, the primary reference, discloses most limitations of claim 1. Robinson teaches displaying targeted advertising based on tracking a user's online activities (e.g., visited websites) using "cookies" that contain a unique user identifier. Robinson also discloses that a user could download an application to their machine to track these activities. To meet the limitation of recording usage information that "includes data regarding one or more programs run on the computer," Petitioner combined Robinson with Kobata. Kobata explicitly teaches client software that detects "the applications running" on a PC to gather infrastructure data for ad targeting. To explicitly teach "receiving a request for an advertisement from the computer," Petitioner added Angles. Angles describes that an "embedded advertisement request" in an electronic document directs the user's computer to communicate with an advertisement provider to fetch an ad.
  • Motivation to Combine: A POSITA would combine Kobata with Robinson to enhance ad targeting. Robinson's system relies on web history, and Kobata teaches that collecting data on running applications is also useful for ad decisions (e.g., determining if a user's system can handle a video ad), providing a clear motivation to incorporate this more detailed data collection. A POSITA would combine Angles with Robinson because Robinson's system requires a mechanism for ad delivery, and Angles provides well-known implementation details for how a client computer requests an ad from a server. This represents choosing a known, predictable solution to implement a part of Robinson's broader system.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining these references, as it involved incorporating known data collection techniques (Kobata) and a standard ad request mechanism (Angles) into an existing targeted advertising framework (Robinson) to achieve the predictable result of a more robust advertising system.
• Additional Grounds: Petitioner asserted additional obviousness challenges, such as combining Guyot or the Robinson combination with Lazarus (Patent 6,134,532) for keyword-based advertising (claim 8) and with Angles for mobile device and wireless implementation (claim 9).

4. Arguments Regarding Discretionary Denial

• §325(d) Arguments: Petitioner argued that discretionary denial under §325(d) was inappropriate because the examiner did not substantively consider the key prior art during prosecution of the ’440 patent. Although Guyot and Angles were listed in an Information Disclosure Statement (IDS), the claims were significantly amended to their current form long after the IDS was filed, and the examiner never applied or discussed these references in any rejection. Furthermore, the primary obviousness reference, Robinson, was never before the examiner at all. Petitioner contended this represented a material error by the Office that the IPR should correct.
• §314(a) (Fintiv) Arguments: Petitioner argued against discretionary denial under Fintiv because the parallel district court litigation was in its earliest possible stage. The patent owner's complaints were filed only days before the IPR petition. At the time of filing, no answers had been filed, no trial date was set (with the median time to trial in that venue being 38.8 months), and no significant investment in the parallel proceeding had occurred. Therefore, Petitioner asserted that the Fintiv factors weighed strongly against denying institution.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 5-12, and 25-27 of the ’440 patent as unpatentable.