PTAB

IPR2021-00483

Twitter Inc v. Be Technology LLC

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1. Case Identification

2. Patent Overview

  • Title: Method of Reactive Targeted Advertising
  • Brief Description: The ’440 patent relates to a method for displaying targeted advertising on a computer. The method involves selecting advertisements based on information associated with a unique identifier that identifies the user's computer.

3. Grounds for Unpatentability

Ground 1: Obviousness over Robinson, Kobata, and Angles - Claims dependent on Claim 1

  • 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 argued that the combination teaches all limitations of the base method. Robinson disclosed tracking user web activity using software with a unique identifier (a "Tracking Cookie") to determine a user's "community" and select targeted ads. Kobata taught enhancing such a system by detecting client infrastructure, including "applications running," to better inform advertising decisions (e.g., determining if a user's bandwidth could support a video ad). Angles provided the specific, well-known implementation detail for how an ad is requested, teaching an embedded request in a webpage that directs the user's computer to contact an advertisement provider.
    • Motivation to Combine: A POSITA would combine Robinson's user tracking with Kobata's infrastructure data collection to improve ad targeting efficiency and economic viability. Petitioner asserted that a POSITA would have naturally turned to a known implementation like that in Angles to provide the technical details for delivering ads within Robinson's high-level framework.
    • Expectation of Success: The combination involved applying known techniques—user tracking, infrastructure analysis, and embedded ad requests—to achieve the predictable result of a more robust and efficient targeted advertising system.

Ground 2: Obviousness over Guyot and Kikinis - Claims 2-4

  • Prior Art Relied Upon: Guyot (Patent 6,119,098) and Kikinis (WO 97/09682).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground focused on dependent claims 2-4, which add limitations for a "user library," a "user profile," and links within the profile. Petitioner argued Guyot taught the base advertising system. Kikinis was argued to disclose the dependent claim features by teaching an "Internet home page interface" that provides a user with access to a personalized set of databases and electronic documents (a "user library") via software links on an individualized home page (a "user profile"). Petitioner noted that the Board had previously found Kikinis to anticipate nearly identical claim language in a related patent.
    • Motivation to Combine: A POSITA would combine Kikinis's feature of providing remote access to a personal document library with Guyot's advertising system to provide a tangible incentive for users to download and use Guyot's tracking software.
    • Expectation of Success: Providing a valuable service (per Kikinis) in exchange for participation in an advertising system (per Guyot) was a predictable business and technical combination with a high expectation of success.

Ground 3: Obviousness over Guyot, Apte, and Angles - Claims 13-18

  • Prior Art Relied Upon: Guyot (Patent 6,119,098), Apte (Patent 7,225,142), and Angles (Patent 5,933,811).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed claims 13-18, which recite a computer with specific software and hardware features. Guyot provided the base advertising method. Apte was asserted to teach the software structure, disclosing advertising software as distinct first and second "program modules" (e.g., a browser and an advertising overlay) that present a graphical user interface (GUI) with separate regions for user-selectable items and information display. Angles taught the use of a "mobile device," such as a PDA, for receiving ads, meeting the limitation of claim 17.
    • Motivation to Combine: A POSITA would view organizing Guyot's software into modules as taught by Apte as a mere design choice for implementation. Implementing the system on a mobile device, as taught by Angles, would have been an obvious substitution of one known computing device for another to reach a wider audience.
    • Expectation of Success: Petitioner argued that rearranging software into modules and adapting a system for a mobile device were routine tasks for a POSITA that would have yielded predictable results.
  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Cheng (for software updates), Ellsworth (for file uploading/downloading), and Blumenau (for using scripting software like JavaScript) but relied on similar design modification and substitution theories.

4. Arguments Regarding Discretionary Denial

  • Against §325(d) Denial: Petitioner argued that the examiner did not substantively consider the asserted references (Guyot, Angles, Apte) during prosecution, despite their inclusion in an Information Disclosure Statement (IDS). It was contended that the examiner's review occurred when the claims were fundamentally different (i.e., limited to keyword-based advertising) and that the applicant failed to disclose the relevance of these references after the claims were completely rewritten late in prosecution.
  • Against §314(a) Denial (Fintiv): Petitioner argued the parallel district court litigation was in its earliest possible stage. The complaints were filed just days before the petition, no answer had been filed, no trial date was set, and no discovery had occurred. Consequently, Petitioner asserted that the Fintiv factors weighed heavily against discretionary denial.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 2-4, 13-24, and 28-37 as unpatentable.