PTAB

IPR2021-00484

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 ’410 patent discloses a method for internet advertising where advertisements are selected for display on a user's computer. The selection is based on one or more keywords associated with a webpage the user is viewing, combined with information linked to a unique identifier for the user's computer.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 5-8, 10-13, and 15-19 are obvious over Guyot in view of Apte.

  • Prior Art Relied Upon: Guyot (Patent 6,119,098) and Apte (Patent 7,225,142).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Guyot taught a system for targeting advertisements over the internet using a server that manages a database of advertisements and subscriber profiles. Each subscriber system has a "unique proprietary identifier" and reports usage information (e.g., internet sites accessed) back to the server, which is used to refine the user's profile for ad selection. Apte taught "content-sensitive advertising" by performing a keyword search on a webpage a user is viewing to select and stream relevant advertisements. Petitioner asserted that Guyot disclosed all limitations of independent claim 1 except for the use of keywords from a currently viewed webpage for ad selection, a gap filled by Apte.
    • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine Apte's real-time, keyword-based targeting with Guyot's profile-based system to provide more responsive and accurate advertising. This combination would overcome the inherent lag in Guyot, where ads are selected based on a historical profile, by incorporating the user's immediate context, thereby improving ad relevance and effectiveness.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because combining the known method of keyword analysis (Apte) with a user-profile database system (Guyot) involved straightforward software programming to stream ads from a server based on an additional data input, a predictable and well-understood task.

Ground 2: Claims 1-3, 5-9, 12-13, and 15-19 are obvious over Robinson, Kobata, Apte, and LeMole.

  • Prior Art Relied Upon: Robinson (Patent 5,918,014), Kobata (Patent 6,058,418), Apte (Patent 7,225,142), and LeMole (Patent 6,009,410).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted this combination taught every limitation of the challenged claims. Robinson disclosed a system for displaying targeted ads by tracking a user's web activities to determine their "community" of interests, using a "Tracking Cookie" with a unique value to re-identify the user across sessions. Kobata taught client software that detects computer infrastructure, including "applications running," to inform ad delivery. Apte again provided the teaching of using keywords from a displayed webpage. LeMole explicitly taught combining a user's pre-existing profile information (like in Robinson) with "context dependent" advertising based on recently accessed websites (like in Apte) to create a "customized ad repository."
    • Motivation to Combine: A POSITA would have been motivated to combine these references to create a comprehensive and effective ad targeting system. LeMole provided the explicit motivation to combine profile-based targeting (Robinson) with context-based targeting (Apte) to improve ad relevancy. Kobata's teaching of collecting data on running applications would be a desirable addition to further refine targeting, for instance, by determining if the user's system could handle a video advertisement.
    • Expectation of Success: The combination involved integrating known data collection and analysis techniques. A POSITA would have expected success in modifying Robinson's software to incorporate additional data inputs from Apte's keyword analysis and Kobata's application detection, as it represented an enhancement of existing functionalities using routine programming.

  • Additional Grounds: Petitioner asserted additional obviousness challenges to address specific dependent claims. These grounds relied on the same core references as Grounds 1 and 2, adding Linsk (Patent 6,138,142) for location-based targeting (claim 4), Gerace (Patent 5,848,396) for user-login requirements (claims 10-11), and RFC1635 (May 1994) for anonymous software download access (claim 14).

4. Arguments Regarding Discretionary Denial

  • §325(d) - Same or Substantially Same Art/Arguments: Petitioner argued against discretionary denial under 35 U.S.C. §325(d), asserting that none of the relied-upon prior art references were cited during the prosecution of the ’410 patent itself. Petitioner contended that even if some references were cited in parent applications, they do not qualify as having been "previously presented to the Office" for the challenged patent under the standard set in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, as the applicant did not submit them in an IDS and the examiner did not make them of record in the ’410 patent's prosecution history.
  • §314(a) - Parallel District Court Litigation: Petitioner argued against discretionary denial under 35 U.S.C. §314(a) and the Fintiv factors. It asserted that the parallel litigations were in their earliest stages, having been filed only days before the IPR petition. Key factors weighing against denial included the lack of a trial date, minimal investment by the parties in the court proceedings, no overlap in the prior art invalidity contentions, and Petitioner's intent to file a motion to stay the litigation pending the IPR outcome.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-19 of the ’410 patent as unpatentable under 35 U.S.C. §103.