Twitter Inc v. Be Technology LLC

1. Case Identification

• Case #: IPR2021-00485
• Patent #: 8,549,411
• Filed: February 24, 2021
• Petitioner(s): Twitter, Inc. and Google LLC
• Patent Owner(s): B.E. Technology, L.L.C.
• Challenged Claims: 1-19

2. Patent Overview

• Title: Method of Reactive Targeted Advertising
• Brief Description: The ’411 patent describes a method for providing targeted advertising to a user's computer over a network. The method involves transferring software to the computer that records usage, determining a unique identifier for the computer, retrieving user demographic information, and selecting an advertisement based on the usage and the unique identifier.

3. Grounds for Unpatentability

Ground 1: Obviousness over Guyot and MacNaughton - Claims 1-3, 6-9, 11-16, 18, and 19 are obvious over Guyot in view of MacNaughton.

• Prior Art Relied Upon: Guyot (Patent 6,119,098) and MacNaughton (Patent 5,796,393).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Guyot disclosed a system for targeting and distributing advertisements over the Internet that meets most limitations of the challenged claims. Guyot’s system used a server that communicated with multiple subscriber systems, each having a “unique proprietary identifier.” The system collected user data, including personal profiles and internet sites visited, to select and deliver targeted ads. To meet the limitation of software configured for "user messaging capabilities," Petitioner relied on MacNaughton, which described a web browser extension manifested as a toolbar that allowed users to interact with community members, such as through a "Chat" capability.
  • Motivation to Combine: A POSITA would combine MacNaughton’s messaging features with Guyot’s advertising system to achieve MacNaughton’s stated goal of "enhancing a computer user's Internet browsing experience." Adding such interactive features would provide an additional incentive for users to download and use Guyot’s software, which was consistent with Guyot’s objectives.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in the combination because MacNaughton taught implementing its features in the context of a common web browser (Netscape Navigator), and Guyot’s system was designed to operate within a web browser environment.

Ground 2: Obviousness over Robinson, MacNaughton, and Angles - Claims 1-4, 6-8, 10, 13, 15-16, and 18-19 are obvious over Robinson in view of MacNaughton and Angles.

• Prior Art Relied Upon: Robinson (Patent 5,918,014), MacNaughton (Patent 5,796,393), and Angles (Patent 5,933,811).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Robinson taught a method for displaying targeted web advertising by tracking a user's activities and using a "Tracking Cookie" as a unique identifier to associate information with that user. Robinson disclosed analyzing user activity (e.g., visited websites) to determine a user’s "community" and then selecting ads based on that community's characteristics. Robinson’s disclosure of tracking user browsing habits via downloadable software was argued to meet the core limitations of claim 1. As in Ground 1, MacNaughton was cited for its teaching of user messaging capabilities. Angles was added to provide a well-known implementation for the claim step of "receiving a request for an advertisement," as Angles described an embedded advertisement request in an electronic document that directs the user's computer to communicate with an advertisement provider.
  • Motivation to Combine: A POSITA would combine Robinson and MacNaughton to enhance the user browsing experience. A POSITA would have been motivated to incorporate Angles' teachings because Angles provided explicit implementation details, including flow charts and diagrams, for the well-known process of delivering targeted ads to a webpage, which would be a predictable way to implement Robinson's system.
  • Expectation of Success: The combination would have been a predictable integration of known elements for their intended purposes. Combining Robinson's tracking and ad selection with Angles' ad delivery mechanism would predictably result in a functional targeted advertising system.

• Additional Grounds: Petitioner asserted additional obviousness challenges against various claims based on combinations including Linsk (for location-based advertising), Kobata (for unique software serial numbers), Gerace (for user logins), RFC1635 (for anonymous FTP downloads), and Robinson (in combination with Guyot for cookie implementation).

4. Key Claim Construction Positions

• "user demographic database": Petitioner argued this term should be construed to encompass data sets already stored on a user's computer, such as a browser bookmark file. This position was based on the patent's own definition of a "data set" as a "group of data items; for example, links," and the prosecution history, where a narrower "address book" limitation was broadened to the current term to overcome a prior art rejection. This construction was central to arguing that Robinson's disclosure of using bookmark files to track users met this limitation.

5. Arguments Regarding Discretionary Denial

• §325(d) - Previously Presented Art: Petitioner argued against discretionary denial under 35 U.S.C. §325(d), asserting that none of the primary references relied upon in the petition were cited by the examiner or made of record by the applicant during the prosecution of the ’411 patent itself. Petitioner contended that even if some references were considered in parent applications, the examiner did not meaningfully consider them, particularly Robinson.
• §314(a) - Parallel Litigation (Fintiv): Petitioner argued that the Fintiv factors weighed against discretionary denial under 35 U.S.C. §314(a). It was noted that the parallel district court proceedings were in their earliest possible stage, with amended complaints having been filed only days before the petition. No answer had been filed, no trial date was set, and no significant investment had been made in the litigation, making an inter partes review (IPR) a more efficient resolution.

6. Relief Requested

• Petitioner requested the institution of an IPR trial and the cancellation of claims 1-19 of the ’411 patent as unpatentable.