Snap Inc v. Palo Alto Research Center LLC

1. Case Identification

• Case #: IPR2021-00986
• Patent #: 9,208,439
• Filed: May 21, 2021
• Petitioner(s): Snap Inc.
• Patent Owner(s): Palo Alto Research Center Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Contextual Intelligence Platform for Mobile Devices
• Brief Description: The ’439 patent describes a generalized method for collecting contextual information from a mobile device, using that information to modify a "context graph" that models a user's behavior and interests, and providing notifications of changes in the context graph to a recommender system.

3. Grounds for Unpatentability

Ground 1: Obviousness over Nitz and Nykanen - Claims 1-4, 7-10, and 13-16 are obvious over Nitz in view of Nykanen.

• Prior Art Relied Upon: Nitz (Patent 9,015,099) and Nykanen (Patent 6,714,778).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Nitz teaches most limitations of independent claims 1, 7, and 13. Nitz discloses a method and system for inferring a mobile user’s context from various inputs (contextual data), using an inference engine to derive events (e.g., "walking"), and storing facts and assertions about the user in a knowledge base. Petitioner contended this knowledge base is analogous to the claimed "context graph" and that Nitz’s "mobile advisor" functions as the claimed "recommender." However, Petitioner asserted that Nitz does not explicitly teach determining if a registration exists for notifications or sending a notification of a context graph change to the recommender. This missing element, Petitioner argued, is supplied by Nykanen, which discloses a context inference engine that provides user context information to application programs that "may be registered to receive any changes to specific context information."
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Nykanen's registration and notification mechanism with Nitz's context-aware system to improve efficiency. This combination would allow the recommender in Nitz to receive only relevant updates for which it has registered, conserving processing power and bandwidth by avoiding the transmission of all data, including unchanged or irrelevant data, from the knowledge base.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in implementing this combination, as it involved applying a known notification technique (from Nykanen) to a known context-based system (Nitz) to achieve the predictable result of more efficient data transmission.

Ground 2: Obviousness over Nitz, Nykanen, and Mishra - Claims 6, 12, and 18 are obvious over Nitz in view of Nykanen and Mishra.

• Prior Art Relied Upon: Nitz (Patent 9,015,099), Nykanen (Patent 6,714,778), and Mishra (Application # 2012/0135751).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the Nitz and Nykanen combination from Ground 1 to address the limitations of claims 6, 12, and 18, which require "receiving bulk upload of event data through an event posting interface." While Nitz discloses a network interface for posting events, Petitioner argued it does not expressly teach bulk uploading. Mishra was introduced to teach this element, as it discloses storing data in a "data package" on a mobile device and uploading the package to a server, with multiple packages being stored and uploaded, potentially in batches.
  • Motivation to Combine: A POSITA would be motivated to incorporate Mishra's teachings of bulk/batch uploading into the Nitz/Nykanen system. This would build upon Nitz's disclosure of posting data periodically and provide a foreseeable and efficient method for updating the knowledge base, particularly when continuous data transmission is impractical or network connectivity is intermittent.
  • Expectation of Success: The modification was presented as a straightforward application of a known data communication technique (batch uploading) to enhance the functionality of the base system, with a high expectation of success.

Ground 3: Obviousness over Nitz, Nykanen, and Chang - Claims 5, 11, and 17 are obvious over Nitz in view of Nykanen and Chang.

• Prior Art Relied Upon: Nitz (Patent 9,015,099), Nykanen (Patent 6,714,778), and Chang (Application # 2012/0046966).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addresses the limitations of claims 5, 11, and 17, which require receiving real-time event data through a "RESTful WebAPI." The base combination of Nitz and Nykanen does not disclose this specific interface. Petitioner argued that Chang teaches the use of a RESTful API to "provision the wellness management functionalities" of its system, describing it as a known and simple web service supporting standard HTTP methods.
  • Motivation to Combine: A POSITA would combine Chang's teachings to implement a known, simple, and versatile web service protocol (RESTful API) for handling the real-time data communication in the Nitz/Nykanen framework. This would provide a standardized and alternate way to update the remote knowledge base, increasing the system's versatility and interoperability.
  • Expectation of Success: Implementing a well-known API technology like REST into the base system was argued to be a predictable modification for a POSITA, with a reasonable expectation of success.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combining Nitz and Nykanen with Mccolgan (Application # 2012/0096114) for claim 19 (arguing Mccolgan teaches a publish/subscribe system using a long-poll persistent push connection) and with Sathish (Patent 8,010,669) for claim 20 (arguing Sathish teaches notifying a recommender of topological changes and changes to node/edge properties in a context model).

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) based on Fintiv factors would be inappropriate. Petitioner contended that a stay of the parallel district court litigation (Palo Alto Research Center Inc. v. Snap Inc.) was likely, as the presiding judge has consistently granted such motions. Furthermore, it was argued that the district court case was in its infancy, with significant work like claim construction yet to occur. To mitigate any overlap, Petitioner stipulated that it would not pursue invalidity of the ’439 patent in the district court based on any ground on which IPR is instituted.

5. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-20 of the ’439 patent as unpatentable.