Facebook Inc v. Palo Alto Research Center Inc

1. Case Identification

• Case #: IPR2021-01294
• Patent #: 8,489,599
• Filed: July 20, 2021
• Petitioner(s): Facebook, Inc.
• Patent Owner(s): Palo Alto Research Center Inc.
• Challenged Claims: 1, 4, 6-7, 9-12, 15, 17-19, 22, 24-25

2. Patent Overview

• Title: Context and Activity-Driven Content Delivery and Interaction
• Brief Description: The ’599 patent discloses techniques and systems for creating and presenting packages of audio and visual content to a user based on contextual information, such as user activities or environmental factors.

3. Grounds for Unpatentability

Ground 1: Claims 1, 4, 6-7, 10-12, 15, 17-19, 22, 24, and 25 are obvious over Lamont, Wolfe, and Wang.

• Prior Art Relied Upon: Lamont (Patent 7,652,594), Wolfe (Patent 8,428,614), and Wang (a 1999 book on computer programming).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Lamont, which discloses an electronic guided tour system, teaches the core limitations of the challenged claims. Lamont’s system presents audio/visual content to a user based on contextual information (e.g., location, speed, time) satisfying predefined "trigger points." These trigger points and associated media clips form a "content package." Petitioner contended that the primary feature missing from Lamont is an "expected response" from the user. This feature, Petitioner asserted, is supplied by Wolfe, which describes a location-based "treasure hunt" game where users are prompted to solve puzzles or answer questions to proceed, thus teaching a system that determines if a user's input matches an expected response. Finally, Wang was cited as evidence of common knowledge for implementing the conditional logic (Boolean expressions) described in Lamont's trigger rules.
  • Motivation to Combine: A POSITA would combine Lamont and Wolfe because Lamont expressly suggests its system can be used for a "treasure hunt" game—the precise context of Wolfe. Incorporating Wolfe’s "expected response" functionality would enhance Lamont's treasure hunt application by making it more interactive and providing clear user feedback to verify a user’s location or actions. The teachings of Wang would have been naturally consulted to implement the basic conditional logic inherent in Lamont’s system.
  • Expectation of Success: A POSITA would have had a high expectation of success because combining the analogous systems of Lamont and Wolfe involved applying a known user interaction technique (question/answer) to a context-aware content delivery system, which was a straightforward and predictable integration.

Ground 2: Claim 9 is obvious over Lamont, Wolfe, and Wang in further view of Belimpasakis.

• Prior Art Relied Upon: Lamont (Patent 7,652,594), Wolfe (Patent 8,428,614), Wang (a 1999 book), and Belimpasakis (Patent 9,467,530).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1 to address the additional limitation of dependent claim 9: "sharing the content piece with a remote device." Petitioner argued that Belimpasakis teaches various well-known techniques for sharing content (e.g., audio, video) from a mobile device to a remote device, such as via email or instant messaging (MMS).
  • Motivation to Combine: A POSITA would add the teachings of Belimpasakis to the Lamont/Wolfe system to enhance user experience. Belimpasakis provides an express motivation, stating that "people want to be able to share their content... with others including, for example, their family, friends and colleagues." Adding this common functionality to a guided tour or treasure hunt game would be a desirable and obvious improvement.
  • Expectation of Success: Success would have been expected, as implementing content sharing via standard methods like email or messaging was a routine skill for a POSITA at the time.

Ground 3: Claims 1, 4, 6-7, 10-12, 15, 17-19, 22, 24, and 25 are obvious over Lamont, Wolfe, Wang, and Meyers.

• Prior Art Relied Upon: Lamont (Patent 7,652,594), Wolfe (Patent 8,428,614), Wang (a 1999 book), and Meyers (a 1995 book on software).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground was presented as an alternative to Ground 1 to address a potentially narrow construction of the term "content package" that would require the rules and content to be bundled in a single, discrete computer file. Petitioner asserted that Meyers teaches this concept through its disclosure of "archiving"—the common and widely-known process of bundling a set of files into a single file (e.g., a ZIP file) for easier downloading and management.
  • Motivation to Combine: A POSITA would combine Meyers with the primary references for convenience and efficiency. Meyers explains that downloading a single archive file is easier than downloading multiple files individually and that archiving often includes compression, which reduces data transfer and storage requirements. These benefits would have been an obvious motivation for packaging Lamont's tour script and media files into a single archive for delivery to the client device.
  • Expectation of Success: A POSITA would have had a high expectation of success in applying the routine and well-understood technique of file archiving to the content used in Lamont’s system.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) for claim 9 based on the combination of Lamont, Wolfe, Wang, Belimpasakis, and Meyers, which combined the arguments of Grounds 2 and 3.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) or §325(d). It asserted that it acted with diligence, filing the petition approximately nine weeks after receiving infringement contentions and well before the one-year statutory deadline.
• Petitioner noted that the co-pending district court litigation was in its early stages, with no claim construction order issued and no significant discovery having occurred. The litigation was stayed pending the outcome of IPR proceedings.
• Petitioner also distinguished this IPR from one filed by another party (Snap, Inc.), stating it played no role in that filing and that the present petition relies on entirely different prior art that was not cited during the ’599 patent's original prosecution.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 4, 6-7, 9-12, 15, 17-19, 22, 24, and 25 of the ’599 patent as unpatentable.