Twitter Inc v. Palo Alto Research Center LLC

1. Case Identification

• Case #: IPR2021-01459
• Patent #: 8,489,599
• Filed: August 31, 2021
• Petitioner(s): Twitter, Inc.
• Patent Owner(s): Palo Alto Research Center Inc.
• Challenged Claims: 19, 22, 24-25

2. Patent Overview

• Title: Techniques and Systems for Creating and Presenting Content Based on Contextual Information
• Brief Description: The ’599 patent describes systems for delivering personalized content to a user. The system receives a content package containing a content piece, a trigger condition, and an expected response, determines the user's current context, and presents the content if the context satisfies the trigger condition.

3. Grounds for Unpatentability

Ground 1: Claims 19, 22, and 24-25 are obvious over PALLAS

• Prior Art Relied Upon: Petersen, et al., “PALLAS: Personalised Language Learning on Mobile Devices” (published March 26, 2008) (“PALLAS”).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that PALLAS, a system for personalized language learning on mobile devices, discloses nearly all limitations of the challenged claims. PALLAS describes a server-client architecture where a teacher can create learning content and define context triggers (e.g., location, time) for its delivery to a student's mobile device. Petitioner asserted that this system inherently teaches an apparatus (server or mobile device) with a processor, an input mechanism for receiving contextual information (e.g., from a GPS unit), a receiving mechanism for content packages (from teacher to server, server to mobile client), and a delivery mechanism to present content when a trigger condition is met (e.g., presenting a French vocabulary quiz when the user enters the vicinity of a French art exhibit). PALLAS further discloses updating a learner's skill level based on responses to quizzes, which Petitioner mapped to the limitations of determining if a response matches an expected response and performing an action based on the outcome.
  • Motivation to Combine (for §103 grounds): This ground relies on a single reference. Petitioner contended that any minor gaps in PALLAS’s disclosure would have been obvious modifications for a person of ordinary skill in the art (POSITA), representing routine implementation of a known system.
  • Expectation of Success (for §103 grounds): Petitioner asserted a POSITA would have a high expectation of success in implementing the claimed system based on the detailed architecture and functionality described in PALLAS, which demonstrates a working, context-aware learning platform.

Ground 2: Claims 19, 22, and 24-25 are obvious over PALLAS in view of Yau

• Prior Art Relied Upon: PALLAS and Yau, et al., “A Context-aware and Adaptive Learning Schedule framework for supporting learners’ daily routines” (published May 7, 2007) (“Yau”).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground incorporated the teachings of PALLAS and supplemented them with Yau. Petitioner argued that Yau, which describes a context-aware adaptive learning framework, provides additional detail on processing contextual information. Yau discloses a "Context adaptation module" that identifies a learner's context using variables such as GPS location, schedule data, and ambient noise level from a microphone. This teaching was used to reinforce the disclosure of the "context manager" limitation in claim 19, which is configured to "determine a current context" and "determine whether the current context satisfies the trigger condition."
  • Motivation to Combine (for §103 grounds): Petitioner argued a POSITA would combine Yau’s sophisticated context-determination techniques with PALLAS’s content delivery system to improve its functionality. Adding inputs like noise level or schedule availability from Yau to PALLAS would allow for a more accurate and appropriate presentation of learning content, directly furthering the stated goals of both references.
  • Expectation of Success (for §103 grounds): The combination involved implementing known software modules and data inputs from Yau into the analogous PALLAS system, which Petitioner asserted would be a straightforward task for a POSITA with a predictable, successful outcome.

Ground 3: Claims 19, 22, and 24-25 are obvious over PALLAS in view of Kim

• Prior Art Relied Upon: PALLAS and Kim, et al., “CASTmiddleware: Security Middleware of Context-Awareness Simulation Toolkit for Ubiquitous Computing Research Environment” (published 2006) (“Kim”).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground used Kim to further support the obviousness of the "context manager" limitations. Petitioner asserted that Kim discloses a system for capturing and sharing virtual context information. Kim’s "Context Manager" processes raw sensor data, converts it into "high layer’s [sic] context information" according to an "inference policy," and determines if a user's context satisfies a rule (e.g., turning on a TV when a user sits on the sofa). This was argued to be a clear teaching of the claimed functions of processing contextual information to determine a current context and check it against a trigger.
  • Motivation to Combine (for §103 grounds): A POSITA would have been motivated to integrate Kim's advanced, inference-based context processing into the PALLAS system. This would enhance PALLAS’s ability to understand complex user situations beyond simple triggers like location, thereby improving the personalization and effectiveness of the delivered content.
  • Expectation of Success (for §103 grounds): As with Yau, Petitioner argued that combining the well-understood context-processing teachings of Kim with the PALLAS platform was a predictable design choice that would have yielded the claimed invention with a high expectation of success.
• Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 19, 22, and 24-25 based on the combination of PALLAS, Yau, and Kim, arguing that the references collectively disclose every limitation of the challenged claims.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. §314(a) based on the Fintiv factors. The central argument was that a parallel district court case was stayed by stipulation of the parties, with the stay intended to last until a final written decision in any instituted IPR. Therefore, Petitioner contended there was no risk of duplicative efforts or inefficient use of resources, as the Board would resolve patentability before the district court litigation resumed in earnest. Petitioner also asserted that this was its first petition challenging the ’599 patent and that its grounds were based on unique prior art combinations not previously reviewed by the Board in related IPRs filed by other parties.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 19, 22, and 24-25 of Patent 8,489,599 as unpatentable.