Twitter Inc v. Palo Alto Research Center Inc

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 discloses systems for delivering context-based content to a user. The system receives a "content package" containing a content piece, a trigger condition, and an expected response, determines a user's current context from sensor data, and presents the content if the context satisfies the trigger condition.

3. Grounds for Unpatentability

Ground 1: Obviousness over PALLAS in view of Yau - Claims 19, 22, 24-25 are obvious over PALLAS in view of Yau.

• Prior Art Relied Upon: PALLAS (Petersen, et al., “PALLAS: Personalised Language Learning on Mobile Devices,” a 2008 IEEE publication) and Yau (Yau, et al., “A Context-aware and Adaptive Learning Schedule framework for supporting learners’ daily routines,” a 2007 IEEE publication).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that PALLAS, a server-based language learning system, discloses most limitations of the challenged claims. PALLAS uses a mobile device to provide personalized learning exercises based on context triggers, such as a user’s location (e.g., proximity to a French art exhibit). It discloses receiving content packages with exercises (content piece) and context triggers, processing contextual information like location and time, and presenting content when a trigger condition is met. Yau was introduced to supplement PALLAS’s teachings on context determination. Yau discloses a context-aware learning framework that retrieves contextual information from scheduled events and sensors like GPS and a microphone (for noise detection) to identify a learner's current context and recommend appropriate activities.
  • Motivation to Combine: A POSITA would combine Yau’s teachings with PALLAS to enhance the context-awareness of the PALLAS system. Specifically, adding Yau’s use of noise-level detection and scheduled events would allow the system to make more sophisticated determinations about the user's environment and availability, thereby improving the selection of appropriate learning content. This would be a routine and advantageous modification to make the system more effective.
  • Expectation of Success: Both references are in the analogous field of context-aware mobile learning systems. Combining their teachings—for instance, using a microphone input as taught by Yau in the PALLAS system—was a predictable and straightforward implementation with a high expectation of success.

Ground 2: Obviousness over PALLAS in view of Kim - Claims 19, 22, 24-25 are obvious over PALLAS in view of Kim.

• Prior Art Relied Upon: PALLAS and Kim (Kim, et al., “CASTmiddleware: Security Middleware of Context-Awareness Simulation Toolkit for Ubiquitous Computing Research Environment,” a 2006 journal article).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground again relied on PALLAS as the primary reference. Petitioner asserted that Kim provides additional detail for the claimed "context manager" configured to process contextual information. Kim discloses a system for ubiquitous computing that includes a "Context Manager" which processes raw information from sensors, stores it, and converts it into a "high layer's context" according to an "inference policy." This system then performs actions (e.g., turning on a light) based on the user's inferred context and associated rules.
  • Motivation to Combine: A POSITA would have been motivated to implement PALLAS’s context engine using the more advanced techniques taught by Kim. Incorporating Kim’s "Context Manager" would allow the PALLAS system to move beyond simple triggers (e.g., location) and infer more complex, higher-level contexts from multiple sensor inputs. This would improve the system's ability to understand the user's situation and provide more relevant content, a recognized goal in the field.
  • Expectation of Success: Combining Kim's context-processing methods with the PALLAS learning application was a predictable integration of known technologies within the field of context-aware computing. A POSITA would have reasonably expected the combination to successfully enhance the functionality of the PALLAS system.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 19, 24-25 are obvious over PALLAS alone, and that claims 19, 22, 24-25 are obvious over the combination of PALLAS, Yau, and Kim, relying on similar motivations to combine.

4. Key Claim Construction Positions

• Petitioner argued that the "mechanism configured to..." limitations in claim 19 should not be construed as means-plus-function limitations under §112(6) because the term "mechanism" is generally understood as connoting sufficient structure.
• In the alternative, Petitioner contended that if the Board construes these terms as means-plus-function, the claims are indefinite. Petitioner argued the specification fails to disclose sufficiently definite corresponding structure clearly linked to the claimed functions (e.g., receiving a content package, presenting content, determining response matches), instead providing only high-level black boxes or general-purpose computers, which is insufficient.

5. Arguments Regarding Discretionary Denial

• Fintiv Factors (§314(a)): Petitioner argued against discretionary denial under Fintiv, stating that the co-pending district court litigation against Twitter had been stayed by stipulation at the outset of discovery. Consequently, no trial date was set, and the IPR would conclude well before any potential trial, meaning the key Fintiv factor regarding an earlier trial date did not support denial.
• General Plastic Factors (§325(d)): Petitioner argued against denial based on other petitions filed against the ’599 patent by different parties (Snap Inc. and Facebook, Inc.). Petitioner asserted that this was its first petition against the patent. It emphasized that Twitter is an unrelated company and direct competitor to the other petitioners, not a co-defendant, and that it did not coordinate its IPR strategy, use unique prior art references, or rely on the other petitions as a "roadmap." Therefore, Petitioner argued that the fairness concerns motivating denial of follow-on petitions were not present.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 19, 22, and 24-25 of Patent 8,489,599 as unpatentable under 35 U.S.C. §103.