Facebook Inc v. Palo Alto Research Center LLC

1. Case Identification

• Case #: IPR2021-01461
• Patent #: 9,208,439
• Filed: August 31, 2021
• Petitioner(s): Facebook, Inc.
• Patent Owner(s): Palo Alto Research Center Inc.
• Challenged Claims: 1-5, 7-11, 13-17, and 19-20

2. Patent Overview

• Title: Generalized Contextual Intelligence Platform
• Brief Description: The ’439 patent describes a context-aware recommender system. The system uses a "context graph," a graph-based model of a user's behavior and interests, which is modified based on "event data" received from detectors on a mobile device (e.g., GPS, accelerometer).

3. Grounds for Unpatentability

Ground 1: Obviousness over Cheng and Falchuk - Claims 1-4, 7-10, 13-16, and 20 are obvious over Cheng in view of Falchuk.

• Prior Art Relied Upon: Cheng (Application # 2013/0018954) and Falchuk (Patent 8,694,901).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Cheng taught nearly all limitations of the independent claims. Cheng disclosed a recommendation system that receives "situation" and "usage activity" data (event data) from a mobile device's sensors to construct and update a user's "personal interest graph" (a context graph) for making recommendations. Falchuk was introduced to supply the limitation of sending a notification to a recommender in response to determining a matching registration exists. Falchuk taught a system for presenting contextual suggestions on a mobile device where user-defined "goals" (a registration) trigger notifications when an event modifies the user context model in a way that advances a goal.
  • Motivation to Combine: Petitioner asserted that Cheng and Falchuk are analogous art in the field of context-aware computer systems. A person of ordinary skill in the art (POSITA) would combine Falchuk's notification functionality with Cheng's system to provide a clear benefit: timely and relevant recommendations without requiring an explicit user request. This enhancement would allow Cheng's system to proactively notify a user about meaningful changes to their context graph.
  • Expectation of Success: A POSITA would have a reasonable expectation of success, as the combination involved integrating known, interoperable components and software techniques to improve a recommendation system.

Ground 2: Obviousness over Cheng and Falchuk in view of Richardson - Claims 5, 11, and 17 are obvious over Cheng and Falchuk in further view of Richardson.

• Prior Art Relied Upon: Cheng (Application # 2013/0018954), Falchuk (Patent 8,694,901), and Richardson (a 2007 book titled RESTful Web Services).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed dependent claims requiring "receiving real-time event data through a RESTful WebAPI." Petitioner argued that the Cheng and Falchuk combination already taught receiving event data in "real-time" by gathering a user's "current" situation data. Richardson, a book dedicated to RESTful web services, was added to teach the use of a "RESTful WebAPI." Petitioner noted that the ’439 patent itself acknowledged that RESTful WebAPIs were well-known prior art for implementing web services using HTTP.
  • Motivation to Combine: A POSITA implementing the web-based, cloud-capable system of Cheng/Falchuk would be motivated to use a standard, technologically mature, and well-documented architecture like a RESTful WebAPI, as taught by Richardson. This approach would reduce development costs, simplify implementation, and ensure interoperability, representing a natural and obvious design choice for transmitting real-time event data from a mobile device to a server.
  • Expectation of Success: Success would be expected, as it involved using a common industry-standard protocol (RESTful WebAPI) to implement a data communication feature in a known type of system.

Ground 3: Obviousness over Cheng and Falchuk in view of Shalloway and Powell - Claim 19 is obvious over Cheng and Falchuk in further view of Shalloway and Powell.

• Prior Art Relied Upon: Cheng (Application # 2013/0018954), Falchuk (Patent 8,694,901), Shalloway (a 2005 book titled Design Patterns Explained), and Powell (a 2008 book titled Ajax: The Complete Reference).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed claim 19, which added sending a notification by "pushing events into the recommender's publish/subscribe system asynchronously using a long-poll persistent push connection." Petitioner contended the Cheng/Falchuk combination already taught "pushing events" via automatic notifications. Shalloway was introduced for its explicit teaching of the "publish/subscribe" software design pattern, a common technique for managing such event-driven notifications. Powell was introduced for teaching the specific technique of asynchronous communication using a "long-poll" persistent connection, a known method for creating highly responsive web applications.
  • Motivation to Combine: A POSITA building the event-driven notification system from Cheng/Falchuk would naturally turn to well-known software design references. They would be motivated to use the publish/subscribe pattern from Shalloway to efficiently decouple event publishers from subscribers, and the long-polling technique from Powell to implement asynchronous "push" updates. This combination would create a more efficient, maintainable, and responsive system, which was the goal of the underlying art.
  • Expectation of Success: The combination involved applying well-known, documented software design patterns and communication protocols to solve a common problem, giving a POSITA a high expectation of success.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was improper because all asserted prior art references were new and not considered during the original prosecution.
• Petitioner further argued that discretionary denial under §314(a) based on Fintiv factors was unwarranted. The parallel district court litigation was stayed pending the outcome of the inter partes review (IPR), minimal discovery had occurred, and no claim construction order had been issued, thus avoiding concerns of duplicative effort or inefficient use of resources.
• Petitioner also distinguished this petition from other IPRs filed against the ’439 patent by Snap and Twitter, asserting that this petition relied on substantially different prior art combinations and unpatentability theories.

5. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 1-5, 7-11, 13-17, and 19-20 of the ’439 patent as unpatentable.