Facebook Inc v. Palo Alto Research Center Inc

1. Case Identification

• Case #: IPR2021-01536
• Patent #: 8,489,599
• Filed: September 20, 2021
• Petitioner(s): Facebook, Inc.
• Patent Owner(s): Palo Alto Research Center Inc.
• Challenged Claims: 1, 4, 6-7, 9-12, 15, 17-18

2. Patent Overview

• Title: Context and Activity-Driven Content Delivery and Interaction
• Brief Description: The ’599 patent discloses techniques for creating and presenting content based on contextual information. The system uses a "content package," which includes content pieces and associated rules, to deliver audio and visual content to a user in response to specific user activities or environmental factors.

3. Grounds for Unpatentability

Ground 1: Claims 1, 4, 6-7, 10-12, 15, and 17-18 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 titled Beginning Programming for Dummies).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Lamont, which discloses an electronic guided tour system, teaches the core limitations of independent claim 1. Lamont’s system delivers content to a user based on "trigger points" that are activated by contextual information like location, speed, and direction, which corresponds to the claimed method of receiving a "content package" with rules and trigger conditions. For the limitation requiring an "expected response," Petitioner cited Wolfe, which describes a location-based "treasure hunt" game where users are prompted with questions and the system determines if the user's answer matches a correct, expected response. To address the processing of contextual information, Petitioner relied on Wang, which explains the fundamental programming concept of evaluating Boolean expressions (e.g., "Speed > 30 mph"), as used in Lamont's trigger conditions.
  • Motivation to Combine: A POSITA would combine Lamont and Wolfe because Lamont expressly suggests its guided tour system could be used for a "treasure hunt" game—the precise application described in Wolfe. Integrating Wolfe's "expected response" functionality would be a natural way to enhance such a game by adding interactive challenges. A POSITA would have referred to a basic programming text like Wang to implement the conditional logic (Boolean expressions) already described in Lamont.
  • Expectation of Success: The combination would have been straightforward, as both Lamont and Wolfe describe analogous location-aware mobile applications. A POSITA would have reasonably expected success in adding a simple question-and-answer feature to a context-aware tour application using well-understood programming principles.

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

• Prior Art Relied Upon: Lamont (’594 patent), Wolfe (’614 patent), Wang (1999 book), and Belimpasakis (Patent 9,467,530).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the combination in Ground 1 to address dependent claim 9, which adds the limitation of "sharing the content piece with a remote device." Petitioner asserted that Belimpasakis discloses this feature, describing well-known techniques for sharing content from a mobile device, such as via email or instant messaging (MMS).
  • Motivation to Combine: A POSITA would be motivated to add this common sharing functionality to the guided tour system of Lamont/Wolfe to enhance user experience. Belimpasakis provided an express motivation, stating that "the concept of content sharing is stronger than ever" and people want to share content with family and friends. This would allow users in a guided tour to share interesting audio or video clips they encounter.
  • Expectation of Success: A POSITA would have had a high expectation of success, as implementing standard content-sharing functions like "share via email" was a basic and well-established feature in mobile applications at the time.

Ground 3: Claims 1, 4, 6, 7, 10-12, 15, and 17-18 are obvious over Lamont, Wolfe, and Wang in further view of Meyers.

• Prior Art Relied Upon: Lamont (’594 patent), Wolfe (’614 patent), Wang (1999 book), and Meyers (a 1995 book titled The Downloader’s Companion for Windows).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground was presented to address a potential narrow construction of the term "content package" that would require the content piece and rules to be encapsulated in a single, discrete computer file. Petitioner argued that Meyers teaches this concept by describing well-known file archiving techniques, such as creating a single ZIP file to bundle multiple files together for easier downloading.
  • Motivation to Combine: A POSITA would combine Meyers with the primary references for efficiency and convenience. Meyers explained that archiving is useful for "moving files between computers" and reduces download complexity. Applying this to Lamont’s system would allow the tour script and all associated media files to be bundled into one archive file, simplifying distribution and reducing bandwidth usage for the mobile device. Lamont itself disclosed using archive files (like ZIP files) to store media lists, further motivating this combination.
  • Expectation of Success: A POSITA would have readily and successfully implemented this combination, as file archiving was a ubiquitous and elementary technique for packaging and transmitting files.

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

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) would be inappropriate. This petition is a "second petition" filed concurrently with an explanation of parallel petitions. The first petition (IPR2021-01294) included apparatus claims that a third party argued were indefinite. To avoid denial of the entire petition on that basis, Petitioner filed this substantively identical petition challenging only the method claims. Petitioner contended this was a precautionary measure, not a serial attack, and that only one of the two petitions should be instituted. The petition also argued that denial based on co-pending litigation was unwarranted because the district court case was stayed early, before any claim construction or significant discovery had occurred.

5. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1, 4, 6-7, 9-12, 15, and 17-18 of the ’599 patent as unpatentable.