Roku Inc v. Intent Iq LLC

1. Case Identification

• Case #: IPR2022-01236
• Patent #: 8,677,398
• Filed: July 5, 2022
• Petitioner(s): Roku, Inc.
• Patent Owner(s): Almondnet, Inc. and Intent IQ, LLC
• Challenged Claims: 13-17 and 19-26

2. Patent Overview

• Title: Systems and Methods for Taking Action with respect to One Network-Connected Device based on Activity on Another Device Connected to the Same Network
• Brief Description: The ’398 patent describes systems for delivering targeted television advertisements to a second device (e.g., a set-top box) based on a user's online behavior observed on a first device (e.g., a computer). The system works by electronically associating device identifiers when both devices are connected to a common local area network (LAN).

3. Grounds for Unpatentability

Ground 1: Claims 13-17, 20-23, and 26 are obvious over Madhavan in view of Baum.

• Prior Art Relied Upon: Madhavan (Patent 8,180,674) and Baum (Patent 7,843,923).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Madhavan taught the core concept of the challenged claims: a computer system that delivers targeted ads to a second device (e.g., a TV or DVR) based on a user’s online activity with a first device (e.g., a smartphone). Madhavan’s system associated the devices by linking their respective identifiers to a common user profile stored in a database. However, Madhavan did not explicitly disclose how to form this association when devices use dynamically assigned IP addresses on a common LAN. Petitioner asserted that Baum remedied this by teaching a system to automatically recognize that multiple devices are on the same LAN by observing that they connect to the internet through the same physical port of an edge router, even when using dynamic IP addresses.
  • Motivation to Combine: A POSITA would combine Baum’s technique for identifying co-located devices on a LAN with Madhavan’s targeted advertising system to achieve the predictable result of making Madhavan’s system functional and reliable in common networking environments that use dynamic IP addresses. This combination would allow for the accurate association of devices needed for cross-device ad targeting.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because both references rely on conventional and standardized IP networking technologies (e.g., DHCP, edge router port tracking) for their intended purposes.

Ground 2: Claim 19 is obvious over Madhavan in view of Baum and Damick.

• Prior Art Relied Upon: Madhavan (Patent 8,180,674), Baum (Patent 7,843,923), and Damick (Application # 2006/0242294).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Madhavan and Baum to address the additional limitations of claim 19, which required that the association between device identifiers be recognized "according to the time and date of user activity." Petitioner contended that Damick taught this element by disclosing a home router that keeps a detailed log of internet activity for each connected computer, explicitly including the times and dates of website visits.
  • Motivation to Combine: A POSITA would be motivated to incorporate Damick’s time-and-date logging functionality into the Madhavan/Baum system to enhance the behavioral data used for ad targeting. Adding temporal data to user activity logs was argued to be a predictable way to improve the precision of user profiling and the relevance of targeted advertisements.

Ground 3: Claims 24 and 25 are obvious over Madhavan in view of Baum and Varghese.

• Prior Art Relied Upon: Madhavan (Patent 8,180,674), Baum (Patent 7,843,923), and Varghese (Patent 7,908,645).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed claims 24 and 25, which specified that the electronic indicia of association comprise "one or more tags or cookies" stored on the first or second device. The primary combination of Madhavan and Baum relied on IP addresses as identifiers. Petitioner argued that Varghese taught creating a persistent device identifier ("Device ID") using various data points, including both IP addresses and cookies, and storing this Device ID on the user's device for improved tracking and authentication.
  • Motivation to Combine: A POSITA would combine Varghese’s use of cookies with the Madhavan/Baum system to create a more robust and persistent method of device identification than relying solely on dynamic IP addresses. Using cookies was a well-known technique for tracking user behavior, and its application here would have been an obvious and predictable improvement to enable more reliable device association for targeted advertising.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under §314(a) or §325(d). Regarding the Fintiv factors, Petitioner asserted that the parallel district court case in the Western District of Texas was stayed, and the related Delaware litigation was in a very early stage, with no trial date set. Therefore, an IPR would resolve patentability issues far more efficiently and before any significant investment in the district court merits. Petitioner also argued against denial under the General Plastic factors, stating it was unrelated to petitioners in prior IPRs against the ’398 patent (e.g., the "Yahoo! IPR") and that the asserted prior art combinations were new, non-cumulative, and had not been previously considered by the Office.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 13-17 and 19-26 of the ’398 patent as unpatentable.