Roku Inc v. Intent Iq LLC

1. Case Identification

• Case #: IPR2022-01315
• Patent #: 10,715,878
• Filed: July 27, 2022
• Petitioner(s): Roku, Inc.
• Patent Owner(s): Almondnet, Inc. and Intent IQ, LLC
• Challenged Claims: 1-23

2. Patent Overview

• Title: Targeted Television Advertisements based on Online Behavior
• Brief Description: The ’878 patent discloses a method for delivering targeted television advertisements by electronically associating device identifiers (e.g., IP addresses) of a user's first device (e.g., a computer) and second device (e.g., a set-top box). The association is determined by detecting that both devices have separately accessed the Internet through a router of a common local area network (LAN) via a common IP address.

3. Grounds for Unpatentability

Ground 1: Claims 1-2, 5-7, 10, 13-14, 17-19, and 22 are obvious over Madhavan, Baum, Harrington, and Damick.

• Prior Art Relied Upon: Madhavan (Patent 8,180,674), Baum (Patent 7,843,923), Harrington (Patent 8,040,819), and Damick (Application # 2006/0242294).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the primary reference, Madhavan, teaches the core concept of a computer system that delivers targeted ads to a user's second device (e.g., a TV) based on behavioral data collected from the user's first device (e.g., a smartphone). Madhavan discloses associating these devices via unique identifiers like IP addresses stored with a user profile. However, Madhavan does not detail how to handle dynamically assigned IP addresses or specify the network architecture. The combination of references allegedly renders the claims obvious by filling these gaps. Baum teaches a method for identifying that multiple devices are on a common LAN by correlating their dynamically assigned IP addresses to a common edge router port. Harrington teaches the conventional network implementation of using a modem and router to connect LAN devices to the Internet. Damick teaches logging the time and date of internet access for devices behind a router. Together, this combination allegedly discloses determining an association between devices on a common LAN by detecting their separate access to the Internet via a common router and common IP address, and logging access times.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Baum with Madhavan to enable Madhavan's targeted advertising system to function in a common, real-world environment with dynamically assigned IP addresses. A POSITA would have used the conventional networking configuration taught by Harrington to implement the network details unspecified in Madhavan. Finally, a POSITA would incorporate Damick's time-logging to enhance the temporal specificity of the behavioral data, thereby improving ad targeting.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because all references build upon conventional, highly standardized IP networking technologies and protocols. The combination involves applying known techniques to achieve predictable results.

Ground 2: Claims 3-4, 11-12, 15-16, 20-21, and 23 are obvious over Madhavan, Baum, Harrington, and Damick in view of Rankin.

• Prior Art Relied Upon: Madhavan (Patent 8,180,674), Baum (Patent 7,843,923), Harrington (Patent 8,040,819), Damick (Application # 2006/0242294), and Rankin (Application # 2003/0207685).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targets claims requiring the collection of behavioral data when the first device is not connected to the LAN (e.g., claim 3). Petitioner asserted that the base combination of Madhavan, Baum, Harrington, and Damick teaches the claimed system in a LAN environment. The additional reference, Rankin, teaches collecting a user's behavioral data from a portable device (e.g., a mobile phone) via a cellular network for use with a user profile database.
  • Motivation to Combine: A POSITA would be motivated to modify the base combination with Rankin's teachings to create a more comprehensive user profile. Collecting behavioral data from a mobile device when it connects via a cellular network—in addition to when it is on the LAN—would provide more data points and improve the effectiveness of targeted advertising. This would have been a predictable improvement to Madhavan's system.

Ground 3: Claims 8-9 are unpatentable over Madhavan, Baum, Harrington, and Damick in view of Varghese.

• Prior Art Relied Upon: Madhavan (Patent 8,180,674), Baum (Patent 7,843,923), Harrington (Patent 8,040,819), Damick (Application # 2006/0242294), and Varghese (Patent 7,908,645).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses claims 8 and 9, which require the device identifier to be a cookie. The base combination discloses using an IP address as the primary device identifier. The additional reference, Varghese, teaches using a "Device ID" to uniquely identify a user device, and explicitly discloses that this Device ID can be a cookie, an IP address, or a combination of identifiers. Varghese further teaches that a cookie is a persistent data token stored on the user's device.
  • Motivation to Combine: A POSITA would be motivated to incorporate Varghese's use of cookies into the base system to improve the persistence and reliability of device identification. Dynamically assigned IP addresses are transient, whereas cookies provide a more stable way to track a device over time. Applying Varghese’s teachings would be an obvious design choice to enhance the tracking capabilities of Madhavan’s system.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under either 35 U.S.C. § 314(a) or § 325(d) is not warranted.
• Fintiv Factors: The parallel WDTX litigation is stayed, which strongly favors institution. The trial date in the parallel Delaware litigation is scheduled for February 26, 2024, which is after the statutory deadline for a Final Written Decision (FWD) in this inter partes review (IPR). Petitioner argued that investment in the merits of the invalidity positions in district court has been minimal.
• § 325(d) Factors: Petitioner asserted that the core arguments and prior art are not the same or substantially the same as those previously presented to the Office. Five of the six references were never considered during prosecution. Although Madhavan was cited in an Information Disclosure Statement (IDS), it was one of 546 references and was never substantively addressed by the Examiner or used as the basis for any rejection.

5. Relief Requested

• Petitioner requested the institution of an IPR and cancellation of claims 1-23 of the ’878 patent as unpatentable.