Google LLC v. Wildseed Mobile LLC

1. Case Identification

• Case #: IPR2023-00247
• Patent #: 10,869,169
• Filed: November 30, 2022
• Petitioner(s): Google LLC
• Patent Owner(s): Wildseed Mobile LLC
• Challenged Claims: 1-22

2. Patent Overview

• Title: Generating and Sending a Hot Link
• Brief Description: The ’169 patent discloses methods and systems for generating and sending a "hot link" via electronic messages such as email, SMS, or instant message. The hot link, displayed as a user interface element like an icon or button, contains an action that instructs the receiving device to perform an activity, such as rendering a web page.

3. Grounds for Unpatentability

Ground 1: Claims 1-18 and 21-22 are obvious over Rothschild

• Prior Art Relied Upon: Rothschild (Patent 8,645,211).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Rothschild taught all limitations of the challenged claims. Rothschild disclosed a system for sending personal communications (e.g., email) containing an interactive advertisement. Petitioner contended this advertisement functions as the claimed "hot link." The system identified a "trigger" when a user selected an advertisement from a pull-down menu to include in an email. The "determined action" was the embedded URL in the advertisement, which directed the recipient's device to retrieve data from a website. Petitioner asserted that generating the email with the embedded advertisement constituted generating a "hot link message" with "instructions for rendering and displaying the hot link," arguing that a POSITA would have understood this would be implemented using standard HTML, which inherently provides such instructions.
  • Motivation to Combine (for §103 grounds): This ground relied on a single reference.
  • Expectation of Success (for §103 grounds): Not applicable as this ground used a single reference.

Ground 2: Claim 19 is obvious over Rothschild in view of Saltanov

• Prior Art Relied Upon: Rothschild (Patent 8,645,211) and Saltanov (Patent 6,839,411).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed claim 19, which added limitations related to forwarding a message. Petitioner argued that while Rothschild taught the base system of receiving a message with a hot link (the first GUI), it did not explicitly describe forwarding it. Saltanov disclosed a conventional email client (Microsoft Outlook) with a graphical user interface that explicitly taught a "Forward" button. Activating this button generated a new window (a "second GUI") with fields for new recipients ("user selection GCE") and a "Send" button ("submission GCE").
  • Motivation to Combine (for §103 grounds): A POSITA would combine these references to add well-known, conventional email forwarding functionality, as taught by Saltanov, to [Rothschild]'s email system. Petitioner noted that both references mentioned Microsoft Outlook, suggesting a natural and predictable combination. Adding this feature would yield the predictable result of allowing users to forward messages containing interactive advertisements to a wider audience.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success in combining the known functionality of an email client with another email-based system, as it involved applying a standard feature to an existing platform.

Ground 3: Claim 20 is obvious over Rothschild, Saltanov, and Maes

• Prior Art Relied Upon: Rothschild (Patent 8,645,211), Saltanov (Patent 6,839,411), and Maes (Application # 2002/0002502).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targeted claim 20, which depended from claim 19 and added limitations requiring the second GUI to include graphical control elements (GCEs) for submitting positive and negative opinions about a content item. Petitioner asserted that Rothschild and Saltanov established the forwarding GUI, and Maes provided the missing feedback elements. Maes disclosed a user interface for product selection that explicitly taught using buttons marked with "like" and "dislike" or "thumbs-up" and "thumbs-down" symbols to gather user preferences.
  • Motivation to Combine (for §103 grounds): A POSITA would be motivated to add the feedback mechanism from Maes to [Rothschild]'s interactive advertisement system to allow advertisers to gather user feedback and improve their marketing outreach. This was presented as a common business objective and a predictable combination of known UI elements to enhance an existing system.
  • Expectation of Success (for §103 grounds): The combination involved integrating a known type of user feedback interface into a system that delivered content, which was a well-understood and common practice in the art, ensuring a reasonable expectation of success.
• Additional Grounds: Petitioner asserted additional obviousness challenges (Grounds 4, 5, and 6) that mirrored Grounds 1, 2, and 3, respectively, but added Chen (Patent 6,836,792) as an explicit teaching. Chen was used as evidence that implementing advertisements in email using HTML (which provides instructions for rendering) was conventional and well-known, thereby strengthening the argument that a POSITA would have been motivated to implement [Rothschild]'s system using HTML.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under Fintiv, asserting that the factors strongly favored institution. Key arguments included that the parallel district court litigation was in a very early stage with no trial date set, minimal investment had been made in the merits of the invalidity positions in court, and the Board’s Final Written Decision would issue well before any potential trial.
• Petitioner also contended that denial under §325(d) was inappropriate because the primary prior art references (Rothschild, Saltanov, Maes, Chen) were never presented to or considered by the examiner during the original prosecution. Petitioner argued the new art was not cumulative because it taught the very limitations the examiner found to be allowable over the previously cited art.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-22 of the ’169 patent as unpatentable under 35 U.S.C. §103.