PTAB

IPR2023-00248

Google LLC v. Wildseed Mobile LLC

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1. Case Identification

2. Patent Overview

  • Title: Playing Content and Advertisements on a Cellular Device
  • Brief Description: The ’414 patent relates to methods for delivering targeted advertisements to a mobile device for playback. The system involves an advertisement client on the device that provides user-specific information to a server, which then determines a suitable advertisement to insert into streaming or broadcast content.

3. Grounds for Unpatentability

Ground 1: Claims 1-7 and 9-14 are obvious over Frerichs, Kawasaki, and Kauffman.

  • Prior Art Relied Upon: Frerichs (Patent 6,684,249), Kawasaki (Patent 6,539,375), and Kauffman (Application # 2007/0083886).
  • Core Argument for this Ground: Petitioner argued that the challenged claims combine three well-known concepts: (1) inserting targeted ads into streaming media on a mobile device (Frerichs), (2) generating detailed user profiles by scanning user messages like emails (Kawasaki), and (3) seamlessly pausing and caching streaming content to play an advertisement (Kauffman). Petitioner contended that a person of ordinary skill in the art (POSITA) would have been motivated to combine these known techniques to create a more effective and user-friendly advertising system, with a reasonable expectation of success.
    • Prior Art Mapping: Petitioner asserted the combination of references teaches every limitation of the challenged claims, focusing on independent claim 1.
      • Providing User Information from a Message (Claim 1a): Petitioner argued that while Frerichs taught collecting user information (e.g., listening patterns) for ad targeting on a cellular device, Kawasaki taught the specific claimed method of generating a user profile by scanning the content of messages, such as received emails. The combination would involve implementing Kawasaki’s message-scanning profiler on the cellular device taught by Frerichs to autonomously provide user characteristic data to a server.
      • Receiving a Targeted Ad (Claim 1b): Petitioner asserted Frerichs taught receiving an advertisement from a server that was selected based on a user profile. The combination with Kawasaki, which explicitly discloses using its generated profile to target offers and ads, reinforced the obviousness of determining an advertisement based on the provided user information.
      • Stopping Content and Playing an Ad (Claim 1c): Petitioner contended that Frerichs taught inserting an advertisement into a media stream upon detecting a "flag" indicating a determined time interval. To the extent Frerichs did not explicitly teach stopping the primary content, Kauffman supplied this element. Kauffman explicitly taught pausing and caching an incoming multimedia stream on a client device while an advertisement file is played in its place.
      • Recording and Resuming Content (Claim 1c): Petitioner argued that Kauffman directly taught recording (i.e., caching) the stopped content while the advertisement plays and then resuming playback of the cached content from where it was stopped once the advertisement is complete. Combining this with Frerichs' cellular-based ad system would result in the claimed method.
    • Motivation to Combine (for §103 grounds):
      • Frerichs and Kawasaki: A POSITA would combine Kawasaki’s sophisticated user profiling (scanning emails) with Frerichs’ streaming ad system to improve ad targeting. Frerichs expressly contemplated that its user profile could include "any other information," which Petitioner argued would have motivated a POSITA to seek out more effective data-gathering techniques like those in Kawasaki to "improve the match between User interests and Advertisers' messages," an explicit goal of Kawasaki.
      • Frerichs and Kauffman: A POSITA would combine Kauffman’s caching technique with Frerichs' system to provide a better user experience. Kauffman’s method of caching content during an ad break allows for a seamless resumption of the media stream, a known and desirable goal in the art. This combination represented the use of a known technique (caching) to improve another known system (ad insertion), which would have been obvious.
    • Expectation of Success (for §103 grounds): Petitioner argued a POSITA would have a reasonable expectation of success because all components were known to work on client devices. Kawasaki’s profiling was described as applicable to any device displaying email, including the cellular phones of Frerichs, and Kauffman’s caching was a well-understood client-side process applicable to devices with sufficient memory, which cellular phones possessed.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial would be inappropriate under both 35 U.S.C. §325(d) and §314(a). The challenge was presented as not cumulative to prosecution because none of the asserted prior art references were considered by the Examiner.
  • Regarding the Fintiv factors for discretionary denial under §314(a), Petitioner contended that they strongly favored institution.
    • Factor 2 (Proximity to Trial): This factor was argued to favor institution because the parallel district court proceeding was in its early stages with no trial date set. Given the median time-to-trial of 34.7 months in the Northern District of California, the Board’s Final Written Decision (FWD) would issue well before any potential trial.
    • Factor 3 (Investment in Parallel Proceeding): This factor was argued to favor institution due to minimal investment in the merits of the invalidity case in district court at the time of filing the petition.
    • Factor 6 (Merits of the Petition): Petitioner asserted that the petition presented a particularly strong and compelling case of unpatentability, which weighs in favor of institution.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review (IPR) and the cancellation of claims 1-7 and 9-14 of Patent 7,376,414 as unpatentable.