PTAB

IPR2023-00652

Google LLC v. SafeCast Ltd LLC

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1. Case Identification

2. Patent Overview

  • Title: System for Automating Compliance with Local Broadcasting Time Regulations
  • Brief Description: The ’302 patent discloses a system, typically within a Personal Video Recorder (PVR), for controlling which advertisements are shown during time-shifted playback of a recorded program. The system uses rules and metadata associated with each advertisement to automatically exclude ads that would violate local broadcasting time regulations if shown at the time of playback.

3. Grounds for Unpatentability

Ground 1: Obviousness over Plotnick in Combination with Parekh - Claims 1-4, 6-9, and 12-15 are obvious over Plotnick in view of Parekh.

  • Prior Art Relied Upon: Plotnick (Application # 2002/0144262) and Parekh (Patent 8,413,189).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Plotnick disclosed the core PVR-based ad-targeting system. Plotnick taught a PVR that could insert or replace advertisements in recorded content based on various criteria stored in metadata, including "time of day" and advertiser-specified "flight information." This metadata, equivalent to the ’302 patent's "header," could be used to generate ad queues. Petitioner contended that this system met most limitations of independent claims 1 and 12, including supplying programs and ads, having a database, and using a clock signal. Parekh was introduced to explicitly supply the limitation of applying rules based on regulations from a broadcasting authority. Parekh taught a broadcast system with a "rules engine" that applied "regulations from regulators," specifically citing FCC "Safe Harbor" rules that restrict indecent content to certain times of day. Petitioner asserted that adding Parekh's specific FCC time-based rules to Plotnick's more general "time of day" filtering capability rendered the claims obvious. The limitation of a "second field" for tracking ad plays was argued to be an obvious design choice for billing and frequency capping, as Plotnick taught updating ad metadata and reporting ad delivery.
    • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) implementing Plotnick's system, which already considered "time of day" for ad selection, would be motivated to consult references like Parekh to implement rules for ensuring legal compliance. Parekh provided the specific, well-known example of FCC time-based regulations. The motivation was to create a commercially viable system that not only targeted ads effectively but also adhered to applicable laws, a known concern in the broadcasting field.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because both references used conventional technologies. Integrating Parekh’s specific, time-based FCC rules into Plotnick's existing rules-based framework for ad selection was presented as a straightforward application of known principles, requiring only the addition of new rules to a system designed to be adjustable.

Ground 2: Obviousness over Plotnick alone - Claims 1-4, 6-9, and 12-15 are obvious over Plotnick.

  • Prior Art Relied Upon: Plotnick (Application # 2002/0144262).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative based on Patent Owner's alleged infringement contentions in parallel litigation. Petitioner argued that if the claim term "local broadcasting regulations" was interpreted broadly to mean general laws or advertiser-defined schedules, then Plotnick alone rendered the claims obvious. Plotnick taught selecting ads based on advertiser-defined criteria, such as "flight information" (specifying times for display) and "frequency of viewership." Petitioner contended that these advertiser-set rules met the broader interpretation of the claim limitations. A POSITA would have found it obvious to implement Plotnick’s system in a way that complied with general laws to avoid legal penalties. Therefore, under this broader construction, Plotnick inherently taught a system that abided by regulations, and all other claim elements were also taught by Plotnick as argued in Ground 1.

4. Key Claim Construction Positions

  • Petitioner argued that several key terms are means-plus-function elements under 35 U.S.C. §112, ¶6.
  • "Control Means" (Claims 1, 12): This was identified as the most critical term.
    • Recited Function: Petitioner construed the function as: (1) reading an advertisement's first field (containing time regulation data), a clock signal, and a rules database; (2) applying the local broadcasting time regulation to the advertisement before it is shown; and (3) updating a second field in the header when the ad is shown again.
    • Corresponding Structure: Petitioner identified the structure as the hardware and/or software within the PVR arranged to perform the process steps described in the specification and depicted in Figure 8 (specifically steps 102, 104, and 112), which detail checking time of day, reading header information for restrictions, and selecting a suitable advertisement. This construction was central to Petitioner's mapping of the prior art's processing components.

5. Relief Requested

  • Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1-4, 6-9, and 12-15 of the ’302 patent as unpatentable under 35 U.S.C. §103.