PTAB

IPR2023-00918

Foursquare Labs Inc v. BoardActive Corp

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1. Case Identification

2. Patent Overview

  • Title: Location-Based Media Content Delivery Method
  • Brief Description: The ’620 patent discloses methods and systems for delivering media content to a consumer's device. The technology involves registering physical or virtual assets with associated geolocations, using a set of rules—including a first rule based on consumer profile data and a second rule based on a new geolocation—to select and update content, and triggering the delivery upon detecting a spatial, time-based, or event-based occurrence.

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness over Verizon-based Art - Claims 28 & 29 are anticipated by Verizon or obvious over Verizon in view of Kerr and/or Geer.

  • Prior Art Relied Upon: Verizon (Application # 2015/0095124), Kerr (Application # 2016/0309292), and Geer (Application # 2015/0262214).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Verizon, which discloses a system for delivering tailored marketing content to mobile devices, anticipates every element of claims 28 and 29. Verizon allegedly teaches registering asset data by noting the geolocations of businesses and displays, specifying a first delivery rule based on user profile data (e.g., gender, age, financials), and a second delivery rule associated with a second geolocation (e.g., updating "AD 1" at "location 1" to "AD 2" at "location 2" as a user travels). The system receives an indication of proximity to the first location, tracks the user's location in response, compares it to the second location, and delivers the updated content.
    • Motivation to Combine (for §103 grounds): Alternatively, should Verizon be found to lack express disclosure of certain features, Petitioner argued a person of ordinary skill in the art (POSITA) would combine the references. A POSITA would incorporate Kerr’s teachings on robust administrative interfaces for registering asset data to improve the ease and control of system management, a predictable design choice. Similarly, a POSITA would integrate Geer’s method of activating high-resolution tracking (“HIRES”) when a user’s profile matches content rules near a location of interest to improve tracking precision and conserve device energy.
    • Expectation of Success: The proposed combinations involved applying well-known user interface administration and power-saving tracking techniques to a conventional location-based advertising system, which would have yielded predictable results.

Ground 2: Obviousness over Verizon - Claims 1-6 and 11-27 are obvious over Verizon.

  • Prior Art Relied Upon: Verizon (Application # 2015/0095124).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Verizon alone renders the method of claim 1 obvious. Verizon was said to disclose all the active steps: registering assets with geolocations, receiving media, specifying rules based on consumer profiles and location changes, and delivering/updating content based on spatial or time-based triggers. The primary distinction argued is that claim 1 recites the media content being operative with a "content interaction layer" and a "consumer tracking layer."
    • Motivation to Combine (within a single reference): Petitioner asserted that while Verizon does not use the exact term "layers," it discloses distinct software modules and functionalities for location tracking (e.g., via GPS, 3G/4G) and for consumer interaction tracking (e.g., monitoring clicks, purchases, or travel to a business). A POSITA would have found it obvious to implement these distinct, disclosed operations in separate software layers. This common software engineering practice provides well-known benefits of segmenting, organizing, and sequencing operations, which simplifies development, debugging, and updating.
    • Expectation of Success: Applying the fundamental software design principle of layering to implement the distinct functions disclosed in Verizon was argued to be a routine task for a POSITA with a high expectation of success.

Ground 3: Obviousness over Alcatel and Kerr - Claims 1 and 11-27 are obvious over Alcatel in view of Kerr.

  • Prior Art Relied Upon: Alcatel (European Patent Publication No. 2424278) and Kerr (Application # 2016/0309292).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner presented an alternative invalidity theory based on Alcatel as the primary reference. Alcatel was said to disclose a system for providing location-based content to mobile devices based on their direction of travel, using geolocations of tracker base stations as the registered assets. Content delivery rules in Alcatel are based on user subscription status (a form of profile data) and proximity to a sequence of base stations.
    • Motivation to Combine: A POSITA would have been motivated to modify Alcatel’s system with Kerr’s more advanced teachings. To the extent Alcatel only uses a binary subscription status, a POSITA would incorporate Kerr's use of more granular profile data (e.g., age, gender) and user interaction data (e.g., likes/dislikes, user-created content) to provide more accurately tailored content. This combination would predictably improve the accuracy, reduce noise, and enhance the efficiency of the advertising system.
    • Expectation of Success: Integrating known methods for user profile filtering and interaction-based feedback from Kerr into the location-based framework of Alcatel was a straightforward path to enhancing system performance and user experience.

  • Additional Grounds: Petitioner asserted numerous additional obviousness challenges based on various other combinations, such as adding Muhire (WO 2017/079838) for its explicit teaching of multi-tier software layer architecture, adding Sehn (Patent 9,094,137) for its disclosure of recognizing brand assets in images, and using Verizon as a secondary reference to the Alcatel combinations.

4. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-29 of the ’620 patent as unpatentable.