Stodge Inc v. Attentive Mobile Inc

1. Case Identification

• Case #: IPR2024-00129
• Patent #: 11,553,074
• Filed: October 31, 2023
• Petitioner(s): Stodge, Inc. d/b/a Postscript
• Patent Owner(s): Attentive, Inc.
• Challenged Claims: 1-30

2. Patent Overview

• Title: Two-Tap Subscription for Mobile Messaging
• Brief Description: The ’074 patent discloses a method for subscribing users to a text message marketing list using a "two-tap" process. The method involves a user clicking on a link in a web advertisement on a mobile device, which automatically opens a messaging application with a pre-populated message that the user can then send to complete the subscription.

3. Grounds for Unpatentability

Ground 1: Claims 1-30 are obvious over Oliver, Agrawal, and Khanna.

• Prior Art Relied Upon: Oliver (Application # 2015/0178784), Agrawal (Patent 8,015,615), and Khanna (Application # 2013/0111328).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of these references taught every element of the challenged claims. Oliver disclosed the core "two-tap" business method, where activating a "passive entity" in an advertisement generates a pre-populated text message for a user to send, thereby enrolling them in a promotion. Agrawal taught a standard internet ad-network system where a central server receives ad requests from webpages (containing embedded integration tags or scripts), collects user and device data, and serves targeted advertisements back to the user's browser. Khanna extended this ad-network concept by explicitly teaching the use of mobile-app "deeplinking" in advertisements, allowing a link in a web browser to launch a specific mobile application. Petitioner asserted that implementing Oliver’s two-tap method using Agrawal’s standard ad-serving technology and Khanna’s deeplinking capability rendered the claimed invention obvious.
  • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine these references for predictable results. A POSITA would be motivated to implement Oliver's efficient user sign-up method on a broad scale using Agrawal's well-known ad-network infrastructure to increase reach and targeting. To enable Oliver's method (launching a messaging app) from a web ad served by Agrawal’s system, a POSITA would have naturally turned to Khanna’s known deeplinking techniques. Petitioner noted that Agrawal and Khanna both originated from Google and described technologically compatible ad-network systems, providing further motivation for their combination.
  • Expectation of Success: Petitioner argued a POSITA would have had a reasonable expectation of success because combining these software-based technologies involved applying known techniques (deeplinking, ad-serving) to a known business method (two-tap sign-up) in a predictable manner.

Ground 2: Claims 1-30 are obvious over Oliver, Agrawal, and Khanna, in further view of Molinet.

• Prior Art Relied Upon: Oliver (Application # 2015/0178784), Agrawal (Patent 8,015,615), Khanna (Application # 2013/0111328), and Molinet (Application # 2016/0142858).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination in Ground 1, adding Molinet to address limitations in claims related to OS-specific functionality (claims 4-5 and 11-12). These claims require identifying a mobile device’s operating system (OS) based on user agent data and ensuring the deeplink URI is compatible with that specific OS. Petitioner argued that while Agrawal taught collecting user data, Molinet explicitly disclosed creating "contextual deeplinks" by collecting user agent information to identify the device’s OS and then generating a customized, OS-compatible URI.
  • Motivation to Combine: The motivation to add Molinet’s teachings to the primary combination was to ensure the system’s functionality and reliability. A POSITA implementing the combination of Oliver, Agrawal, and Khanna would have recognized that different mobile operating systems (e.g., iOS and Android) use different URI schemes for deeplinking. Therefore, it would have been an obvious and necessary design choice to incorporate Molinet’s method of identifying the user's OS and generating a compatible deeplink to ensure the two-tap process worked for all users.
  • Expectation of Success: Petitioner asserted success would be expected, as customizing links based on user agent data was a known and predictable technique for ensuring cross-platform compatibility on the web.

4. Arguments Regarding Discretionary Denial

• §325(d) - Same or Substantially the Same Prior Art: Petitioner argued against discretionary denial because three of the four primary references (Agrawal, Khanna, and Molinet) were not before the Examiner during prosecution. The fourth reference, Oliver, was of record in a parent application but was never substantively examined in the application leading to the ’074 patent and was ultimately overcome not on the merits, but by abandonment of that application. Petitioner further contended the Examiner misapprehended the motivation to combine the prior art that was considered.
• §314(a) - Fintiv Factors: Petitioner argued that the Fintiv factors weighed in favor of institution. The parallel district court litigation was in its early stages, with trial not expected until well after the Board’s Final Written Decision would be due. Petitioner stated its intent to file a motion to stay the litigation if the IPR is instituted, and noted that investment in the court proceeding had been minimal, with no expert reports or Markman briefing filed.

5. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-30 of Patent 11,553,074 as unpatentable.