Alertus Technologies LLC v. deskTop Alert Inc

1. Case Identification

• Case #: IPR2024-00363
• Patent #: 9,172,765
• Filed: January 8, 2024
• Petitioner(s): Alertus Technologies, LLC
• Patent Owner(s): Desktop Alert, Inc.
• Challenged Claims: 1-13

2. Patent Overview

• Title: Method and System for Alert Message Dissemination
• Brief Description: The ’765 patent discloses a method and system for disseminating alert messages to multiple personal computers over a network. The technology is presented as an improvement over conventional client-server polling architectures, aiming to reduce network traffic and database usage by using a multi-step communication protocol involving alert ID numbers and small, efficient data packets.

3. Grounds for Unpatentability

Ground 1: Claims 1-13 are obvious over Dillon in view of Applicant Admitted Prior Art (AAPA)

• Prior Art Relied Upon: Dillon (Patent 6,067,561) and AAPA (admissions within the ’765 patent specification).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Dillon discloses the core architecture of the challenged claims: an e-mail notification system with a central server, subscriber terminals (clients), and a polling mechanism. Dillon’s server stores e-mails and associated timestamps (acting as alert ID numbers), and its clients poll the server, compare timestamps, and retrieve new messages if the timestamps differ. Petitioner contended that AAPA, derived from admissions in the ’765 patent, supplies the specific implementation details that Dillon leaves open. These admissions establish that protocols like HTTP, SOAP, and RPC, the use of instant message formats, and industry-standard databases were all well-known, conventional, and widely adopted in prior art alert systems.
  • Motivation to Combine: A POSITA would combine Dillon’s foundational polling system with the conventional technologies described in the AAPA. This combination was presented as a predictable design choice, as a skilled artisan would naturally implement a general system like Dillon’s using the standardized, well-known communication protocols and database structures that the AAPA admits were commonplace for such systems.
  • Expectation of Success: Petitioner asserted a POSITA would have a high expectation of success, as the combination involves implementing a known system architecture (Dillon) with reliable, standardized, and pervasive networking technologies (AAPA) to achieve the predictable result of an efficient alert system.

Ground 2: Claims 1-13 are obvious over Dillon and AAPA in view of Brady

• Prior Art Relied Upon: Dillon (Patent 6,067,561), AAPA, and Brady (Application # 2010/0205243).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative to Ground 1. Petitioner argued that if the combination of Dillon and AAPA were deemed insufficient to teach a "triggering step" involving an HTTP packet comprising a request, Brady explicitly supplies this element. Brady discloses an HTTP client that sends "incoming HTTP requests" to a polling server to check for data changes, which constitutes the claimed triggering step.
  • Motivation to Combine: A POSITA seeking to implement the Dillon-AAPA system would be motivated to incorporate Brady’s teaching of using an HTTP request for polling. This would be a predictable implementation choice to create a web-based alert system, leveraging the universally understood HTTP protocol for client-server communication.
  • Expectation of Success: Success would be expected because incorporating Brady’s specific teaching of an HTTP request into the broader Dillon-AAPA framework uses well-understood, compatible technologies to achieve the predictable result of polling a server for new information.

Ground 3: Claims 1-13 are obvious over Dillon and AAPA in view of Douglas

• Prior Art Relied Upon: Dillon (Patent 6,067,561), AAPA, and Douglas (Application # 2009/0164586).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was also presented as an alternative. Petitioner argued that if the combination of Dillon and AAPA were found not to teach that alert messages are in "instant message format," Douglas explicitly discloses this feature. Douglas teaches a message management system where messages can be either emails or Instant Messages (IMs).
  • Motivation to Combine: A POSITA would be motivated to modify the email-based system of Dillon to use the instant message format taught by Douglas. Since IMs and emails were known, interchangeable formats for alert messages, substituting one for the other would have been an obvious design choice to achieve a desired user experience, such as immediate on-screen notification.
  • Expectation of Success: A POSITA would have reasonably expected success in this combination, as implementing a known message type (IMs) within a standard polling architecture is a straightforward integration of compatible technologies.
• Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 1-13 based on the combination of Dillon, Brady, Douglas, and AAPA, leveraging the arguments from all prior grounds.

4. Key Claim Construction Positions

• Terms Lacking Antecedent Basis: Petitioner argued that terms like "said memory," "its memory," and "said processor" lack a proper antecedent basis in the claims. For the petition, it proposed constructions to resolve the ambiguity.
  • "said memory" (in claim 1) was assumed to refer to the server's "alert message cache."
  • "its memory" (in claim 1) was assumed to refer to an implied memory of the "said client."
  • "said processor" (in claim 10) was assumed to refer to an implied processor of the "central server."
• Indefinite Terms: Petitioner argued that "Get Alert Messages" (claim 10) and "said client displays, display said alter messages" (claim 12) are arguably indefinite. For the petition, it assumed "Get Alert Messages" refers to the "GetUnreadAlerts" SOAP request from the prior art system and that "display said alter messages" should be construed as "displays said alert messages."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv is unwarranted. The parallel district court litigation was described as being in its infancy, with no trial date set, no answer filed by Petitioner, and no discovery conducted. Petitioner stipulated that, if IPR is instituted, it will not pursue in the litigation the same grounds raised in the petition or any grounds that could have reasonably been raised. Petitioner also argued that denial under §325(d) is unwarranted because the primary prior art references (Dillon, Brady, Douglas) and the AAPA arguments were never presented to or considered by the Examiner during prosecution.

6. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-13 of the ’765 patent as unpatentable.