FreeWheel Media Inc v. AlmondNet Inc

1. Case Identification

• Case #: IPR2024-00416
• Patent #: 8,775,249
• Filed: March 1, 2024
• Petitioner(s): Freewheel Media, Inc.
• Patent Owner(s): AlmondNet, Inc.
• Challenged Claims: 1, 3-11, 13-21, and 23-25

2. Patent Overview

• Title: Method, Computer System, and Stored Program for Accumulating Descriptive Profile Data Along with Source Information for Use in Targeting Third-Party Advertisements
• Brief Description: The ’249 patent describes a method for collecting user profile data for targeted advertising. The system receives a partial profile of a user from a third-party website, which the user is visiting, and adds this data to a stored profile through a process of automatic electronic URL redirection.

3. Grounds for Unpatentability

Ground 1: Obviousness over Merriman and Jaye - Claims 1, 3-6, 10-11, 13-16, 20-21, and 23-25 are obvious over Merriman in view of Jaye.

• Prior Art Relied Upon: Merriman (Patent 5,948,061) and Jaye (Patent 6,415,322).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Merriman discloses a system for delivering targeted advertisements by compiling visitor profiles. Merriman’s advertising server receives information from a user’s browser via a redirect initiated by an affiliate website, but it does not expressly teach passing profile information collected by the affiliate website to the advertising server. Jaye allegedly cures this deficiency by teaching a method to transfer profile information from a local server to an enterprise server by appending the information (e.g., local user ID) to a special URL that forces a redirect. Petitioner asserted that applying Jaye’s technique of appending profile data to a redirect URL within Merriman’s existing ad-serving framework renders the claims obvious.
  • Motivation to Combine: A POSITA would combine Merriman and Jaye to improve ad targeting by providing the advertising server with real-time profile information from the website a user is currently visiting. This up-to-date context would allow for more relevant and valuable ad placements, addressing a known industry demand and creating economic incentives for both advertisers and website publishers.
  • Expectation of Success: A POSITA would have had a high expectation of success because the combination involves applying the known and straightforward technique of appending data to a URL to Merriman's system, which already used URL redirects. This would be a routine implementation using conventional programming and database skills.

Ground 2: Obviousness over Roth and Jaye - Claims 1, 3-6, 10-11, 13-16, 20-21, and 23-25 are obvious over Roth in view of Jaye.

• Prior Art Relied Upon: Roth (Patent 6,285,987) and Jaye (Patent 6,415,322).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Roth discloses a system for compiling user information for a real-time bidding process for targeted advertisements. Similar to Merriman, Roth’s system uses a redirect from a website to an advertising system but does not explicitly pass profile information gathered at the website through that redirect. The petition argued that it would have been obvious to modify Roth's system with Jaye's teaching of appending profile information to a redirect URL. This would allow real-time bidding agents in Roth’s system to receive current user data and context from the website, improving the bidding and ad selection process.
  • Motivation to Combine: The motivation is similar to the Merriman-Jaye combination but amplified by Roth's focus on real-time bidding. Providing up-to-date profile information directly to the bidding system via the redirect would improve a key downfall of prior systems where targeting criteria had to be specified in advance. This would allow website owners to obtain higher revenue for ad placements, a stated objective of Roth.
  • Expectation of Success: Success was expected as the combination merely applies Jaye’s known technique for data transfer via URL to Roth’s existing redirect-based system, which is a predictable integration.

Ground 3: Obviousness over Merriman/Roth and Minor - Claims 1, 3-6, 10-11, 13-16, 20-21, and 23-25 are obvious over Merriman or Roth in view of Minor.

• Prior Art Relied Upon: Merriman (Patent 5,948,061), Roth (Patent 6,285,987), and Minor (Patent 5,740,252).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground presented Minor as an alternative to Jaye for transferring profile data. Minor taught using a "transparent redirect" that includes a URL with encrypted demographic information to pass data from one web server to another via the end-user's computer. Petitioner argued it would have been obvious to combine the base systems of either Merriman or Roth with Minor’s transparent redirect technique. In this combination, the third-party website would send a redirect message including encrypted demographic information to the central advertising server, which would then add it to the user's profile.
  • Motivation to Combine: A POSITA would combine these references because Minor’s technique was advantageous for being simple, efficient, and keeping user demographic data private through encryption. These benefits would have been desirable improvements to the advertising systems of Merriman or Roth.
  • Expectation of Success: A POSITA would have expected success in implementing this combination, as it involved incorporating a known data transfer technique into a compatible existing system.

• Additional Grounds: Petitioner asserted additional obviousness challenges by combining the primary grounds with Coleman (Application # 2002/0026351) to add verification scores and credibility ratings to profile data, with Herz (Application # 2013/0097664) to add a marketplace for profile information and payments to data contributors, and with Gardner (Patent 6,141,694) to add specific methods for database management and updating profiles.

4. Key Claim Construction Positions

• Petitioner stated it applied the Patent Owner’s proposed construction for the term "unaffiliated third part[y/ies]" as "part[y/ies] not having common ownership with the party or parties that control said programmed computer system." All other claim terms were given their plain and ordinary meaning. Petitioner contended the prior art teaches the claim limitations under any reasonable construction.

5. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv): Petitioner argued against discretionary denial, asserting that the Fintiv factors favor institution. Petitioner noted that the trial date in the parallel district court litigation is approximately six months after the statutory deadline for a Final Written Decision (FWD), discovery is in its early stages, and the petition challenges all asserted claims while the complaint only charted one.
• §325(d): Petitioner argued denial under §325(d) is unwarranted because the current grounds are not the same or substantially the same as those considered during prosecution. Petitioner asserted the Examiner erred by not considering combinations of prior art that teach base advertising systems (like Merriman or Roth) with references that explicitly teach passing profile information via URL redirection (like Jaye or Minor), which is the core of the asserted grounds.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 3-11, 13-21, and 23-25 of the ’249 patent as unpatentable.