FreeWheel Media Inc v. Intent Iq LLC

1. Case Identification

• Case #: IPR2024-00421
• Patent #: 7,861,260
• Filed: March 1, 2024
• Petitioner(s): FreeWheel Media, Inc.
• Patent Owner(s): AlmondNet, Inc.
• Challenged Claims: 1-5, 7, 11-20, 22, 26-28, 35-38, 41, 44, 54, 56-58, 61-62, 71-75, 77-80, 83-84, 86, 90-99, 101, 105-106, 116, 118-119, 125, 127-128, 137-141, 143-144, 148, 151-152

2. Patent Overview

• Title: Targeted Television Advertisements Based On Online Behavior
• Brief Description: The ’260 patent discloses methods for delivering targeted television advertisements to a user’s set-top box (STB) based on profile information derived from the online activity of an associated user device. The system associates the user device and the STB based on their use of a common IP address via a shared modem.

3. Grounds for Unpatentability

Ground A: Obviousness over Baig, Costa, and Zwicky - Claims 1-5, 7, 12, 15, 17, 22, 26-28, 37-38, 44, 54, 56-58, 61-62, 71-80, 83-84, 86, 91, 94, 96, 101, 106, 116, 118-119, 125, 128, 137-141, 143-144, 148, 151-152 are obvious over Baig, Costa, and Zwicky.

• Prior Art Relied Upon: Baig (Application # 2008/0113674), Costa (Application # 2006/0128364), and Zwicky ("Building Internet Firewalls," 2d ed. 2000).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Baig taught the core system of creating "vicinity-based communities" where multiple user devices connect through a common wireless access point (e.g., a hotspot) and share a single public IP address. Baig's system used profile information from these devices to provide targeted services, including advertising. Petitioner asserted that while Baig described various user devices, it did not explicitly name an STB. Costa was introduced to supply this element, as it expressly disclosed connecting STBs to public wireless hotspots. The combination of Baig and Costa thus allegedly taught associating a user device and an STB via a common IP address. To address the limitation of uniquely identifying each device behind the shared IP address, Petitioner cited Zwicky. Zwicky was presented as a well-known text explaining the standard industry practice of Network Address Translation (NAT), which Baig itself mentioned. Zwicky explained how NAT uses unique port numbers in combination with the shared public IP address to differentiate and route traffic to specific devices on a local network.
  • Motivation to Combine: A POSITA would combine Baig with Costa to expand the types of devices in Baig's targeted advertising ecosystem, a simple and predictable modification. Including an STB would beneficially allow for displaying content on a television. Petitioner argued that since Baig explicitly mentioned NAT, a POSITA would have been directly motivated to consult a standard reference like Zwicky to implement this functionality, which was necessary to enable communication with individual devices in Baig's system.
  • Expectation of Success: Petitioner asserted a high expectation of success, as the combination involved applying well-known, standard networking principles (connecting an STB to Wi-Fi, using NAT with port translation) to established systems to achieve the predictable result of targeted advertising on an STB within a hotspot.

Ground B: Obviousness over Baig, Costa, and Banga690 - Claims 1-5, 7, 12, 15, 17-18, 22, 26-28, 35-38, 44, 54, 56-58, 61-62, 71-80, 83-84, 86, 91, 94, 96-97, 101, 106, 116, 118-119, 125, 128, 137-141, 143-144, 148, 151-152 are obvious over Baig, Costa, and Banga690.

• Prior Art Relied Upon: Baig (Application # 2008/0113674), Costa (Application # 2006/0128364), and Banga690 (Application # 2006/0271690).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground was presented as an alternative to Ground A, with Banga690 replacing Zwicky to teach unique device identification. The roles of Baig (core system) and Costa (adding the STB) remained the same. Petitioner argued Banga690 taught an alternative, yet equally well-known, method for identifying devices by using persistent, device-specific identifiers such as MAC addresses, IMSI, or IMEI. Banga690’s server recorded these identifiers along with the IP address to create user profiles and track devices across different networks. This combination allegedly taught associating devices by linking their unique hardware identifiers to the common public IP address of the hotspot.
  • Motivation to Combine: A POSITA would combine the Baig/Costa system with Banga690's techniques to create a more robust device tracking and profiling system. Using persistent identifiers like MAC addresses would allow Baig’s system to recognize a specific device even if its IP address or port number changed, thereby improving the accuracy and effectiveness of the targeted advertising. This would have been a known technique to improve a known system.
  • Expectation of Success: Petitioner contended there was a high expectation of success because tracking devices on a network using their MAC addresses was a fundamental and widely implemented networking technique.

• Additional Grounds: Petitioner asserted numerous additional obviousness challenges to address specific dependent claim limitations. These grounds added further references to the primary combinations, including Cox (for dynamic IP address assignment), Han (for updating stored dynamic IPs), Leigh (for a central ad server), Wing (for monitoring IP address changes), and Jaye (for user redirection via HTML).

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on the Fintiv factors would be inappropriate. It was asserted that the parallel district court trial is not scheduled until March 2026, roughly six months after the statutory deadline for a Final Written Decision, and that key litigation milestones like claim construction had not yet occurred.
• Petitioner also argued that denial under §325(d) was not warranted because the grounds raised in the petition were not the same or substantially the same as arguments considered during prosecution. Petitioner contended that the Examiner erred by not recognizing that features purportedly missing from the cited art of record (Haeuser), such as electronic association based on a common IP address, were in fact well-known, as shown by the newly cited art like Baig and Banga690.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-5, 7, 11-20, 22, 26-28, 35-38, 41, 44, 54, 56-58, 61-62, 71-75, 77-80, 83-84, 86, 90-99, 101, 105-106, 116, 118-119, 125, 127-128, 137-141, 143-144, 148, and 151-152 of Patent 7,861,260 as unpatentable.