FreeWheel Media Inc v. Intent Iq LLC

1. Case Identification

• Case #: IPR2024-00422
• Patent #: 7,861,260
• Filed: March 1, 2024
• Petitioner(s): FreeWheel Media, Inc.
• Patent Owner(s): Almondnet, Inc.
• Challenged Claims: 1, 6, 8-10, 21, 23-26, 29-34, 38-40, 42-43, 45-53, 55, 59-61, 63-70, 76, 81-82, 85, 87-89, 100, 102-104, 107-115, 117, 120-124, 126, 129-136, 142, 145-147, and 149-150

2. Patent Overview

• Title: Targeted Television Advertisements Based on Online Behavior
• Brief Description: The ’260 patent describes methods for delivering targeted television advertisements to a user’s set-top box (STB) based on user profile information derived from online activity. The system associates an online user device with an STB based on a shared, common IP address through which network traffic for both devices is routed.

3. Grounds for Unpatentability

Ground 1: Obviousness over Baig, Costa, and Zwicky - Claims 1, 26, 38, 61 and related dependents are obvious over Baig in view of Costa and Zwicky.

• Prior Art Relied Upon: Baig (Application # 2008/0113674), Costa (Application # 2006/0128364), and Zwicky (a 2000 publication titled Building Internet Firewalls).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Baig taught a system where multiple user devices connect to a content server through a common wireless access point (AP) at a public hotspot, thereby sharing a common public IP address. Petitioner asserted it was obvious to incorporate a set-top box (STB), as taught by Costa in a similar hotspot environment, into Baig’s system. Baig’s content server could then electronically associate the user device and the STB based on their shared IP address. Petitioner contended Zwicky explained the well-known mechanics of Network Address Translation (NAT)—a technique explicitly mentioned in Baig—which uses unique port numbers to differentiate and route traffic to individual devices behind a single public IP address, thus teaching the claimed routing of traffic to both the user device and the STB.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Baig and Costa to provide the various content types disclosed in Baig (e.g., video games, advertisements) on a television display via an STB, a predictable use of the technology. A POSITA would have been motivated to apply the standard NAT techniques detailed in Zwicky to Baig’s system because Baig expressly referenced using NAT, and Zwicky merely provided the conventional details for implementing it to enable services like targeted advertising and messaging between individual devices.
  • Expectation of Success: A POSITA would have a reasonable expectation of success as combining these elements involved known techniques (e.g., connecting an STB to a Wi-Fi network, using standard NAT protocols) to achieve predictable results.

Ground 2: Obviousness over Baig, Costa, and Banga690 - Claims 1, 26, 38, 61 and related dependents are obvious over Baig in view of 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 presents Banga690 as an alternative to Zwicky for providing device-specific identification. Petitioner argued the combination of Baig and Costa established the core system of associating a user device and an STB at a hotspot via a common IP address. Banga690 was argued to teach a system that identifies and tracks devices connected to an AP using persistent, device-specific identifiers (e.g., MAC addresses) in addition to IP addresses. This information is used to build user profiles for targeted advertising. The combined system would therefore be capable of associating devices based on a common IP address and further differentiating them using device-specific identifiers as taught by Banga690.
  • Motivation to Combine: A POSITA would combine Banga690 with Baig and Costa to enhance the device tracking and profiling capabilities of Baig’s advertising system. Using persistent identifiers like MAC addresses would allow the system to recognize a specific device across different networks or sessions, even if its IP address changes, leading to more robust user profiles and better-targeted advertising, which was a known goal in the art.
  • Expectation of Success: Success was predictable because tracking devices using MAC addresses was a well-known technique, and integrating this known method into a hotspot-based advertising system was straightforward for a POSITA.

Ground 3: Obviousness over Baig-Costa-Banga690 and Howcroft - Various dependent claims are obvious over the Baig-Costa-Banga690 combination in view of Howcroft.

• Prior Art Relied Upon: Baig (Application # 2008/0113674), Costa (Application # 2006/0128364), Banga690 (Application # 2006/0271690), and Howcroft (Application # 2008/0201731).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Howcroft supplied teachings for limitations found in various dependent claims not explicitly addressed by the primary combination. Specifically, Howcroft taught tracking user search requests to build user profiles for targeted advertising (mapping to claims 6, 85, 120, 126). Howcroft also disclosed an advertisement system that selects an ad from a database of possibilities and delivers it into an IP television stream without an explicit request from the user's device (a "server push" model), mapping to claims requiring selection from a plurality of ads (claims 8, 87) and delivery without a request (claims 21, 100).
  • Motivation to Combine: A POSITA would have been motivated to incorporate Howcroft’s techniques to improve the Baig-Costa-Banga690 system in a known way. Using search history would increase ad relevance, and using a server-push delivery model would give advertisers more control over the timing and placement of ads. These were common goals for improving online advertising systems.
  • Expectation of Success: This combination involved applying known advertising techniques to a similar system to achieve a predictable improvement in ad targeting and delivery, giving a POSITA a high expectation of success.
• Additional Grounds: Petitioner asserted numerous additional obviousness challenges against various dependent claims by adding further references to the primary combinations. These included adding Smith for teaching cookies as device identifiers, Middeljans for teaching payments to profile providers, Koningstein for teaching pay-per-action advertising models, and Banga633 for teaching tags as device identifiers.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under Fintiv, asserting that factors favored institution. It was argued 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 IPR petition presents a more comprehensive challenge to all asserted claims than the limited invalidity contentions in the district court.
• Petitioner also contended that denial under §325(d) was inappropriate because the primary references and arguments, particularly regarding the combination of hotspot device association with known NAT or device identifier techniques, were not previously presented to or considered by the Examiner during prosecution.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and cancellation of claims 1, 6, 8-10, 21, 23-26, 29-34, 38-40, 42-43, 45-53, 55, 59-61, 63-70, 76, 81-82, 85, 87-89, 100, 102-104, 107-115, 117, 120-124, 126, 129-136, 142, 145-147, and 149-150 of the ’260 patent as unpatentable.