Meta Platforms Inc v. SitNet LLC

1. Case Identification

• Case #: IPR2024-00528
• Patent #: 8,249,932
• Filed: March 4, 2024
• Petitioner(s): Meta Platforms, Inc.
• Patent Owner(s): SitNet, LLC
• Challenged Claims: 1-11, 22, and 23

2. Patent Overview

• Title: Presenting Targeted Advertising in a Situational Network
• Brief Description: The ’932 patent describes methods and systems for presenting targeted advertising within a "situational network." This network is formed when an event or "situation" occurs, causing connections to be established among a set of participants to exchange information and receive relevant advertisements.

3. Grounds for Unpatentability

Ground 1: Obviousness over Carlson and Shahine - Claims 1-4, 6-11, and 22-23 are obvious over Carlson in view of Shahine.

• Prior Art Relied Upon: Carlson (Application # 2006/0282312) and Shahine (8,799,073).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Carlson taught a proactive targeted advertising system that delivers alerts and relevant ads to users based on a detected event (e.g., bad weather). Carlson’s system detected an event, determined affected users, and sent alerts with corresponding ads to their devices over a network, thus meeting the core limitations of presenting targeted ads in a situational network. For system claims, Carlson’s "alert server" was argued to be the claimed "central server" and its "content provider" the "situation authority."
  • Motivation to Combine (for §103 grounds): To the extent Carlson did not explicitly disclose receiving advertisements from advertisers, a POSITA would combine Carlson with Shahine. Shahine disclosed a conventional advertiser server for receiving and storing ad content. A POSITA would have been motivated to incorporate Shahine’s standard ad server functionality into Carlson's system to allow advertisers to upload ads for later distribution, which was a well-known and necessary part of any advertising system.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success in combining the systems using standard network communication and upload techniques.

Ground 2: Obviousness over Carlson-Shahine and Lundy - Claims 1-4, 6-11, and 22-23 are obvious over Carlson-Shahine in view of Lundy.

• Prior Art Relied Upon: Carlson (Application # 2006/0282312), Shahine (8,799,073), and Lundy (Application # 2008/0092162).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that the combination of Carlson and Shahine rendered every element obvious. However, to the extent the Patent Owner argued in parallel litigation that "automatic redirection" requires a user click, Petitioner argued Lundy explicitly taught this feature. Lundy disclosed an alert system where an advertisement (e.g., for State Farm) related to a severe weather alert contained a hyperlink; when a user clicked the link, their browser was redirected to a webpage with additional information about the situation.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Lundy with the Carlson-Shahine system to provide users with a way to access more detailed information about a situation than could be provided in an initial alert. For serious events like bad weather, providing a link to a more comprehensive information source was an obvious and beneficial improvement.
  • Expectation of Success (for §103 grounds): Incorporating a hyperlink into an advertisement to redirect a browser to another webpage was a well-known technique, ensuring a high expectation of success.

Ground 3: Obviousness over Amidon, Walsh, and Shahine - Claims 1-11 and 22-23 are obvious over Amidon in view of Walsh and Shahine.

• Prior Art Relied Upon: Amidon (8,346,864), Walsh (9,195,996), and Shahine (8,799,073).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Amidon, which related to online social network conferences, disclosed the core "situational network." A conference about a specific topic (e.g., a sports game) was argued to be the claimed "situation." Amidon taught automatically connecting users to the conference based on metadata. Walsh, from the same inventors as Amidon, taught incorporating targeted advertisements into Amidon’s conference interface, with ads selected based on a "session profile" computed for each user based on their social network information and location.
  • Motivation to Combine (for §103 grounds): A POSITA considering Amidon’s social conferencing system would have recognized the well-known benefit of generating advertising revenue and would have been motivated to incorporate targeted advertising. Walsh, a related patent, provided the specific techniques for doing so. A POSITA would have further combined this system with Shahine’s conventional ad server to allow advertisers to upload and store ads for distribution, a necessary component of the advertising system.
  • Expectation of Success (for §103 grounds): A POSITA would have expected success, as Walsh explicitly showed how to integrate an ad display into Amidon’s conference interface, and adding Shahine's back-end functionality involved standard, predictable techniques.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including adding Roskind to the Carlson-based combination for storing a user profile on a connected device (Claim 5) and adding Jones to the Amidon-based combination to teach applying the system to a weather phenomenon (Claim 8).

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §325(d) because none of the asserted prior art or arguments were previously presented to the USPTO during prosecution.
• Petitioner argued against discretionary denial under Fintiv, asserting the factors strongly favored institution. The parallel district court case was in its early stages, with a scheduled trial date nearly four years from the median time to trial in that district. Petitioner also stipulated that, if IPR is instituted, it would not pursue the same prior art invalidity grounds in the district court litigation.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-11, 22, and 23 of the ’932 patent as unpatentable.