Roku Inc v. Intent Iq LLC

1. Case Identification

• Case #: IPR2024-00666
• Patent #: 10,715,878
• Filed: March 20, 2024
• Petitioner(s): Roku, Inc.
• Patent Owner(s): AlmondNet, Inc. and Intent IQ, LLC
• Challenged Claims: 1-4, 6-12, 13-18, and 19-23

2. Patent Overview

• Title: Targeted Television Advertisements Based on Online Behavior
• Brief Description: The ’878 patent describes methods and systems for identifying an association between multiple electronic devices connected to a common local area network (LAN), such as a WiFi hotspot. This association is then used to perform a cross-device action, like delivering targeted advertisements.

3. Grounds for Unpatentability

Ground 1: Claims 1-2, 8-10, 13-14, 19, and 22 are obvious over Baig, Laidlaw, Sitaraman, and Hahn.

• Prior Art Relied Upon: Baig (Application # 2008/0113674), Laidlaw (Application # 2004/0128547), Sitaraman (Patent 6,427,170), and Hahn (The Internet Complete Reference (2d ed. 1996)).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the primary reference, Baig, taught the core concept of the claims: identifying an association between mobile devices connected to the same WiFi hotspot by observing that they share a common public IP address. Petitioner contended that Baig's system then used this association for "cross-device action," such as displaying a list of other users on the same hotspot. To meet further claim limitations, Petitioner asserted that a person of ordinary skill in the art (POSITA) would have modified Baig with other references. Laidlaw was cited for teaching the use of cookies containing session tokens as a "device identifier" and storing session data (IP address, timestamps) in a server-side session table. Sitaraman was cited for teaching the use of DHCP to "dynamically assign" IP addresses to network devices like the access points in Baig. Finally, Hahn was cited for teaching well-known techniques ("client pull" and "server push") for automatically updating webpage content, which would supply the "automatic action" required by the claims, such as refreshing a user list when a new user joins the hotspot.
  • Motivation to Combine: Petitioner asserted that a POSITA would combine these references to improve Baig's system using well-known, conventional techniques. A POSITA would have incorporated Laidlaw's session management using cookies because Baig's system required a way to track logged-in users, a common problem with a limited number of known solutions like cookies. Modifying Baig to support dynamically assigned IPs from Sitaraman was motivated by the desire to increase the system's reach, as many public hotspots used dynamic IPs for efficiency and cost savings. Finally, a POSITA would integrate Hahn's automatic update techniques to provide a better user experience by ensuring that information, like the list of users in a vicinity group, was kept current without requiring manual refreshes.
  • Expectation of Success: Petitioner argued that a POSITA would have had a high expectation of success because the combination involved applying conventional technologies (session management, DHCP, automatic page updates) to their known purposes within the analogous field of internet-based services.

Ground 2: Claims 3-4, 15-16 are obvious over Ground 1 Prior Art in further view of Xu.

• Prior Art Relied Upon: Baig, Laidlaw, Sitaraman, Hahn, and Xu (Patent 7,730,030).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed the limitation of collecting behavioral data when a first device is "not connected to the LAN." Petitioner argued that Baig's system could be modified by Xu, which taught creating virtual communities where user preferences, such as a desire to be visible or invisible to other users, could be persistently stored in a global user database. Therefore, a user's visibility choice (behavioral data) made while connected to a first hotspot (a first LAN) would be stored by the server. Later, when that user connected to a second, different hotspot (and thus was not connected to the first LAN), the server would apply the stored preference.
  • Motivation to Combine: A POSITA would combine Xu with the Baig system to improve user privacy and convenience. Storing a user's visibility preference would prevent them from needing to reset it every time they log in from a new location, which was a predictable use case for Baig's hotspot-based system.

Ground 3: Claims 6-7, 17-18 are obvious over Ground 1 Prior Art in further view of Gerace.

• Prior Art Relied Upon: Baig, Laidlaw, Sitaraman, Hahn, and Gerace (Application # 2006/0282328).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed the limitation of selecting an advertisement based on profile information from a first device and directing it to a second device. While Baig taught targeting ads to a device based on its own user's profile, Petitioner argued Gerace supplied the missing element. Gerace taught a targeted advertising system that could deduce or assume demographic information (e.g., age, gender) for one user based on the shared behaviors, activities, or profiles of other associated users.
  • Motivation to Combine: A POSITA would be motivated to incorporate Gerace's techniques to improve the ad-targeting effectiveness of Baig's system. In scenarios where a user on a second device declined to provide their own demographic information, the system could still serve a relevant ad by deducing their likely demographics from the profile of an associated user on the first device at the same hotspot. This would increase the value and relevance of the advertising platform.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) for claims 11-12, 20-21, and 23 based on the combination of all prior art from Grounds 1, 2, and 3 (Baig, Laidlaw, Sitaraman, Hahn, Xu, and Gerace), arguing that since the individual limitations were made obvious by the prior art, their combination would also have been obvious.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) would be inappropriate. This petition was filed as a "copycat" of an already-instituted IPR (IPR2023-01281, the "Meta IPR") and was submitted with a motion for joinder.
• Petitioner contended that under the General Plastic framework, the factors weigh in favor of institution. Petitioner asserted that despite diligent searches for its first (denied) IPR petition against the ’878 patent, it was unaware of the prior art combinations asserted in the Meta IPR.
• Petitioner also argued it was not using the Board's prior denial as a "roadmap" to craft the current petition, as the substantive challenges are identical to those in the instituted Meta IPR. Petitioner argued that because the Board has already dedicated resources to the parallel proceeding, joinder would be efficient.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-4, 6-12, 13-18, and 19-23 of the ’878 patent as unpatentable.