PTAB

IPR2024-00937

Duration Media v. Rich Media Club LLC

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1. Case Identification

2. Patent Overview

  • Title: System And Method For Creation, Distribution And Tracking Of Advertising Via Electronic Networks
  • Brief Description: The ’482 patent discloses systems and methods for online advertising. The technology focuses on determining whether a predefined area for an advertisement on a webpage is within the visible area of a user's browser window and, in response, causing the advertisement content to be served and rendered in that area.

3. Grounds for Unpatentability

Ground 1: Obviousness over Koeppel and Seo, optionally in view of Krassner - Claims 1-14 are obvious over Koeppel in view of Seo, and optionally in view of Krassner.

  • Prior Art Relied Upon: Koeppel (Application # 2005/0177401), Seo (WO 2007/089082A1), and Krassner (Application # 2007/0265923).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Koeppel discloses the core concept of determining whether web page content, such as an advertisement, is in the visible area of a browser window. Koeppel teaches using a client-side script to analyze coordinates and determine the "in-view" status of a target component. Petitioner contended that Seo teaches the responsive action of serving an advertisement only when the associated content area becomes visible to the user, such as after a scrolling event. The optional combination with Krassner was argued to teach using a conventional real-time auction to select the advertisement to be displayed, a well-known method for monetizing ad space.
    • Motivation to Combine: A POSITA would combine Koeppel and Seo because both relate to online ad viewability. A POSITA would have been motivated to apply Seo’s method of delaying ad downloads until content is viewable to Koeppel’s viewability determination system to achieve the predictable benefit of conserving bandwidth and only displaying ads a user is likely to see. Adding Krassner’s auction mechanism was presented as a simple application of a known business practice to improve an existing technical solution.
    • Expectation of Success: Petitioner asserted a POSITA would have had a reasonable expectation of success in combining these elements, as it involved applying known techniques (conditional ad loading) to a known system (viewability monitoring) to achieve a predictable improvement in efficiency.

Ground 2: Obviousness over Koeppel, Seo, and Badros, optionally in view of Krassner - Claims 6 and 13 are obvious over Koeppel and Seo, further in view of Badros, and optionally in view of Krassner.

  • Prior Art Relied Upon: Koeppel (Application # 2005/0177401), Seo (WO 2007/089082A1), Badros (WO 2006/138400A1), and Krassner (Application # 2007/0265923).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on Ground 1 to address the limitations of claims 6 and 13, which require maintaining the same advertisement content for a predefined period of time. Petitioner argued that the primary combination of Koeppel and Seo teaches displaying an ad when it is in view. To meet the temporal limitation, Petitioner introduced Badros, which explicitly teaches tracking the time duration during which a document (such as an ad) is actually visible to a user. Badros's "impression module" was cited as teaching the determination of visibility duration.
    • Motivation to Combine: A POSITA, having already combined Koeppel and Seo to create a viewability-gated ad system, would have been motivated to incorporate Badros's time-tracking functionality. This would allow the system to meet emerging advertising standards that measured impressions based not just on viewability, but on the duration of viewability. This was a known problem with a known solution, aimed at providing more accurate and valuable advertising metrics.
    • Expectation of Success: A POSITA would have expected success in adding time-tracking to a viewability system, as it was a straightforward integration of known monitoring techniques to enhance data collection for online advertising.

4. Key Technical Contentions (Beyond Claim Construction)

  • Priority Date Challenge: A central argument of the petition was that the ’482 patent is not entitled to the priority date of its earlier parent applications. Petitioner contended that key claim limitations—specifically "determining whether a predefined portion of the predefined area... is in the visible area" and "causing a communication to be sent"—constitute new matter first introduced in the ’403 application filed on April 4, 2009. Therefore, Petitioner argued the effective priority date is in 2009, making Koeppel (2005), Seo (2007), and Badros (2006) valid prior art against the challenged claims.

5. Arguments Regarding Discretionary Denial

  • §314(a) / Fintiv Factors: Petitioner argued against discretionary denial under Fintiv, asserting that the parallel district court case is in its early stages with no trial date set and no significant investment by the court. Petitioner stated its intent to file a motion to stay the litigation pending the outcome of the IPR and cited the district court’s high rate of granting such stays, weighing heavily in favor of institution.
  • §325(d) / Same or Substantially Same Art: Petitioner argued against denial under §325(d), contending that the asserted grounds are not the same or substantially the same as those considered during prosecution. Although Koeppel and Badros were cited in Information Disclosure Statements (IDS), Petitioner asserted that the examiner never provided any substantive analysis of their teachings on the record. Petitioner argued this was a material error, especially since the examiner allowed the claims based on a perceived absence of art teaching the "in the visible area" limitation, which Koeppel directly addresses.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-14 of the ’482 patent as unpatentable.