Google LLC v. Metarail Inc

1. Case Identification

• Case #: IPR2024-01269
• Patent #: 10,789,626
• Filed: October 2, 2024
• Petitioner(s): Google LLC
• Patent Owner(s): Metarail, Inc.
• Challenged Claims: 1-10

2. Patent Overview

• Title: Deep-Linking for Automatically Generating Online Advertisements
• Brief Description: The ’626 patent discloses a deep-linking system for automatically generating online advertisements. The system purports to automate the manual process of mapping programming variables between a publisher's site and an advertiser's site by using a "universal variable map" created by crawling websites to identify and link corresponding form data fields.

3. Grounds for Unpatentability

Ground 1: Claims 1 and 4-10 are obvious over Belanger in view of Halevy

• Prior Art Relied Upon: Belanger (Application # 2005/0144048) and Halevy (Application # 2006/0230033).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Belanger taught a reservation booking website that used manually created, parameter-based "promotional deep-links" to direct users to other sites (e.g., for car rentals) and pre-populate data fields. However, Belanger's process for creating and associating these deep-links was manual. Petitioner asserted that Halevy taught the missing automation element by disclosing a system that automatically generated deep-links. Halevy's system crawled various websites, identified web forms, extracted field parameter names, and stored them in a "form database." This database mapped corresponding fields from different websites to a shared set of normalized identifiers ("SO-properties"), creating what Petitioner contended was the claimed "universal variable map." The combination, therefore, taught generating a deep-linked ad (Belanger's promotion) by utilizing an automatically generated map (Halevy's database) to link programming variables across different sites.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Belanger with Halevy to automate the tedious and non-scalable manual process of creating deep-link parameter mappings described in Belanger. Automating this known manual process was an obvious improvement to enhance efficiency and expand promotional partnerships, and Halevy provided a known solution for such automation.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in integrating these systems. Belanger already used standard web services like SOAP for data exchange, which could be readily used to query Halevy's form database and retrieve the automatically generated deep-links for display as promotions.

Ground 2: Claims 2 and 3 are obvious over Belanger and Halevy in view of Reichardt

• Prior Art Relied Upon: Belanger (Application # 2005/0144048), Halevy (Application # 2006/0230033), and Reichardt (Application # 2002/0124255).

• Core Argument for this Ground: This ground builds on the Belanger/Halevy combination to address the additional limitations in claims 2 and 3, which relate to inserting a deep-linked ad into a video and selecting that ad based on the video's content.

  • Prior Art Mapping: Petitioner argued that Reichardt disclosed providing interactive advertisements within videos displayed in web browsers. Reichardt taught inserting clickable ad graphics (e.g., an "alert icon") into a video, where the ad is selected based on flags in the video's header that indicate the video's content. Clicking the ad directs the user's browser to the advertiser's content. This directly taught serving a deep-linked ad by "inserting" it into a video, with the ad being "selected based on content being displayed or played to the user," as required by claims 2 and 3.
  • Motivation to Combine: A POSITA would be motivated to modify the Belanger/Halevy system with Reichardt's teachings to enhance advertising revenue and user engagement. Displaying promotional deep-links within videos on Belanger’s travel reservation site (e.g., a video about a travel destination) would be a logical extension to provide more targeted advertising. The content flag from Reichardt would be used to query Halevy's database to retrieve a relevant deep-link.
  • Expectation of Success: A POSITA would expect success, as implementing this combination would involve standard programming techniques to use video header data to construct a query string for Halevy's existing system.

• Additional Grounds: Petitioner asserted that claims 1 and 4-10 are also obvious over Belanger and Applicant Admitted Prior Art (APA) in view of Halevy, arguing the APA confirms the background knowledge of deep-linking in the travel industry. A final ground asserted claims 2 and 3 are obvious over the four-way combination of Belanger, APA, Halevy, and Reichardt.

4. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv): Petitioner argued against discretionary denial, asserting that the Fintiv factors weighed against it. The co-pending district court litigation was in its earliest stages, with no trial date set, no claim construction, and minimal discovery or substantive rulings. Petitioner contended that the scope of the IPR (challenging all claims) was broader than the litigation (asserting one claim), further weighing against denial.
• §325(d): Petitioner argued that denial under §325(d) was inappropriate because the petition raised new art and arguments not before the Examiner during prosecution. Specifically, neither Halevy nor Reichardt were cited or considered during the prosecution of the ’626 patent. Therefore, the combinations presented were not cumulative to the prosecution record.

5. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-10 of the ’626 patent as unpatentable.