PTAB

IPR2025-00873

Amazon.com Inc v. Datonics LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Causing Delivery of Electronic Advertisements Based on Provided Profiles
  • Brief Description: The ’445 patent describes a method for targeted online advertising where a "profile owner" computer system provides collected visitor profiles to multiple "media property" entities. This process is intended to allow media properties to better monetize their ad space by delivering more relevant advertisements based on the received visitor profile data.

3. Grounds for Unpatentability

Ground 1: Obviousness over Core Advertising References - Claims 1, 8-11, and 13 are obvious over Gilmour, Merriman, and Frauenhofer

  • Prior Art Relied Upon: Gilmour (Application # 2004/0068477), Merriman (Patent 8,566,154), and Frauenhofer (Patent 6,236,991).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of these references discloses all limitations of independent claim 1. Gilmour taught the foundational system of a "profile service provider" (the claimed "profile owner") that receives queries from "requesting entities" (the claimed "media properties") and provides corresponding user profile information for targeted advertising. However, the petition noted that in prior prosecution, the Board found Gilmour did not teach automatically selecting from a plurality of entities based on a comparison against a plurality of stored requests. To remedy this, Petitioner combined Gilmour with Merriman and Frauenhofer. Merriman was cited for its teaching of using tags (cookies) to link visitor devices to profile information and using URL redirects ("spotlight tags") to transfer that information between servers in real time. Frauenhofer was introduced to supply the missing element identified by the Board. Frauenhofer disclosed a system that stores a plurality of user requests (profiles) and automatically performs ongoing or periodic matching to select users for content delivery. The petition asserted that implementing Frauenhofer’s automated, multi-request matching system within the Gilmour/Merriman framework renders the claims obvious.
    • Motivation to Combine: A POSITA would combine Frauenhofer’s teachings with the Gilmour/Merriman system to create a more efficient and scalable advertising marketplace. This combination would allow media properties to submit initial requests for certain profile types and then automatically and continuously receive new, matching profiles over time without having to submit repeated queries. This benefits the profile owner by creating more opportunities to sell profiles and benefits media properties by providing a timely stream of relevant profiles for ad targeting.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because the combination integrated well-understood technologies. Both Gilmour and Frauenhofer described server-based systems for matching queries to information, and Frauenhofer explicitly taught that storing queries for ongoing matching produces beneficial results.

Ground 2: Obviousness of PII in Tags - Claim 12 is obvious over Gilmour, Merriman, Frauenhofer, and knowledge of a POSITA

  • Prior Art Relied Upon: Gilmour (Application # 2004/0068477), Merriman (Patent 8,566,154), Frauenhofer (Patent 6,236,991), and the general knowledge of a Person of Ordinary Skill in the Art (POSITA).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed dependent claim 12, which required the tag to comprise "personally identifiable information identifying the visitor." Petitioner argued that the primary combination already taught the use of cookies as tags. It was well-known at the time of the invention that cookies could store any arbitrary data, including personally identifiable information (PII) like a username or ID number. The petition referenced extrinsic evidence showing a cookie file storing a username to personally identify a user.
    • Motivation to Combine: A POSITA would be motivated to store PII in a cookie to more reliably recognize a specific user across sessions or to use the PII as a key to access more detailed profile information stored in a database. This was a simple and conventional design choice.

Ground 3: Obviousness over Cross-Device References - Claims 2-7 and 14 are obvious over Gilmour, Merriman, Frauenhofer, and Julia

  • Prior Art Relied Upon: Gilmour (Application # 2004/0068477), Merriman (Patent 8,566,154), Frauenhofer (Patent 6,236,991), and Julia (Patent 8,880,677).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed dependent claims requiring cross-device functionality (e.g., deriving profile information from a first device and delivering an ad to a second, different device, such as a mobile phone or television). Petitioner argued that while the primary combination established the core advertising method, it did not explicitly teach its application across different device types. Julia was introduced because it expressly disclosed a targeted advertising system for a "designated set of interconnected devices." Julia taught building user profiles based on activities on one device (e.g., a computer) and subsequently delivering targeted advertisements to other associated devices (e.g., a mobile phone or TV).
    • Motivation to Combine: A POSITA would combine Julia's cross-device teachings with the primary system to expand the reach and effectiveness of the targeted advertising. This would allow advertisers to reach interested users across the various devices they use, increasing the opportunities for ad delivery and improving data collection for user profiles.
    • Expectation of Success: The technologies were well-understood, and the combination would predictably result in a more comprehensive advertising system.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under §314(a) and the Fintiv factors, stating that a parallel district court litigation is in its infancy. The petition asserted that no discovery or claim construction had occurred and that the trial date is not scheduled until late 2026, meaning an IPR would resolve prior to substantial investment in the parallel case.
  • Petitioner also argued against denial under §325(d), contending that the asserted grounds present new combinations of art that were not before the Examiner. Specifically, the inclusion of Frauenhofer directly addresses deficiencies in the Examiner’s reasoning that the Board previously identified during prosecution of a related application.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-14 of Patent 10,984,445 as unpatentable.