PTAB

IPR2025-01224

TikTok Inc v. DiStefano Website Innovations LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method and System for Establishing a Reciprocal Marketing Arrangement Between Websites
  • Brief Description: The ’971 patent relates to methods and systems for assisting a website designer in establishing a "reciprocal arrangement" between a first website and a second, pre-existing website. The arrangement involves creating marketing elements (e.g., banner ads, hyperlinks) on each site that direct users to the other site.

3. Grounds for Unpatentability

Ground 1: Obviousness over Block - Claims 1-29 are obvious over Block.

  • Prior Art Relied Upon: Block (Application # 2003/0050976A1).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Block, which disclosed a social media website (myteam.com), taught every limitation of the challenged claims. Block described a system where each user has a personal "My-Home mini-site" (the "first website"). This mini-site contained a "My-Friends" page that listed other users and included hyperlinks to their respective "My-Home" pages (the "second website"). Crucially, the friend's page also contained a reciprocal link back to the user's page, establishing the claimed "reciprocal arrangement." Petitioner contended that the "My-Friends" page itself constituted the "reciprocal site" for displaying these marketing elements. Dependent claims related to including images or compensating third parties were allegedly met by Block's disclosure of user-uploaded photos and e-commerce store capsules with products from third-party sellers like Nike.
    • Motivation to Combine (for §103 grounds): This ground was based on a single reference, asserting Block rendered the claims obvious without combination.
    • Expectation of Success (for §103 grounds): Not applicable as this ground did not involve a combination.

Ground 2: Obviousness over Arnold - Claims 1-10, 12-16, and 18-29 are obvious over Arnold.

  • Prior Art Relied Upon: Arnold (Patent 6,016,504).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Arnold, which disclosed a "Virtual Outlet" (VO) e-commerce system, rendered the claims obvious. In Arnold, a VO website (the "second website") displayed a merchant's products. When a customer clicked a product, they were directed via hyperlink to the merchant's dynamically generated webpage (the "first website"). Arnold's system automatically included a "return" or "done" icon on the merchant's page that served as a reciprocal hyperlink back to the VO website. Petitioner argued this established the claimed reciprocal arrangement, with the "return" icon itself functioning as both the "first functional marketing element" and the "reciprocal site" within the first website. The system's ability to serve multiple VOs, each a "third-party website," and dynamically modify the merchant page to display corresponding return links, allegedly met limitations regarding pluralities of third-party marketing elements.
    • Motivation to Combine (for §103 grounds): This ground was based on a single reference.
    • Expectation of Success (for §103 grounds): Not applicable as this ground did not involve a combination.

Ground 3: Obviousness over Arnold in view of Arora - Claims 11 and 17 are obvious over Arnold and Arora.

  • Prior Art Relied Upon: Arnold (Patent 6,016,504), Arora (Patent 5,845,299).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground specifically addressed claims 11 and 17, which required a "web asset" to be a "functional application." Petitioner argued that while Arnold disclosed web assets like logos and banners, Arora taught using functional applications like Java applets and ActiveX controls as web assets within a WYSIWYG website editor. Arora described how an image or button could be a Java applet, which is a functional application. The combination of Arnold's system with Arora's teachings would result in the marketing elements (e.g., product images or return icons) being implemented as functional applications.
    • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine Arnold's e-commerce architecture with Arora's well-known WYSIWYG editor technology to enhance the system's design capabilities. Integrating Arora's editor would allow for the easy creation of more dynamic and interactive web assets, such as Java applets, which was a common and standardized practice for web development at the time.
    • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success because both references related to website design and functionality, and combining a backend system (Arnold) with a front-end design tool (Arora) was a simple substitution of one known web editing feature for another to gain a predictable improvement in flexibility.

4. Key Claim Construction Positions

  • Petitioner argued for the construction of "reciprocal site" as "a space within a webpage (within a website) for displaying reciprocal links to other websites."
  • This construction was asserted to be critical because it did not require a separate, standalone website. Instead, it allowed the term to be mapped onto features already integrated within a webpage, such as a friends list on a social media profile (as in Block) or a functional return icon on an e-commerce page (as in Arnold).

5. Arguments Regarding Discretionary Denial

  • Petitioner noted that under the USPTO's guidance, briefing on discretionary denial issues is bifurcated from the petition. Therefore, Petitioner did not provide a full pre-buttal but stated its belief that discretionary denial is not warranted in this case.

6. Relief Requested

  • Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1-29 of Patent RE45,971 as unpatentable.