`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`ROKU, INC.,
`Petitioner
`
`v.
`ALMONDNET, INC. AND INTENT IQ, LLC
`Patent Owner
`
`_______________
`U.S. Patent No. 8,677,398
`_______________
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`
`
`

`

`
`
`
`Petition
`
`Inter Partes Review of 8,677,398
`
`TABLE OF CONTENTS
`
`I.
`INTRODUCTION ................................................................................. 1
`II. MANDATORY NOTICES ..................................................................... 1
`A.
`Real Party-in-Interest ......................................................................... 1
`B.
`Related Matters .................................................................................. 1
`C.
`Lead and Back-up Counsel and Service Information.......................... 3
`III. GROUNDS FOR STANDING ............................................................... 3
`IV. THE ’398 PATENT ................................................................................ 4
`A.
`Summary of the ’398 Patent ............................................................... 4
`B.
`Prosecution History of the ’398 Patent ............................................... 6
`C.
`Priority Date of the ’398 Patent .......................................................... 8
`LEVEL OF ORDINARY SKILL IN THE ART ....................................... 8
`V.
`VI. CLAIM CONSTRUCTION ................................................................... 8
`VII. REQUESTED RELIEF .......................................................................... 9
`VIII. OVERVIEW OF CHALLENGES........................................................... 9
`A.
`Challenged Claims ............................................................................. 9
`B.
`Statutory Grounds of Challenge ......................................................... 9
`C.
`Discretionary Denial is Not Warranted .............................................10
`1.
`The Fintiv factors favor institution. .........................................10
`2.
`The Board should not deny institution under General Plastic ..12
`3.
`The Board Should Not Deny Institution under §325(d) ...........16
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE . 16
`A. Ground 1: Claims 13-17, 20-23, and 26 are unpatentable under
`35 U.S.C. §103(a) over Madhavan in view of Baum. ........................16
`1.
`Summary of Madhavan ...........................................................16
`2.
`Summary of Baum ..................................................................21
`3.
`Reasons to Combine Madhavan and Baum .............................25
`4.
`Claim 13 .................................................................................28
`
`IX.
`
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`Petition
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`Inter Partes Review of 8,677,398
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`5.
`Claim 14 .................................................................................48
`Claim 15 .................................................................................56
`6.
`Claim 16 .................................................................................57
`7.
`Claim 17 .................................................................................62
`8.
`Claim 20 .................................................................................62
`9.
`10. Claim 21 .................................................................................63
`11. Claim 22 .................................................................................64
`11. Claim 23 .................................................................................67
`13. Claim 26 .................................................................................69
`Ground 2: Claim 19 is unpatentable over Madhavan in view of
`Baum and Damick. ...........................................................................70
`1.
`Summary of Damick ...............................................................70
`2.
`Reasons to Combine Damick with Madhavan and Baum ........73
`3.
`Claim 19 .................................................................................74
`Ground 3: Claims 24 and 25 are unpatentable over Madhavan in
`view of Baum and Varghese .............................................................82
`1.
`Summary of Varghese.............................................................82
`2.
`Reasons to combine Varghese with Madhavan and Baum ......83
`3.
`Claim 24 .................................................................................85
`4.
`Claim 25 .................................................................................87
`CONCLUSION ................................................................................... 88
`X.
`XI. CERTIFICATE OF WORD COUNT .................................................... 89
`CERTIFICATE OF SERVICE .................................................................... 90
`
`
`B.
`
`C.
`
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`
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`Petition
`
`Inter Partes Review of 8,677,398
`
`PETITIONER’S EXHIBIT LIST
`July 5, 2022
`
`ROKU-1001 U.S. Patent No. 8,677,398 to Shkedi (“’398 patent”)
`ROKU-1002
`Prosecution File History of the ’398 patent (“’605
`application”)
`ROKU-1003 Declaration of Dr. Samrat Bhattacharjee
`ROKU-1004 CV of Dr. Samrat Bhattacharjee
`ROKU-1005 Reserved
`ROKU-1006 Reserved
`ROKU-1007 U.S. Patent Application Publication No. 2005/0086112 to
`Shkedi
`ROKU-1008 U.S. Patent No. 8,180,674 to Madhavan et al. (“Madhavan”)
`ROKU-1009 U.S. Patent Application Publication No. US2007/0157247 to
`Cordray (“Cordray”)
`ROKU-1010 U.S. Patent No. 7,843,923 to Baum (“Baum”)
`ROKU-1011-
`Reserved
`ROKU-1015
`ROKU-1016 U.S. Patent No. U.S. Patent No. 7,908,645 to Varghese et al.
`(“Varghese”)
`Reserved
`
`ROKU-1017-
`ROKU-1022
`ROKU-1023 Docket, AlmondNet, Inc. et al. v. Roku, Inc., No. 6:21-cv-
`00731-ADA (W.D. Tex.) (Albright) (printed June 29, 2022)
`
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`Petition
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`Inter Partes Review of 8,677,398
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`ROKU-1024 Roku’s Unopposed Motion to Stay, AlmondNet, Inc. et al. v.
`Roku, Inc., No. 6:21-cv-00731-ADA, Dkt. 19 (W.D. Tex. Dec.
`3, 2021) (Albright)
`ROKU-1025 Docket, Roku, Inc. v. AlmondNet, Inc., No. 1:21-cv-01035-
`MN, (D. Del. Nov. 15, 2021) (Noreika) (printed June 30,
`2022)
`ROKU-1026 Reserved
`ROKU-1027
`Scheduling Order, AlmondNet, Inc. et al. v. Roku, Inc. et al.,
`No. 6:21-cv-876-ADA, Dkt. 23 (W.D. Tex. Feb. 23, 2022)
`(Albright)
`ROKU-1028 Reserved
`ROKU-1029 Defendants’ Opening Claim Construction Brief, AlmondNet,
`Inc. et al. v. Roku, Inc. et al., No. 6:21-cv-876-ADA, Dkt. 35
`(W.D. Tex. May 26, 2022) (Albright)
`ROKU-1030 Reserved
`ROKU-1031 U.S. Patent Application No. 2006/0242294 to Damick et al.
`(“Damick”)
`ROKU-1032 U.S. Patent Application Publication No. 2008/0222283 to
`Ertugrul et al. (“Ertugrul”)
`ROKU-1033 U.S. Patent Application Publication No. 2008/0040742 to
`Howcroft (“Howcroft”)
`ROKU-1034 U.S. Patent Application Publication No. 2006/0271690 to
`Banga et al.
`ROKU-1035 U.S. Patent No. 8,880,677 to Julia et al.
`ROKU-1036 U.S. Patent No. 8,015,184 to Zito et al.
`
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`ROKU-1037
`
`Petition
`
`Inter Partes Review of 8,677,398
`
`Plaintiff AlmondNet’s Responsive Claim Construction Brief,
`AlmondNet, Inc. et al. v. Roku, Inc. et al., No. 6:21-cv-876-
`ADA, Dkt. 35 (W.D. Tex. May 26, 2022) (Albright)
`ROKU-1038 Request for Comments 950, “Internet Standard Subnetting
`Procedure,” August 1985 (“RFC 950”)
`ROKU-1039 U.S. Patent No. 8,296,437 to Pankratov
`ROKU-1040 U.S. Patent Application Publication No. 2004/0107287 to
`Ananda et al.
`ROKU-1041 Request for Comments 1531, “Dynamic Host Configuration
`Protocol,” October 1993 (“RFC 1531”)
`ROKU-1042 Director Vidal Memorandum, “Interim Procedure for
`Discretionary Denials in AIA Post-Grant Proceedings with
`Parallel District Court Litigation,” June 21, 2022
`ROKU-1043 United States District Courts – National Judicial Caseload
`Profile (data through March 31, 2022)
`Letter to the Honorable Maryellen Noreika, No. 1:21-cv-
`01035-MN, ECF No. 39-1 (D. Del. July 1, 2022) (Noreika)
`Proposed Scheduling Order, No. 1:21-cv-01035-MN, ECF No.
`39 (D. Del. July 1, 2022) (Noreika)
`
`ROKU-1044
`
`ROKU-1045
`
`
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`
`
`I.
`
`
`
`
`Petition
`Inter Partes Review of 8,677,398
`
`INTRODUCTION
`U.S. Patent 8,677,398 (“’398 patent”) is directed to “delivering targeted
`
`television advertisements based on online behavior.” ROKU-1001, Abstract.
`
`Claims 13-17 and 19-26 of the ’398 patent (“Challenged Claims”) are directed to
`
`taking “action” such as delivering targeted advertisements to one network-
`
`connected device based on a user’s online behavior on another network-connected
`
`device. The delivery of targeted advertisements is accomplished by associating
`
`device identifiers of the network-connected devices based on the devices being
`
`independently connected to a common local area network (LAN). As shown in
`
`this Petition, these concepts were known in the art before the priority date of the
`
`’398 patent, and the Challenged Claims were obvious.
`
`II. MANDATORY NOTICES
`A. Real Party-in-Interest
`The real party-in-interest is Roku, Inc. (“Petitioner”).
`
`B. Related Matters
`As of the filing date of this Petition and to the best knowledge of Petitioner,
`
`the ’398 patent has been involved in the following matters:
`
`Case Heading
`
`Number Court
`
`Filed
`
`Status
`
`Roku, Inc. v. AlmondNet,
`Inc. et al. (“Roku-
`Delaware Litigation”)
`
`1:21-cv-
`01035
`
`DDE
`
`July 15, 2021 DJ (non-
`infringement);
`counterclaim
`(infringement)
`
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`
`
`Case Heading
`
`AlmondNet, Inc. et al. v.
`Roku, Inc. (“Roku-WDTX
`Litigation”)
`
`AlmondNet, Inc. et al. v.
`Samsung Electronics Co.,
`Ltd. et al. (“Samsung
`Litigation”)
`
`AlmondNet, Inc. et al v.
`Meta Platforms, Inc.
`(“Meta Litigation”)
`
`AlmondNet, Inc. et al v.
`Microsoft Corp.
`(“Microsoft Litigation”)
`
`AlmondNet, Inc. et al v.
`Amazon.com, Inc., et al.
`(“Amazon Litigation”)
`
`AlmondNet, Inc. et al v.
`Yahoo! Inc.
`
`AlmondNet, Inc. et al v.
`Oath Holdings Inc. fka
`Yahoo!
`
`Petition
`
`Inter Partes Review of 8,677,398
`
`Number Court
`Filed
`Status
`6:21-cv-
`WDTX July 15, 2021 Stayed
`00731
`pending
`resolution of
`DDE 1-21-cv-
`01035
`
`6:21-cv-
`00891
`
`WDTX August 26,
`2021
`
`3rd Party
`litigation
`
`6:21-cv-
`00896
`
`WDTX August 27,
`2021
`
`3rd Party
`litigation
`
`6:21-cv-
`00897
`
`WDTX August 27,
`2021
`
`3rd Party
`litigation
`
`6:21-cv-
`00898
`
`WDTX August 27,
`2021
`
`3rd Party
`litigation
`
`1:16-cv-
`01557
`
`1:19-cv-
`00247
`
`EDNY March 30,
`2016
`
`DDE
`
`Transferred
`from EDNY,
`February 6,
`2019
`
`Transferred to
`DDE
`
`Terminated
`March 4, 2019
`
`The ’398 patent is or has been involved in the following IPR proceedings.
`
`Proceeding
`IPR2022-00773
`(“Meta IPR”)
`IPR2017-01299
`(“Yahoo! IPR”)
`
`
`
`Caption
`Meta Platforms, Inc. v. Intent
`IQ, LLC et al.
`Yahoo! Inc. v. Intent IQ, Inc.
`
`Status
`Petition filed March 28,
`2022
`Institution denied
`October 31, 2017
`
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`Petition
`Inter Partes Review of 8,677,398
`
`C. Lead and Back-up Counsel and Service Information
`Lead Counsel
`
`512-867-8457
`David W. O’Brien
`Phone:
`512-867-8644
`HAYNES AND BOONE, LLP
`Fax:
`
`600 Congress Ave., Suite 1300
`david.obrien.ipr@haynesboone.com
`Austin, TX 78701
`USPTO Reg. No. 40,107
`
`
`Back-up Counsel
`
`202-654-4503
`Phone:
`Jonathan R. Bowser
`512-867-8644
`Fax:
`
`HAYNES AND BOONE, LLP
`800 17th Street NW, Suite 500
`jon.bowser.ipr@haynesboone.com
`USPTO Reg. No. 54,574
`Washington, DC 20006
`
`
`512-867-8440
`Phone:
`Hong Shi
`512-867-8644
`Fax:
`
`HAYNES AND BOONE, LLP
`hong.shi.ipr@haynesboone.com
`600 Congress Ave., Suite 1300
`USPTO Reg. No. 69,009
`Austin, TX 78701
`
`
`512-867-8520
`Phone:
`Raghav Bajaj
`512-867-8644
`Fax:
`HAYNES AND BOONE, LLP
`raghav.bajaj.ipr@haynesboone.com
`600 Congress Ave., Suite 1300
`USPTO Reg. No. 66,630
`Austin, TX 78701
`
`
`
`Please address all correspondence to lead and back-up counsel. Petitioner
`
`consents to electronic service.
`
`III. GROUNDS FOR STANDING
`Petitioner certifies that the ’398 patent is available for inter partes review
`
`(IPR) and that Petitioner is not barred or estopped from requesting an IPR
`
`challenging the patent claims on the grounds identified herein.
`
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`
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`IV. THE ’398 PATENT
`A. Summary of the ’398 Patent
`The ’398 patent is titled “Systems and Methods for Taking Action with
`
`Petition
`Inter Partes Review of 8,677,398
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`
`
`
`respect to One Network-Connected Device based on Activity on Another Device
`
`Connected to the Same Network.” ROKU-1001, Title. In the described “systems
`
`and methods for delivering targeted television advertisements based on online
`
`behavior, IP addresses indicating online access devices and IP addresses indicating
`
`television set-top boxes [STBs] are electronically associated.” Id., 8:61-65.
`
`“Using user profile information derived from online activity from one of the online
`
`access IP addresses, a television advertisement is selected, [e.g.,] using behavioral
`
`targeting or demographic information, and automatically directed to the [STB]
`
`indicated by the [STB] IP address associated with that online access IP address.”
`
`Id., 8:3-8. The ’398 patent indicates that, “[p]referably neither the user profile
`
`information nor the electronic association of online access and [STB] IP addresses
`
`includes personally identifiable information [PII]” (id., 8:8-11) and lists
`
`dynamically-assigned IP addresses as an example of non-PII (id., 6:22-31).
`
`With reference to Figure 7 below, the ’398 patent explains that a user’s
`
`computer 34 and STB 36 can be connected to a local area network (LAN) that
`
`shares online access through a device such as modem 32, such that network traffic
`
`for both devices is routed through a common IP address. Id., 12:50-13:4. The
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`Inter Partes Review of 8,677,398
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`“modem 32” may include a router to route network traffic to/from computer 34 and
`
`STB 36. Id., 13:27-29. “In cases where the user’s STB 36 can…obtain online
`
`access via the same IP address as the user's online access (i.e., via modem 32), that
`
`common IP address comprises the electronic association that can be used to
`
`perform targeted television advertising without requiring PII.” Id., 12:60-64.
`
`ROKU-1001, Fig. 7
`
`
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`Petition
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`Inter Partes Review of 8,677,398
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`The ’398 patent explains that, due to the association of the electronic
`
`identifier (e.g., IP address) of computer 34 with the electronic identifier (e.g., IP
`
`address) of STB 36 in a central ad server (CAS) 40, CAS 40 causes targeted
`
`advertising to be directed to STB 36 based on the electronic identifier assigned to
`
`the first device (computer 34). Id., 18:24-50, 15:39-42.
`
`B. Prosecution History of the ’398 Patent
`The ’398 patent was filed June 23, 2011 as App.No. 13/167,605 (“’605
`
`application”).
`
`In a first action, the Examiner rejected prosecution claims 64-76 (issued
`
`claims 13-25) as anticipated by Ertugrul (U.S. 2008/0222283) (ROKU-1032).
`
`ROKU-1002, 181-186. Dependent claim 77 (issued claim 26) was rejected as
`
`obvious over Ertugrul and Howcroft (U.S. 2008/0040742) (ROKU-1033). ROKU-
`
`1002, 187.
`
`Regarding prosecution claim 64 (issued claim 13), Applicant argued without
`
`amendment that Ertugrul did not disclose causing an action (ad direction) with
`
`respect to a second device based on profile data associated with an electronic
`
`identifier of a first device, where the association between the two devices is based
`
`on connection of the two devices to a common LAN (see limitations [13.1] and
`
`[13.2.1] below). ROKU-1002, 168.
`
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`Inter Partes Review of 8,677,398
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`In a second action, Examiner rejected all claims for obviousness-type double
`
`patenting. ROKU-1002, 80. Applicant submitted a terminal disclaimer. ROKU-
`
`1002, 67, 70.
`
`Examiner then allowed the ’605 application and provided the following
`
`reasons for allowance:
`
`
`
`ROKU-1002, 40.
`
`Claim 13 of the ’398 patent does not recite the feature of “automatically
`
`sending an electronic transmission that causes another programmed hardware
`
`computer system to take an action….” This feature is recited in independent
`
`claims 1, 27 and 36 of the ’398 patent, which are not challenged in this Petition.
`
`While Examiner’s reasons for allowance did not precisely track the language
`
`of claim 13, it would appear that the Examiner identified the allowable features as
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`Petition
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`Inter Partes Review of 8,677,398
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`“recogniz[ing] an association between two devices…[being] connected to a
`
`common LAN,” and “automatically [causing]…an action” based on this
`
`association. These features roughly correspond to limitations [13.1] and [13.2.1]
`
`below. As shown below, Madhavan and Baum teach the allegedly allowable
`
`features of claim 13 of the ’398 patent. Madhavan and Baum were not considered
`
`during prosecution of the ’398 patent. ROKU-1003, ¶33.
`
`C. Priority Date of the ’398 Patent
`For purposes of the analysis herein, Petitioner assumes, without conceding,
`
`that the priority date of the ’398 patent is April 17, 2007 (earliest priority
`
`application).
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`Person(s) of Ordinary Skill in the Art (“POSITA”) in April 2007 would have
`
`a bachelor’s or equivalent degree in electrical and/or computer engineering or a
`
`related field and 2-3 years of experience in computer and networking systems
`
`including systems for online content delivery such as targeted advertisements. A
`
`person with less formal education but more experience, or more formal education
`
`but less experience, could have also met the relevant standard. Petitioner does not
`
`imply that a person having an extraordinary level of skill should be regarded as a
`
`POSITA. ROKU-1003, ¶¶15-16.
`
`VI. CLAIM CONSTRUCTION
`Petitioner submits that, for the purposes of this proceeding and the analysis
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`Petition
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`Inter Partes Review of 8,677,398
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`presented herein, no claim term requires express construction. Vivid Techs., Inc. v.
`
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). POSITA would apply
`
`the ordinary and customary meaning to all claim terms in the Challenged Claims.
`
`ROKU-1003, ¶¶34-35.
`
`VII. REQUESTED RELIEF
`Petitioner requests that the Board institute inter partes review of claims 13-
`
`17 and 19-26 of the ’398 patent and cancel each of those claims as unpatentable.
`
`VIII. OVERVIEW OF CHALLENGES
`A. Challenged Claims
`Claims 13-17 and 19-26 of the ’398 patent are challenged.
`
`B. Statutory Grounds of Challenge1
`This Petition, supported by the declaration of Dr. Samrat Bhattacharjee
`
`(ROKU-1003), is based on the Grounds listed below.
`
`Ground
`No.
`1
`
`2
`3
`
`
`
`Claims
`
`Basis Under §103(a)
`
`13-17, 20-23,
`and 26
`19
`24-25
`
`Madhavan in view of Baum
`
`Madhavan in view of Baum and Damick
`Madhavan in view of Baum and Varghese
`
`
`
`1 The pre-AIA statutory framework applies to the ’398 patent.
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`Petition
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`Inter Partes Review of 8,677,398
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`Madhavan was filed October 3, 2006. Baum was filed January 6, 2003.
`
`Damick was filed April 3, 2006 and published on October 26, 2006. Varghese was
`
`filed April 28, 2006. Madhavan, Baum, and Varghese are prior art under §102(e).
`
`Damick is prior art under §§102(a),(e).
`
`C. Discretionary Denial is Not Warranted
`The Board should not exercise its discretion under 35 U.S.C. §§314(a) or
`
`325(d) to deny this Petition.
`
`1. The Fintiv factors favor institution.
`Denial would be improper based on the factors in Apple v. Fintiv, IPR2020-
`
`00019, Paper 11 (Mar. 20, 2020) (precedential). Petitioner and Patent Owner are
`
`involved in two litigations involving the ’398 patent: the Roku-WDTX Litigation
`
`and Roku-Delaware Litigation. See supra Section II.B.
`
`First, as shown in Section IX below, this Petition presents compelling
`
`evidence of unpatentability of the Challenged Claims. Therefore, the Board should
`
`not deny institution based on parallel litigation. ROKU-1042, 2, 4-5, 9 (Director
`
`Vidal’s memorandum providing the Board may not deny institution under Fintiv
`
`“where a petition presents compelling evidence of unpatentability”).
`
`Second, the Fintiv factors weigh in favor of institution. The Roku-WDTX
`
`Litigation is stayed. ROKU-1023, 5 (December 6, 2021, order granting stay);
`
`ROKU-1024 (Unopposed Motion to Stay). Stay weighs strongly in favor of
`
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`Petition
`
`
`Inter Partes Review of 8,677,398
`
`
`institution. Snap, Inc. v. SRK Tech. LLC, IPR2020-00820, Paper 15 at 9 (Oct. 21,
`
`2020) (precedential) (granting stay allays concerns about inefficiency and
`
`duplication efforts).
`
`In the Roku-Delaware Litigation, no claim construction briefing has been
`
`scheduled or filed, and no discovery is scheduled. No trial date has been set.2
`
`ROKU-1025. Median time-to-trial in Delaware is 36.3 months. ROKU-1043, 14.
`
`The Board would issue a final written decision by approximately January 2024,
`
`before the Roku-Delaware Litigation is projected to go to trial (July 2024 trial date
`
`based on median time-to-trial).
`
`Patent Owner has also asserted the ’398 patent against other parties in the
`
`Western District of Texas. See Section II.B. The WDTX litigations involving
`
`other defendants and the ’398 patent are at an early stage. ROKU-1027.
`
`Defendants filed an opening claim construction brief (ROKU-1029) on May 26,
`
`2022, Patent Owner filed its opening claim construction brief on June 16, 2022
`
`(ROKU-1037), and the defendants filed a reply claim construction brief on June
`
`30, 2022 (ROKU-1043). Only one term in the ’398 patent is construed by one
`
`defendant (Samsung). ROKU-1029, 32-33. Patent Owner indicates “no
`
`
`
`2 The parties proposed a February 2024 trial date. ROKU-1044; ROKU-1045, 12,
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`15. The Delaware Court has not issued a scheduling order.
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`construction necessary” for that term (ROKU-1037, 41-43) and, in any case,
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`Petitioner’s grounds (here) are applicable to either construction.
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`There has been no further development regarding merits of any invalidity
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`position in the WDTX litigations. The Board emphasized that the investment
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`factor (Fintiv factor 3) requires consideration of the investment “in the merits of
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`the invalidity positions,” not the overall investment in the case. Sand Revolution
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`II, LLC v. Cont’l Intermodal Grp.—Trucking LLC, IPR2019-01393, Paper 24 at 10
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`(June 16, 2020) (informative). The WDTX Court has not issued any substantive
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`orders on invalidity issues or claim construction. Fact discovery and expert
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`discovery have not begun. ROKU-1027, 4
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`Thus, in view of the WDTX Court’s stay of the Roku-WDTX Litigation and
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`minimal investment in the merits of any invalidity issues for the ’398 patent, none
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`of the Fintiv factors weigh in favor of denial.
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`2. The Board should not deny institution under General Plastic
`As indicated in Section II.B, the ’398 patent has been involved in two prior
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`IPR proceedings: Yahoo! IPR and Meta IPR. As shown below, General Plastic
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`factors 1-5 each weigh in favor of institution. General Plastic Indus. Co., Ltd. v.
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`Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 16 (Sept. 6, 2017)
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`(precedential).
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`i. Factor 1
`Petitioner has not previously filed any IPR petition (or ex parte
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`reexamination request) challenging any claim of the ’398 patent. Thus, factor 1
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`weighs in favor of institution.
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`Petitioner is unrelated to Yahoo! or Meta, and Petitioner had no involvement
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`in the Yahoo! IPR or Meta IPR. The Yahoo! IPR is long over. The district court
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`litigation between Patent Owner and Yahoo! terminated in March 2019, over two
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`years before Petitioner was served with Patent Owner’s infringement complaint.
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`Petitioner is not a “co-defendant” with Meta. Patent Owner accuses
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`different services of Petitioner and Meta as allegedly infringing different claims of
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`the ’398 patent. As a result, the Meta IPR challenges different claims of the ’398
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`patent than are challenged in this Petition. None of the “relationship” concerns set
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`forth in Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-0062, Paper 11 (April
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`2, 2019) (precedential) are present here.
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`ii. Factor 2
`Petitioner was served with Patent Owner’s infringement complaint in the
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`Roku-WDTX Litigation on July 29, 2021. Petitioner began reviewing prior art
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`relevant to claims 13-17 and 19-26 of the ’398 patent after being accused of
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`infringement. The Yahoo! IPR, which involves completely different prior art than
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`is asserted in the grounds presented in this Petition,3 was terminated October 31,
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`2017, over three years before Petitioner was accused of infringing the challenged
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`claims.
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`Petitioner did not know of the prior art asserted in this Petition until after it
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`was accused of infringement. Petitioner had no reason to search for the prior art
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`cited in this Petition until it was accused of infringement.
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`Further, Petitioner was unaware of the prior art cited in Meta’s petition,
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`which challenges different claims than the claims challenged by Petitioner, until
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`Meta’s petition was filed.
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`iii. Factor 3
`The Yahoo! IPR is long over. To the extent Petitioner “received” Patent
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`Owner’s preliminary response or the Board’s decision denying institution in the
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`Yahoo! IPR because these documents were publicly available, this fact is negated
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`by Petitioner being charged with infringement over three years after the Board
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`denied institution of the Yahoo! IPR.
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`3 The Yahoo! petition involved Banga (U.S. 2006/0271690) (ROKU-1034), Julia
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`(U.S. 8,880,677) (ROKU-1035), and Zito (U.S. 8,015,184) (ROKU-1036).
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`Petitioner’s grounds do not involve any of the prior art in the Yahoo!
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`petition. Therefore, Petitioner did not modify or tailor its grounds based on Patent
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`Owner’s preliminary response or the institution decision in the Yahoo! IPR.
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`In the Meta IPR, Patent Owner has not yet filed a preliminary response, and
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`the Board has not issued an institution decision.
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`iv. Factor 4
`After being accused of infringement in July 2021, Petitioner performed
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`prior art searches and developed the prior art grounds asserted in this Petition.
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`v. Factor 5
`Petitioner filed this Petition because the challenged claims were asserted
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`against Petitioner in July 2021. Petitioner did not investigate the validity of the
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`’398 patent until after being accused of infringement. The time between filing this
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`Petition and the filing of the Yahoo! petition is directly based on the fact that
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`Petitioner was accused of infringement several years after the Yahoo! petition was
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`filed.
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`General Plastic factors 6 and 7 are neutral. Petitioner does not believe that
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`the finite resources of the Board or the Board’s ability to issue a final written
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`decision within the statutory time period are impacted by any other proceeding
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`before the Office. The Board may independently render its decisions relative to
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`the different claims challenged on different grounds in the Meta IPR.
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`Petition
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`Thus, General Plastic factors 1-5 weigh in favor of institution, and factors 6
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`and 7 are neutral. The Board should not exercise its discretion to deny institution
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`under General Plastic.
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`3. The Board Should Not Deny Institution under §325(d)
`The Board should not exercise its discretion under §325(d) to deny this
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`Petition. None of the references asserted in this Petition—Madhavan, Baum,
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`Damick, and Varghese—were cited during prosecution or in the Yahoo! IPR
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`petition. Therefore, the first part of the Advanced Bionics framework is not met.
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`Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-
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`01469, Paper 6 at 8-9 (Feb. 13, 2020) (precedential). The prior art cited in this
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`Petition is non-cumulative of the prior art considered during prosecution or the
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`Yahoo! IPR at least because the prior art cited herein renders obvious allegedly
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`allowable limitations [13.1] and [13.2.1], as shown in Section IX.
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`IX. IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE4
`A. Ground 1: Claims 13-17, 20-23, and 26 are unpatentable under
`35 U.S.C. §103(a) over Madhavan in view of Baum.
`1.
`Summary of Madhavan
`Madhavan “relates generally to the field of network-based communications
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`4 Unless otherwise specified, all bold and bold italics emphasis below has been
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`added. Text in italics signifies claim language.
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`and, more particularly, to a system and method to facilitate targeting of
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`advertisements based on mutual information sharing between devices over a
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`network, such as the Internet.” ROKU-1008, 1:7-11. Madhavan recognizes “it
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`would be advantageous if… advertising information closely matches interests of
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`the users and activities performed by the users within the Internet.” ROKU-1008,
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`1:28-32.
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`With reference to FIGs. 1-2 below, Madhavan describes targeting
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`advertisements in the context of “a network-based content and advertising entity
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`100 enabling automatic matching of advertising information to events or actions
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`and interests of users.” ROKU-1008, 4:27-31. Entity 100 “is coupled
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`via…network 120 to one or more user entities 110….The user entities 110 are
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`coupled to…network 120 through…client machine 130 and/or at least one media
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`devices 140.” ROKU-1008, 4:39-42. Client machine 130 may be a smartphone,
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`and media device 140 may be a network-based television set and/or digital video
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`recording device (DVR). ROKU-1008, 5:3-11, 5:28-36.
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`ROKU-1008, Figs. 1-2
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`A user “connects to one or more media devices and further performs specific
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`actions, such as…watch[ing] a broadcast television program on the network-
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`enabled television set.” ROKU-1008, 1:55-58. “The actions are transmitted to
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`[network-based content and advertising] entity [100] via the network and are stored
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`within the entity along with respective categories associated with each user
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`action.” ROKU-1008, 1:60-62. Subsequently, if the user connects to entity 100
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`through client machine 130 via network 120, then entity 100 selects and transmits
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`advertisements to be displayed on the client machine, “such that each selected
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`advertisement is related to the previously stored events or actions and their
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`respective categories.” ROKU-1008, 1:64-2:3.
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`Similarly, when user 110 uses client machine 130 (e.g., smartphone) to
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`access online content such as “advertisement clicks, search queries, search clicks,
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`[] page views, advertisement views, or other types of events,” entity 100 then
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`delivers targeted advertisements to the user’s media device 140 (TV set 142, DVR
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`144) based on the user’s online activities with client machine 130. ROKU-1008,
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`8:42-9:8, FIG. 6 (step 520). Madhavan’s FIG. 6 “illustrat[es] a method to facilitate
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`targeting of advertisements based on mutual information sharing between devices
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`over a network.” ROKU-1008, 8:34-37. When user 110 accesses online content
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`by using client machine 130, the user’s activities are stored at entity 100 (ROKU-
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`1008, 8:37-41, FIG. 6 (step 510)), and then, “advertisements related to the stored
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`user actions or activities and their respective categories are transmitted
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`to…user 110 to be displayed on one or more media devices 140 coupled
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`to…user 110.” ROKU-1008, 9:4-8, FIG. 6 (step 520).
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`ROKU-1008, FIG. 6 (annotated); ROKU-1003, ¶40.
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`Madhavan’s entity 100 delivers targeted advertising to the user’s devices
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`130, 142, 144 by storing, in user tables 210 of database 200 of entity 100, “user
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`identification information” that includes a “user profile containing…geographic
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`data detailing user access locations” as well as “actions or activities” of the user.
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`ROKU-1008, 5:39-62, 9:4-8, FIG. 3.
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`ROKU-1008, FIG. 3 (annotated); RO