Trials@uspto.gov
`571-272-7822
`
`
`Paper 7
`Date: May 25, 2023
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`AMAZON.COM, INC., AMAZON WEB SERVICES, INC., AND
`AMAZON.COM SERVICES LLC,
`Petitioner,
`v.
`ALMONDNET, INC.,
`Patent Owner.
`
`IPR2023-00384
`Patent 9,830,615 B2
`
`
`
`
`
`
`
`
`
`
`
`Before KRISTEN L. DROESCH, AMANDA F. WIEKER, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`DROESCH, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 7
`Date: May 25, 2023
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`AMAZON.COM, INC., AMAZON WEB SERVICES, INC., AND
`AMAZON.COM SERVICES LLC,
`Petitioner,
`v.
`ALMONDNET, INC.,
`Patent Owner.
`
`IPR2023-00384
`Patent 9,830,615 B2
`
`
`
`
`
`
`
`
`
`
`
`Before KRISTEN L. DROESCH, AMANDA F. WIEKER, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`DROESCH, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`
`IPR2023-00384
`Patent 9,830,615 B2
`
`I. INTRODUCTION
`A. Background
`Amazon.com, Inc., Amazon Web Services, Inc., and Amazon.com
`Services LLC, Inc. (collectively “Petitioner”) filed a Petition requesting inter
`partes review (“IPR”) of claims 9–12 of U.S. Patent No. 9,830,615 B2
`(Ex. 1001, “the ’615 Patent”). Paper 2 (“Pet.”). Petitioner filed a
`Declaration of Christopher M. Schmandt with its Petition. Ex. 1002.
`Petitioner also filed a Motion for Joinder seeking to be joined as a party to
`Meta Platforms, Inc., v. Almondnet, Inc., IPR2022-01064 (“the Meta IPR”),
`which involves the same claims of the ’615 Patent, and for which an inter
`partes review was instituted on November 30, 2022. Paper 3 (“Motion” or
`“Mot.”); see also IPR2022-01064, Paper 7. AlmondNet, Inc. (“Patent
`Owner”) did not file a preliminary response or an opposition to the Motion.
`We have authority to determine whether to institute review under
`35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). For the reasons provided below,
`we determine that institution of inter partes review is warranted on the same
`grounds instituted in the Meta IPR, and we grant Petitioner’s Motion for
`Joinder.
`
`B. Related Matters
`The parties indicate the ’615 Patent is or was the subject of Meta
`Platforms, Inc., v. Almondnet, Inc., IPR2022-01064 (instituted) and
`Microsoft Corp. v. AlmondNet, Inc., IPR2022-01324 (institution denied).
`
`2
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`IPR2023-00384
`Patent 9,830,615 B2
`The parties also indicate the ’615 Patent is or was the subject of the
`following proceedings:
`AlmondNet, Inc. v. Oath Holdings Inc., 1–18-cv-00943 (D. Del.);
`AlmondNet, Inc. v. Meta Platforms, Inc., 6:21-cv-00896 (W.D.Tex.);
`AlmondNet, Inc. v. Microsoft Corp., 6:21-cv-00897 (W.D.Tex.);
`AlmondNet, Inc. v. Amazon.com, Inc., 6:21-cv-00898 (W.D.Tex.). Pet. 5–6;
`Paper 4, 1.
`
`C. The ’615 Patent (Ex. 1001)
`The ’615 Patent relates to profile-based behavioral targeting
`“advertisement placement based on expected profit from the placement.”
`Ex. 1001, 1:28–32. Behavioral targeting companies (“BT companies”)
`“specialize in targeting ads based on observed behavior of sites’ visitors,” by
`placing “a cookie (or cookies) on the computers of visitors.” Id. at 2:6–9. A
`BT company collects profile information about site visitors, such as
`behavioral information, demographic information, or user-provided
`information, and “target[s] ads to those visitors wherever found based on the
`collected profile information.” Id. at 2:38–43. Alternately,
`[a]n ad network ad server (or any other server of the ad
`network) or a site’s ad server (or any other server of the site)
`can place their own cookies on the computers of visitors that
`are redirected to them by the BT companies, for the purpose of
`later recognizing those visitors within their own ad space.
`Id. at 5:26–31. By this process, a second media property is able to recognize
`a first media property visitor, but the ’615 Patent explains that this process is
`inefficient at least because: (1) media properties’ ad space prices vary; (2)
`profiles of media properties’ visitors are worth different amounts to
`advertisers depending on the profiles; and (3) the same person might have
`several profile attributes in his or her profile. See id. at 5:56–6:14.
`
`3
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`IPR2023-00384
`Patent 9,830,615 B2
`Figure 3 of the ’615 Patent is reproduced below.
`
`
`Figure 3 depicts entities and associated equipment used with an exemplary
`profit-based selection method. See Ex. 1001, 6:58–60. With respect to
`Figure 3, to address the above-noted inefficiencies and ensure that profile
`information is not transferred to the second media property, the ’615 Patent
`describes the BT company as “simply ask[ing] the second media
`property . . . to tag the visitor as a BT company visitor or arrang[ing] for a
`tag to be placed (620) that is readable by the second media property 40 and
`that marks the visitor as a BT company visitor.” Id. at 9:47–54. “BT
`company 30 selects (500) media properties (e.g., 40) for the delivery of an
`advertisement based on a profile collected on a first media property 20.” Id.
`at 8:48–50. In one embodiment, “BT company 30 makes the selection based
`on a calculated expected profit and then arranges for the visitor 10 to be
`tagged (610 or 620) with a tag readable by the selected media property 40.”
`Id. at 8:50–54.
`
`4
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`IPR2023-00384
`Patent 9,830,615 B2
`When a selected media property 40 recognizes a tagged
`visitor 10 (tagged previously, at time t1) later (at time t2)
`visiting (710) its ad space, the media property 40 will arrange
`for the BT company 30 to serve an ad (720) to the visitor 10
`(which will appear with the media content (730) requested by
`the visitor), by redirecting (700) a visitor to the BT
`company 30.
`Id. at 9:16–22. The ’615 Patent explains that when “BT company 30 buys
`ad space from the proprietor of the second media property 40 and delivers
`therein an ad based on the collected profile, the BT company 30 has no
`economic incentive to transfer the profile information itself . . . to the second
`media property 40.” Id. at 9:54–59. Thus,
`[t]he second media company’s proprietor is being paid for the
`ad space and therefore just needs to know that the visitor 10 has
`been profiled by the BT company 30, which will pay the second
`media property’s proprietor for an opportunity to deliver an ad
`to this visitor 10 within the ad space of the second media
`property 40.
`Id. at 9:59–65.
`
`D. Illustrative Claim
`Claim 9 is the sole independent challenged claim, and claims 10–12
`depend therefrom. See Ex. 1001, 14:7–57. Claim 9 is illustrative and
`reproduced below.
`A computer system controlled by a behavioral targeting
`company (BT company), which computer system (BT computer
`system) is comprised of one or more computers and is
`structured and programmed to perform a method of directing
`electronic advertisements, the method comprising:
`automatically with the BT computer system:
`(a) at a first time, arranging for a third party computer
`system controlling advertising space on a plurality of
`third party media properties to electronically tag a first
`computer of a first visitor visiting a first website, without
`5
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`IPR2023-00384
`Patent 9,830,615 B2
`transferring to the third party computer system any
`profile information related to the first visitor, which tag is
`readable by computers operating under a domain of the
`third party computer system and identifies the visitor
`computer as associated with the BT company;
`(b) recording, in a profile of the first visitor maintained by
`the BT computer system, profile information collected
`during the first computer's visit to the first website;
`(c) electronically transferring to the computer system a price
`cap that the BT company is willing to pay for allowing
`delivery of an advertisement within media property
`advertising space controlled by the third party computer
`system controlling advertising space on the plurality of
`third party media properties; and
`(d) at a second time, later than the first time, upon receiving
`a redirection of the first computer while the first
`computer is visiting one of the plurality of third party
`media properties, causing a selected advertisement to be
`served to the first computer, which advertisement is
`based on the profile information collected during the first
`computer's visit to the first website, which profile
`information is in the profile of the first visitor maintained
`by the BT computer system, in exchange for a price less
`than the price cap.
`Ex. 1001, 14:7–40.
`
`6
`
`
`
`
`IPR2023-00384
`Patent 9,830,615 B2
`E. Asserted Patentability Challenges and Asserted Prior Art
`Petitioner asserts that claims 9–12 are unpatentable based on the
`following grounds (Pet. 9):
`
`Claim(s)
`Challenged
`9–12
`9–12
`
`35 U.S.C. §
`103(a)1
`103(a)
`
`Reference(s)/Basis
`Meyer2, Zeff3, Edlund4, Fisher5
`Meyer, Zeff, Edlund, Fisher, Tittel6
`
`II. ANALYSIS
`Joinder for purposes of an inter partes review is governed by 35
`U.S.C. § 315(c), which states:
`JOINDER.—If the Director institutes an inter partes
`review, the Director, in his or her discretion, may join as a party
`to that inter partes review any person who properly files a
`petition under section 311 that the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter parties review under section 314.
`“To join a party to an instituted [inter partes review], the plain
`language of § 315(c) requires two different decisions.” Facebook, Inc. v.
`Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). “First,
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011), amended 35 U.S.C. § 103 effective March 16, 2013. Because
`the ’615 Patent claims the benefit of a series of continuation applications,
`some of which have filing dates prior to March 16, 2013 (Ex. 1001,
`code (63)), we refer to the pre-AIA version of § 103.
`2 US 6,915,271 B1, issued July 5, 2005 (Ex. 1003).
`3 Robbin Zeff and Brad Aronson, Advertising on the Internet, 2nd Edition,
`Wiley Computer Publishing, 1999 (Ex. 1004).
`4 US 7,251,628 B1, issued July 31, 2007 (Ex. 1005).
`5 US 5,835,896, issued Nov. 10, 1998 (Ex. 1006).
`6 Ed Tittel and Natanya Pitts, HTML 4 for Dummies, 2nd edition, IDG Books
`Worldwide, 1999 (Ex. 1007).
`
`7
`
`
`
`
`IPR2023-00384
`Patent 9,830,615 B2
`the statute requires that the Director (or the Board acting through a
`delegation of authority . . . ) determine whether the joinder applicant’s
`petition for IPR ‘warrants’ institution under § 314.” Id. “Second, to effect
`joinder, § 315(c) requires the Director to exercise [her] discretion to decide
`whether to ‘join as a party’ the joinder applicant.” Id. The standard for
`instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which
`provides that an inter partes review may not be instituted unless the
`information presented in the petition and any preliminary response shows
`“there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.”
`The patentability challenges in the Meta IPR met the “reasonable
`likelihood” standard of § 314(a). IPR2022-01064, Paper 7, 33. The Petition
`here presents the same patentability challenges as those for which a trial was
`instituted in the Meta IPR. See Mot. 1 (“[The] Petition is essentially a copy
`of the petition filed in the [Meta IPR].”); compare Pet. 5–73, with IPR2022-
`01064, Paper 2, 7–73. According to Petitioner, the “Petition relies on the
`same grounds of unpatentability of claims 9, 10, 11, and 12 of the ’615
`Patent that were instituted in the Meta IPR.” Mot. 3 (citing IPR2022-01064,
`Paper 7). In the present proceeding, Patent Owner did not file a preliminary
`response to dispute the merits of Petitioner’s patentability challenges.
`For the reasons set forth in the Meta IPR, we conclude that Petitioner
`has demonstrated a reasonable likelihood of prevailing with respect to the
`challenged claims of the ’615 Patent. See IPR2022-01064, Paper 7, 7–33.
`We accordingly determine that the Petition warrants institution under § 314,
`and turn to Petitioner’s request for joinder.
`As the moving party, Petitioner has the burden of proof in establishing
`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b).
`8
`
`
`
`
`IPR2023-00384
`Patent 9,830,615 B2
`Petitioner filed the Motion on December 22, 2022, within one month of
`institution of the Meta IPR. See 37 C.F.R. § 42.122(b). Petitioner asserts
`that the Motion should be granted because the joinder would have little, if
`any impact on the Meta IPR. See Mot. 3–4. Petitioner also agrees to take an
`“understudy” role in the Meta IPR. See Mot. 4–5. Specifically, Petitioner
`agrees that, as long as petitioner Meta Platforms, Inc. [“Meta”] remains a
`party to the Meta IPR, Petitioner will not (1) “make any substantive filings
`and shall be bound by the filings of Meta, unless a filing concerns
`termination and settlement, or issues solely involving Petitioner”; (2)
`“present any argument or make any presentation at oral hearing unless an
`issue solely involves Petitioner, or when addressing Board approved motions
`that do not affect Meta”; (3) “seek to cross-examine or defend the cross-
`examination of any witness, unless the topic of cross-examination concerns
`issues solely involving Petitioner, within the time permitted by Meta alone
`and with Meta’s agreement”; (4) “seek discovery from Patent Owner, unless
`issues arise that are unique to, and only applicable to, Petitioner”; and (5)
`“rely on expert testimony beyond that submitted by Meta unless and until
`Meta is terminated as party to the proceedings, prior to any necessary
`depositions.” Id. As mentioned before, Patent Owner did not file an
`opposition to the Motion.
`Because Petitioner will take an understudy role that will not impact
`the Meta IPR which was instituted on identical grounds, we determine that it
`is appropriate under these circumstances to join Petitioner as a party to the
`Meta IPR.
`
`9
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`IPR2023-00384
`Patent 9,830,615 B2
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 9–12 of the ’615 Patent is instituted with respect to all of
`the grounds set forth in the Petition; and
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2022-01064 is granted, and Petitioner is hereby joined as a petitioner in
`IPR2022-01064;
`FURTHER ORDERED that the grounds on which trial in IPR2022-
`01064 were instituted are unchanged, and no other grounds are added in
`IPR2022-01064;
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2022-01064 (Paper 8) and the schedule changes agreed to by the parties
`in IPR2022-01064 (Papers 12, 13) shall govern the trial schedule in
`IPR2022- 01064;
`FURTHER ORDERED that Petitioner’s role in IPR2022-01064 shall
`be limited as stated by Petitioner in the Motion for Joinder (Paper 3, 4–5)
`unless and until Meta is terminated from that proceeding;
`FURTHER ORDERED that the case caption in IPR2022-01064 shall
`be changed to reflect joinder of Amazon.com, Inc., Amazon Web Services,
`Inc., and Amazon.com Services LLC, as petitioner in accordance with the
`attached example;
`FURTHER ORDERED that a copy of this Decision be entered into
`the record of IPR2022-01064; and
`FURTHER ORDERED that all further filings shall be made in
`IPR2022-01064.
`
`10
`
`
`
`
`IPR2023-00384
`Patent 9,830,615 B2
`PETITIONER:
`
`J. David Hadden
`Saina Shamilov
`Brian M. Hoffman
`Christopher Larson
`Jessica Lin
`FENWICK & WEST LLP
`dhadden-ptab@fenwick.com
`sshamilov-ptab@fenwick.com
`bhoffman-ptab@fenwick.com
`clarson@fenwick.com
`jessica.lin@fenwick.com
`
`
`PATENT OWNER:
`
`Reza Mirzaie
`Jonathan Link
`James A. Milkey
`Amy E. Hayden
`Philip X. Wang
`RUSS, AUGUST & KABAT
`rmirzaie@raklaw.com
`jlink@raklaw.com
`jmilkey@raklaw.com
`ahayden@raklaw.com
`pwang@raklaw.com
`
`
`11
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`META PLATFORMS, INC., AMAZON.COM, INC., AMAZON WEB
`SERVICES, INC., AND AMAZON.COM SERVICES LLC, 1
`Petitioners,
`v.
`ALMONDNET, INC.,
`Patent Owner.
`
`IPR2022-01064
`Patent 9,830,615 B2
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1 Amazon.com, Inc., Amazon Web Services, Inc., and Amazon.com Services
`LLC, Inc. filed a motion for joinder and a petition in IPR2023-00384, which
`were granted. Accordingly, Amazon.com, Inc., Amazon Web Services, Inc.,
`and Amazon.com Services LLC have been joined as a petitioner in this
`proceeding.
`
`
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