`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`STODGE, INC. D/B/A POSTSCRIPT
`
`Petitioner
`
`v.
`
`ATTENTIVE, INC.
`
`(record) Patent Owner
`
`IPR2023-01338
`Patent No. 11,416,887
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.200 ET SEQ.
`
`
`
`
`
`
`
`

`

`Patent No. 11,416,887
`
`TABLE OF CONTENTS
`TABLE OF EXHIBITS ............................................................................................. 5
`NOTICE OF LEAD AND BACKUP COUNSEL ..................................................... 8
`NOTICE OF THE REAL-PARTIES-IN-INTEREST ............................................... 8
`NOTICE OF RELATED MATTERS ........................................................................ 8
`NOTICE OF SERVICE INFORMATION ................................................................ 8
`GROUNDS FOR STANDING .................................................................................. 9
`STATEMENT OF PRECISE RELIEF REQUESTED .............................................. 9
`THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW ........................ 9
`I.
`INTRODUCTION ......................................................................................... 10
`A.
`Technical Background ......................................................................... 10
`B.
`Claims of the ’887 patent. ................................................................... 17
`C.
`Examination History of the ’887 patent. ............................................. 19
`CLAIM CONSTRUCTION .......................................................................... 19
`II.
`III. DETAILED EXPLANATION OF THE REASONS FOR
`UNPATENTABILITY ........................................................................ 20
`Ground 1. Claims 1-2, and 13-14 were obvious over Haggerty in view of
`Demsey and Khanna. ........................................................................... 20
`Prior Art Status .................................................................................... 20
`Overview of the Ground ...................................................................... 20
`1.
`Overview of Haggerty (two-tap method) .................................. 21
`2.
`Overview of Demsey (ad network) ........................................... 24
`3.
`Overview of Khanna (mobile app deeplinking) ....................... 26
`Rationale (Motivation) Supporting Obviousness ................................ 28
`
`A.
`B.
`
`C.
`
`2
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`Patent No. 11,416,887
`
`D. Graham Factors ................................................................................... 32
`E.
`Reasonable Expectation of Success .................................................... 32
`F.
`Analogous Art ..................................................................................... 33
`G.
`Claim Mapping .................................................................................... 33
`Ground 2. Claims 1-4, 6-10, 13-14, and 19 were obvious as in Ground 1, in
`further view of Rakavy. ....................................................................... 54
`Prior Art Status .................................................................................... 55
`A.
`Overview of the Ground and Rationale for the Combination ............. 55
`B.
`Reasonable Expectation of Success .................................................... 56
`C.
`D. Analogous Art ..................................................................................... 56
`E.
`Claim Mapping .................................................................................... 56
`Ground 3. Claims 1-2, 5, and 13-18 were obvious as in Ground 1, in further
`view of Ad Serving Technology. ......................................................... 62
`Prior Art Status .................................................................................... 62
`A.
`Overview of the Ground ...................................................................... 62
`B.
`Reasonable Expectation of Success .................................................... 63
`C.
`D. Analogous Art ..................................................................................... 63
`E.
`Claim Mapping .................................................................................... 64
`Ground 4. Claims 1-2, 11-14, and 20 were obvious as in Ground 1, in further
`view of Molinet. .................................................................................. 67
`Prior Art Status .................................................................................... 67
`Overview of the Ground ...................................................................... 68
`Overview of Molinet ........................................................................... 68
`Reasonable Expectation of Success .................................................... 69
`
`A.
`B.
`C.
`D.
`
`3
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`Patent No. 11,416,887
`
`E.
`Analogous Art ..................................................................................... 69
`Claim Mapping .................................................................................... 69
`F.
`IV. SECONDARY CONSIDERATIONS ........................................................... 73
`V. DISCRETIONARY INSTITUTION ............................................................. 73
`A.
`The Board should not deny the petition under 35 U.S.C. §325(d) ..... 73
`B.
`The Board should not deny the petition under 35 U.S.C. §314(a) ...... 74
`VI. CONCLUSION .............................................................................................. 76
`CERTIFICATE OF SERVICE ................................................................................ 77
`CERTIFICATE OF WORD COUNT ...................................................................... 78
`
`
`
`4
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`Patent No. 11,416,887
`
`TABLE OF EXHIBITS
`
`
`Description
`U.S. Patent No. 11,416,887 (“the ’887 patent”).
`Declaration of Dr. Henry Houh.
`C.V. of Dr. Henry Houh.
`File History of U.S. App. Ser. No. 17/669,114 (issued as the ’887
`patent).
`U.S. Pat. App. Pub. 2014/0379482 (“Demsey”).
`U.S. Pat. App. Pub. 2013/0111328 (“Khanna”).
`U.S. Pat. No. 8,532,283 (“Haggerty”).
`U.S. Pat. App. Ser. No. 13/461,541 (“the Haggerty ’541
`application”).
`
`U.S. Pat. App. Pub. 2016/0142858 (“Molinet”).
`U.S. Prov. App. Ser. No. 62/079,512 (“The Molinet ’512
`Provisional”).
`U.S. Pat. App. Pub. 2015/0178784 (“Oliver”).
`Cristal, G., “Ad Serving Technology, Understand the marketing
`revelation that commercialized the internet”, ISBN:
`1484867572 (2014)(“Ad Serving Technology”).
`U.S. Pat. App. Pub. 2015/0142568 (“Hsu”).
`Plaintiff’s Answering Brief in Opposition to Defendant’s Motion
`to Dismiss Complaint Pursuant to Fed. R. Civ. P. 12(B)(6) in
`Attentive Mobile Inc. v. Stodge Inc. d/b/a Postscript, Case, No. 1-
`23-cv-00087 (D. Del., Filed March. 15, 2023).
`File History of U.S. App. Ser. No. 15/986,569.
`
`Exhibit No.
`1001
`1002
`1003
`1004
`
`1005
`1006
`1007
`1008
`
`1009
`1010
`
`1011
`1012
`
`1013
`1014
`
`1015
`
`5
`
`

`

`Patent No. 11,416,887
`
`1016
`
`1017
`1018
`1019
`
`1020
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`Firtman, M., “Programming the Mobile Web, Second Edition”,
`O’Reilly (2013).
`U.S. Pat. App. Pub. 2009/0247140 (“Gupta”).
`U.S. Pat. No. 5,913,040 (“Rakavy”).
`RFC 5724, “URI Scheme for Global System for Mobile
`Communications (GSM) Short Message Service (SMS)”,
`January 2010.
`WO 2005/062596A1 (“Helkio”).
`Flanagan, D. “JavaScript: The Definitive Guide, Sixth Edition”,
`O’Reilly Media, Inc. (2011).
`Complaint for Patent Infringement in Attentive Mobile Inc. v.
`Stodge Inc. d/b/a Postscript, Case No. 1-23-cv-00087 (D. Del.
`Filed Jan. 25, 2023).
`Scheiner, M., Attentive Gets the Message Out, available at
`https://crm.org/news/attentive-gets-the-message-out
`Levine, B., Led by TapCommerce founders, startup Attentive
`launches SMS/MMS marketing platform,
`available
`at
`https://martech.org/led-tapcommerce-founders-startup-attentive-
`launches-smsmms-marketing-platform/
`Ha, A, TapCommerce’s founders are back with Attentive, a
`messaging
`startup
`that’s
`raised $13M,
`available
`at
`https://techcrunch.com/2018/02/08/attentive-launch/
`United States District Courts — National Judicial Caseload
`Profile, available at https://www.uscourts.gov/sites/default/
`files/data_tables/fcms_na_distprofile0630.2023.pdf
`Scheduling Order in in Attentive Mobile Inc. v. Stodge Inc. d/b/a
`Postscript, Case No. 1-23-cv-00087 (D. Del. March 8, 2023).
`Mobile Marketing Association, “US Consumer Best Practices
`
`6
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`

`Patent No. 11,416,887
`
`at
`
`available
`(2012),
`7.0,
`version
`for Messaging”,
`https://www.mmaglobal.com/documents/us-consumer-best-
`practices.
`U.S. Pat. No. 7,136,875 (“Anderson”).
`available
`Excerpt
`from
`Amazon.com
`https://www.amazon.com/Serving-Technology-Understand-
`revelation-commercialized/dp/1484867572/
`Excerpt
`from Google Books available at https://www.
`google.com/books/edition/Ad_Serving_Technology/PHNHnwE
`ACAAJ?hl=en
`
`
`at
`
`1029
`1030
`
`1031
`
`
`
`7
`
`

`

`Patent No. 11,416,887
`
`Petitioner respectfully requests inter partes review under 35 U.S.C. §311 of
`
`claims 1-20 of U.S. Pat. No. 11,416,887 (“the ’887 patent”).
`
`NOTICE OF LEAD AND BACKUP COUNSEL
`Lead Counsel
`Backup Counsel
`Matthew A. Smith
`Andrew S. Baluch
`Reg. No. 49,003
`Reg. No. 57,503
`SMITH BALUCH LLP
`SMITH BALUCH LLP
`700 Pennsylvania Ave. SE, 2nd Floor
`700 Pennsylvania Ave. SE, 2nd Floor
`Washington, DC 20003
`Washington, DC 20003
`(202) 669-6207
`(202) 880-2397
`smith@smithbaluch.com
`baluch@smithbaluch.com
`
`
`NOTICE OF THE REAL-PARTIES-IN-INTEREST
`The real-party-in-interest for this petition is Stodge, Inc. d/b/a Postscript.
`
`
`
`NOTICE OF RELATED MATTERS
`The ’887 patent has been asserted in the following litigations:
`
`• Attentive Mobile Inc. v. 317 Labs, Inc. d/b/a Emotive, Case No. 1-22-
`
`cv-01163 (D. Del. Filed Sep. 01, 2022).
`
`• Attentive Mobile Inc. v. Stodge Inc. d/b/a Postscript, Case, No. 1-23-
`
`cv-00087 (D. Del. Filed Jan. 25, 2023).
`
`NOTICE OF SERVICE INFORMATION
`Please address all correspondence to the lead counsel at the addresses shown
`
`above.
`
`Petitioner
`
`consents
`
`to
`
`electronic
`
`service
`
`by
`
`email
`
`at:
`
`smith@smithbaluch.com, baluch@smithbaluch.com.
`
`8
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`

`Patent No. 11,416,887
`
`GROUNDS FOR STANDING
`Petitioner hereby certifies that the patent for which review is sought is
`
`available for inter partes review, and that the Petitioner is not barred or estopped
`
`from requesting an inter partes review on the grounds identified in the petition.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`Petitioner respectfully requests that claims 1-20 of the ’887 patent be canceled
`
`based on the following Grounds:
`
`Ground 1: Claims 1-2, and 13-14 were obvious over Haggerty in view of
`
`Demsey and Khanna.
`
`Ground 2: Claims 1-4, 6-10, 13-14, and 19 were obvious as in Ground 1, in
`
`further view of Rakavy.
`
`Ground 3: Claims 1-2, 5, and 13-18 were obvious as in Ground 1, in further
`
`view of Ad Serving Technology.
`
`Ground 4: Claims 1-2, 11-14, and 20 were obvious as in Ground 1, in further
`
`view of Molinet.
`
`THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW
`As shown in the Grounds set forth below, the information presented in the
`
`instant petition, if unrebutted, demonstrates that “it is more likely than not that at
`
`least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 314(a).
`
`9
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`Patent No. 11,416,887
`
`I.
`
`INTRODUCTION1
`A. Technical Background
`The ’887 patent is directed to a known business method, implemented using
`
`known Internet advertising technology.
`
`The known business method of the ’887 patent is simple. By the time the first
`
`application leading to the ’887 patent was filed (May 2017), smartphones had been
`
`in widespread use for almost a decade. (Ex. 1002, ¶23). With the rise of smartphone
`
`use, text-based messaging (e.g. “SMS” messaging) became a primary form of
`
`communication. (Ex. 1002, ¶24). This form of communication was naturally
`
`adopted by advertisers, who wanted to send advertising texts to consumers. (Ex.
`
`1002, ¶24).
`
`Advertising texts, however, could be subject to legal or industry restrictions
`
`that required an advertiser to both obtain a user’s consent and provide proof of
`
`possession of a smartphone prior to sending advertising texts. (Ex 1001, 7:19-
`
`29)(Ex. 1002, ¶24). To prove both consent and possession of the phone, it was by
`
`2012 considered a best practice to request, in an advertisement, that a user sign up
`
`for text messages by sending a text to the advertiser. (Ex. 1002, ¶¶25-26)(Ex. 1028,
`
`
`1 This introduction reflects the understanding of a person having ordinary skill in
`
`the art (“PHOSITA”), and is therefore relevant to each of the grounds below.
`
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`Patent No. 11,416,887
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`pp. 008-009, 0015-0021). For example, the 2012 Mobile Marketing Association
`
`document U.S. Consumer Best Practices for Messaging provided the following
`
`example of a best practice for advertising urging a user to text an advertiser:
`
`
`
`(Ex. 1028, p. 016)(Ex. 1002, ¶25).
`
`Against a background of such standard marketing practices, the ’887 purports
`
`to add known technology that allowed a device to automatically draft a text message
`
`(rather than asking a user to write it). (Ex. 1002, ¶27). The process starts with a
`
`Web advertisement that, instead of encouraging a user to type and send a text,
`
`encourages a user to click on a link. (Ex. 1001, 6:66-7:8)(Ex. 1002, ¶27). Clicking
`
`the link on a smartphone causes the device’s text-messaging app to open. (Ex. 1001,
`
`6:66-7:2)(Ex. 1002, ¶27). The text-messaging app presents the user with a pre-filled
`
`text message. (Ex. 1001, 7:13-17)(Ex. 1002, ¶27). The message provides both a
`
`destination telephone number and a message body, such that the user need only click
`
`“send” to send the text. (Ex. 1001, 7:17-29)(Ex. 1002, ¶27). When sent (to a
`
`designated server), the text message signs a user up for a promotion, such as a further
`
`promotional message. (Id.).
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`Patent No. 11,416,887
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`The process is shown in Figs. 2A-2B of the ’887 patent:
`
`
`(Ex. 1001, Figs. 2A-2B)(Ex. 1002, ¶28). These figures show an ad with a link 203
`
`(Fig. 2A) that when clicked opens a pre-populated text message (Fig. 2B). (Ex.
`
`1001, 7:30-65)(Ex. 1002, ¶28). The user need only click the send button (212) to
`
`send the text and sign up to receive marketing texts. (Id.). Thus, the user only needs
`
`to take two actions to sign up: clicking the link and then clicking the “send” button.
`
`(Ex. 1001, 6:66-8:5)(Ex. 1002, ¶28). Because only two actions are required, the
`
`’887 patent refers to this approach as a “two-tap” approach. (Ex. 1001, 3:3-7, 7:25-
`
`30)(Ex. 1002, ¶28).
`
`The “two-tap” approach, according to the Patent Owner, was a “true leap”
`
`forward in the technology. (Ex. 1014, p. 2)(Ex. 1002, ¶29). Prior art technologies
`
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`Patent No. 11,416,887
`
`were allegedly too cumbersome: requiring detailed sign-up forms or requiring the
`
`user to accurately type out a text message and respond to a confirming text. (Id.)(Ex.
`
`1001, 1:36-47). The “two-tap” approach avoided potential mistakes in typing a text
`
`message and provided a record of consent with a single message. (Ex. 1014, p. 2).
`
`Whatever the merits of the “two-tap” approach, however, the Patent Owner
`
`was not the first to do it. For example, U.S. Pat. No. 8,532,283 to Haggerty (Ex.
`
`1007), the subject of Ground 1, below, teaches that a user can view an ad online with
`
`an embedded link. (Ex. 1007, Abstract, 2:28-31)(Ex. 1002, ¶¶30-31, 72-76).
`
`Clicking the link will cause the user’s mobile device to present to the user “a pre-
`
`populated text message addressed to the destination address with the contents
`
`indicated therein” together with “a prompt for confirmation for sending the
`
`message”. (Ex. 1007, 10:1-5, 11:19-21, 9:48-55, 13:12-18)(Ex. 1002, ¶31).
`
`Haggerty further states that its method provides a convenient way for a user to
`
`respond to an advertisement (Ex. 1007, 1:53-62) with lowered risk of mistyping
`
`information in the SMS (Ex. 1007, 9:48-55). (Ex. 1002, ¶31).
`
`Other prior art references, including Oliver (Ex. 1011), Hsu (Ex. 1013) and
`
`Gupta (Ex. 1017) teach similar two-tap methods. (Ex. 1011, ¶¶0007-0009, 0027-
`
`0029, 0034, 0048)(Ex. 1013, ¶¶0039-0042)(Ex. 1017, ¶¶0026, 0069, 0088)(Ex.
`
`1002, ¶¶31-38).
`
`Central to these two-tap references was the ability to create links that could,
`
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`

`Patent No. 11,416,887
`
`when selected, open a pre-populated a text message—technology that had long been
`
`available. (Ex. 1012, pp. 584-585)(e.g. Ex. 1011, ¶¶0027-0029)(Ex. 1013,
`
`¶0040)(Ex. 1010, pp. 021-022, 015)(Ex. 1002, ¶¶39-44). Generally speaking, these
`
`links fell into the category of mobile-app linking. (Ex. 1002, ¶¶39-44). Mobile app
`
`linking allowed a link in a webpage, viewed on a smartphone browser, to open a
`
`different mobile app. (Ex. 1002, ¶39). Such links could simply open the app to the
`
`app’s opening screen, but they could also link to locations within the app, such as a
`
`page describing a specific product. (Id.). In that case, such links are called
`
`“deeplinks”, because they are directed to a point “deep” within the app, not just the
`
`opening screen. (Ex. 1006, ¶0030)(Ex. 1002, ¶39).
`
`Deeplinking technologies for mobile apps were well-established years before
`
`2017, including the use of Uniform Resource Identifiers (“URIs”) in webpage links
`
`to open a pre-populated text-message. (Id.). As the textbook “Programming the
`
`Mobile Web” stated in 2013, “[w]e all like the Short Message Service; that’s why
`
`mobile browsers generally offer the ability to invoke the new SMS window from
`
`a link. To do this, we have two possible URI schemes, sms:// and smsto://.” (Ex.
`
`1016, p. 557)(Emphasis added)(Ex. 1002, ¶¶40-43). These URI schemes were used
`
`at the start of a link—so just as a standard web URL might begin with http://, a link
`
`to a text-messaging app would begin with sms://. (Ex. 1002, ¶40). The ability to
`
`use such URI links was built in to the major smartphone operating systems (iOS and
`
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`Patent No. 11,416,887
`
`Android) in the relevant timeframe. (Ex. 1002, ¶40)(Ex. 1010, p. 015). These URI
`
`schemes were used to pass both the destination phone number and the message body
`
`to the text-messaging app (thereby “deeplinking” to the app). (Ex. 1016, pp. 557-
`
`558)(Ex. 1013, ¶0040)(Ex. 1011, ¶¶0027-0029)(Ex. 1002, ¶40). An appropriate
`
`URI protocol (e.g. “sms:”) to open text-messaging applications with pre-populated
`
`text and destination numbers was standardized by the year 2010 in IETF RFC 5724.
`
`(Ex. 1002, ¶41)(Ex. 1019, pp. 007-008, §2.2, p. 010, §2.5). The URIs specified in
`
`RFC 5724 could be used in clickable website links, such that when a user clicked on
`
`the link, a pre-populated SMS message would appear in the user’s text-messaging
`
`app. (Ex. 1002, ¶42)(Ex. 1020, pp. 009:33-010:33). Numerous prior art references
`
`discussed such URIs. (Ex. 1016, pp. 557-558)(Ex. 1013, ¶0040)(Ex. 1011, ¶¶0027-
`
`0029)(Ex. 1020, pp. 009:33-010:33)(Ex. 1010, pp. 015, 021)(Ex. 1002, ¶42).
`
`The claims of the ’887 patent also pair the known two-tap business method to
`
`standard technology that had been used, e.g., by Internet advertisers. (Ex. 1002,
`
`¶¶45-47). This technology can be explained with a short background. In the early
`
`days of the Web, website publishers could contract directly with advertisers, who
`
`would provide ads (e.g. “banner ads”) to place on a website. (Ex. 1002, ¶45). The
`
`ads usually had links, such that a user who clicked on the ad would be directed to
`
`the advertiser’s home page. (Ex. 1002, ¶47).
`
`This system had a variety of limitations. First, most website publishers did
`
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`Patent No. 11,416,887
`
`not have the expertise to seek out advertisers. (Ex. 1002, ¶47). Only the largest
`
`publishers regularly had ads, but even these ads could not be quickly changed, may
`
`not have been placed optimally, and could not be targeted to specific users. (Ex.
`
`1002, ¶47). Furthermore, it was difficult to perform accounting tasks like recording
`
`the number of views of an ad. (Ex. 1002, ¶48).
`
`To address these concerns, ad networks arose. (Ex. 1002, ¶48). Ad networks
`
`would contract with website publishers, through a simple, one-time sign-up process,
`
`for the right to place ads on the publisher’s site. (Ex. 1002, ¶48). To place ads on a
`
`publisher site, ad networks would transmit so-called “ad tags” to publishers. (Ex.
`
`1002, ¶48). The ad tags were placeholder segments of code (e.g. JavaScript) that
`
`could be placed into publisher webpages (Dr. Houh provides an explanation of
`
`website technology in Ex. 1002, ¶¶49-62). The purpose of an “ad tag” was to allow
`
`the ad network to have some control over the placement of ads at the time a page
`
`was being viewed. (Ex. 1002, ¶59). The ad tag would execute when the user viewed
`
`a webpage, thereby requesting an ad from the ad-network server. (Ex. 1002, ¶59).
`
`The ad-network server would choose an ad in realtime and send the ad back for
`
`insertion into the webpage. (Ex. 1002, ¶59).
`
`This process was advantageous for several reasons. (Ex. 1002, ¶63). With
`
`older technology (no ad tags), an advertiser would only know which website would
`
`contain the ad, not which users would eventually see the ad. (Ex. 1002, ¶63). Having
`
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`Patent No. 11,416,887
`
`ad tags that execute when the user views a page, however, allowed the ad tag to
`
`collect information about the specific user and the user’s device, and send this
`
`information to the ad-network server. (Ex. 1002, ¶63). This, in turn, allowed the
`
`ad-network server to target an ad directly to the specific user, formatted correctly for
`
`the specific user’s device. (Ex. 1002, ¶63). Furthermore, because the publisher did
`
`not need to contract directly with advertisers, but only with the ad network, even
`
`small publishers could receive ads appropriate for their sites. (Ex. 1002, ¶63).
`
`The ’887 patent uses this standard ad-network technology to serve an ad to a
`
`user, where the ad has a clickable link that pre-populates a text message. (Ex. 1002,
`
`¶64). How this technology relates to the claim language will be discussed next.
`
`B. Claims of the ’887 patent.
`The ’887 patent has 20 claims with a single independent claim (claim 1).
`
`Claim 1 can be divided into roughly three parts, corresponding to (1) standard ad-
`
`network technology that uses a script-based ad tag to gather user data to send to a
`
`server, (2) standard deeplinking technology that provides a way to link to a text-
`
`messaging application, and (3) the “two-tap” business method. Claim 1 is shown in
`
`the table below, with added numbers (1[a] [1b], etc.):
`
`Claim element
`
`“1[a]. At least one non-transitory processor-readable
`medium storing code configured to be executed by a
`processor of a click-to-text server, the code including
`
`Category
`
`Preamble
`
`17
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`

`Patent No. 11,416,887
`
`instructions configured to cause the click-to-text server
`to:”
`“[1b] send, to a client server, an integration tag
`configured to be served with a webpage hosted by the
`client server,”
`“[1c] the integration tag configured to cause a mobile
`device loading the webpage via a first application to
`send user data to at least one of the client server or the
`click-to-text server;”
`“[1d] define and send a uniform resource identifier
`(URI) to the mobile device in response to the mobile
`device executing
`the
`integration
`tag,
`the URI
`deeplinking to a messaging application different from
`the first application and”
`“[1e] configured to cause the mobile device to (1)
`automatically transition from the first application to the
`messaging application in response to the mobile device
`detecting a user interaction with a promotional message
`associated with the webpage, the messaging application
`being different from the first application, and”
`“[1f] (2) automatically populate a custom message in
`the messaging application that includes an address
`associated with the click-to-text server and a message
`body that includes an identifier associated with at least
`one of the webpage or the user data”
`“[1g] such that, upon detecting a single user interaction
`with a send button of the messaging application, the
`mobile device sends the custom message to the click-
`to-text server;”
`“[1h] receive the custom message at the click-to-text
`server; and”
`
`“[1i] enroll the mobile device in a promotion associated
`with the promotional message based on receiving the
`custom message and without receiving any additional
`information from the mobile device.”
`
`Ad-network
`
`Ad-network
`
`Deeplinking
`
`Deeplinking / Business
`method
`
`Business method
`
`Business method
`
`Business method
`
`Business method
`
`In claim 1, a “click-to-text server” (e.g. the central server of an ad network)
`
`
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`Patent No. 11,416,887
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`sends an “integration tag” (e.g. an ad tag) to a “client server” (a publisher) for
`
`inclusion in a website. The “integration tag” is configured to send user data to the
`
`central server, and gets a response. This is standard ad-network technology. (Ex.
`
`1002, ¶66). The response contains a deeplinking URI, which is simply a link in an
`
`ad that deeplinks to a mobile app. This is standard deeplinking technology. (Ex.
`
`1002, ¶66). Clicking on the deeplink causes a pre-filled text-message to appear that
`
`provides consent for further marketing activities, as was well-known in the art. (Ex.
`
`1002, ¶66).
`
`C. Examination History of the ’887 patent.
`The claims of the ’887 patent issued after a single requirement for restriction.
`
`(Ex. 1004). In allowing the claims, the Examiner stated that the closest prior art of
`
`record did not “teach or suggest every limitation of the claims of the present
`
`invention, and particularly the interaction of the tag and user causing an enrollment
`
`with a de minimis amount of information having been provided, in combination with
`
`the other elements of the claims of the present invention”. (Ex. 1004, p. 041).
`
`II. CLAIM CONSTRUCTION
`Petitioner submits that the Board need not construe any claim terms to
`
`consider the prior art and arguments presented herein.
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`Patent No. 11,416,887
`
`III. DETAILED EXPLANATION OF THE REASONS FOR
`UNPATENTABILITY
`
`Ground 1. Claims 1-2, and 13-14 were obvious over Haggerty in view of
`Demsey and Khanna.
`
`Claims 1-2, and 13-14 were obvious under (post-AIA) 35 U.S.C. § 103(a)
`
`over Haggerty (Ex. 1007), in view of U.S. Pat. App. Pub. 2014/0379482
`
`(“Demsey”)(Ex. 1005) and U.S. Pat. App. Pub. 2013/0111328 (“Khanna”)(Ex.
`
`1006).
`
`None of these references was of record during the prosecution of the
`
`application leading to the ’887 patent.
`
`Prior Art Status
`A.
`Haggerty, Demsey, and Khanna and are U.S. patent publications with
`
`publication and effective filing dates before May 26, 2017, and are thus prior art
`
`under 35 U.S.C. §§102(a)(1) and (2).
`
`B. Overview of the Ground
`Haggerty teaches a “two-tap” method for enrolling users in promotions, where
`
`a single user action opens a pre-filled text message, which then only needs to be sent.
`
`(Ex. 1007, 10:1-5, 9:48-55, 13:12-18)(Ex. 1002, ¶¶66-70). This ground posits that
`
`it would have been obvious to implement Haggerty’s business method using well-
`
`known ad-serving technology, by adding the techniques of Demsey (an ad-network
`
`patent) and Khanna (a mobile app deeplinking patent). (Ex. 1002, ¶¶70-71).
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`Patent No. 11,416,887
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`Thus, in the combination, Haggerty teaches the known “two-tap” business
`
`method, Demsey provides the standard ad-network functionality, and Khanna
`
`provides the standard deeplinking functionality. (Ex. 1002, ¶¶70-71).
`
`1. Overview of Haggerty (two-tap method)
`Haggerty teaches a “two-tap” business method similar to that of the ’887
`
`patent. (Ex. 1002, ¶72). In Haggerty, a user can interact with an advertisement.
`
`(Ex. 1007, 14:41-49)(Ex. 1002, ¶72). The interaction can be scanning a QR code,
`
`but can also be clicking a hyperlink. (Ex. 1007, 14:41-49, see also 1:36-62, 2:1-5,
`
`8:51-56, 10:59-11:21, 16:26-31, Figs. 3C, 4G)(Ex. 1002, ¶72). Once clicked, the
`
`link can cause the user’s mobile device to pre-populate an SMS message. Haggerty
`
`states:
`
`“[U]pon reading the QR code using a smart phone, a pre-populated
`text message addressed to the destination address with the contents
`indicated therein is presented to the user, along with a prompt for
`confirmation for sending the message.”
`
`(Ex. 1007, 10:1-5)(Emphasis added)(Ex. 1002, ¶72). Note that Haggerty teaches
`
`that a QR code is not necessary, and that “[i]n general, any of the actions that may
`
`be initiated by a QR code could also be associated with a link.” (Ex. 1007, 11:19-
`
`21)(Emphasis added)(Ex. 1002, ¶72).
`
`The pre-populated text message is sent to a “call center” for processing, as
`
`shown in Fig. 4B. (Ex. 1007, Fig. 4B, 12:39-47)(Ex. 1002, ¶73). The “call center”
`
`21
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`Patent No. 11,416,887
`
`is not limited to handling or dealing with voice calls, however, and Haggerty also
`
`considers an SMS text message to be an “SMS call”. (Ex. 1007, Figs. 4B-4C, 4:38-
`
`56)(Ex. 1002, ¶73). The call center methods are carried out using a central server
`
`system, as shown in the red-dashed box from Fig. 1, reproduced here:
`
`
`
`(Ex. 1007, Fig. 1, 3:44-63, 5:45-7:62)(Ex. 1002, ¶¶73-75).
`
`This central server system, upon receiving a SMS message from a user,
`
`processes the message according to the particular advertising campaign, and sends a
`
`response SMS. (Ex. 1007, 12:39-67)(Ex. 1002, ¶¶71-75). An example message
`
`flow is shown in Fig. 4B, reproduced below, with yellow highlighting added to show
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`Patent No. 11,416,887
`
`the text messages:
`
`
`
`(Ex. 1007, Fig. 4B, 12:39-67)(Ex. 1002, ¶73).
`
`Just like the ’887 patent, Haggerty teaches a user response to an advertisement
`
`with only two actions: activating a link, and then sending a pre-populated SMS. (Ex.
`
`1007, 10:1-5, 14:41-49, 1:36-62, 2:1-5, 8:51-56, 10:59-11:21, 16:26-31, Figs. 3C,
`
`4G)(Ex. 1002, ¶74). Haggerty further states that its method provides a convenient
`
`way for a user to respond to an advertisement (Ex. 1007, 1:53-62) with lowered risk
`
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`Patent No. 11,416,887
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`of mistyping information in the SMS (Ex. 1007, 9:48-55). (Ex. 1002, ¶74).
`
`While Haggerty assumes advertisements with clickable links (Ex. 1007, 2:28-
`
`31), it does not describe the technology used to serve those ads. This technology,
`
`however, was standard in the relevant timeframe, as described in Demsey. (Ex.
`
`1002, ¶76).
`
`2. Overview of Demsey (ad network)
`Demsey is an ad-network system that has a central server, advertisers,
`
`publishers, and users who download webpages with ads, as shown in Fig. 2,
`
`reproduced here:
`
`
`(Ex. 1005, Fig. 2, ¶¶0024-0025)(Ex. 1002, ¶77). In Fig. 2, the central server is the
`
`synchronization server system 150, advertisers are represented by servers 114,
`
`publishers are represented by servers 112, and user devices are shown by devices
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`

`Patent No. 11,416,887
`
`102 through 110. (Ex. 1005, ¶¶0024-0025)(Ex. 1002, ¶77).
`
`Demsey sends “ad tags” to a publisher for inclusion in webpages. (Ex. 1005,
`
`¶0005)(Ex. 1002, ¶78). When a webpage is downloaded to a user device, the ad tag
`
`(which uses JavaScript, a common programming language for webpages) executes
`
`and requests that an advertisement be sent back to the user’s device for display. (Ex.
`
`1005, ¶¶0045-0048, Fig. 5)(Ex. 1002, ¶78). This is shown, for example, in Fig. 5 of
`
`Demsey, reproduced below with three added red-dashed boxes:
`
`
`(Ex. 1005, Fig. 5)(Ex. 1002, ¶78). As shown in Fig. 5, a user device 502 (left side,
`
`middle) downloads a webpage at action (2) (shown by a red-dashed box at the top).
`
`The webpage contains an “AD TAG”. (Ex. 1005, ¶0045)(Ex. 1002, ¶78). The “AD
`
`TAG”, when executed by the user’s device, causes the user’s device 502 to issue an
`
`“AD REQUEST” at action (4A) (red-dashed box,
`
`lower
`
`left)
`
`to
`
`the
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`Patent No. 11,416,887
`
`AD/SYNCHRONIZING SERVER(S). (Ex. 1005, ¶0045)(Ex. 1002, ¶78). Along
`
`with the ad request, the user’s device sends a user ID. (Ex. 1005, ¶0045)(Ex. 1002,
`
`¶78). When the server receives the ad request, the server chooses an ad, and sends
`
`the ad back to the user device for incorporation into the webpage at action (5) (red-
`
`dashed box). (Ex. 10