`
`
`
`
`
`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
`
`IPR2024-00069
`Patent No. 11,416,897
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.200 ET. SEQ
`
`
`
`
`
`
`
`

`

`Patent No. 11,416,897
`
`TABLE OF CONTENTS
`TABLE OF EXHIBITS ............................................................................................. 4
`NOTICE OF LEAD AND BACKUP COUNSEL ..................................................... 7
`NOTICE OF THE REAL-PARTIES-IN-INTEREST ............................................... 7
`NOTICE OF RELATED MATTERS ........................................................................ 7
`NOTICE OF SERVICE INFORMATION ................................................................ 7
`GROUNDS FOR STANDING .................................................................................. 8
`STATEMENT OF PRECISE RELIEF REQUESTED .............................................. 8
`THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW ........................ 8
`I.
`INTRODUCTION ........................................................................................... 8
`A.
`Technical Background ........................................................................... 8
`B.
`Claims of the ’897 patent. ................................................................... 17
`C.
`Examination History of the ’897 Patent. ............................................. 18
`CLAIM CONSTRUCTION .......................................................................... 19
`A.
`Claim 15—“means for displaying….” ................................................ 19
`B.
`Claim 15—“means for causing….” .................................................... 19
`III. DETAILED EXPLANATION OF THE REASONS FOR
`UNPATENTABILITY ........................................................................ 20
`Ground 1. Claims 15-19 and 21-30 were obvious over Oliver in view of
`Agrawal and Molinet. .......................................................................... 20
`Prior Art Status .................................................................................... 20
`Overview of the Ground ...................................................................... 21
`1.
`Overview of Oliver ................................................................... 21
`2.
`Overview of Agrawal ................................................................ 23
`
`A.
`B.
`
`II.
`
`2
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`Patent No. 11,416,897
`
`3.
`Overview of Molinet ................................................................. 26
`Rationale (Motivation) Supporting Obviousness ................................ 28
`C.
`D. Graham Factors ................................................................................... 32
`E.
`Reasonable Expectation of Success .................................................... 32
`F.
`Analogous Art ..................................................................................... 33
`G.
`Claim Mapping .................................................................................... 33
`Ground 2. Claims 15-30 were obvious as in Ground 1, in further view of Ad
`Serving Technology ............................................................................. 71
`Prior Art Status .................................................................................... 71
`A.
`Overview of the Ground ...................................................................... 71
`B.
`Analogous Art ..................................................................................... 72
`C.
`Claim Mapping .................................................................................... 72
`D.
`IV. SECONDARY CONSIDERATIONS ........................................................... 74
`V. DISCRETIONARY INSTITUTION ............................................................. 74
`A.
`The Board should not deny the petition under 35 U.S.C. §325(d) ..... 74
`B.
`The Board should not deny the petition under 35 U.S.C. §314(a) ...... 76
`VI. CONCLUSION .............................................................................................. 77
`CERTIFICATE OF SERVICE ................................................................................ 79
`CERTIFICATE OF WORD COUNT ...................................................................... 80
`
`
`
`3
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`Patent No. 11,416,897
`
`TABLE OF EXHIBITS
`
`Description
`U.S. Patent No. 11,416,897 (“the ’897 patent”).
`Declaration of Dr. Henry Houh.
`C.V. of Dr. Henry Houh.
`File History of U.S. App. Ser. No. 17/569,265 (issued as the ’897
`patent).
`U.S. Pat. No. 8,015,615 (“Agrawal”).
`U.S. Pat. App. Ser. No. 10/375,900 (“the ’900 application”).
`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
`
`4
`
`

`

`Patent No. 11,416,897
`
`1016
`
`1017
`1018
`
`1019
`
`1020
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`Firtman, M., “Programming the Mobile Web, Second Edition”,
`O’Reilly (2013).
`U.S. Pat. App. Pub. 2009/0247140 (“Gupta”).
`Plaintiff’s Preliminary Identification of Terms and Phrases for
`Construction and Preliminary Proposed Constructions, Attentive
`Mobile Inc. v. Stodge Inc. d/b/a Postscript, Case No. 1-23-cv-
`00087 (D. Del. Served September 29, 2023).
`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),
`together with schedule stipulation of August 31, 2023.
`
`5
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`

`Patent No. 11,416,897
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`1033
`
`1034
`
`
`
`
`
`at
`
`Mobile Marketing Association, “US Consumer Best Practices
`for Messaging”,
`version
`7.0,
`(2012),
`available
`https://www.mmaglobal.com/documents/us-consumer-best-
`practices.
`317 Labs, Inc. d/b/a Emotive’s and Stodge Inc. d/b/a Postscript’s
`Joint Proposed Claim Terms and Constructions, Attentive Mobile
`Inc. v. Stodge Inc. d/b/a Postscript, Case No. 1-23-cv-00087 (D.
`Del. Served September 29, 2023).
`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
`U.S. Pat. App. Pub. 2014/0379482 (“Demsey”).
`RFC 3986, “Uniform Resource Identifier (URI): Generic
`Syntax”, January 2005.
`U.S. Pat. App. Pub. 2013/0111328 A1 (“Khanna”).
`
`
`
`at
`
`
`
`6
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`

`

`Patent No. 11,416,897
`
`Petitioner respectfully requests inter partes review under 35 U.S.C. §311 of
`
`claims 15-30 of U.S. Pat. No. 11,416,897 (“the ’897 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
`1100 Alma St., Ste. 109
`700 Pennsylvania Ave. SE, Ste 2060
`Menlo Park, CA 94025
`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 the Stodge, Inc. d/b/a Postscript.
`
`NOTICE OF RELATED MATTERS
`The ’897 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.
`
`7
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`

`Patent No. 11,416,897
`
`GROUNDS FOR STANDING
`Petitioner hereby certifies that the ’897 patent 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 15-30 of the ’897 patent be
`
`canceled based on the following Grounds:
`
`Ground 1: Claims 15-19 and 21-30 were obvious over Oliver in view of
`
`Agrawal and Molinet.
`
`Ground 2: Claims 15-30 were obvious as in Ground 1, in further view of Ad
`
`Serving Technology.
`
`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).
`
`I.
`
`INTRODUCTION1
`A. Technical Background
`The ’897 patent is directed to a known business method, implemented using
`
`
`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. 11,416,897
`
`known Internet advertising technology.
`
`The known business method of the ’897 patent is simple. By the time the first
`
`application leading to the ’897 patent was filed (May 2017), smartphones had been
`
`in widespread use for almost a decade. (Ex. 1002, ¶24). 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 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, 7:14-24)(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, 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:
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`Patent No. 11,416,897
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`
`
`(Ex. 1028, p. 016)(Ex. 1002, ¶25).
`
`Against a background of such standard marketing practices, the ’897 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, 6:60-7:2)(Ex. 1002, ¶27). Clicking
`
`the link on a smartphone causes the device’s text-messaging app to open. (Ex. 1001,
`
`6:60-7:2)(Ex. 1002, ¶27). The text-messaging app presents the user with a pre-filled
`
`text message. (Ex. 1001, 7:7-11)(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, 7:10-22)(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.).
`
`The process is shown in Figs. 2A-2B of the ’897 patent:
`
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`Patent No. 11,416,897
`
`
`(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, 7:24-59)(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, 6:60-7:66)(Ex. 1002, ¶28). Because only two actions are required, the
`
`’897 patent refers to this approach as a “two-tap” approach. (Ex. 1001, 3:1-3, 7:19-
`
`23)(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
`
`were allegedly too cumbersome: requiring detailed sign-up forms or requiring the
`
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`

`Patent No. 11,416,897
`
`user to accurately type out a text message and respond to a confirming text. (Id.)(Ex.
`
`1001, 1:30-41). 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. (Ex. 1002, ¶30). For example, U.S. Pat. App. Publication
`
`2015/0178784 to “Oliver”, the subject of Ground 1, teaches a two-tap method where
`
`a consumer accesses a “passive entity” associated with an advertisement. (Ex. 1011,
`
`¶¶0034, 0007)(Ex. 1002, ¶¶31-33). The “passive
`
`entity” is sometimes a scannable QR code, but
`
`Oliver makes clear that a passive entity can be
`
`anything that can store link information and be
`
`activated by a user’s mobile device. (Ex. 1011,
`
`¶0007, Abstract). Activating the passive entity
`
`creates a pre-populated text message, such as the
`
`one shown in Fig. 2 of Oliver, reproduced at right.
`
`(Ex. 1011, Fig. 2, ¶¶0027-0029)(Ex. 1002, ¶¶31-
`
`32). The pre-populated text message is created using a link in the passive entity, such
`
`as the link shown in ¶0028 of Oliver:
`
`
`
`12
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`

`Patent No. 11,416,897
`
`(Ex. 1011, ¶¶0028, see also 0027-0029)(Ex. 1002, ¶31).
`
`Oliver explains—just like the ’897 patent—that limiting the user actions to
`
`two improves the user response:
`
`“the disclosed principles streamline the response process by
`simply requiring only two actions by the user: the scan or other
`means of activating the passive entity, and the action of sending the
`prepopulated message generated by the activation of the passive
`entity.”
`
`(Ex. 1011, ¶0009)(Emphasis added)(Ex. 1002, ¶33).
`
`Other prior art references, including Haggerty (Ex. 1007), Hsu (Ex. 1013) and
`
`Gupta (Ex. 1017) teach similar two-tap methods. (Ex. 1007, Abstract, 2:28-31, 10:1-
`
`5, 11:19-21, 9:48-55, 13:12-18, 1:53-62)(Ex. 1013, ¶¶0039-0042)(Ex. 1017, ¶¶0026,
`
`0069, 0088)(Ex. 1002, ¶¶31-40).
`
`Central to these two-tap references was the ability to create links that could,
`
`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, ¶¶41-46). Generally speaking, these
`
`links fell into the category of mobile-app linking. (Ex. 1002, ¶¶41-46). Mobile app
`
`linking allowed a link in a webpage, viewed on a smartphone browser, to open a
`
`different mobile app. (Ex. 1002, ¶41). 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
`
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`

`Patent No. 11,416,897
`
`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. (Ex. 1034,
`
`¶0030)(Ex. 1002, ¶41).
`
`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, ¶¶42-46). 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, ¶42). The ability to
`
`use such URI links was built in to the major smartphone operating systems (iOS and
`
`Android) in the relevant timeframe. (Ex. 1002, ¶42)(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, ¶42). 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, ¶43)(Ex. 1019, pp. 007-008, §2.2, p. 010, §2.5). The URIs specified in
`
`14
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`Patent No. 11,416,897
`
`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, ¶43)(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, ¶43).
`
`The claims of the ’897 patent also pair the known two-tap business method to
`
`standard technology that had been used, e.g., by Internet advertisers. (Ex. 1002,
`
`¶¶47-50). 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, ¶¶47-48).
`
`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, ¶¶47-48).
`
`This system had a variety of limitations. First, most website publishers did
`
`not have the expertise to seek out advertisers. (Ex. 1002, ¶49). 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, ¶49). Furthermore, it was difficult to perform accounting tasks like recording
`
`the number of views of an ad. (Ex. 1002, ¶49).
`
`To address these concerns, ad networks arose. (Ex. 1002, ¶50). Ad networks
`
`would contract with website publishers, through a simple, one-time sign-up process,
`
`15
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`

`Patent No. 11,416,897
`
`for the right to place ads on the publisher’s site. (Ex. 1002, ¶50). To place ads on a
`
`publisher site, ad networks would transmit so-called “ad tags” to publishers. (Ex.
`
`1002, ¶50). 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, ¶¶51-63). The purpose of an “ad tag” was to allow
`
`the ad network to have control over the placement of ads at the time a page was
`
`being viewed. (Ex. 1002, ¶65). The ad tag would execute when the user viewed a
`
`webpage, thereby requesting an ad from the ad-network server. (Ex. 1002, ¶65).
`
`The ad-network server would choose an ad in realtime and send the ad back for
`
`insertion into the webpage. (Ex. 1002, ¶65). The functionality of ad tags is carried
`
`out in the ’897 patent by code that the ’897 patent calls an “integration tag”. (Ex.
`
`1001, 5:29-36)(Ex. 1002, ¶115).
`
`The process of using ad tags to retrieve ads while a user was downloading a
`
`webpage was advantageous. (Ex. 1002, ¶65). 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, ¶65). Having 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, ¶65). 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.
`
`16
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`

`Patent No. 11,416,897
`
`1002, ¶65). 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, ¶65).
`
`The ’897 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 ’897 patent.
`Independent claim 15 can be divided into roughly three parts, corresponding
`
`to (1) standard ad-network technology that uses a script-based ad tag (here, claimed
`
`as “means for displaying”), (2) standard deeplinking technology that provides a way
`
`to link to a text-messaging application (here claimed as a “means for causing”), and
`
`(3) the “two-tap” business method. Claim 15 is shown in the table below, with added
`
`numbers (15[a] [15b], etc.):
`
`Claim element
`
`“15[a]. A non-transitory processor-readable medium
`storing code configured to be executed by a processor,
`the code including instructions configured to cause the
`processor to:”
`“[15b] send, from at least one server and to a mobile
`device requesting and/or a webpage, means for
`displaying an invitation to subscribe to a text messaging
`subscription service via a first application;”
`“[15c] send, from the at least one server and to the
`mobile device, means for causing (1) the mobile device
`to transition from the first application to a second
`application different from the first application in
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`Category
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`Preamble
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`Ad-network
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`Deeplinking
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`Patent No. 11,416,897
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`response to the mobile device detecting a first
`interaction with the invitation, the second application
`being a messaging application, and”
`“[15d] (2) [means for causing…] the second application
`to automatically populate a custom text message based
`on the user data;”
`
`“[15e] receive, from the mobile device, the custom text
`message in response to the mobile device detecting a
`second interaction with the messaging application; and”
`“[15f] deliver an installment of the text messaging
`subscription service without receiving an opt-in
`communication after
`receiving
`the custom
`text
`message.”
`
`Deeplinking / Business
`
`method
`
`Business method
`
`Business method
`
`In claim 15, a “server” (e.g., the central server of an ad network) sends a means
`
`
`
`for displaying (e.g., an ad tag) to mobile device. The means for displaying is
`
`configured to display a promotion (e.g., an ad). This is standard ad-network
`
`technology. (Ex. 1002, ¶68). When a user clicks on the ad, a server sends a URI
`
`(means for causing) that deeplinks to a mobile app. This is standard deeplinking
`
`technology. (Ex. 1002, ¶68). Activating 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, ¶68).
`
`C. Examination History of the ’897 Patent.
`During the examination of the application leading to the ’897 patent, the
`
`Examiner rejected then-pending claims over prior art not at-issue here. (Ex. 1004,
`
`pp. 182-234). The applicant filed an amendment (Ex. 1004, pp. 128-145) that re-
`
`wrote the first independent claim, adding limitations that required a second mobile
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`Patent No. 11,416,897
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`device as well as third and fourth user identifiers. (Ex. 1004, pp. 130-131). The
`
`Examiner then allowed the claims, stating that the Examiner could not locate much
`
`of the content of the first independent claim in the prior art, including the second
`
`mobile device and third and fourth user identifiers. (Ex. 1004, 047-048). Notably,
`
`however, other claims in the application—including all claims challenged here—
`
`were broader in that they did not require a second mobile device and third and fourth
`
`user identifiers.
`
`II. CLAIM CONSTRUCTION
`The parties have exchanged proposed claim constructions in related
`
`litigations. (Ex. 1018, 1029).
`
`The Board should construe the two means-plus-function terms in claim 15.
`
`A. Claim 15—“means for displaying….”
`Claim 15 recites a “means for displaying an invitation to subscribe to a text
`
`messaging subscription service via a first application”. The corresponding structure
`
`should be construed as an integration tag configured to cause performance of the
`
`claimed functions. (Ex. 1002, ¶¶73-74). Support for the corresponding structure is
`
`described in the ’897 patent at Ex. 1001, claim 16, 1:57-64, 5:29-36, 11:54-66,
`
`12:56-65, 14:61-15:13, 17:9-33. (Ex. 1002, ¶74).
`
`B. Claim 15—“means for causing….”
`Claim 15 also recites “means for causing” two functions, namely causing the
`
`mobile device to (1) “transition… to a second application” and (2) to “automatically
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`Patent No. 11,416,897
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`populate a custom text message….”. The corresponding structure should be
`
`construed as a URI deeplinking to a messaging application and configured to
`
`cause performance of the claimed functions. (Ex. 1002, ¶¶75-76). Support for
`
`corresponding structure is described in the ’897 patent at Ex. 1001, claim 16, 2:3-6,
`
`2:14-19. 3:13-15, 4:20-26, 3:59-62, 10:22-47, 11:37-41, 19:24-28, 19:44-49, 22:1-
`
`18, 22:36-53, 22:65-67, 23:22-28, 23:51-59. (Ex. 1002, ¶76).
`
`III. DETAILED EXPLANATION OF THE REASONS FOR
`UNPATENTABILITY
`
`Ground 1. Claims 15-19 and 21-30 were obvious over Oliver in view of
`Agrawal and Molinet.
`
`Claims 15-19 and 21-30 were obvious under post-AIA 35 U.S.C. §103(a) over
`
`U.S. Pat. App. Pub. 2015/0178784 (“Oliver”)(Ex. 1011) in view of U.S. Pat. No.
`
`8,015,615 (“Agrawal”)(Ex. 1005) and U.S. Pat. App. Pub. 2016/0142858
`
`(“Molinet”)(Ex. 1009).
`
`Agrawal and Molinet were not of record during the prosecution of the
`
`application leading to the ’897 patent. Oliver was of record, but was not used in a
`
`rejection, and the application Examiner fundamentally misunderstood Oliver’s
`
`teachings, as discussed below in §V.A.
`
`Prior Art Status
`A.
`Oliver, Agrawal, and Molinet are U.S. patent publications with publication
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`Patent No. 11,416,897
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`and effective filing dates before May 26, 2017, and are thus prior art under post-AIA
`
`35 U.S.C. §§102(a)(1) and (2).
`
`B. Overview of the Ground
`Oliver 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.
`
`This ground posits that it would have been obvious to implement Oliver’s business
`
`method using well-known ad-serving technology, as described in two publications:
`
`Agrawal and Molinet. (Ex. 1002, ¶78).
`
`1. Overview of Oliver
`Oliver teaches a streamlined method of generating customer leads using a
`
`“two-tap” method, as discussed in the Introduction. (Ex. 1011, Title, ¶0009)(Ex.
`
`1002, ¶79).
`
`After the two-tap method is performed, Oliver also teaches that the user
`
`receives responsive messages offering discounts, rewards, incentives, etc., as shown
`
`in Fig. 10 of Oliver, reproduced here with relevant highlighting added:
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`Patent No. 11,416,897
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`(Ex. 1011, Fig. 10, ¶¶0051-0053)(Ex. 1002, ¶82).
`
`While Oliver teaches that the user interacts with an advertisement, and teaches
`
`that the advertisement can be on the Internet, Oliver does not concern itself with the
`
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`Patent No. 11,416,897
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`technology to deliver ads to a user on the Internet. This standard technology,
`
`however, was disclosed in Agrawal.
`
`2. Overview of Agrawal
`Agrawal teaches a known ad-network system. (Ex. 1002, ¶84). Ad-network
`
`systems were described in the Introduction, and generally have a central ad-network
`
`server to coordinate activities, advertisers who wish to place ads, publishers who
`
`have servers that serve websites on which ads can be placed, and users who
`
`download the websites and see the ads. (Ex. 1002, ¶84). Such a system is shown in
`
`Fig. 1 of Agrawal, reproduced here:
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`Patent No. 11,416,897
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`(Ex. 1005, Fig. 1, 3:62-35)(Ex. 1002, ¶84). In Fig. 1, the central ad-network server
`
`is the “advertising system 120”. (Ex. 1005, 1:62-65, 10:5-6)(Ex. 1002, ¶84). The
`
`users are the “client” devices 110. (Ex. 1005, 4:10-16)(Ex. 1002, ¶84). The various
`
`publishers of webpages are represented by servers 130. (Ex. 1005, 4:18-20)(Ex.
`
`1002, ¶84). Advertisers are not shown separately in Fig. 1.
`
`In Agrawal’s system, a user’s device will contact a publisher server 130 to
`
`download a webpage. (Ex. 1005, 5:29-32, 3:46-58)(Ex. 1002, ¶85). The webpage
`
`has code (e.g., JavaScript) that is executed when the user’s device loads the webpage.
`
`(Ex. 1005, 5:34-39, 3:52-55)(Ex. 1002, ¶85). Upon execution of the code, the user’s
`
`browser sends to the advertising system 120 an “ad query request”. (Ex. 1005, 5:29-
`
`39)(Ex. 1002, ¶85). Along with the ad query request, the browser also sends data
`
`about the user and the device to the advertising system 120. (Ex. 1005, 5:64-
`
`6:46)(Ex. 1002, ¶85). The advertising system 120 stores the user data, selects one
`
`or more ads, and sends the ads back to the browser for display. (Ex. 1005, 5:45-63,
`
`7:54-58)(Ex. 1002, ¶85). The ads will typically have links that the user can click, as
`
`shown in Fig. 4 of Agrawal, reproduced here:
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`Patent No. 11,416,897
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`
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`(Ex. 1005, Fig. 4, 8:12-37)(Ex. 1002, ¶85).
`
` Agrawal also has an authentication mechanism that is relevant to the ’897
`
`patent dependent claims. Authentication is needed in Agrawal because, if the user
`
`clicks an ad link, the ad will be deemed successful and someone will get paid. (Ex.
`
`1005, 1:27-2:3)(Ex. 1002, ¶86). This potential for payment, however, also creates
`
`an incentive for fraud: a malicious user might use bots to generate clicks that are
`
`not from a human user. (Id.). To filter out such spurious clicks, Agrawal also
`
`collects user data a second time after an ad link is clicked. (Ex. 1005, 6:47-7:62)(Ex.
`
`1002, ¶86). By comparing the second set of user data to the first set of user data
`
`(collected earlier), Agrawal can authenticate the user, and prevent some fraud. (Ex.
`
`1005, 7:45-8:12)(Ex. 1002, ¶86). This process is shown in Fig. 3 (reproduced
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`Patent No. 11,416,897
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`below), which shows a method carried out by the advertising system 120 (Ex. 1005,
`
`5:3-8, 10:4-7):
`
`
`
`(Ex. 1005, Fig. 3)(Ex. 1002, ¶86).
`
`Agrawal does not expressly teach that its advertising links can be “deeplinks”
`
`that would open mobile apps, but this functionality was well-known in the relevant
`
`timeframe and provided by another patent publication, Molinet.
`
`3. Overview of Molinet
` Molinet teaches a system for providing working deeplinks for mobile apps.
`
`(Ex. 1009, ¶0003)(Ex. 1002, ¶88). Molinet explains that in an “application
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`Patent No. 11,416,897
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`ecosystem” (like a modern smart