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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`META PLATFORMS, INC.,
`Petitioner
`v.
`SITNET, LLC,
`Patent Owner
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`Case IPR2024-00528
`U.S. Patent No. 8,249,932
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`PETITIONER’S NOTICE RANKING PETITIONS FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 8,249,932
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`I.
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`Case IPR2024-00528
`U.S. Patent No. 8,249,932
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`INTRODUCTION
`Petitioner Meta Platforms, Inc. (“Petitioner”) is simultaneously filing two
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`petitions for inter partes review of all 23 claims of U.S. Patent No 8,249,932
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`(“’932 patent”; EX1001). Each petition challenges a non-overlapping subset of the
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`claims: IPR2024-00528 challenges claims 1-11, 22, and 23, and IPR2024-00612
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`challenges claims 12-21. In accordance with the Consolidated Trial Practice Guide,
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`Petitioner submits this paper to “identify: (1) a ranking of the petitions in the order
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`in which it wishes the Board to consider the merits, if the Board uses its discretion
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`to institute any of the petitions, and (2) a succinct explanation of the differences
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`between the petitions, why the issues addressed by the differences are material, and
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`why the Board should exercise its discretion to institute additional petitions if it
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`identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a).”
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`CTPG, 59-60.
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`II. RANKING OF THE PETITIONS
`The Board should consider the merits of the petitions in the following order:
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`1. IPR2024-00528 (“-00528 Petition”); and
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`2. IPR2024-00612 (“-00612 Petition”).
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`III. SUCCINCT EXPLANATION OF DIFFERENCES BETWEEN THE
`PETITIONS
`The -00528 Petition challenges claims 1-11, 22, and 23, while the -00612
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`Petition challenges claims 12-21. Although independent claims 1 and 22 share
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`- 1 -
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`Case IPR2024-00528
`U.S. Patent No. 8,249,932
`multiple claim elements, independent claim 12 differs substantially in claim scope,
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`reciting a number of elements not present in claims 1-11, 22, or 23. The dependent
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`claims also differ across claim sets. A summary of the grounds presented in each
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`petition is shown in the table below.
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`Ground
`1
`2
`3
`4
`5
`6
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`Ground
`1
`2
`3
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`IPR2024-00528
`Basis References
`§103(a)
`Carlson and Shahine
`§103(a)
`Carlson, Shahine, and Lundy
`§103(a)
`Carlson, Shahine, and Roskind
`§103(a)
`Carlson, Shahine, Lundy, and Roskind
`§103(a)
`Amidon, Walsh, and Shahine
`§103(a)
`Amidon, Walsh, Shahine, and Jones
`IPR2024-00612
`Basis References
`§103(a)
`Amidon and Walsh
`§103(a)
`Amidon, Walsh, and Shahine
`§103(a)
`Amidon, Walsh, and Jones
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`Claims
`1-4, 6-11, 22-23
`1-4, 6-11, 22-23
`5
`5
`1-11, 22-23
`8
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`Claims
`12, 14-21
`13
`20
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`IV. THE BOARD SHOULD EXERCISE ITS DISCRETION TO
`INSTITUTE BOTH PETITIONS.
`The Board should exercise its discretion to institute both petitions for at least
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`three reasons. First, the petitions are not duplicative, challenging different claims
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`with substantially different claim scope, and efficiently address the validity of the
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`’932 patent. Second, the petition in IPR2024-00612 relies on the same prior art
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`presented in IPR2024-00528, minimizing the burden on both the Board and the
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`parties. Third, the length of the claims (which, alone, include almost 1,000 words)
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`accounts for a significant portion of the 14,000 word limit. Two petitions are thus
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`appropriate.
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`Case IPR2024-00528
`U.S. Patent No. 8,249,932
`A. Multiple petitions are required to sufficiently address the
`elements of all claims.
`The ’932 patent has been asserted in a co-pending litigation in the Southern
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`District of New York. See EX1032. The complaint alleges infringement of “at
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`least claims 1-7 and 22 of the ’932 Patent.” EX1032, 40 (emphasis added); see
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`also EX1052, 1 (“At present… claims 1-7 and 22 of the ’932 Patent are alleged to
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`be infringed”). Moreover, in its initial infringement contentions, Patent Owner
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`“expressly reserves the right to amend or supplement its identification of asserted
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`claims … based on further investigation and discovery.” EX1052, 8. Thus, a
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`challenge to all claims of the ’932 patent is appropriate. AliveCor, Inc. v. Apple
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`Inc., IPR2023-00948, Paper 8 at 24 (P.T.A.B. Jan. 9, 2024) (finding “it is not
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`unreasonable for Petitioner to challenge all the claims of the [] patent” where the
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`district-court complaint asserted infringement of “at least claim 1” and the initial
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`infringement contentions “reserved the right to amend its Complaint”).
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`All claims of the ’932 patent are purportedly directed to “presenting targeted
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`advertising in a situational network.” EX1001, Claims 1, 12, 22. Claims 12-21,
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`however, recite multiple, highly-specific elements not present in claims 1-11, 22,
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`and 23. For example, claim 12 recites, among other elements, “personal
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`information aggregators each … assigned an access level according to a role of
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`the respective individual within the situational network,” “creating two or more
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`projections of the nodes of the multi-dimensional personal information network
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`Case IPR2024-00528
`U.S. Patent No. 8,249,932
`based at least in part on the access levels of the individuals corresponding
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`information a [sic] aggregator,” and “providing the information and at least one of
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`a plurality of advertisements to each of the information aggregators based on
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`which of the two or more projections includes the respective personal information
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`aggregator.” Dependent claims 16-18 and 21, which depend from claim 12,
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`similarly recite unique elements not present in other claim sets.
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`Two petitions are therefore required to sufficiently address all elements of
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`different claim sets. Semiconductor Components Industries, LLC v. Greenthread,
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`LLC, IPR2023-01242, Paper 35 at 7 (P.T.A.B. Feb. 21, 2024) (instituting multiple
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`petitions where the petitions “challenge different claims, and those claims appear
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`on the present record to have different claim scope”); Samsung Electronics Co.,
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`Ltd. V. Mojo Mobility Inc., IPR2023-01089, Paper 11 at 26 (P.T.A.B. Jan. 11,
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`2024) (“[W]e find persuasive Petitioner’s reasons for filing two parallel petitions,
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`particularly because the petitions challenge different claims of the [] patent.”).
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`Moreover, the -00528 Petition includes multiple grounds in anticipation of
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`alternative claim interpretations that Patent Owner may present. For example,
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`Patent Owner may argue for interpretations of the phrase “causing an automatic
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`redirection of a web browser application” that require varying degrees of
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`automation (e.g., whether the element restricts user involvement, whether a user
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`click may initiate the “automatic redirection,” etc.). EX1012, 10. The multiple
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`U.S. Patent No. 8,249,932
`grounds of the -00528 Petition address these potential interpretations in different
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`ways. See -00528 Petition, 18-21, 42-49, 65-67; AliveCor, Paper 8 at 24-25.
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`B.
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`The overlap between the prior art presented in the petitions
`minimizes the burden on both Patent Owner and the Board.
`Institution of multiple petitions would not “place a substantial and
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`unnecessary burden on the Board and the patent owner.” CTPG, 59. In addition to
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`the two petitions challenging non-overlapping claim sets, the -00612 Petition
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`presents the same prior art as the -00528 Petition (Amidon, Walsh, Shahine, and
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`Jones). Thus, institution of both petitions would minimize any additional burden on
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`the Board and Patent Owner to analyze the prior art. Mojo Mobility, Paper 11 at
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`26-27. Moreover, the non-overlapping claim sets and overlap in prior art would
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`allow efficient consolidation of the proceedings, or, at a minimum, oral hearing
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`and depositions to be combined. Greenthread, Paper 35 at 8.
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`C. The length of the claims favors institution of both petitions.
`In addition to the differing claim scope across claim sets, the claims of the
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`’932 patent include almost 1,000 words. Similar length was considered by the
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`Board in AliveCor in which the Board explained, “[j]ust reproducing the claims
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`and claim limitations alone, as a Petitioner generally must do for purposes of
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`appropriate analysis, accounts for a significant portion of the required 14,000 word
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`count.” AliveCor, Paper 8 at 24. Two petitions here is thus appropriate to meet
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`Petitioner’s burden under 37 C.F.R. § 42.104(b).
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`Case IPR2024-00528
`U.S. Patent No. 8,249,932
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`Respectfully submitted,
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`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
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`/Michael D. Specht/
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`Michael D. Specht (Reg. No. 54,463)
`Counsel for Petitioner Meta Platforms, Inc.
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`Date: March 4, 2024
`1101 K Street, NW, 10th Floor
`Washington, DC 20005
`(202) 371-2600
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`Case IPR2024-00528
`U.S. Patent No. 8,249,932
`CERTIFICATION OF SERVICE (37 C.F.R. § 42.6(e))
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`I certify that the above-captioned PETITIONER’S NOTICE RANKING
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`PETITIONS FOR INTER PARTES REVIEW OF U.S. PATENT NO.
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`8,249,932 was served in its entirety upon the Patent Owner on March 4, 2024, via
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`FedEx® Express at the following address:
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`HALEY GUILIANO LLP
`75 Broad Street, Suite 1000
`New York, NY 10004
`Patent Owner’s Correspondence Address of Record for U.S. Patent No. 8,249,932
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`Respectfully submitted,
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`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
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`/ Michael D. Specht /
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`Michael D. Specht (Reg. No. 54,463)
`Counsel for Petitioner Meta Platforms, Inc.
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`Date: March 4, 2024
`1101 K Street, NW, 10th Floor
`Washington, DC 20005
`(202) 371-2600
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`21865285
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