AlmondNet, Inc. et al. v. Yahoo! Inc.

Now let me dig into the '249 patent specifically and the outcome of the Delaware case.

Let me verify the '249 patent's title/claims and the CBM petition history.

Case Overview — AlmondNet, Inc. et al. v. Yahoo! Inc., No. 1:16-cv-01557-ILG-SMG (E.D.N.Y.)

The parties. The plaintiff side is a three-entity corporate family built around inventor Roy Shkedi's targeted-advertising portfolio. AlmondNet, Inc. (Delaware corp., principal place of business in Long Island City, Queens) was founded in 1998 as an early behavioral-targeting ("BT") company — its own specifications name AlmondNet alongside Tacoda and RevenueScience as the archetypal BT firms — and now describes itself as "focused on R&D and the licensing of its patents." Its two co-plaintiffs are majority-owned operating subsidiaries: Datonics, LLC, which sells granular search/purchase-intent/life-stage "data segments" to ad networks, exchanges, DSPs and publishers, and Intent IQ, LLC, which sells cross-device identity and attribution (its "Dynamic Device Map"). That structure makes this a hybrid NPE/operating-company suit rather than a pure PAE assertion: the parent monetizes the portfolio, while the subsidiaries actually ship products and supply the operating-company narrative. Defendant Yahoo! Inc. (Delaware corp., Sunnyvale, CA) was the global web portal and ad-tech provider; it was substituted in Delaware by Oath Holdings Inc., the Verizon subsidiary that absorbed Yahoo after the June 2017 acquisition. Plaintiffs were represented by Susman Godfrey (W. Christopher Carmody, Ian B. Crosby) with Louis J. Hoffman, P.C.; Yahoo by Quinn Emanuel (Charles K. Verhoeven, Jennifer A. Kash, Brian E. Mack, Patrick D. Curran).

The accused technology and the patents. The First Amended Complaint targets Yahoo's programmatic advertising stack — Yahoo Ad Exchange (YAX), launched January 2014, which let exchange buyers target audiences drawn from multiple third-party data providers on Yahoo and non-Yahoo sites; Yahoo Audience Ads, which extended targeting on- and off-network; and BrightRoll, the video ad exchange/DSP Yahoo bought for $640 million in November 2014 and which began ingesting Yahoo audience data in March 2015. The E.D.N.Y. action ultimately asserted eleven Shkedi patents grouped by plaintiffs into four families, but the patent at the center of this record — and the only one carried forward as "at issue" in the metadata — is U.S. Patent No. 8,775,249, "Method, computer system, and stored program for accumulating descriptive profile data along with source information for use in targeting third-party advertisements" (issued July 8, 2014; filed July 23, 2013; priority chain back to Israeli application 133,489, filed Dec. 13, 1999). In one line: the '249 claims a server that receives a partial profile about a visitor from an unaffiliated third party's server via automatic URL redirection, merges it into a stored profile, and — critically — keeps a record of which third party contributed which attribute, so that use of an attribute in targeting an ad can trigger compensation to its source. It is the anchor of what plaintiffs call the "DPC" (Descriptive Profile Consolidation) family, all with a June 14, 2000 effective filing date. AlmondNet asserted claims 1–6, 9–10, 11–16, 19–20 and 21–25 (all three independents — 1, 11, 21 — plus dependents). The other families, for orientation: OTA ("added-revenue off-site targeted internet advertising," '586 and '639); MPS ("media properties selection … based on expected profit from profile-based ad delivery," '146, '139 and '089); the rest of the DPC group ('307, '582, '574, '904); and a CDA cross-device patent ('398).

Procedural posture, venue, and why it matters. Filed March 30, 2016 in the Brooklyn office of the E.D.N.Y., the case landed with Senior Judge I. Leo Glasser and Magistrate Judge Steven M. Gold and was flagged as Patent Pilot Project–eligible. Yahoo moved to dismiss in July 2016 (D.I. 22) and withdrew the motion in December 2016 (D.I. 43) after AlmondNet served supplemental infringement contentions, reserving rights to strike those contentions later. The case then became a leading vehicle for the post-TC Heartland venue fight: Yahoo moved under Rule 12(b)(3) in June 2017; Judge Glasser denied it as waived, holding that TC Heartland merely reaffirmed Stonite/Fourco and did not change the law; the Federal Circuit denied a first mandamus petition and told Yahoo to seek reconsideration (In re Yahoo Holdings Inc., 705 F. App'x 955 (Fed. Cir. 2017)); Judge Glasser denied reconsideration (AlmondNet, Inc. v. Yahoo! Inc., 2018 WL 3998021 (E.D.N.Y. Aug. 21, 2018) — an opinion that pointedly declined to follow In re Micron and closed by invoking "the rule of res ipsa loquitur"); and on the second petition the Federal Circuit granted mandamus in In re Oath Holdings Inc., 908 F.3d 1301 (Fed. Cir. Nov. 14, 2018), holding that Micron controls, that Federal Circuit law governs patent-venue waiver, and that under § 1406(a) the district court "must either dismiss the case or transfer" it. Judge Glasser complied on December 5–6, 2018 (D.I. 129), transferring to the District of Delaware because Yahoo was chartered there. Venue thus matters twice over: E.D.N.Y. was plaintiffs' home forum (AlmondNet's Long Island City headquarters), and the transfer converted a plaintiff-friendly home-court case into a Delaware case before Judge Leonard P. Stark, No. 1:19-cv-00247-LPS, where Oath was formally substituted in February 2019 and the entire action was dismissed with prejudice by stipulation on March 4, 2019, each side bearing its own costs and fees (D.I. 134). The case's notability is threefold. First, In re Oath Holdings is one of the most-cited Federal Circuit decisions on TC Heartland waiver/forfeiture — and the underlying E.D.N.Y. opinion is a frequently taught example of a district judge refusing to follow a controlling circuit precedent. Second, it illustrates the CBM-era defense playbook: Yahoo filed a wave of covered business method review petitions in May 2017 (e.g., CBM2017-00046 and -00047 against the '586 and '639 patents, and CBM2017-00050 against the '249), and AlmondNet's counsel publicly credits the outcome to "defeating eight covered business method review petitions and obtaining transfer to District of Delaware in lieu of dismissal following … TC Heartland." Third, on market context: this was an early-1999/2000-priority portfolio being asserted against the modern programmatic stack — ad exchanges, DMPs, third-party data marketplaces and addressable video — precisely the businesses the '249's "who contributed which attribute" claim was written to reach, which is why the same patent family has since been asserted across the industry (Meta, Amazon, Roku, LinkedIn, Samsung, Microsoft, FreeWheel/Comcast, Viant), generating 2024–25 IPRs against the '249 (FreeWheel IPR2024-00416/-00417 and a third; Viant IPR2025-00126).

Sourcing notes and caveats. Party descriptions, accused products, the BrightRoll $640M figure and the DPC/OTA/MPS/CDA grouping come from the First Amended Complaint and AlmondNet's Rule 3-1 infringement contentions (reproduced in later AlmondNet complaints, e.g., D. Del. 1:19-cv-00247 and W.D. Tex. 6:21-cv-00898, and in the mandamus appendix posted at patentlyo.com). The docket chronology and D.I. numbers are from the E.D.N.Y. and D. Del. dockets as mirrored on Justia/Docket Alarm (D.I. 22, 40, 43, 97, 101, 113, 118, 129; D. Del. D.I. 130, 133, 134). The "eight CBM petitions" figure is from Susman Godfrey's published attorney biography of

Good foundation. Now let me dig into the venue fight, PTAB proceedings, and the dismissal.

AlmondNet v. Yahoo! / Oath Holdings — Legal Developments & Outcome

Bottom line: This case never reached claim construction, summary judgment, or trial. It was consumed almost entirely by a two‑year venue war under TC Heartland that ended with the Federal Circuit granting mandamus against Judge Glasser and ordering dismissal or transfer. The case was transferred to D. Del. on 2018‑12‑06, docketed there as AlmondNet, Inc. et al. v. Oath Holdings Inc., No. 1:19‑cv‑00247‑LPS on 2019‑02‑06, and then stipulated to dismissal with prejudice on 2019‑03‑04 (D. Del. D.I. 134). Nine months of Yahoo‑filed CBM petitions at the PTAB produced no instituted trials on the asserted patents, so the Board had no effect on the merits.

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1. Chronology

I'll research the docket and counsel appearances for this case.

Now let me pull the actual docket sheets to confirm appearances and dates.

Let me get the full transferred docket sheet and confirm each appearance entry, plus check for any local counsel or in-house appearances.

Counsel of Record for the Defendant — Summary

Across both phases of this case (E.D.N.Y. No. 16-cv-1557-ILG-SMG, and the Delaware transferee No. 1:19-cv-00247-LPS, where the defendant was renamed Oath Holdings Inc.), the defense was handled entirely by Quinn Emanuel Urquhart & Sullivan LLP. No in-house Yahoo/Oath attorney and no separate "local counsel" firm appears in the E.D.N.Y. record — Quinn's own New York office filled that role.

E.D.N.Y. phase (2016–2018) — Yahoo! Inc.

Source: appearance block on the E.D.N.Y. filings reproduced in the transferred docket sheet, D. Del. D.I. 130 (Feb. 6, 2019), pp. 1–4; Dkts. 23, 43, 72; Fed. Cir. mandamus petition, Certificate of Interest ¶ 4 (naming "Charles K. Verhoeven, Patrick D. Curran, Jennifer Kash, Brian E. Mack, John T. McKee, Miles D. Freeman").

Delaware transferee phase (Feb. 2019) — Oath Holdings Inc.

The same Quinn Emanuel team carried over. The Delaware clerk's Feb. 6, 2019 transfer letter (D. Del. D.I. 131) was addressed to "John T. McKee, Miles Davenport Freeman, Patrick D. Curran, Quinn Emanuel Urquhart & Sullivan, 51 Madison Avenue (22nd Floor), New York, NY 10010," and directed the party to associate Delaware counsel under D. Del. LR 83.5(d) by March 8, 2019. Caveat: I could not verify from available sources which Delaware firm ultimately entered a local appearance for Oath in No. 1:19-cv-00247-LPS — that case was subsequently transferred out of Delaware, and the public docket excerpts I retrieved do not show the local-counsel entry. I have not named a firm to avoid guessing.

Explicitly unverified / absent from the record

• In-house counsel: No Yahoo! Inc. or Oath Holdings in-house attorney appears as counsel of record in the E.D.N.Y. docket. If one appeared, it is not reflected in the public filings I reviewed.
• Sealed material: No defense filings in this case appear to have been sealed on counsel-identity grounds; the appearances above come from publicly filed captions and signature blocks.
• Pre-appearance period: Yahoo's first defense filing was the July 11, 2016 motion to dismiss (Dkt. 22/23), so no defense counsel of record existed between the March 30, 2016 complaint and that date.
• Role labels ("lead," "of counsel") are my characterization based on docket "LEAD ATTORNEY" flags, signature-block ordering, and who argued/signed; the E.D.N.Y. docket does not formally designate lead vs. of counsel.

Why this team matters to the case history

Verhoeven, Curran, Kash and Mack were the architects of Yahoo's unsuccessful TC Heartland venue strategy — the July 2017 motion to dismiss for improper venue (Dkt. 70), denied from the bench on Sept. 1, 2017 (Dkt. 82) and by order Sept. 7, 2017 (Dkt. 85); the Oct. 20, 2017 Federal Circuit mandamus petition in In re Yahoo Holdings, Inc., Misc. No. 18-103; and the motion for reconsideration denied Aug. 21, 2018 (Dkt. 118) — before Judge Glasser ordered transfer to Delaware on Dec. 5, 2018 (Dkt. 129).