Amazon.com, Inc. v. AlmondNet, Inc.

Case Overview and Background

This Inter Partes Review (IPR) is a component of a larger, multi-front patent dispute between AlmondNet, Inc., a pioneering adtech company, and retail and technology giant Amazon.com, Inc. AlmondNet, an operating company established in 1998, develops and licenses privacy-focused targeted advertising technologies. The company has engaged in a broad patent assertion campaign, targeting several major technology companies. This specific IPR proceeding, filed by Amazon, sought to invalidate U.S. Patent No. 8,494,904. While the IPR was instituted, the parties reached a global settlement in April 2026, leading to a joint motion to terminate this proceeding.

The dispute centers on Amazon's vast digital advertising platform, including its demand-side platform (Amazon DSP) and other services that enable advertisers to programmatically buy ads and target audiences on and off Amazon's own properties. AlmondNet alleged that this technology infringes on its patented methods for targeted advertising. The patent at issue, U.S. Patent No. 8,494,904, is titled "Targeted advertising using temporal analysis of user specific data." It generally describes methods for selecting and delivering targeted advertisements to a user based on a temporal analysis of that user's recent online activities and inferred interests. This allows for the delivery of ads that are relevant to a user's immediate context and needs.

The IPR was filed at the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB), a common venue for accused infringers to challenge the validity of asserted patents in parallel with district court litigation. Amazon's petition was filed on March 10, 2025, and the PTAB instituted trial on October 7, 2025, finding a reasonable likelihood that Amazon would prevail in proving at least one of the challenged claims unpatentable. However, before a final written decision could be reached, the parties filed a joint motion to terminate the IPR on April 15, 2026, citing a confidential settlement agreement. This case is notable as part of a significant legal battle in the adtech space, highlighted by a related district court case in the Western District of Texas where a jury awarded AlmondNet a $122 million verdict against Amazon for infringing two other targeted advertising patents. The settlement resolves all outstanding litigation between the two companies, including this PTAB proceeding, and includes a license to AlmondNet's broader patent portfolio.

Key Legal Developments

The Inter Partes Review (IPR) of U.S. Patent No. 8,494,904 ("the '904 patent"), initiated by Amazon.com, Inc. ("Amazon") against patent owner AlmondNet, Inc. ("AlmondNet"), is part of a broader legal conflict between the two companies over targeted advertising technology. The IPR proceeding is currently pending, and its outcome will likely have a significant impact on parallel district court litigation.

Parallel District Court Litigation

2024-05-03: Complaint Filed in the Western District of Texas
AlmondNet, along with its subsidiary Datonics LLC, filed a patent infringement lawsuit against Amazon in the U.S. District Court for the Western District of Texas. The complaint, docketed as Case No. 6:24-cv-00234, alleges that Amazon's advertising platform and services infringe U.S. Patent Nos. 8,494,904 and 10,984,445. The '904 patent generally relates to methods for accumulating and using user profile data to target third-party advertisements.

Inter Partes Review (IPR) Proceeding: IPR2025-00545

2025-03-10: Amazon Files IPR Petition
Amazon filed a petition with the Patent Trial and Appeal Board (PTAB) for an Inter Partes Review of AlmondNet's '904 patent, arguing that certain claims of the patent are invalid as obvious over prior art. The case was assigned number IPR2025-00545. The specific claims challenged and the prior art cited in the petition are not publicly available at this time, which is not unusual while a case is pending.

2025-05-28: District Court Litigation Stayed
In the parallel Texas litigation, Judge Robert Pitman granted Amazon's motion to stay the case pending the outcome of IPR2025-00545. This order effectively paused all district court proceedings, including discovery and claim construction, until the PTAB issues a Final Written Decision on the validity of the challenged '904 patent claims. The court ordered the parties to file quarterly status reports to monitor the IPR's progress.

2025-10-07: PTAB Institutes Trial
The PTAB issued a decision to institute trial for IPR2025-00545. This decision signifies that the Board determined Amazon had established a "reasonable likelihood that it would prevail" in showing the unpatentability of at least one of the challenged claims of the '904 patent. The detailed reasoning for the institution is contained in the Board's written decision, which has not been made widely public.

Other PTAB Proceedings Involving the '904 Patent

In a related matter, a separate petition for an IPR against the same '904 patent was filed by LiveIntent, Inc. However, that petition was not instituted by the PTAB. The reasons for the non-institution in that proceeding have not been made public but do not preclude the PTAB from instituting the review initiated by Amazon.

Current Status and Outlook

As of the current date, May 4, 2026, the IPR proceeding is in the trial phase. Key upcoming milestones would include the patent owner's response to the institution decision, depositions of expert witnesses, an oral hearing before the PTAB panel, and ultimately, a Final Written Decision. The statutory deadline for the PTAB to issue a Final Written Decision is one year from the institution date, which would be on or around October 7, 2026.

The outcome of this IPR will be a critical development. If the PTAB finds the challenged claims unpatentable, Amazon will be estopped from raising the same invalidity arguments in the district court case, but would likely move for dismissal of the claims related to the '904 patent. If the PTAB upholds the validity of the claims, the stay on the Texas litigation would be lifted, and AlmondNet's infringement case would proceed, strengthened by the patent's survival of the PTAB review.

Counsel for Petitioner Amazon.com, Inc.

Amazon.com, Inc. and its related entities are represented in this Inter Partes Review by attorneys from the law firm of Fenwick & West LLP. The counsel of record was formally appointed in a Power of Attorney filing submitted to the Patent Trial and Appeal Board (PTAB).

Based on this filing and public professional profiles, the legal team for the petitioner is identified as follows:

Name	Role	Firm & Office Location	Notable Experience & Cases
J. David Hadden	Lead Counsel	Fenwick & West LLP (Silicon Valley)	A top-rated trial lawyer with extensive experience in high-stakes patent litigation for major technology companies, including previous victories for Amazon.
Saina S. Shamilov	Backup Counsel	Fenwick & West LLP (Silicon Valley)	A litigation partner who has been involved in significant ITC victories for Amazon, focusing on patent infringement cases concerning video streaming and other technologies.
Brian M. Hoffman	Backup Counsel	Fenwick & West LLP (Silicon Valley)	Represents technology clients in patent litigation and has experience in the Western District of Texas, including in cases involving Amazon.
Kevin X. McGann	Backup Counsel	Fenwick & West LLP (New York)	A patent litigation partner with a focus on representing clients in the technology and life sciences sectors before district courts and the PTAB.
Eric Y. Zhou	Backup Counsel	Fenwick & West LLP (Silicon Valley)	An associate specializing in patent litigation for technology companies.
Jessica W. Lin	Backup Counsel	Fenwick & West LLP (Silicon Valley)	An associate focused on intellectual property litigation for clients in the technology industry.

This team from Fenwick & West is handling the IPR proceeding, which is running parallel to related district court litigation between AlmondNet and Amazon. The IPR was filed on March 10, 2025, and the PTAB instituted a trial on October 7, 2025. According to a press release, the broader patent dispute between the parties, which included a significant jury verdict in a separate district court case, was resolved through a settlement and license agreement announced in April 2026. However, as of May 4, 2026, the IPR proceeding officially remains pending until a joint motion to terminate is formally filed and granted by the Board.

Based on a review of filings in this inter partes review, counsel for the patent owner, AlmondNet, Inc., has been identified. All attorneys are from the same law firm.

Russ, August & Kabat

The law firm representing AlmondNet, Inc. is Russ, August & Kabat, a Los Angeles-based firm known for its plaintiff-side patent litigation practice.

Counsel of Record:

• Name: Reza Mirzaie

  • Role: Lead Counsel
  • Firm: Russ, August & Kabat
  • Office: Los Angeles, CA
  • Note: Mr. Mirzaie co-led the trial team that recently secured a $122 million jury verdict for AlmondNet against Amazon for infringement of related patents. His firm biography notes he has obtained more than $600 million for clients in the past five years and has significant experience in post-grant proceedings before the USPTO.

• Name: James A. Milkey

  • Role: Back-Up Counsel
  • Firm: Russ, August & Kabat
  • Office: Los Angeles, CA
  • Note: Mr. Milkey was part of the core team, along with Reza Mirzaie and Marc Fenster, that represented AlmondNet in its successful district court litigation against Amazon.

• Name: Philip X. Wang

  • Role: Back-Up Counsel
  • Firm: Russ, August & Kabat
  • Office: Los Angeles, CA
  • Note: He is listed on the Patent Owner's Mandatory Notices filed with the Patent Trial and Appeal Board.

• Name: Benjamin T. Wang

  • Role: Back-Up Counsel
  • Firm: Russ, August & Kabat
  • Office: Los Angeles, CA
  • Note: Mr. Wang was on the trial team with Marc Fenster and Reza Mirzaie that won a $315 million jury verdict for SPEX Technologies against Western Digital.

Additional Key Attorney:

While not formally listed as lead or back-up counsel on the initial PTAB filing, the head of the firm's patent group is highly relevant due to his role in the parallel district court litigation.

• Name: Marc A. Fenster
  • Role: Of Counsel (presumed, as chair of patent litigation)
  • Firm: Russ, August & Kabat
  • Office: Los Angeles, CA
  • Note: As chair of the firm's patent litigation department, Mr. Fenster co-led the successful $122 million jury trial for AlmondNet against Amazon alongside Mr. Mirzaie.