Yahoo! Inc. v. AlmondNet, Inc.

Case Overview and Background

Yahoo! Inc., a major web services provider, filed a petition for a Covered Business Method (CBM) review against a patent held by AlmondNet, Inc., a company that develops and licenses technology for targeted advertising. This proceeding took place before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office. AlmondNet and its related entities operate as technology developers and licensors, and have been characterized by some as a patent assertion entity (PAE). The dispute centered on Yahoo's advertising systems, which AlmondNet alleged infringed its patent covering methods for targeting online ads based on user interests.

The patent at issue was U.S. Patent No. 8,494,904, titled "Targeting of Content and Advertisements to Users of a Network." The '904 patent generally describes a method for creating user profiles based on their online behavior (such as websites visited and search queries) and then using those profiles to deliver targeted ads and content from various sources. Yahoo sought to invalidate the patent's claims, arguing they were directed to an abstract idea and thus ineligible for patent protection under 35 U.S.C. § 101. This CBM review was strategically filed in response to a district court infringement lawsuit AlmondNet had previously brought against Yahoo.

The case is notable as an example of a technology operating company using the now-defunct CBM review process to challenge the validity of a business method patent asserted against it. CBM reviews were a specific type of post-grant proceeding created by the America Invents Act, designed to be a more efficient way to challenge patents related to financial products or services. The PTAB's ultimate decision not to institute a trial in CBM2017-00051 was a significant victory for the patent owner, AlmondNet. In its decision dated November 16, 2017, the Board determined that Yahoo had not shown it was more likely than not that at least one of the challenged claims was unpatentable. This outcome allowed AlmondNet's infringement claims to proceed in district court without the parallel threat of PTAB invalidation.

Key Legal Developments and Outcome

This Covered Business Method (CBM) Review was a short-lived proceeding at the Patent Trial and Appeal Board (PTAB) that concluded with a victory for the patent owner, AlmondNet, Inc., as the Board declined to institute a trial.

Parallel District Court Litigation

The CBM petition was filed in response to a patent infringement lawsuit brought by AlmondNet and its related companies against Yahoo! Inc. in the U.S. District Court for the Eastern District of New York. The lawsuit, filed in March 2016, accused Yahoo's advertising systems of infringing several AlmondNet patents, including the 8,494,904 patent.

This district court case had its own complex procedural history. After the Supreme Court's 2017 decision in TC Heartland LLC v. Kraft Foods Grp. Brands LLC, which altered the landscape for patent venue, Yahoo (by then operating as Oath Holdings Inc.) moved to dismiss or transfer the case, arguing that venue in the Eastern District of New York was improper. The district court initially denied the motion, leading Yahoo/Oath to seek a writ of mandamus from the Federal Circuit. The appellate court ultimately directed the district court to reconsider, and the case was later transferred.

The CBM Petition and Non-Institution

In a move to counter the district court litigation, Yahoo filed a petition for a CBM review of U.S. Patent No. 8,494,904 on 2017-05-15. The petition, docketed as CBM2017-00051, argued that the patent's claims were invalid because they were directed to an abstract idea and/or were anticipated or rendered obvious by prior art. This was one of several CBM petitions Yahoo filed against AlmondNet's patents around the same time.

A CBM review is a specific type of post-grant proceeding that was available for patents claiming a method or apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service. Yahoo's petition presumably argued that the '904 patent, which relates to targeted advertising, fell into this category.

AlmondNet, as the patent owner, would have filed a Preliminary Response arguing against the institution of the CBM review. These responses typically attack the petitioner's arguments on the merits and can also challenge whether the patent is eligible for CBM review in the first place.

The key development and final outcome of this PTAB proceeding occurred on 2017-11-28, when the PTAB issued its Decision on the Petition, denying institution of the CBM review. This "Not Instituted" status means the Board determined that Yahoo had not met the statutory threshold of showing that it was more likely than not that at least one of the challenged claims was unpatentable.

The specific reasons for the denial are contained within the Board's written decision. Common reasons for non-institution include the petitioner failing to present sufficiently persuasive invalidity arguments, or the Board determining that the challenged patent is not a "covered business method patent" as defined by the statute. Without the full text of the decision, the precise rationale is not publicly available in the search results.

This outcome was a significant victory for AlmondNet, as it prevented a trial at the PTAB that could have invalidated the '904 patent. The patent remained valid and enforceable, and the parallel district court litigation could proceed without the cloud of a concurrent PTAB trial on the same patent.

I'll search for press coverage of this case from multiple angles.

Let me search more specifically for press and trade coverage of this dispute.

Press and Analysis Coverage

Per the task rules, I searched multiple angles (case caption, "Yahoo"/"AlmondNet," the '904 patent number, and the related district court and Amazon litigations). The honest bottom line: there is essentially no dedicated editorial press coverage of CBM2017-00051 itself. The proceeding appears only in docket aggregators (Docket Alarm), primary PTAB/court documents, and routine petition-compilation trade items — not in Reuters, Bloomberg Law, Law360, Ars Technica, The Verge, IPWatchdog, or Patently-O as a standalone story, as far as my searches could establish. The closest contemporaneous "coverage" is a routine roundup: the National Law Review "PTO Litigation Report" dated May 16, 2017 simply listed the May 15, 2017 petition under "New CBM Review Petitions," identifying Yahoo! Inc. as petitioner, AlmondNet, Inc. as patent owner, and Patent No. 8,494,904. That is a filing notice, not analysis, and it says nothing about the merits or the later denial.

Coverage of the broader AlmondNet–Yahoo dispute was somewhat more substantial, but it centered on the district court venue fight, not the CBM. The New York Law Journal ran a case digest entry ("Denial of Motion to Dismiss Patent Infringement Case for Improper Venue Not Reconsidered," AlmondNet, Inc. v. Yahoo! Inc., 16-CV-1557, published Aug. 27, 2018) in its Law.com case digests, reflecting press attention to the TC Heartland venue dispute and Federal Circuit mandamus proceedings (In re Oath Holdings Inc.) rather than to the parallel PTAB petitions. This is consistent with the fact that the CBMs were a litigation tactic ancillary to the EDNY infringement suit, and were not themselves treated as newsworthy.

The '904 patent and the wider AlmondNet portfolio drew real press attention only later, through other defendants. Law360 (Adam Lidgett, Jan. 31, 2023) reported that the PTAB "shot down Microsoft's request to invalidate claims of an AlmondNet Inc. targeted advertising patent," using its § 325(d) discretion — the same portfolio-defense pattern seen in the Yahoo CBMs, though the article concerns Microsoft, not CBM2017-00051. IAM (Nisha Shetty, Aug. 15, 2024) profiled AlmondNet's $122 million Amazon verdict and CEO Roy Shkedi's account of the company's history and licensing deals (Google, etc.); I located this article only as reproduced in a PTAB exhibit, not the original IAM URL, so treat that link as a reprint rather than the publisher's page. RPX (Jan. 12, 2025) ranked AlmondNet v. Amazon ninth among 2024's top patent damages awards at $121.95M (later $136.6M with interest), and explicitly flagged the Alice/conventionality issue tried to the jury — again a different case from this CBM.

Where accounts go beyond the court record, it is almost entirely in party-supplied statements and advocacy, not independent reporting. AlmondNet's own litigation correspondence (quoted in a later Amazon complaint exhibit, e.g., Docket Alarm) characterizes the Yahoo episode as "AlmondNet Group's defeat of every one of the challenges," after which "Verizon agreed to settle the litigation, and Oath obtained a license to the AlmondNet Group patent portfolio" — a self-serving framing that no neutral outlet I found independently verified. The only press-release-style account is GlobeNewswire (Apr. 7, 2026), an AlmondNet-issued statement about the Amazon settlement that does not mention CBM2017-00051 by name.

One discrepancy to flag against the previously generated sections: the earlier "Key legal developments" text gave the institution decision date as "2017-11-28" in one place and "November 16, 2017" in the overview. The PTAB/docket record (Paper 10, entered Nov. 28, 2017, per Docket Alarm) supports Nov. 28, 2017, so the "Nov. 16" reference appears to be an error. I also found no press reporting at all on the actual rationale, which the docket records show was a threshold CBM-eligibility ruling — the Board denied institution because "Petitioner has not met its burden of showing that the '904 patent is eligible for the transitional covered business method patent review program" (quoted in a later petition at PTACTS) — rather than a merits determination on § 101. That distinction was not covered by any news outlet I located; it comes from the primary documents.

Sources

• CBM2017-00051, No. 10 Institution Decision - Trial Instituted Document (P.T.A.B. Nov. 28, 2017) - CBM2017-00051, No
• A. Background
• Yahoo! Inc. v. AlmondNet, Inc., CBM2017-00051 (P.T.A.B.) - Track Docket
• 90. As discussed in more detail below, I understand that the '904 patent was the subject of a petition for CBM review filed by t...
• Docket Alarm | Litigation Outcomes, Delivered - - All Courts
• UNITED STATES PATENT AND TRADEMARK OFFICE
• Disclaimer
• - AlmondNet, Inc
• PTO Litigation Report - May 16, 2017
• amount to significantly more on its own (e
• IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF NEW YORK
• UNITED STATES PATENT AND TRADEMARK OFFICE

Counsel for Petitioner Yahoo! Inc.

Based on filings in the related district court litigation and a subsequent appeal to the U.S. Court of Appeals for the Federal Circuit, counsel for petitioner Yahoo! Inc. was from the law firm of Quinn Emanuel Urquhart & Sullivan, LLP. The specific attorneys who represented Yahoo (later Oath Holdings Inc.) are listed below. While direct docket records for the PTAB proceeding are not readily available through public web search, a Federal Circuit opinion explicitly identifies the counsel representing Yahoo in the dispute with AlmondNet.

Law Firm: Quinn Emanuel Urquhart & Sullivan, LLP

• Charles K. Verhoeven (Lead Counsel)

  • Firm & Office: Quinn Emanuel Urquhart & Sullivan, LLP; San Francisco, CA.
  • Notable Experience: Verhoeven is a nationally recognized trial lawyer with extensive experience in high-stakes patent litigation, having represented major technology companies like Google, Samsung, and HTC in landmark cases.

• Miles Davenport Freeman (Of Counsel)

  • Firm & Office: Quinn Emanuel Urquhart & Sullivan, LLP; Los Angeles, CA.
  • Notable Experience: Freeman's practice focuses on intellectual property litigation, and he has been involved in numerous patent disputes for technology clients.

• Patrick D. Curran (Of Counsel)

  • Firm & Office: Quinn Emanuel Urquhart & Sullivan, LLP; New York, NY.
  • Notable Experience: Curran has experience in complex commercial litigation, including intellectual property matters for various technology and financial service companies.

• John Thomas McKee (Of Counsel)

  • Firm & Office: Quinn Emanuel Urquhart & Sullivan, LLP; New York, NY.
  • Notable Experience: McKee's practice includes intellectual property and complex commercial litigation, representing clients in the technology and software sectors.

This information is derived from the appellate case In re: Oath Holdings Inc., 908 F.3d 1301 (Fed. Cir. 2018), which directly arose from the district court litigation that prompted this CBM review. That filing lists Charles K. Verhoeven as lead counsel and identifies Freeman, Curran, and McKee as also representing Oath (Yahoo).

Counsel for Defendant (Patent Owner)

While the specific "Mandatory Notices" document for CBM2017-00051 was not located through web searches, counsel for AlmondNet, Inc. is identified based on their consistent representation of the company in related district court litigations and subsequent PTAB proceedings involving the same patent family. The attorneys are from the Los Angeles office of Russ August & Kabat, a firm known for representing patent holders.

• Name: Reza Mirzaie

  • Role: Lead Counsel (inferred)
  • Firm: Russ August & Kabat, Los Angeles, CA
  • Noteworthy Experience: Mirzaie, Co-Chair of the firm's patent infringement department, is a registered patent attorney who has led numerous successful post-grant matters before the USPTO and has obtained over $600 million for clients, including a significant jury verdict for AlmondNet against Amazon.

• Name: Marc A. Fenster

  • Role: Of Counsel (inferred)
  • Firm: Russ August & Kabat, Los Angeles, CA
  • Noteworthy Experience: As chair of the Patent Litigation department he founded at the firm, Fenster is a high-profile trial lawyer who has built a nationally recognized plaintiff-side patent litigation practice and secured a notable victory for Core Wireless against Apple.

• Name: James A. Milkey

  • Role: Backup Counsel (inferred)
  • Firm: Russ August & Kabat, Los Angeles, CA
  • Noteworthy Experience: Milkey is an intellectual property litigation partner and registered patent attorney with extensive experience in federal court, the International Trade Commission, and numerous post-grant proceedings before the PTAB.