Obviousness

Obviousness Analysis of U.S. Patent 10,134,054 under 35 U.S.C. § 103

Report Date: April 29, 2026

This analysis evaluates whether the invention claimed in U.S. Patent No. 10,134,054 ("the '054 patent") would have been obvious to a person having ordinary skill in the art (PHOSITA) at the time of the invention, in light of the prior art. The legal standard for obviousness is defined in 35 U.S.C. § 103, which prohibits the patenting of an invention if the differences between the invention and the prior art are such that the invention as a whole would have been obvious to a PHOSITA. This analysis considers combinations of the prior art references cited during the patent's prosecution.

Level of Ordinary Skill in the Art

A person having ordinary skill in the art (PHOSITA) at the time of the invention (priority date June 16, 2006) would be a software engineer or computer scientist with several years of experience in the field of internet technologies, specifically in web application development, server-side programming, and the architecture of online advertising systems. This individual would be familiar with HTTP protocols (including cookies and redirects), client-server architecture, database management, and the business models of ad networks and behavioral targeting prevalent in the early 2000s.

Analysis of Claimed Subject Matter

The independent claims (1, 6, and 11) of the '054 patent describe a system and method with the following key features:

1. Two-Entity Architecture: A first computer system (controlled by a "first entity") and a second computer system (not controlled by the first entity).
2. Privacy-Sensitive Tagging: The first system causes the second system to tag a user's device. Crucially, this is done without transferring the user's profile information to the second system. The tag simply marks the user as someone for whom the first entity has data.
3. Transfer of a "Condition": The first system sends a specific condition (e.g., a price cap, a time limit) to the second system related to the tagged user.
4. Conditional Redirection: At a later time, when the user visits a property controlled by the second system, the second system checks if the condition is met.
5. Centralized Ad Serving: If the condition is met, the second system redirects the user's device back to the first system, which then uses its privately-held profile information to select and serve a targeted advertisement.

The core of the claimed invention lies in the specific, privacy-preserving, and conditional interaction between two separate advertising entities.

Obviousness Combination 1: Schwartz ('007) in view of Fay ('851)

A strong argument for obviousness can be made by combining the teachings of U.S. Patent Application No. 2005/0198007 (Schwartz) and U.S. Patent No. 7,133,851 (Fay).

• Schwartz ('007) provides the foundational two-entity architecture. It explicitly describes a "profile data broker" (the first entity) that centrally manages user profiles and interacts with "data consumers" like advertisers or publishers (the second entity). Schwartz teaches the use of a user ID to anonymously identify and track users, thereby enabling targeted advertising without transferring the sensitive underlying profile data to the data consumer. This directly teaches limitations 1 and 2 of the '054 claims.

• Fay ('851), assigned to DoubleClick, teaches the standard industry practice for implementing targeted advertising at the time. Fay describes in detail the use of cookies (a form of "tag") and HTTP redirects as the fundamental technical mechanisms for tracking a user across different websites within an ad network and serving them targeted ads. While Fay describes a single, integrated system, it provides the well-understood "how-to" for the conceptual system described by Schwartz.

Motivation to Combine: A PHOSITA tasked with building the privacy-sensitive data brokering system of Schwartz would have been motivated to use the standard, proven, and widely-deployed web technologies described by Fay. To enable the interaction between Schwartz's "broker" and "data consumer," the most logical and efficient method available was the cookie-and-redirect mechanism that powered the entire online advertising industry, as exemplified by Fay. There was no need to invent a new communication protocol when a universal one already existed.

Rendering the "Condition" and "Redirection" Obvious:
The combination of Schwartz and Fay teaches the two-entity system, the privacy-sensitive tagging, and the use of redirects. The final inventive step claimed in '054 is the transfer of a "condition" that the second system checks before redirecting back to the first.

This step would have been an obvious, economically-driven modification. The background of the '054 patent itself establishes that the invention is meant to solve an economic problem: ensuring that the revenue from an ad placement exceeds the cost of the ad space. In the system proposed by combining Schwartz and Fay, the first entity (broker) would not want the second entity (ad network) to redirect a user if the cost of the ad impression on the network's site is higher than what the broker can earn from that user's profile.

Therefore, a PHOSITA would be motivated by basic business logic to implement a check. The most direct way to do this is for the first system to provide the second system with its price limit or bid for that user—this is the "condition." The second system would then only perform the redirect (i.e., offer the ad impression) if the condition is met (i.e., the bid is high enough for that ad space). This is not an inventive leap, but rather a predictable feature necessary for any real-world commercial implementation of such a two-party advertising system. It is analogous to a simple price check or qualification step before initiating a transaction.

Obviousness Combination 2: Ambrose ('441) in view of Fay ('851)

An alternative but similar argument can be made using U.S. Patent No. 6,925,441 (Ambrose) as the base reference.

• Ambrose ('441) also teaches a distributed ad network with a "targeting service" (the first entity) that holds user profiles, and a publisher's ad server (the second entity). Ambrose explicitly states that the targeting service can provide a targeting segment ID for a user without revealing the underlying profile data. This again teaches the core two-entity, privacy-sensitive architecture.

• Fay ('851) provides the same common-knowledge implementation details (cookies, redirects) as in the previous combination.

Motivation to Combine and Obviousness of the "Condition":
The motivation to combine Ambrose and Fay is identical to the motivation for combining Schwartz and Fay: to implement Ambrose's conceptual architecture using the standard tools of the trade. The argument for the obviousness of adding a "condition" is also the same. The interaction between Ambrose's "targeting service" and the publisher's ad server is an economic one. A PHOSITA would have been motivated to add a conditional check based on price to prevent unprofitable ad calls, making the transfer of a price condition and the subsequent conditional redirect an obvious optimization for business efficacy.

Conclusion

The independent claims of U.S. Patent 10,134,054 appear to be obvious under 35 U.S.C. § 103. The prior art, particularly Schwartz or Ambrose, establishes the foundational concept of a two-entity advertising architecture that separates the profile-holding entity from the ad space controller for privacy reasons. Fay provides the well-known and standard technical implementation for such systems using cookies and redirects. The final element—the transfer and checking of a "condition" before redirecting—is not an inventive step but rather an obvious, predictable business-driven optimization that a PHOSITA would have been motivated to include to ensure the economic viability of the system. Therefore, the combination of known elements from the prior art would have rendered the claimed invention obvious.