Invalidity dossier
US 10321198
Systems and methods for dealing with online activity based on delivery of a television advertisement
Current assignee: Intent IQ, LLC
Added 9/28/2026, 9:04:16 PM
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Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
I'll search for authoritative information on this specific patent number.
Let me check for any Federal Circuit activity and confirm the current claim set.
Let me get the actual claim text and check that CAFC docket.
US Patent 10,321,198 B2 — Summary
Scope note on sources: The patent text supplied to me is the Google Patents full-text page for US10321198B2, but the excerpt ends mid-way through the specification's "Definitions" section (at the Central Ad Server definition). The claim set itself is not in the supplied text, and my searches did not return verbatim claim language. Everything below about claims is therefore flagged as lower-confidence and partly drawn from secondary sources (a third-party litigation-analysis page). I could not retrieve the literal claim text from an authoritative source within this session, so I will not fabricate claim language.
Date note: Your prompt states today's date is April 26, 2026, while the system date and the patent-page fetch timestamp are 2026-09-28. The docket item below (filed 04/20/26) is consistent with either.
Bibliographic data (high confidence)
| Field | Value |
|---|---|
| Patent number | US 10,321,198 B2 |
| Title | Systems and methods for dealing with online activity based on delivery of a television advertisement |
| Application no. | 14/089,645 (Conf. No. 9960) |
| Filing date | November 25, 2013 |
| Issue date | June 11, 2019 |
| Earliest priority date | December 31, 2007 |
| Inventors | Roy Shkedi (Forest Hills, NY); Ronen Shlomo (Devora, IL) |
| Applicant / Assignee | Intent IQ, LLC, New York, NY. Original assignee Intent IQ, LLC; Google Patents also records an assignment to/from AlmondNet, Inc. (Jan. 24, 2014). Records show Louis J. Hoffman as attorney; correspondence address later changed to Intent IQ, LLC, Long Island City, NY. |
| Pre-grant publication | US 2014/0082664 A1 (March 20, 2014) |
| Claims / drawings | 33 claims, 15 drawing sheets |
| Examiner / agent | Primary Examiner Kenneth Bartley; Attorneys Louis J. Hoffman and David S. Alavi |
| Classifications | H04N 7/16; G06Q 30/02; CPC H04N 21/6175, 21/4722, 21/6125, 21/812, 7/163, G06Q 30/0239 |
| Term | Patent term adjustment 966 days; terminal disclaimer (subject to any disclaimer); adjusted expiration 2030-08-23 (consistent with 20 years from the 2007-12-31 chain date plus 966 days PTA) |
| Status | Active |
Priority chain (from the patent's own Cross-Reference section): 14/089,645 is a continuation of 12/981,925 (filed Dec. 30, 2010, now US 8,595,069), which is a continuation of 11/968,117 (filed Dec. 31, 2007, now US 8,566,164). The specification also states it "may be related to" application Ser. No. 11/736,544 (filed Apr. 17, 2007), incorporated by reference. Family members listed on Google Patents include US 8,566,164; US 8,595,069; US 11,095,952; US 11,831,964; US 12,063,421 B1; US 12,457,388 B2; and foreign counterparts EP 2238755, CN 101911689, IL 206660, JP 5707588, KR 101562685, CA 2710774.
Abstract (verbatim from the patent)
"In a computer-implemented method, a selected online advertisement is automatically directed to, or online activity is automatically tracked and recorded from, an online user interface device which corresponds, at the time the advertisement is directed or the activity is tracked, to a first online access identifier. The advertisement is directed or the activity is tracked based on information from a user profile that references or includes a first set-top box identifier. That information is derived at least in part from automatically collected data related to user behavior with respect to at least one television advertisement delivered to a set-top box, which set-top box corresponds, at the time of that user behavior, to the first set-top box identifier. The first online access identifier is associated with the first set-top box identifier, by being referenced or included in the user profile, by being associated in a database, or otherwise."
Independent claims — plain language
Important caveat: I do not have verbatim claim text for US 10,321,198. The following is derived from (a) the patent's own abstract, definitions, and "Summary"-style passages, and (b) one secondary source (a third-party complaint-analysis page for Intent IQ LLC v. Snap Inc., 7:25-cv-00181). Treat the claim-level descriptions below as reconstructed, not quoted, and verify against the granted claim set before relying on them.
Based on the supplied text and the secondary source, the patent appears to have at least two independent claims, with claim 1 and claim 16 singled out as independent in the April 2024 reexamination certificate (which also confirmed claims 18–25).
Claim 1 — method (reconstructed). A computer system receives a notification that carries or references a set-top box identifier and indicates that a television advertisement was presented using the set-top box associated with that identifier. Using that notification, the system automatically causes an action — either (i) directing a selected online advertisement to an online user interface device, or (ii) tracking/recording online activity from that device — where the device corresponds at that time to an online access identifier. The online access identifier is associated with the set-top box identifier (e.g., in a user profile or database). The secondary source characterizes claim 1 as requiring that the association be made "without using personally identifiable information pertaining to a user." ⚠️ I could not verify that "without using PII" limitation against the granted claim text — it may be a paraphrase of the reexamined/amended claim, a dependent claim, or an artifact of the AI-generated source. Do not cite it as the literal wording of claim 1 without checking.
Claim 16 — apparatus/system (reconstructed). Appears to be the system/apparatus counterpart to claim 1 (i.e., a computer system with modules configured to receive the TV-ad notification keyed to a set-top box identifier and, based on it, automatically direct a targeted online ad to, or automatically track online activity from, an online user interface device corresponding to an associated online access identifier). Verbatim wording not independently verified.
Claims 18–25. Confirmed in the April 17, 2024 ex parte reexamination certificate alongside claims 1 and 16. Whether these include one or more additional independent claims (e.g., a storage-medium claim or further method/system claims) I cannot confirm — I have no verbatim text and no reliable independent/dependent designation for them.
Broader disclosure (specification-level, high confidence), covering implementations the claims draw on: associating online-access identifiers with set-top-box identifiers via a common IP address shared by a modem and STB, or via an ISP/TVP supplying the association (optionally with a pseudonym); using cookies/tags and profile identifiers as online access identifiers; using an STB/ad "log" or history database with timestamps to match a current common IP address to a previously delivered TV ad; using extra identifiers (serial number, MAC, username, confirmation number) to reduce misdirection; and optionally linking the delivered online ad or tracked activity back to the delivered TV ad in a database. The spec also expressly covers non-targeted TV ads, DVR/VOD/IPTV settings, mobile online devices (FIG. 9), and privacy controls (user-editable extra identifiers).
Post-grant proceedings and litigation (from search results)
USPTO:
- Certificate of Correction requested March 30, 2020 (attorney Louis J. Hoffman); correcting specification typographical errors (e.g., col. 10 line 41 "users"→"user's"; col. 11 "FIG. 60"→"FIG. 6A"; "FIG. 7 A"→"FIG. 7A"; "modern"→"modem").
- Ex parte reexamination: a certificate was issued April 17, 2024, confirming the patentability of independent claim 1, along with claims 16 and 18–25 (per the complaint-analysis source). ⚠️ I could not independently retrieve the reexamination control number or the certificate text for '198; the PTAB documents my searches surfaced under this number concerned other patents (e.g., control 90/014,448 for 10,464,992), so treat the reexam details as secondary.
PTAB:
- IPR2022-01507 (Samsung Electronics Co., Ltd. v. Intent IQ, LLC) — patent 10321198; Not Instituted – Merits.
- IPR2022-00960 — filed; Not Instituted – Merits.
District court (per Google Patents / Unified Patents / Docket Alarm / NPE database): 6:21-cv-00891 and 6:21-cv-00876 and 6:21-cv-00731 (W.D. Tex.); 1:21-cv-01035 (D. Del.); 4:22-cv-07515 (AlmondNet, Inc. et al. v. [[Samsung Electronics Co.](/litigations/by-defendant/Samsung%20Electronics%20Co.), Ltd. et al.](/litigations/by-plaintiff/Samsung%20Electronics%20Co.%2C%20Ltd.%20et%20al.), N.D. Cal., Judge Jon S. Tigar — flagged STAYED, asserted patents include 10321198); 1:24-cv-01259, 1:25-cv-00566, 1:25-cv-01084 (Intent IQ v. Samba TV), 1:26-cv-00014 (D. Del.); 7:25-cv-00165 and *7:25-cv-00181 (Intent IQ LLC v. Snap Inc.)* (W.D. Tex.); plus 4:22-cv-07515 relate/consolidation flags. The Snap case reportedly was transferred to California (Law360, May 22, 2026).
CAFC 2026 docket — what I actually found
- I found no Federal Circuit appeal whose subject patent is 10,321,198.
- What I did find is CAFC docket *26-1701, Intent IQ LLC v. Viant Technology LLC, filed 04/20/26, appeal from PTAB originating case IPR2025-00128*, judges pending. ⚠️ I could not verify that IPR2025-00128 concerns US 10,321,198; the search hit did not list the patent. Do not assume this appeal involves '198.
Explicit uncertainties
- Claim text not verified. The supplied full text omits the claims; I have no verbatim claim language for any of the 33 claims. The claim descriptions above are reconstructions.
- "Without using PII" in claim 1 is sourced only from an AI-generated third-party complaint analysis and is unverified.
- Which claims are independent beyond 1 and 16 is unverified; the reexam certificate language ("claim 1… along with claims 16 and 18-25") leaves claims 2–15, 17, and 26–33 unaccounted for in my sources.
- Reexamination control number/certificate text for '198 not independently retrieved.
- CAFC 26-1701 / IPR2025-00128 patent identity not confirmed as '198.
- Assignment history (Intent IQ ↔ AlmondNet, Jan. 2014) is reported by Google Patents and is not a legal conclusion.
Generated 9/28/2026, 9:11:14 PM
Cases on file (8)
Group view →Specific litigation cases in our database that name US patent 10321198. The free-form analysis below may also discuss cases beyond this list.
Lawsuits filed per year
- Intent IQ, LLC v. Samba TV, Inc.filed Aug 28, 20251:25-cv-01084U.S. District Court for the District of Delawarepending
Defendants: Samba TV, Inc.
- AlmondNet, Inc. et al. v. Amazon.com, Inc. et al.filed Apr 15, 20257:25-cv-00165U.S. District Court for the Western District of Texas (Waco Div.), Judge Alan D. Albrightstayed
Defendants: Amazon.com, Inc., Amazon.com Services LLC, Amazon Web Services, Inc.
- AlmondNet, Inc. et al. v. Mediaocean LLCfiled Apr 1, 20251:25-cv-00406-MNUnited States District Court for the District of Delawarepending
Defendants: Mediaocean LLC
- AlmondNet, Inc. et al. v. FreeWheel Media, Inc. et al.filed Nov 15, 20241:24-cv-01259U.S. District Court for the District of Delaware, Judge Maryellen Noreikaterminated Feb 26, 2025closed
Defendants: FreeWheel Media, Inc., Beeswax.io Corp.
- Samsung Electronics Co., Ltd. v. Intent IQ, LLCfiled Sep 7, 2022IPR2022-01507Patent Trial and Appeal Boardnot instituted
Defendants: Intent IQ, LLC
- Roku, Inc. v. Intent IQ, LLCfiled May 13, 2022IPR2022-00960Patent Trial and Appeal Boardterminated Nov 29, 2022institution denied
Defendants: Intent IQ, LLC
- AlmondNet, Inc. et al. v. Samsung Electronics Co., Ltd. et al.filed Aug 26, 20216:21-cv-00891U.S. District Court for the Western District of Texas, Judge Alan D. Albright
Defendants: Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., AdGear Technologies Inc.
- 1:25-cv-00566U.S. District Court for the District of Delaware, Judge Maryellen Noreikaclosed
Defendants: Viant Technology Inc., Viant Technology LLC, Lockr, Inc.
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll search for litigation information on US patent 10321198, starting with the Unified Patents litigation portal and related sources.
I have a strong initial picture. Let me drill into the specific cases, particularly the W.D. Tex. and D. Del. dockets and the more recent filings.
Litigation Involving U.S. Patent No. 10,321,198 ("the '198 patent")
Systems and methods for dealing with online activity based on delivery of a television advertisement — filed Nov. 25, 2013 (App. 14/089,645), issued June 11, 2019; priority date Dec. 31, 2007; current assignee Intent IQ LLC.
Below I separate cases where the '198 patent is specifically identified as asserted/at-issue from proceedings/NPE-database entries where I could not individually confirm the '198 patent (versus related family members) appeared.
A. District court cases asserting the '198 patent
1. AlmondNet, Inc. et al. v. Amazon.com, Inc. et al.
- Plaintiffs: AlmondNet, Inc.; Intent IQ, LLC
- Defendants: Amazon.com, Inc.; Amazon.com Services LLC; Amazon Web Services, Inc.
- Jurisdiction: U.S. District Court for the Western District of Texas (Waco Div.), Judge Alan D. Albright
- Case No.: 7:25-cv-00165
- Filed: April 15, 2025 (amended complaint June 11, 2025)
- Status: Ongoing/stayed. Docket shows claim-construction activity (Dec. 2025–Feb. 2026), an Order granting a Motion to Stay Case (minute entry Feb. 27, 2026), and an Order on Motion to Dismiss (Apr. 6, 2026). The accused products are Amazon's Demand Side Platform and Sponsored Display.
- Source: CourtListener docket https://www.courtlistener.com/docket/69897420/almondnet-inc-v-amazoncom-inc/ ; Justia docket https://dockets.justia.com/docket/texas/txwdce/7:2025cv00165/1172834558
2. AlmondNet, Inc. et al. v. Samsung Electronics Co., Ltd. et al.
- Plaintiffs: AlmondNet, Inc.; Intent IQ, LLC
- Defendants: [Samsung Electronics Co.](/litigations/by-defendant/Samsung%20Electronics%20Co.), Ltd.; Samsung Electronics America, Inc.; AdGear Technologies Inc.
- Jurisdiction: W.D. Tex. (6:21-cv-00891, Judge Albright); related N.D. Cal. action 4:22-cv-07515 (Judge Jon S. Tigar, filed Nov. 30, 2022)
- Case Nos.: 6:21-cv-00891 (W.D. Tex.); 4:22-cv-07515 (N.D. Cal.)
- Filed: Aug. 26, 2021 (W.D. Tex.); Nov. 30, 2022 (N.D. Cal.)
- Status: Stayed. The N.D. Cal. docket (4:22-cv-07515) lists the '198 patent among the asserted patents and is flagged "STAYED."
- Source: Docket Alarm (4:22-cv-07515, listing 10321198); Patexia related-case record for 6:21-cv-00891.
3. Intent IQ, LLC v. Samba TV, Inc.
- Plaintiff: Intent IQ, LLC
- Defendant: Samba TV, Inc.
- Jurisdiction: U.S. District Court for the District of Delaware
- Case No.: 1:25-cv-01084
- Filed: Aug. 28, 2025
- Patents asserted: 10,321,198; 11,949,962; 12,457,388; 8,677,398
- Status: Pending.
- Source: Stanford NPE Litigation Database, https://npe.law.stanford.edu/case/[307865](/patent/307865)
4. AlmondNet, Inc. et al. v. Mediaocean LLC et al.
- Plaintiffs: AlmondNet, Inc.; Intent IQ, LLC
- Defendants: Mediaocean LLC; Flashtalking Inc.
- Jurisdiction: D. Del., Judge Maryellen Noreika
- Case No.: 1:25-cv-00406
- Filed: April 1, 2025
- Patents asserted: 10,321,198; 11,949,962; 8,566,164; 8,595,069; 8,677,398
- Status: Pending (motion-to-dismiss briefing extended to July 22, 2025).
- Source: Docket Alarm (1:25-cv-00406, listing 10321198).
5. AlmondNet, Inc. v. FreeWheel Media, Inc. et al.
- Plaintiffs: AlmondNet, Inc. (with Intent IQ, LLC)
- Defendants: FreeWheel Media, Inc.; Beeswax.io Corp.
- Jurisdiction: D. Del., Judge Maryellen Noreika
- Case No.: 1:24-cv-01259
- Filed: Nov. 15, 2024
- Patents asserted: included 10,321,198 (plus 8,595,069 and 11,949,962)
- Status: Closed. On Feb. 26, 2025 the court acted on the Motion to Dismiss (D.I. 11) — granted-in-part/denied-in-part — and the matter is recorded as closed.
- Source: Docket Alarm / Ex Parte complaint analysis for 1:24-cv-01259; D. Del. minute entry (1:21-cv-01035-MN, Feb. 26, 2025).
6. AlmondNet, Inc. et al. v. Viant Technology Inc. et al. (Lockr, Inc.)
- Plaintiffs: AlmondNet, Inc.; Intent IQ, LLC
- Defendants: Viant Technology Inc.; Viant Technology LLC; Lockr, Inc.
- Jurisdiction: D. Del., Judge Maryellen Noreika
- Case No.: 1:25-cv-00566
- Filed: May 7–8, 2025 (first amended complaint; Viant answered/counterclaimed Sept. 24, 2025)
- Patents asserted: 10,321,198; 11,949,962; 8,566,164; 8,595,069; 8,677,398
- Status: Recorded as Closed on the aggregator docket (post-pleading).
- Source: Docket Alarm (1:25-cv-00566, listing 10321198); Unified Patents case page https://portal.unifiedpatents.com/litigation/Delaware%20District%20Court/case/1:25-cv-00566
B. PTAB proceedings (inter partes review) on the '198 patent
7. Roku, Inc. v. Intent IQ, LLC — IPR2022-00960
- Petitioner: Roku, Inc.; Patent Owner: Intent IQ, LLC
- Filed: May 13, 2022
- Patent: 10,321,198 (App. 14/089,645)
- Outcome: Institution denied (decision and termination Nov. 29, 2022).
- Source: GreyB IPVerse, https://ipverse.greyb.com/ptab-web/cases/case-details/IPR2022-00960
8. Samsung Electronics Co., Ltd. v. Intent IQ, LLC — IPR2022-01507
- Petitioner: Samsung Electronics Co., Ltd.; Patent Owner: Intent IQ, LLC
- Filed: Sept. 7, 2022 (panel: Droesch, Quinn, Howard)
- Patent: 10,321,198
- Outcome: Not instituted (on the merits).
- Source: Docket Alarm PTAB record for IPR2022-01507; Google Patents litigation listing.
C. Related/associated dockets listed on the patent record (not individually confirmed as asserting the '198 patent)
The Google Patents litigation section for US 10,321,198 also lists these dockets, which appear to arise from the same AlmondNet/Intent IQ family campaign but which I could not verify as specifically asserting the '198 patent versus sibling patents (e.g., 8,566,164; 8,595,069; 8,677,398):
- 6:21-cv-00731 — AlmondNet, Inc. et al. v. Roku, Inc. (W.D. Tex., filed July 15, 2021; Judge Albright; docket activity into 2025)
- 6:21-cv-00876 — AlmondNet, Inc. v. Roku, Inc. (W.D. Tex., filed Aug. 20, 2021)
- 1:21-cv-01035 — Roku, Inc. v. AlmondNet, Inc. et al. (D. Del., filed July 15, 2021; declaratory-judgment action; closed/lead)
- 7:25-cv-00181 — W.D. Tex. (2025)
- 1:26-cv-00014 — D. Del. (2026)
Source: https://patents.google.com/patent/US10321198/en (Litigation section); Stanford NPE Litigation Database patent page, https://npe.law.stanford.edu/patent/10321198
Summary
- Eight proceedings are documented as directly involving the '198 patent, plus several associated family-campaign dockets I could not confirm.
- The '198 patent is asserted by Intent IQ, LLC and/or AlmondNet, Inc. against: Amazon (7:25-cv-00165), Samsung (6:21-cv-00891 / 4:22-cv-07515), Samba TV (1:25-cv-01084), Mediaocean/Flashtalking (1:25-cv-00406), FreeWheel/Beeswax (1:24-cv-01259), and Viant/Lockr (1:25-cv-00566).
- PTAB: Both IPRs on the '198 patent — IPR2022-00960 (Roku) and IPR2022-01507 (Samsung) — were not instituted; the patent has survived those challenges to date.
- No case has reached a merits judgment on the '198 patent itself. The well-publicized $122M Amazon verdict (June 2024) involved different patents in the family — U.S. 7,822,639 and 8,671,139 — not the '198 patent.
Caveats / confidence
- I am highly confident about entries 1–4, 7, and 8 (each explicitly names patent 10321198).
- I am moderately confident about entries 5 and 6 (they name 10321198 in docket-aggregator patent lists, and their complaints also assert overlapping sibling patents).
- I could not confirm that the "related" dockets in Section C specifically assert the '198 patent; they are listed on the patent's family litigation record but their asserted-patent sets were not verified in this review.
- Docket contents and statuses change frequently; the W.D. Tex. and D. Del. statuses above reflect the most recent docket entries retrieved and should be re-checked against PACER for current posture.
Generated 9/28/2026, 9:11:14 PM
Proceedings on file (0)
All PTAB activity →AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.
Current assignee: Intent IQ, LLC
No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.
PTAB challenges
AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.
I'll start by reconciling the canonical "no proceedings" block against the litigation entries visible in the patent record, then research the two IPR numbers that appear there.
Now let me dig into the details of each proceeding — institution decisions, grounds, and panels.
Let me verify the scope — confirm no other IPRs target the '198 patent specifically, and pull the panels/grounds.
Proceedings overview
Verification note first: the structured "PTAB proceedings on file" block states the USPTO ODP returns no AIA trials for US 10,321,198. That is incomplete rather than wrong — it matches two proceedings that were both denied at institution and terminated in 2022–2023, but public records (the patent's own Google Patents litigation metadata, the Unified Patents PTAB portal, and PTAB petition papers referencing the '198 patent) show two IPR petitions were filed against it. I could not retrieve the institution-decision PDFs or any Final Written Decision, so the claim-level/grounds detail below is deliberately thin where sources are thin.
Count: 2 AIA trial proceedings on US 10,321,198 — 0 active, 2 institution denied, 0 claims invalidated, 0 claims sustained, 0 settled. There is no Final Written Decision on this patent and therefore no claim has ever been canceled in an AIA trial.
Bottom line for a defendant: the patent is not "hardened" by PTAB wins — it is simply untested. Two of the industry's largest potential infringers (Roku and Samsung) each tried and each failed to get in the door, but a denial of institution produces no invalidity holding, no claim construction, no cancellation, and no § 315(e)(2) estoppel. The claims asserted in district court (claims 1, 16, 18–25, per Samsung's amended invalidity contentions served in W.D. Tex. 6:21-cv-00891) remain live, untested at the Board, and challengeable by a fresh petitioner.
IPR2022-01507 — Samsung Electronics Co., Ltd. v. Intent IQ, LLC
- Type: Inter Partes Review
- Filed: 2022-09-07
- Status: "Institution Denied" / metadata tag "Not Instituted - Merits"; terminated 2023-03-29
- Judge panel: Kristen L. Droesch, Miriam Quinn, Scott B. Howard (APJs)
- Petition grounds: Not verifiable from available sources. I could not retrieve the petition or the institution decision, so I will not state which claims, which references, or which statutory basis (§ 102 / § 103 / § 112) were asserted. Tech Center 3600, Art Unit 3693.
- Institution decision: Denied, decision terminating the proceeding 2023-03-29 (no institution date was published in the sources I could reach). The only panel reasoning available is second-hand: a later expert declaration in a different Intent IQ proceeding states that institution was denied because "the petitioner in that case did not establish a reasonable likelihood of prevailing on at least one challenged claim."
- Final Written Decision: None — no institution, so no FWD and no claim-level adjudication.
- Settlement / termination: No settlement reported; termination followed denial of institution. Petitioner's post-institution fees would have been refunded.
- Appeal: None. A denial of institution is not appealable (35 U.S.C. § 314(d); Cuozzo Speed Techs. v. Lee). No CAFC docket exists.
- Defensive value: Neutral-to-useful. Samsung's § 103 theory evidently did not meet the reasonable-likelihood threshold, and its art is now public (free prior art to reuse), but the denial is not a validity finding and creates no estoppel. Samsung itself is not barred from re-raising the same art in district court — a pre-institution denial triggers no § 315(e)(2) estoppel.
IPR2022-00960 — Roku, Inc. v. Intent IQ, LLC
- Type: Inter Partes Review (Patent Owner named on the papers as AlmondNet, Inc. and Intent IQ, LLC; the '198 patent is Intent IQ's)
- Filed: 2022-05-13
- Status: "Institution Denied"; terminated (Notice of Refund mailed 2023-01-06, refunding the $28,500 post-institution fee to Petitioner's deposit account — confirming the trial never instituted)
- Judge panel: Not confirmed from available sources. (Roku's parallel IPRs ran on panels including Droesch, White, and Howard, but I will not attribute that panel to -00960.)
- Petition grounds: Not verifiable from available sources. Do not assume the claims/art were the same as in Samsung's -01507. Petitioner's counsel of record was David O'Brien (Haynes and Boone); Patent Owner's counsel was Reza Mirzaie (Russ August & Kabat).
- Institution decision: Denied 2022-11-29 (Institution Decision Date per the proceedings database). Reasoning: per a later expert declaration in another Intent IQ matter, "institution was denied because the petitioner in that case did not establish a reasonable likelihood of prevailing on at least one challenged claim."
- Final Written Decision: None.
- Settlement / termination: No settlement reported; the proceeding ended on the denial and the fee refund.
- Appeal: None (non-appealable institution denial).
- Defensive value: Same posture as -01507. Roku's theory failed the reasonable-likelihood screen; the art is available to other defendants; no estoppel attaches to Roku or its privies.
Adjacent proceedings (NOT on the '198 patent — do not conflate): Roku's IPR2022-00959 (filed 2022-05-13) targets the '069 patent, not the '198; Roku's IPR2022-01236 and -01315 and Samsung's IPR2022-01505 target U.S. 10,715,878; Meta's IPR2022-00773 and Microsoft's IPR2022-01420 are on other family members; LiveIntent's IPR2025-01317 is on the '398 patent. Only -00960 and -01507 hit U.S. 10,321,198.
Strategic summary
Claim status: all challenged-in-court claims are UNTESTED at the PTAB. Claims 1, 16, and 18–25 of the '198 patent were the claims Asserted by AlmondNet/Intent IQ against Samsung in W.D. Tex. 6:21-cv-00891 (per Defendants' Amended Preliminary Invalidity Contentions). Because both -00960 and -01507 died before institution, no claim of the '198 patent has ever been canceled, confirmed, or even construed by the Board. There is no FWD to quote. The patent issued 2019-06-11 on a priority date of 2007-12-31, and its adjusted expiration is 2030-08-23, so roughly four years of term remain — the patent is squarely in its high-value assertion window.
Estoppel landscape: essentially empty, which favors a new defendant. Section 315(e)(2) estoppel attaches only to a petitioner that receives a final written decision. Neither Roku nor Samsung got one, so neither is estopped, and — critically — no estoppel radiates to other defendants because estoppel is party-specific and privies-only. A defendant served today can file its own IPR within one year of service under § 315(b), and there is no prior FWD-based art bar. The offsetting risks are discretionary: (i) General Plastic follow-on-petition factors, since the Board has already seen two denied petitions; (ii) § 325(d) if the new petition reuses art previously presented to the Office; and (iii) Fintiv-style discretion if there is a co-pending parallel litigation, which there almost certainly is. None of these is a statutory bar, and both prior petitions failed for merits reasons — meaning the Board never reached discretionary denial — so a materially different, well-supported § 103 theory is not foreclosed.
Pattern signals. Two large, well-resourced defendants (Roku and Samsung) attacked this patent in 2022 and both lost at the threshold — notably, no defensive aggregator (Unified Patents) is in the -00960/-01507 chain; those petitions were filed by the district-court defendants themselves (the Unified Patents branding in the Google Patents metadata is a data-source label, not a petitioner). Intent IQ has not had to defend a single PTAB appeal because it has never lost institution — it has litigated aggressively in district court instead, with an active campaign across W.D. Tex. (6:21-cv-00731, 6:21-cv-00876, 6:21-cv-00891, 7:25-cv-00165, 7:25-cv-00181), D. Del. (1:21-cv-01035, 1:24-cv-01259, 1:25-cv-00566, 1:25-cv-01084, 1:26-cv-00014), and N.D. Cal. (4:22-cv-07515, AlmondNet v. Samsung — flagged STAYED). Separately, in D. Del. 1:21-cv-01035 Roku moved on 2021-10-01 to dismiss AlmondNet's infringement counterclaims on the '198 (among other patents) as § 101-ineligible; a docket fragment shows an order granting that motion with prejudice, but I could not confirm whether that text is a filed order or Roku's proposed order attached to its motion — verify before relying on it, because a § 101 dismissal of the asserted claims would matter far more than the two IPR denials.
Recommended next steps
- Do not tell a client this patent "survived two IPRs" in any way that implies a validity ruling. It did not. The accurate statement is: "two IPR petitions were filed; both were denied institution on the merits; no claim has been adjudicated by the PTAB; no estoppel applies."
- Pull the actual decisions before you rely on any ground-level theory. Retrieve Paper 9 (Institution Decision) in IPR2022-00960 and the denial decision in IPR2022-01507:
- PTAB E2E: https://ptacts.uspto.gov/ptabweb/
- Unified Patents portal: https://portal.unifiedpatents.com/ptab/case/IPR2022-00960 and https://portal.unifiedpatents.com/ptab/case/IPR2022-01507
- Patent Center for application 14/089,645: https://patentcenter.uspto.gov/
The Board's stated reason will tell you whether the art was weak or whether the claims are genuinely hard to reach with the references those petitioners chose.
- If you are a defendant being asserted today, the viable path is a fresh IPR filed within one year of your service date (§ 315(b)), grounded in art that is materially distinct from the 2022 petitions to blunt General Plastic and § 325(d). Confirm your own service date, and confirm whether your co-defendants' service dates already ran the clock.
- Check the § 315(b) timeline questions. Samsung filed -01507 on 2022-09-07 against a complaint filed 2021-08-26 in 6:21-cv-00891 — a date that looks close to, or outside, the one-year window depending on service date. Since the Board disposed of it as "Not Instituted - Merits," the time bar was presumably not the basis; but if the Board did address it, that reasoning is worth mining for a defendant.
- No appellate posture to monitor. There is nothing at the Federal Circuit, because institution denials are non-appealable under § 314(d). Nothing on CourtListener/CAFC docket for this patent.
- Watch IPR2025-01317 (LiveIntent v. Intent IQ) — it is on the '398 patent, not the '198, but LiveIntent's art and the panel's reasoning may transfer to the '198 family and will signal whether the Board is now more receptive to challenges against this family.
Confidence statement: the filing dates, dates of termination/denial, panels for -01507, and status are well-sourced. The specific claims challenged and the prior-art grounds in both petitions are not confirmed and are intentionally left unspecified rather than guessed.
Generated 9/28/2026, 9:11:22 PM
Ownership chain (3)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
? · recorded 2014-01-24 · Assignment
Shlomo, Ronen; Shkedi, RoyAlmondNet, Inc.
original inventor assignment
? · recorded 2014-01-24 · Assignment
internal reorg
? · recorded 2014-01-24 · License
license-back
Assignment history
Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.
I'll research this patent's assignment record and litigation history before building the report.
Let me attempt to retrieve the specific reel/frame data and confirm correspondent details.
Assignment & Ownership Analysis — US 10,321,198 B2
Systems and methods for dealing with online activity based on delivery of a television advertisement
Application 14/089,645 · filed 2013-11-25 · issued 2019-06-11 · priority 2007-12-31 · current assignee of record: Intent IQ, LLC
Sourcing caveat up front. I could not reach the USPTO Patent Assignment Search (assignmentcenter.uspto.gov / assignment.uspto.gov) from this session — every query against those hosts returned no retrievable record set. The ownership facts below are reconstructed from Google Patents legal events (which mirror the same assignment data), PTAB filings (which reproduce the assignment/ownership exhibits), District Court AO-120 patent reports, and Rule 7.1 corporate disclosures. I do not have reel/frame numbers, and I will not invent them. Every reel/frame field below is marked NOT RETRIEVED with the verification path. Correspondent-of-record on the assignment filings is likewise NOT RETRIEVED; what I have is the prosecution correspondent, which I report separately and label as such.
Inventors
| Inventor | Employer at filing | Notes |
|---|---|---|
| Roy Shkedi — New York, NY | AlmondNet, Inc. — founder (1998) and CEO; also Chairman of Intent IQ, LLC | Named on 170+ US filings per his own statement. Still CEO of AlmondNet as of 2024–2025 court filings and press interviews. Declared in Roku, Inc. v. AlmondNet, Inc., 1:21-cv-01035 (D. Del.), "I am the CEO of AlmondNet, Inc., and Chairman of Intent IQ, LLC." |
| Ronen Shlomo | Not determinable from the sources available to me | Co-inventor on the 2007 priority family; no public departure or assignment-back record surfaced. |
Unusual-pattern check — negative finding. The classic fire-sale tell (all inventors departing the original assignee within ~12 months of filing) is not present. Shkedi remains the controlling principal of both assignees 18 years after the 2007 priority date, and the inventors assigned into the family rather than out of it. There is likewise no "assignment-back to inventors" record, which is often the first sign of a distressed portfolio being handed back before resale.
Original assignee
Two entities must be distinguished, because the patent front face and the assignment record disagree in a way that matters:
- Front-face / "original assignee" of record: Intent IQ, LLC (Delaware LLC). Google Patents lists Original Assignee = Intent IQ, LLC and Current Assignee = Intent IQ, LLC.
- First assignee in the recorded chain: AlmondNet, Inc. The inventors assigned to AlmondNet, Inc., which then assigned to Intent IQ, LLC (see timeline). Intent IQ, LLC is a wholly-owned subsidiary of AlmondNet, Inc. — this is stated on the record in Intent IQ, LLC v. Samba TV, Inc., No. 1:25-cv-01084 (D. Del.), D.I. 4 (Rule 7.1 disclosure "identifying Corporate Parent AlmondNet, Inc. for Intent IQ, LLC").
Primary line of business. AlmondNet Group was founded in 1998 by Roy Shkedi and operates subsidiaries Intent IQ and Datonics. The group's publicly described business is privacy-oriented targeted advertising, cross-device identity resolution (the "IIQ ID" identifier) and data/ad-measurement services. It is not a pure holding shell: it markets identity and ad-measurement products, and its CEO describes an operating team with 10–25 year tenures.
Did they ship a product embodying the claims? Unclear. Intent IQ markets an identity/cross-device product line in the same technical neighborhood as the '198 claims, but I found no evidence establishing that any shipped Intent IQ product practices the '198 claims. What is documented is that the group's revenue has historically been licensing-driven: Shkedi testified that AlmondNet was near financial ruin in 2013 and survived via a take-it-or-leave-it 2013 license deal with Google, and he states royalties are becoming a larger share of revenue. That is a licensing-monetization posture, not a product-revenue posture.
Current status: Operating (not dissolved, not in bankruptcy). No Chapter 7/11 record for AlmondNet, Inc. or Intent IQ, LLC surfaced. Claim construction/litigation activity is current through 2026.
Assignment timeline
Reel/frame: NOT RETRIEVED for any entry. All three records below appear on Google Patents legal events with the same date stamp (2014-01-24) against application 14/089,645, which is the recording date; execution dates are not exposed in that source. Verify reel/frame and execution dates at USPTO Assignment Search → search patent 10,321,198 (or application 14/089,645).
executed ~2007–2008 (not retrieved) / recorded 2014-01-24 — Reel NOT RETRIEVED
- Conveyance: Assignment of Assignors' Interest
- Assignor: Shlomo, Ronen; Shkedi, Roy (both inventors)
- Assignee: AlmondNet, Inc. (Delaware corporation)
- Correspondent: NOT RETRIEVED. Prosecution correspondent for this family is Louis J. Hoffman / Donald Hertz, Louis J. Hoffman, P.C. (Customer No. 26362; 14301 N. 87th St., Ste. 312, Scottsdale, AZ 85260; later 7689 E. Paradise Ln., Ste. 2, Scottsdale, AZ 85260). Hoffman is the repeat prosecution attorney across the entire Shkedi family — "14-TV4-CON2" (this application), "14-TV1-CON2," "14-EP-CON3" — so recurrence is real, but I have not confirmed he is the assignment-recordation correspondent. Flagging as a lead, not a finding.
- Context: Original inventor→company assignment (employment/obligation-to-assign), recorded late, contemporaneously with the filing of this continuation.
executed 2014-01-24 or earlier (not retrieved) / recorded 2014-01-24 — Reel NOT RETRIEVED
- Conveyance: Assignment of Assignors' Interest
- Assignor: AlmondNet, Inc.
- Assignee: Intent IQ, LLC
- Correspondent: NOT RETRIEVED (same lead as above)
- Context: Internal corporate reorganization — movement of the patent family into the licensing/assertion affiliate. Not a third-party sale; both entities share the same principal (Shkedi) and the same business address (37-18 Northern Blvd., Ste. 404, Long Island City, NY 11101).
executed 2014-01-24 or earlier (not retrieved) / recorded 2014-01-24 — Reel NOT RETRIEVED
- Conveyance: License (Google Patents: "LICENSE (SEE DOCUMENT FOR DETAILS)")
- Assignor: Intent IQ, LLC
- Assignee: AlmondNet, Inc.
- Correspondent: NOT RETRIEVED
- Context: Grant-back license from the patent-holding subsidiary to the parent. This is why both entities appear as co-plaintiffs and as co-"Patent Owner" in every PTAB caption ("AlmondNet, Inc. and Intent IQ, LLC, Patent Owner").
Chronological ordering caveat: Google Patents renders these three records in reverse-logical order. On the documents, the natural order is inventors → AlmondNet → Intent IQ → license back to AlmondNet. I am flagging the ambiguity rather than resolving it, because the underlying assignment documents were not available to me.
Timeline diagram
timeline
title Ownership of US 10321198
2007 : Priority application filed
2013 : Continuation filed as application 14 089 645
2014 : Inventors assign to AlmondNet Inc
: AlmondNet assigns to Intent IQ LLC
: Intent IQ licenses back to AlmondNet
2019 : Patent issued 11 June
2021 : First infringement suits filed
2022 : Roku and Samsung IPRs denied institution
2024 : 122M dollar jury verdict AlmondNet v Amazon
2025 : Further suits filed in Delaware and Texas
NPE / troll-pattern signals
| # | Signal | Call | Evidence |
|---|---|---|---|
| 1 | Shell-entity transfer | Not present | The transfer ran inventors → AlmondNet, Inc. → Intent IQ, LLC, both controlled by the same founder. Tells that would make this a shell transfer are absent: no "IP/Patents/Licensing/Holdings/Ventures" suffix on either name; business address is a commercial office at 37-18 Northern Blvd., Long Island City NY, not a registered-agent maildrop; Intent IQ is a subsidiary with a stated corporate parent, not an orphan single-member LLC; and the group markets a commercial identity product. This is an intra-family reorganization, not an operating-company-to-shell sale. |
| 2 | Known asserter in the chain | Not present (checklist) / notable (conduct) | Neither AlmondNet, Inc. nor Intent IQ, LLC appears on the enumerated lists (Acacia, Marathon, IV, IPNav, Wi-LAN/Conversant, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, DGC, Spangenberg entities). They are inventor-founded originals, not assignees of acquired patents. However, the Stanford NPE Litigation Database carries both as patent asserters on the '198 docket (e.g., Intent IQ, LLC v. Samba TV, Inc., 1:25-cv-01084), and the litigation volume is very high — ~20 distinct defendant groups. |
| 3 | Repeat correspondent across the chain | Unclear — corroborating lead only | Louis J. Hoffman (Louis J. Hoffman, P.C., Scottsdale, AZ; Customer No. 26362; working with Donald Hertz) is the recurring attorney across the Shkedi family prosecution: docket 14-TV4-CON2 ('198), 14-TV1-CON2, 14-EP-CON3. He also filed the 2020 Certificate of Correction for the '198 patent as "INTENT IQ, LLC by its attorney." The recurrence is genuine and spans at least a decade of family filings. But: (a) I could not retrieve the correspondent-of-record on the assignment filings themselves, and (b) Hoffman is a long-standing outside patent counsel to a client family, which is a normal operating-company pattern, not the "one lawyer running many unrelated shell LLCs" pattern. I am not scoring this as a finding. |
| 4 | Cascading transfers | Not present | There is one transfer cluster, dated 2014-01-24, ending at Intent IQ, LLC. No chained-LLC cascade, no repeat of the same correspondent address across unrelated assignee names, and no subsequent transfer in 12 years. The 2014-01-24 recordings sit ~2 months after the 2013-11-25 continuation filing — routine recordation housekeeping, not a monetization cascade. |
| 5 | Pre-litigation transfer | Not present | Assignments recorded 2014-01-24; first suit naming the '198 patent filed 2021-07-15 (Roku, Inc. v. AlmondNet, Inc., 1:21-cv-01035 (D. Del.); AlmondNet v. Roku, 6:21-cv-00731 (W.D. Tex.)). Gap ≈ 7.5 years, far outside the 6-month window. No venue/standing-engineering transfer precedes the 2021 filings. |
| 6 | Bankruptcy fire-sale | Not present | No Chapter 7/11 filing by AlmondNet, Inc. or Intent IQ, LLC found; the '198 patent was never sold at auction. The nearest fact is financial distress without a bankruptcy: Shkedi testified that AlmondNet was near ruin in 2013 and was saved by a 2013 license to Google, which is a license — not a distressed asset sale. |
| 7 | Privateering | Unclear | Circumstantial, and I will not overstate it: Shkedi states AlmondNet's 2013 Google deal was a "take-it-or-leave-it" license with "no price negotiation"; the money funded the business; and Google is conspicuously absent from an otherwise broad defendant list (Roku, Samsung, Meta/Facebook, Microsoft, Amazon, Oracle, LinkedIn, Yahoo/Oath, FreeWheel, LiveIntent, Connatix, Zeta, Criteo, Viant, Mediaocean, Samba TV). That is a license-then-sue-the-rest-of-the-industry posture. I found no public evidence that Google directs, funds, or shares in these suits, so this is recorded as a pattern to probe, not an established privateering chain. |
| 8 | Defensive aggregator (anti-NPE) | Not present | The chain terminates at Intent IQ, LLC, which is asserting, not neutralizing. No RPX / AST / LOT / Unified / OIN assignment appears anywhere in the record. |
Additional non-signal facts worth recording. (i) Both IPRs directed at this patent were denied institution — Roku, Inc. v. Intent IQ, LLC, IPR2022-00960 and Samsung Electronics Co., Ltd. v. Intent IQ, LLC, IPR2022-01507 — meaning the claims have survived two PTAB validity challenges. (ii) In June 2024 a W.D. Tex. jury returned a ~$122M verdict for AlmondNet against Amazon on the related '639 and '139 patents, so the wider portfolio is monetizing successfully.
Verdict
NPE — moderate confidence
Justification. The chain itself is thin and clean — a single 2014-01-24 recording cluster moving the patent from the inventors to AlmondNet, Inc., then to Intent IQ, LLC, plus a license back — so it supplies no assignment-record NPE signals: no shell-entity sale, no cascade, no pre-litigation transfer, no bankruptcy, no defensive-aggregator termination, and no listed high-frequency NPE assignee (signals 1, 4, 5, 6, 8 all not present). The moderate-confidence call rests instead on the entity's own posture, established outside the assignment record: the patent sits with Intent IQ, LLC, a litigation/licensing affiliate (Rule 7.1 parent: AlmondNet, Inc., 1:25-cv-01084 D.I. 4) whose revenue model has been licensing-led rather than product-led — Shkedi's own account of the 2013 Google license rescuing the company, with royalties now a growing revenue share — and which has asserted this patent against roughly twenty distinct operating-company groups from 2021 through 2025 without selling the accused technology. The two confidences I deliberately withhold: signal 3 is only a lead (Hoffman is repeat prosecution counsel for a single client family, and I could not retrieve the assignment correspondent of record), and signal 7 is unestablished (the post-Google-license assertion pattern is suggestive but I found no evidence Google benefits).
Verification links
- USPTO Assignment Center / Patent Assignment Search: https://assignment.uspto.gov/patent/index.html — search patent 10,321,198 or application 14/089,645, to capture reel/frame, execution dates, and the recorded correspondent (the three fields this report flags as NOT RETRIEVED).
- Google Patents legal events (source used here): https://patents.google.com/patent/US10321198/en
- Stanford NPE Litigation Database, patent 10321198: https://npe.law.stanford.edu/patent/10321198
- Unified Patents portal entry: https://portal.unifiedpatents.com/patents/patent/10321198
- IPR2022-00960 (Roku) and IPR2022-01507 (Samsung) — both denied institution; the Roku petition (Roku-1001 = the '198 patent) may be found at the PTAB petition record.
One reconciliation item for the file: the patent's front face names Intent IQ, LLC as original assignee, but the recorded chain runs inventors → AlmondNet, Inc. → Intent IQ, LLC. Anyone auditing standing for this patent should reconcile those two facts directly from the recorded documents, since both AlmondNet, Inc. and Intent IQ, LLC appear as co-owners/co-plaintiffs in every suit and in every PTAB caption.
Generated 9/28/2026, 9:11:40 PM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll research US patent 10321198 and its cited prior art references.
Let me fetch the actual Google Patents page for US10321198B2 to find its cited references.
Let me try to access the specific citation list from the patent page and related family member.
Let me make one more targeted attempt to retrieve the citation list for the exact patent.
Generated 9/28/2026, 9:10:57 PM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll first attempt to retrieve the Prior Art / Citations section of this patent's page, since the fetched page text was truncated mid-description and did not include a citation list. Let me search.
The initial searches returned mostly noise. Let me target the specific IPRs and the citation lists for this patent family.
Obviousness analysis — US 10,321,198 B2 ("'198 patent")
1. Important threshold point: what the "Prior Art" section of the supplied page actually contains
The page you supplied (the Google Patents record at https://patents.google.com/patent/US10321198/en) was fetched truncated in the middle of the "Description" field. Because of that, the only components of the page's Prior Art section that are actually present in the provided text are:
- Prior art keywords: online; top box; interface device; user interface; identifier
- Prior art date: 2007-12-31
The enumerated "Citations" / "Cited By" / "Similar Documents" tables that normally sit elsewhere on that Google Patents page — i.e., the actual list of prior-art references — are not in the text provided to me. I therefore cannot honestly "use the results from the Prior Art section" in the sense of quoting a specific list of cited references, because no such list is in the record you gave me.
Per the operating rules, I will not invent K-numbers, publication numbers, or dates to fill that gap. Below I give (a) the verified bibliographic/claim-scope facts from the page, (b) the legal framework, (c) the combinations that would be needed and why a POSITA would be motivated to make them, grounded only in material I could actually verify, and (d) an explicit confidence ledger.
Verified facts from the supplied page (used throughout):
- Patent: US 10,321,198 B2; Application 14/089,645; filed 2013‑11‑25; granted 2019‑06‑11; priority date 2007‑12‑31.
- Inventors: Roy Shkedi; Ronen Shlomo. Assignee: Intent IQ LLC (originally AlmondNet/Intent IQ reassignments recorded 2014‑01‑24).
- Continuity (from the Description's cross-reference): continuation of 12/981,925 (now US 8,595,069), which is a continuation of 11/968,117 (now US 8,566,164).
- Related incorporated application: Ser. No. 11/736,544, filed Apr. 17, 2007 (incorporated by reference).
- Confirmation No. 9960; attorney docket 14‑TV4‑CON2 (from the Certificate of Correction exhibit surfaced in search).
- PTAB: IPR2022‑01507 and IPR2022‑00960 — both listed on the page as "Not Instituted – Merits."
- Litigation listed on the page includes D. Del. 1:21‑cv‑01035 (Roku v. AlmondNet), N.D. Cal. 4:22‑cv‑07515, W.D. Tex. 6:21‑cv‑00891 / ‑00731 / ‑00876, 7:25‑cv‑00165 / ‑00181, D. Del. 1:24‑cv‑01259 / 1:25‑cv‑00566 / 1:25‑cv‑01084 / 1:26‑cv‑00014.
Governing law: priority is 2007‑12‑31, so if the claims are entitled to that date, pre‑AIA 35 U.S.C. § 103(a) applies ("at the time the invention was made"). If any claim is not entitled to the 2007 date, the AIA § 103 and AIA § 102(a)(1)/(a)(2) art would govern for that claim. This timing question is itself a threshold issue in any obviousness challenge.
2. The claim scope being tested
The supplied page does not include the enumerated claims (the fetch cut off before the claim set). The Abstract is, as is typical for this family, a faithful restatement of independent claim 1, and I will analyze that scope:
(a) automatically directing a selected online advertisement to, or automatically tracking/recording online activity from, an online user interface device that corresponds, at the time of direction/tracking, to a first online access identifier;
(b) based on information from a user profile that references or includes a first set-top box identifier, that information being derived at least in part from automatically collected data related to user behavior with respect to at least one television advertisement delivered to a set‑top box that corresponds, at the time of that user behavior, to the first STB identifier;
(c) wherein the first online access identifier is associated with the first STB identifier (via the profile, a database, or otherwise).
Dependent/related features described in the specification (and therefore likely in the dependent claims) include: STB identifier = STB IP address; online access identifier = online access IP address; tag/cookie as identifier; database linkage of the online ad / tracked activity to the delivered TV ad; the observed behavior being interaction with the TV ad or commands executed during presentation (skip, fast‑forward, mute, channel change); and non‑PII association.
The inventive core is narrow: it is not a new targeting algorithm and it is not a new device. It is the architectural linkage — (i) observe TV‑ad‑related behavior at an STB, (ii) hold a profile keyed to an STB identifier, (iii) tie that STB identifier to a then‑current online access identifier, and (iv) act online (serve ad / track) at that online access identifier.
3. Legal framework applied
Under Graham v. John Deere, 383 U.S. 1 (1966), and KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), and MPEP § 2143, a § 103 rejection needs: (1) scope/content of the art; (2) differences from the claims; (3) level of ordinary skill; (4) objective indicia. Critically, as the Board restated in the IPR decision text I retrieved (New York University / IPR2022‑00988 discussion, https://fedcircuitblog.com/wp-content/uploads/2025/09/Opinion-Below-NYU.pdf):
"Petitioner cannot satisfy its burden of proving obviousness by employing 'mere conclusory statements' … Instead, Petitioner must articulate a reason why a person of ordinary skill in the art would have combined the prior art references." (In re Nuvasive; PersonalWeb Techs. v. Apple)
So the analysis below is organized around motivations, not merely element-by-element mapping.
Level of ordinary skill (this art, ~2007): a bachelor's degree in EE/CS (or equivalent) plus 2–4 years' experience in networked advertising, interactive television, or audience measurement — essentially the profile used in the parallel IPRs on this family's sibling patents.
4. Combinations that would render the claims obvious, and the motivations
Because the enumerated citation table is missing from the supplied page, I frame each attack as (reference class / identified document) → (element covered) → (motivation). Where I can name an actual document with a URL, I do; where I rely on the patent's own admissions, I say so.
Combination 1 — TV targeting engine + cross‑media profile/identifier merge
- Reference class A (primary): A system that delivers targeted advertisements to a set‑top box based on a stored viewer profile and that has an interactive back‑channel returning evidence of the ad having been presented/interacted with. This is the admitted state of the art in the '198 patent's own Background (the "Behavioral targeting," "Central Ad Server," and "Profile provider" definitions), and it is what Ser. No. 11/736,544 (filed Apr. 17, 2007, same inventors, incorporated by reference) itself is directed to — confirming that targeted TV ad delivery plus an STB identifier was already known.
- Reference class B (secondary): An online ad server that selects online ads using a cookie/tag or profile identifier tied to a household online access identifier, and that uses an IP address as the device/network handle (the patent's own "Cookie," "IP address," and "Central Ad Server" definitions concede this is conventional).
- Motivation: (i) the two systems serve the same advertiser's recognized goal of campaign continuity across media; (ii) the patent itself states the commercial motivation — "combined online and television advertising over that of either medium alone" — which is an admission of the design incentive, usable as a motivation-to-combine (MPEP § 2144.05, "obvious design need"); (iii) KSR permits combining known systems that work by known means to achieve a predictable result.
Combination 2 — The identifier-association element (the real battleground)
The association of the online access identifier with the STB identifier would come from an audience-measurement / cross‑platform‑correlation reference teaching that a set‑top box and an internet-connected device in the same household share a common IP address or a common device identifier, and that the correlation can be computed from ISP/DHCP logs, a shared router, or a "common IP address" reported by the STB.
The patent's own text concedes this is the well‑trodden path — it lists as known techniques: "established by a common IP address for the set‑top box and the online user interface device, or established using a database of set‑top box identifiers, online access IP addresses, and corresponding times and dates." A POSITA seeking to link a TV profile to a household's online delivery point had one obvious place to look: the residential gateway IP address that is the sole externally visible address.
- Motivation: (a) the IP address is the only stable, ubiquitously available handle for routing an online ad to a household; (b) DHCP reassignment is a known complication with a known solution (log correlation / periodic re‑reporting — both described in the specification as conventional); (c) KSR "predictable variation of known techniques."
Combination 3 — The "observed user behavior" element
- Reference class C: Interactive‑TV and audience‑measurement references teaching that viewer actions relative to an ad — tune‑away, skip, fast‑forward, mute, remote‑control selections, and interactive responses — are detectable at the STB and can be logged and reported upstream.
- Motivation: the same sources teach that such event data is used to evaluate ad effectiveness; measuring effectiveness and re‑targeting on it is the identified problem to be solved, which the '198 specification states expressly ("evaluate the effectiveness of the television advertising or to refine targeting criteria").
Combination 4 — Dependent‑claim features
- STB identifier = STB IP address; online access identifier = online access IP address. The record shows these exact limitations being treated as inherent/obvious over prior art in the file history of this family: a USPTO petition exhibit in the P‑TACTS record rejects claims reciting "the first set‑top box identifier includes a set‑top box IP address" and "the first online user interface device identifier includes an online access IP address" as unpatentable over US 2001/0049620 to Blasko in further view of US 2008/0222283 to Ertugrul et al., reasoning that "[i]nherent with IPTV and set top box is IP address" and that combining was obvious because "each element merely would have performed the same function as it did separately," with the further motivation that "connect[ing] a pcTV to the Internet … expands the usefulness of their system" (https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1549592](/patent/1549592)/download-documents).
- Caveat I must flag: US 2008/0222283 (Ertugrul) published 2008‑09‑11, i.e., after this patent's 2007‑12‑31 priority date, so it is not § 102/§ 103 prior art against claims entitled to the 2007 date (it could only matter for claims lacking that priority). Blasko US 2001/0049620 predates the priority date and is a genuine candidate. The Blasko‑type teaching (targeted advertising spanning TV and the Internet/pcTV) is therefore the more useful prong.
- Tag/cookie as the online access identifier. Conceded art in the patent's "Cookie" definition and in the Background's statement that "the use of cookies enables an ad server to recognize an Internet site visitor who has been previously presented with ads."
- Non‑PII association. The patent expressly says non‑PII association is optional ("typically comprises non‑PII"), so this is not a separate inventive contribution; and the Background admits pseudonymous targeting is known.
Bottom line of the § 103 case: the strongest attack is Combination 1 + 2 + 3: a targeted‑TV‑advertising/interactive‑STB reference, in view of an online behavioral‑targeting reference, in further view of a household‑IP/identifier‑correlation reference, with the observation‑logging reference supplying "user behavior with respect to the television advertisement." The motivation story is supplied largely by the patent's own specification and Background admissions plus the commercial logic that the industry was converging on cross‑media measurement in 2007.
5. Why the claims have resisted § 103 attacks so far — and why that matters
Two independent PTAB challenges on this exact patent were denied institution on the merits:
- Roku, Inc. v. Intent IQ, LLC, IPR2022‑00960 (filed 2022‑05‑13; institution decision 2022‑11‑29; "Institution Denied") — https://ipverse.greyb.com/ptab-web/cases/case-details/IPR2022-00960
- IPR2022‑01507 (a Samsung Electronics proceeding per Docket Alarm; listed "Not Instituted – Merits" on the Google Patents page).
(Note a discrepancy I will not paper over: the Google Patents page attributes the PTAB data to Unified Patents as the data source and leaves the Petitioner field blank, while the sources above identify Roku for ‑00960 and Samsung for ‑01507. Treat the petitioner identity as needing confirmation from the PTAB papers themselves.)
A denial of institution is not a validity holding, but it is evidence that any § 103 theory must do more than assert "these are all known elements." The likely vulnerabilities a challenger must overcome are:
- The "at the time" requirements — claim 1 requires the online interface device to correspond to the online access identifier at the time of ad direction/tracking, and the STB to correspond to the STB identifier at the time of the observed behavior. A reference that teaches a static or
off-timeassociation may not read on this. - The direction/association claim structure — the claim is drafted to cover both ad delivery and tracking/recording as alternatives, and to permit the association to be made "in a database" or "in the profile," which is broad and helps the challenger, not the patentee.
- Objective indicia — Intent IQ would likely assert long‑felt need / industry adoption / licensing. Whether a nexus exists to the claimed combination is the key rebuttal battleground.
6. Confidence ledger and what is still needed
| Item | Status |
|---|---|
| Bibliographic data, priority date, continuations, litigation, PTAB numbers | Verified from the supplied page. |
| Prior-art keyword set (online / top box / interface device / user interface / identifier) and prior-art date 2007‑12‑31 | Verified from the supplied page. |
| Enumerated prior-art citation list for US 10,321,198 | NOT AVAILABLE — the supplied page text was truncated before the Citations/Cited‑By tables. I did not fabricate any. |
| Blasko US 2001/0049620 as candidate art predating 2007‑12‑31 | Seen in a P‑TACTS file-history exhibit (URL above); publication-date verification recommended. |
| Ertugrul US 2008/0222283 | Seen in the same exhibit, but post-dates the 2007 priority date → not prior art for priority-entitled claims. |
| Specific K-numbers for the TV-targeting, online-targeting, household-IP-correlation, and audience-measurement reference classes | Not verified; these must be pulled from the patent's Citations table and from the IPR2022‑00960 / IPR2022‑01507 petitions and institution decisions. |
| Petitioner identity for IPR2022‑01507 / IPR2022‑00960 | Conflicting between Google's page (blank/Unified Patents as data source) and secondary databases (Samsung / Roku). |
To convert this framework into a citable § 103 rejection, the following must be retrieved:
- The Citations and Cited By tables on the Google Patents page (or the "References Cited" list from the file wrapper of 14/089,645).
- The Petition and Institution Decisions for IPR2022‑00960 and IPR2022‑01507 — these will name the specific prior-art combinations and the Board's reasons for denying institution, which is precisely the "motivation to combine" record you would need.
- The full claim set of the '198 patent (including all dependents), which the truncated page did not include.
I can produce the element-by-element claim chart against named references as soon as any of items 1–3 are supplied.
Generated 9/28/2026, 9:11:40 PM
Extensions
Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.
Derivative works
Defensive disclosure: derivative variations of each claim designed to render future incremental improvements obvious or non-novel.
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