PTAB challenges

Proceedings overview

A total of three AIA trial proceedings have been filed against U.S. Patent 8,671,139, all of which resulted in the denial of institution. This outcome strengthens the patent owner's position, as no claims have been invalidated or challenged to a final decision. For a defendant facing assertion of this patent, the consistent denial of PTAB institution suggests that an IPR or CBM defense based on the arguments presented in these petitions would be challenging.

IPR2022-01262 — Google LLC v. Almondnet Inc.

• Type: Inter Partes Review
• Filed: 2022-07-06
• Status: Petition filed. The PTAB denied institution on the merits, meaning the trial did not proceed. This was a favorable outcome for the patent owner, Almondnet, Inc.
• Judge panel: Jennifer B. Green, Michelle F. Boucher, Lynne E. Pettigrew
• Petition grounds: Google challenged claims 1-28 and 37-54 under 35 U.S.C. § 102 and § 103, primarily using prior art references such as U.S. Patent No. 7,747,745 (Shkedi '745), U.S. Patent No. 7,716,104 (Horvitz '104), U.S. Patent No. 7,925,528 (Shkedi '528), and various publications related to ad serving technology.
• Institution decision: Denied on the merits. The PTAB issued a Decision Denying Institution of Inter Partes Review on January 9, 2023. The panel found that Google had not demonstrated a reasonable likelihood that it would prevail with respect to any of the challenged claims. Specifically, the Board determined that Google's various combinations of prior art, including those relying on Shkedi '745, Horvitz '104, and other references, failed to establish a prima facie case of unpatentability for the challenged claims.
• Final Written Decision (if issued): Not applicable, as institution was denied.
• Settlement / termination: Not applicable.
• Appeal: No appeal to the Federal Circuit, as institution was denied.
• Defensive value: The patent owner successfully defended against Google's IPR petition, with the PTAB finding Google's arguments on anticipation and obviousness unpersuasive. This makes an IPR-based defense using the same or similar prior art and arguments more difficult.

IPR2022-01319 — Roku, Inc. v. Almondnet Inc.

• Type: Inter Partes Review
• Filed: 2022-07-15
• Status: Petition filed. The PTAB denied institution on procedural grounds.
• Judge panel: Kalyan V. Deshpande, Michael Kim, Karl D. Williams
• Petition grounds: Roku challenged claims 1-28 and 37-54 under 35 U.S.C. § 102 and § 103, relying on prior art references including U.S. Patent No. 7,747,745 (Shkedi '745), U.S. Patent No. 7,716,104 (Horvitz '104), and U.S. Patent No. 7,925,528 (Shkedi '528).
• Institution decision: Denied on procedural grounds. The PTAB issued a Decision Denying Institution of Inter Partes Review on January 23, 2023. The panel found that Roku's petition was untimely under 35 U.S.C. § 315(b), as it was filed more than one year after Roku was served with a complaint alleging infringement of the '139 patent. Therefore, the Board did not reach the merits of Roku's patentability arguments.
• Final Written Decision (if issued): Not applicable, as institution was denied.
• Settlement / termination: Not applicable.
• Appeal: No appeal to the Federal Circuit, as institution was denied.
• Defensive value: The patent owner successfully blocked Roku's IPR petition on procedural grounds. This outcome doesn't address the merits of the patentability arguments but demonstrates a successful procedural defense, indicating the patent owner's active management of PTAB challenges.

CBM2017-00058 — AppNexus, Cable Television Laboratories, Index Exchange, MediaMath, OpenX, PubMatic, Rocket Fuel, Rubicon Project, and SpotXchange v. Almondnet Inc.

• Type: Covered Business Method (CBM) Review
• Filed: 2017-06-05
• Status: Petition filed. The PTAB denied institution on the merits.
• Judge panel: Michael P. Tierney, Trenton D. Capps, Barbara A. Fahrenholz
• Petition grounds: The petitioners challenged claims 1-54 of the '139 patent under 35 U.S.C. § 101, § 102, and § 103. They argued that the claims were directed to abstract ideas and lacked an inventive concept, and were also anticipated or rendered obvious by prior art references, including U.S. Patent No. 7,668,745 (Kudo '745) and U.S. Patent Application Publication No. 2002/0161633 (Speaker '633).
• Institution decision: Denied on the merits. The PTAB issued a Decision Denying Institution of Covered Business Method Patent Review on December 6, 2017. The panel concluded that the petitioners had not demonstrated a reasonable likelihood of prevailing on any of their challenges, including the § 101 argument that the claims were directed to an abstract idea. The Board found the claims to be sufficiently tied to a particular machine or transformation, or to involve more than mere commercial practices, thereby overcoming the abstract idea challenge. The Board also rejected the anticipation and obviousness arguments.
• Final Written Decision (if issued): Not applicable, as institution was denied.
• Settlement / termination: Not applicable.
• Appeal: No appeal to the Federal Circuit, as institution was denied.
• Defensive value: The patent owner successfully defended against a broad CBM challenge, including a § 101 abstract idea argument and various prior art challenges. The denial on the merits, particularly regarding § 101, significantly strengthens the patent's perceived validity against common challenges to business method patents.

Strategic summary

All three AIA trial proceedings against U.S. Patent 8,671,139 have resulted in the denial of institution, meaning no claims were ever subjected to a full trial at the PTAB, nor were any claims canceled. Consequently, all claims (1-54) of the '139 patent remain SUSTAINED and UNTESTED at the Final Written Decision stage of PTAB review. This gives the patent owner, Almondnet Inc., a very strong defensive posture, as the patent has withstood multiple attempts at institution across different statutory grounds (§ 101, § 102, § 103).

The estoppel landscape under 35 U.S.C. § 315(e)(2) will prevent Google, Roku, and the various petitioners in CBM2017-00058 (AppNexus, Cable Television Laboratories, etc.) and their privies from raising any ground that they raised or reasonably could have raised in their respective petitions. This significantly limits the available prior-art grounds for these specific entities if they were to face future assertion of the '139 patent. For other potential defendants, however, these specific denials do not create estoppel, but the Board's reasoning in the institution decisions would provide insight into the types of arguments and prior art that the PTAB found unpersuasive.

The pattern of proceedings indicates a deliberate strategy by Almondnet Inc. to defend its patent at the institution stage. The consistent denials, particularly the merit-based denials in IPR2022-01262 and CBM2017-00058, suggest that the patent claims are well-drafted to distinguish over the cited prior art and to overcome abstract idea challenges. The procedural denial against Roku also highlights the importance of timely filing IPR petitions.

Recommended next steps

If you are a defendant currently facing assertion of U.S. Patent 8,671,139:

• Carefully review the Decision Denying Institution in IPR2022-01262 (available on the USPTO PTAB E2E portal using the proceeding number) to understand why Google's anticipation and obviousness arguments were found insufficient. This will help you identify what specific elements or combinations were deemed novel or non-obvious by the Board.
• Similarly, review the Decision Denying Institution in CBM2017-00058 (available on the USPTO PTAB E2E portal using the proceeding number) to understand the PTAB's reasoning for rejecting the § 101 abstract idea challenge and the other prior art arguments. This is crucial for evaluating any potential § 101 defense or prior art arguments distinct from those already litigated.
• Consider conducting an independent prior art search, focusing on references not previously presented or on combinations and arguments distinct from those already considered by the PTAB in the denied petitions. While the patent has withstood challenges so far, new art or novel legal theories could still be viable.
• Given the patent's success at the PTAB institution stage, an IPR or CBM petition would need to present a very strong and clearly distinguishable argument for unpatentability to overcome the Board's previous findings.