Invalidity dossier
US 9369779
Targeted television advertisements based on online behavior
Current assignee: Intent IQ LLC
Added 9/28/2026, 7:08:13 AM
Active provider: DeepSeek · deepseek-flash
Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
I'll verify the patent's current status and check for any 2026 litigation activity before summarizing.
Let me get the actual claim set for this patent and check IPR/CAFC status specific to 9369779.
Let me pull the literal claim language for the '779 patent.
US Patent 9,369,779 B2 — Analyst Summary
Important scoping note first: The authoritative full text you supplied (from Google Patents) truncates inside the "Description" section — it ends mid-word in the Profile-provider definition and never reaches the Claims. My searches returned claim text for sibling patents in the same family (US 7,861,260; US 9,813,778; US 10,178,442) and for unrelated patents. I therefore could not verify the verbatim claim language of 9,369,779 in this session, and I flag that explicitly in the claims section rather than passing off sibling claims as the '779's.
1. Bibliographic data
| Field | Value |
|---|---|
| Patent number | US 9,369,779 B2 (literal; also cited in filings as "the '779 Patent") |
| Title | Targeted television advertisements based on online behavior |
| Application no. | 14/246,525 |
| Pre-grant publication | US 2014/0223476 A1 (Aug. 7, 2014) |
| Filing date | Apr. 7, 2014 (Google Patents listing) |
| Issue date | Jun. 14, 2016 (patent face: "Date of Patent: Jun. 14, 2016") |
| Inventor | Roy Shkedi, Forest Hills, NY (sole named inventor) |
| Assignee | Intent IQ, LLC (Long Island City, NY per the printed patent; New York, NY per the applicant field). Assignment records also show AlmondNet, Inc. recordings on the 2014-04-07 filing date |
| Earliest priority | Apr. 17, 2007 (Google Patents "Prior art date" 2007-04-17) |
| Anticipated expiration | Apr. 17, 2027 (Google Patents) |
| Legal status | Active |
| Primary examiner / art unit | Nnenna Ekpo, Art Unit 2425 |
| Classifications | H04N 21/812; G06Q 30/0241, 30/0251, 30/0255, 30/0256, 30/0269; H04L 12/66, 61/5007, 67/306; H04N 21/258, 21/426, 21/442, 21/4532, 21/6125, 21/64322 |
Family/continuity chain (as printed on the patent under "CROSS-REFERENCE TO RELATED APPLICATIONS" and corroborated by the '778 patent face):
- 11/736,544, filed Apr. 17, 2007 → US 7,861,260
- → continuance 12/860,666, filed Aug. 20, 2010 → US 8,281,336
- → division 13/097,885, filed Apr. 29, 2011 → US 8,695,032
- → division 14/246,525, filed Apr. 7, 2014 → US 9,369,779 (this patent)
- → continuations from it include US 9,813,778 (app. 15/179,356), and the later-assigned US 10,178,442, US 10,715,878, US 10,715,878-lineage patents (e.g., US 11,303,973; US 11,564,015; US 11,589,136; US 11,805,300; US 11,974,025; US 12,212,818).
Discrepancy flag (no auto-correction applied): a Unified Patents portal record for the same number shows priority 2007-04-16, application date 2014-04-06, grant 2016-06-13, expiration 2027-04-16 — a consistent one-day shift, most likely time-zone/localization artifact. The docket-copy OCR of the '778 patent also renders the parent as "8,283,336" where the authoritative Google Patents text says 8,281,336; I treat the authoritative text as controlling but note it.
2. Abstract (verbatim)
"In a method for delivering targeted television advertisements based on online behavior, IP addresses indicating online access devices and IP addresses indicating television set-top boxes are electronically associated for a multitude of users. Using user profile information derived from online activity from one of the online access IP addresses, a television advertisement is selected, such as by using behavioral targeting or demographic information, and automatically directed to the set-top box indicated by the set-top IP address associated with that online access IP address. Preferably neither the user profile information nor the electronic association of online access and set-top box IP addresses includes personally identifiable information."
3. Independent claims — plain-language overview
Confidence caveat: the claim set is not in the text I was given, and I did not obtain a verbatim, number-matched copy of 9,369,779's claims. The following is a functional reconstruction from (i) the '779 abstract/specification, (ii) the allowed-claims examiner statement in the same family's file history (Examiner Ekpo, July 27, 2010, quoted in PTAB papers, describing independent claims directed to "electronically associating online access internet protocol (IP) addresses and received set-top box IP addresses for a number of users… use of user profile information derived from online activity from the online access IP addresses… to cause a TV advertisement to be directed to a set-top box indicated by the set-top box IP address associated with the online access IP address"), and (iii) parallel claims of sibling continuations (e.g., US 10,178,442's prosecution-history claim 1). Treat the claim-by-claim labels below as characterization, not verbatim text.
At a functional level, the '779 is a divisional keeping the core method/system subject matter of the 2007 priority application. The independent claims recited in this family generally fall into two groups:
- Independent method claim (the core "targeted TV ad" method). In plain terms, a computer-implemented method with steps of:
- Associating addresses in bulk — electronically associating, for each of many users, that user's online access IP address with that user's set-top box IP address. In the important sub-species, the association is based on a common IP address to which network traffic is routed for both the online user interface device (e.g., a computer) and the STB (e.g., a modem/router shared by both). Association by pseudonym from a single combined ISP/TVP is the other disclosed mode.
- Deriving profile information from online activity — obtaining user profile information derived from what a user did online from one of those online-access IP addresses (searches, sites/pages viewed, ads clicked, purchases, etc., and/or demographic attributes).
- Causing a TV ad to be directed to the matched STB — using that profile information to automatically cause a television advertisement to be directed/transmitted to the set-top box indicated by the STB IP address associated with that online-access IP address (directly, via an intermediate ad server, or by instructing the STB to fetch it), preferably without PII in either the profile or the association.
- Independent "profile-data-delivery" / system-side claim family. Sibling applications in this chain also claim the complementary side of the transaction — computer equipment automatically electronically delivering user profile information (including the online access IP address and the time/date of the activity) to a computer system that performs the association and direction — plus corresponding system (apparatus) claims covering the same combination.
Dependent claims in this family typically add: no-PII limitations; selections based on search requests, or demographic/behavioral attributes, or the television content being viewed; association via pseudonym or via dynamically assigned common modem/router IP; STB identifier verification; time-and-date matching of IP address lists; periodic updating; user-controlled ad filtering ("opt in"/"opt out"); and revenue-sharing limitations.
If you need the literal claim text (e.g., for an infringement or validity chart), I recommend pulling the patent's own XML/full-text claim section from USPTO Patent Center or the Google Patents "Claims" tab — I can do that if you re-run me with a fetch of that section, since the copy provided here stops short of it.
4. Post-grant challenge and litigation status — what I could and could not confirm
Confirmed as not about the '779: the two PTAB proceedings that cite the '779 as a parent patent — IPR2022-01315 (Roku, Inc. v. Intent IQ, LLC) and IPR2022-01505 (Samsung Electronics Co., Ltd. v. Intent IQ, LLC) — challenged US 10,715,878 ("the '878 Patent"), not the '779. Both were denied institution on the merits (IPR2022-01315 Paper 9; IPR2022-01505, Decision filed Mar. 22, 2023, denying institution and denying joinder), on the ground that the petitioner failed to make a sufficient factual showing as to the recited "common local area network."
2026 dockets involving Intent IQ (patent-in-suit not verified as the '779):
| Matter | Forum / No. | Status per search results |
|---|---|---|
| Intent IQ, LLC v. Samba TV, Inc. | D. Del. 1:25-cv-01084 (Judge Noreika), filed Aug. 28, 2025 | Consolidated for pretrial purposes into lead case No. 24-831-MN (order July 31, 2026); motion to dismiss briefing Feb.–Mar. 2026 |
| Intent IQ, LLC v. Optable Technologies, Inc. | E.D. Tex. 2:26-cv-00609 | Filed 2026; patent-infringement complaint |
| Intent IQ / AlmondNet v. Snap (Snapchat) | Transferred from Texas to California (reported May 22, 2026) | Venue transfer granted |
| Consolidated Delaware campaign | 1:24-cv-00831-MN lead case, with LiveIntent (24-831), Connatix (24-1296), Zeta (25-579), Criteo (25-1266) | Consolidated pretrial; coordinated scheduling order directed |
| PTAB | IPR2026-00330 (Viant Technology v. Intent IQ), filed Apr. 2, 2026 | Pending (patent not identified in what I retrieved) |
CAFC 2026: I found no Federal Circuit appeal specifically identifying US 9,369,779 in 2026. The Federal Circuit activity I surfaced involving Intent IQ patents concerns PTAB final written decisions in other proceedings (e.g., appeals noted for IPR2024-00666/Roku, IPR2024-00701/Samsung, IPR2024-00421/Freewheel, IPR2025-00128 and -00129/Viant) — I could not verify which patent numbers those target, so do not treat them as '779 appeals. There is also a 2026 Federal Circuit amicus brief (Google v. Cellular South, No. 26-1519) challenging the USPTO's "settled expectations" IPR-age bar; that is relevant context for this family (the '779 is >6 years post-grant) but is not a case about the '779.
Bottom line: US 9,369,779 appears active and unexpired (Apr. 17, 2027), owned by Intent IQ, LLC, with no IPR instituted against this number that I could confirm, and no confirmed 2026 Federal Circuit appeal naming it. I could not confirm that the '779 is one of the patents asserted in the 2025–2026 Intent IQ district-court complaints; those complaints list multiple exhibits/patents and the specific numbers were not visible in the results I retrieved.
Uncertainty register
- Verbatim claim set of 9,369,779 — not verified; overview above is reconstruction.
- Identity of patents asserted in the 2025–2026 Intent IQ cases — not verified.
- One-day bibliographic discrepancies (Apr. 6 vs. Apr. 7, 2014; Apr. 16 vs. Apr. 17, 2007; Jun. 13 vs. Jun. 14, 2016) between sources — flagged, not corrected.
- Parent patent number in an OCR'd court exhibit as 8,283,336 vs. 8,281,336 in the authoritative text — flagged, not corrected.
Sources: Google Patents US9369779B2 (authoritative text provided); Google Patents US9813778B2 PDF face; docketalarm PTAB exhibits in IPR2022-01315 and IPR2022-01505; PTAB Decision Denying Institution, IPR2022-01505 (Mar. 22, 2023); ptacts.uspto.gov petition documents referencing 14/246,525 (now US 9,369,779); Unified Patents portal US-9369779-B2; UniCourt D. Del. 1:25-cv-01084; PacerMonitor E.D. Tex. 2:26-cv-00609; Law360 (May 22, 2026) Snap venue transfer; IP Verse Intent IQ PTAB case list (updated May 24, 2026).
Generated 9/28/2026, 12:33:40 PM
Cases on file (0)
Specific litigation cases in our database that name US patent 9369779. The free-form analysis below may also discuss cases beyond this list.
No cases on file mention this patent. Upload a CSV or add a case manually in Admin → Manage litigation cases.
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll research litigation involving US patent 9369779. Let me search multiple sources.
Let me research the specific cases and which patents they assert.
Let me search specifically for whether the '779 patent was ever asserted in litigation.
Summary: Litigation involving US 9,369,779
Bottom line: Based on my searches, I did not find any litigation in which US Patent No. 9,369,779 ("Targeted television advertisements based on online behavior," Roy Shkedi, current assignee Intent IQ LLC) was specifically identified as an asserted patent. I should be explicit about that conclusion and its limits, per your instruction not to fabricate and not to substitute similar numbers.
What the patent record itself shows
- US 9,369,779 B2 — inventor Roy Shkedi; current assignee Intent IQ LLC; priority date (per Google Patents page) 2007-04-17; filed 2014-04-07; granted 2016-06-14. It is a division in a large family from application 11/736,544 (now US 7,861,260). Google Patents
- The Google Patents page displays a "Family has litigation" marker with a Darts-IP link (
family=39872105). That flag denotes that members of the worldwide family have been litigated; it does not, by itself, establish that the '779 patent specifically was asserted in any case. Google Patents
The Intent IQ / AlmondNet enforcement campaigns (context — different patents)
The same assignee family (AlmondNet, Inc. and Intent IQ, LLC) has run a significant multi-front patent campaign. The patents I saw actually asserted in these cases were consistently drawn from the other family members — e.g., 7,822,639; 7,861,260; 7,979,307; 8,244,582; 8,244,586; 8,566,164; 8,595,069; 8,671,139; 8,677,398; 8,959,146; 9,508,089; 9,830,615; 10,026,100; 10,321,198; 10,628,857; 10,715,878; 11,564,015; 11,949,962; 12,457,388 — not 9,369,779. Examples of the enforcement matters I confirmed:
| Plaintiff(s) | Defendant(s) | Jurisdiction / Case No. | Filed | Patents asserted (per sources) | Status |
|---|---|---|---|---|---|
| AlmondNet, Inc. | Roku, Inc. | W.D. Tex. 6:21-cv-00731 | 2021-07-15 | '586, '100, '398, '878, '164 | Joint dismissal 6/2025 |
| AlmondNet, Inc.; Intent IQ, LLC | Roku, Inc. | E.D. Tex./W.D. Tex. 6:21-cv-00876 (moved to D. Del. 1:22-cv-01540, then consol. with 1:21-cv-01035) | 2021-08-20 | '586, '100, '398, '878, '164, '198, '857, '639, '069 | Transferred/consolidated |
| Roku, Inc. (DJ) | AlmondNet, Inc.; Intent IQ, LLC | D. Del. 1:21-cv-01035 (MN) | 2021 | counterclaims on '586, '100, '398, '878, '164, '198, '857, '639, '069 | Consolidated lead case |
| AlmondNet, Inc.; Intent IQ, LLC | Samsung Electronics; AdGear; Meta/Facebook; Microsoft; Amazon | W.D. Tex. 6:21-cv-00891/-00896/-00897/-00898 | 2021-08-26/27 | '582, '639, '139, '822, '146, '615, '398, '878, '164, '198, '307 | Various; Amazon reached $122M jury verdict (6/2024) |
| AlmondNet, Inc.; Intent IQ, LLC | Viant Technology | D. Del. 1:23-cv-00174-MN | 2023-02-16 | '249, '260, '307, '015 | Pending |
| AlmondNet, Inc.; Intent IQ, LLC | Oracle Corp. | W.D. Tex. 6:24-cv-00303-ADA | 2024-06-03 | (family patents) | Pending |
| Intent IQ, LLC; AlmondNet; Datonics | LiveIntent, Inc. | D. Del. 1:24-cv-00831-MN | 2024-07-18 | (family patents) | Consolidated for pretrial (lead case 24-831) |
| Intent IQ, LLC | Samba TV, Inc. | D. Del. 1:25-cv-01084 (Noreika) | 2025-08-28 | '398, '198, '962 (per AO 120) | Open; motion-to-dismiss briefing 2026; consolidated for pretrial |
| Intent IQ, LLC | Snap Inc. | W.D. Tex. 7:25-cv-00181; transferred to C.D. Cal. 2:26-cv-06562 | 2025-04-18 | (family patents) | Pending |
| Intent IQ, LLC | MNTN, Inc. | W.D. Tex. 7:25-cv-00246 | 2025-05-23 | (family patents) | Pending |
Sources: Justia Dockets, UniCourt, Docket Alarm, PACER Monitor, PTAB/P-TACTS filings.
Notably, the Samba TV AO 120 form (the formal notice to the USPTO of patents in suit) lists only US 8,677,398; US 10,321,198; and US 11,949,962 — again, not '779.
Important caveats
- I could not complete an exhaustive verification. My research process hit its step/query limit before I could check every docket, every P-TACTS/PTAB filing, and the Darts-IP family record directly. My conclusion is therefore "not found," not "affirmatively confirmed never asserted."
- Do not assume the "Family has litigation" flag refers to the '779 patent. Family-level litigation flags aggregate all 53 family members (including the heavily litigated '582, '586, '398, '878, etc.).
- This is a procedural fact search, not legal advice. Per your strict rule, I did not auto-correct any patent number; all identifiers above are reproduced exactly as they appeared in the sources.
Recommended next steps to confirm
- Search Darts-IP for family ID 39872105 to see which specific patents were asserted.
- Search PACER / CourtListener RECAP for the exact string
9,369,779across all district courts and the CAFC. - Check the USPTO Patent Trial and Appeal Board ("P-TACTS") for any IPR/PGR/CBM naming 9,369,779 as the challenged patent.
- Check the Unified Patents litigation portal entry for US-9,369,779-B2.
If you'd like, I can attempt these targeted searches individually in a follow-up.
Generated 9/28/2026, 12:33:17 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.
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 verify the structured "no PTAB activity" default and hunt for any proceedings naming the '779 specifically.
The "'779" hits so far are all other patents (semiconductors, remote controls, DraftKings/Colossus). Let me run targeted checks on the Intent IQ family and the pending 2026 petition.
Let me do a final targeted check to confirm whether the '779 itself was ever challenged, and check the one remaining candidate (Yahoo IPR).
Proceedings overview
Zero (0) AIA trial proceedings — no IPR, PGR, or CBM — have ever been filed against US 9,369,779. The count of active / claims-invalidated / claims-sustained / settled / institution-denied proceedings on this patent is 0 / 0 / 0 / 0 / 0, because no petition has ever been filed; the defensive posture this gives a defendant is that the '779 is untested and un-narrowed, not "hardened" — and, critically, you get no free claim cancellations and no § 315(e)(2) estoppel from the extensive PTAB war the patent owner has fought over its sibling patents.
How I verified the zero, and its limits
- Canonical structured source. The "PTAB proceedings on file" block in this prompt (USPTO Open Data Portal) returns no AIA trial proceedings for 9,369,779. I treat that as the default and confirming source.
- Independent web verification. I searched for IPRs naming 9,369,779, for Intent IQ's full PTAB docket, and for "the '779 patent" in PTAB filings. Every "'779" hit in PTAB space is a different patent:
- US 8,796,779 — a semiconductor device patent (UMC/TSMC petitions). Not this patent.
- US 6,407,779 B1 — a universal remote control patent (IPR2014-01111). Not this patent.
- the DraftKings/Colossus '779 — an unrelated Colossus patent. Not this patent.
- US 8,494,904 and others by inventor "Roy Shkedi" appear in PTAB filings on unrelated subject matter (mobile location determination) — the same inventor name, different portfolio.
- Where the '779 actually appears in the PTAB record. Only as background evidence, never as the challenged patent:
- Its prosecution history was filed as an exhibit in IPR2022-01315 (Roku, Inc. v. Intent IQ, LLC) — Exhibit 1060, filed 2022-07-27 — because the '779 is the parent of the challenged '878 patent.
- It appears on the face/(56) lists of later family patents (e.g., US 10,715,878; US 10,628,857; US 11,093,970 list "9,369,779 B2 6/2016 Shkedi").
- Family preliminary amendments in the continuation chain recite the parent as "application Serial No. 14/246,525, filed April 7, 2014, now U.S. Patent 9,369,779."
Bottom line: the structured ODP default is correct. There are no proceedings to report for 9,369,779. Everything below is presented because a defendant needs the adjacent family picture — each entry is explicitly NOT a proceeding on the '779.
Adjacent family proceedings that are NOT on this patent (context only)
None of the following challenges US 9,369,779. I list them because the '779 shares a specification with these patents, and the outcomes tell you how this family fares at the Board. Do not cite any of these as an FWD "on the '779."
IPR2024-00421 / IPR2024-00422 — FreeWheel Media, Inc. et al. (Viant joined) v. Intent IQ, LLC — US 7,861,260 (NOT the '779)
- Type: Inter Partes Review
- Filed: 2024-02-29 (IPR2024-00421); IPR2024-00422 filed the same period
- Status: Final Written Decision — all challenged claims unpatentable
- Judge panel: Nabeel U. Khan, Scott B. Howard, David Cotta (Howard authored)
- Petition grounds: § 103 challenges to claims 1–152 of the '260 patent.
- Institution decision: instituted (§ 314).
- Final Written Decision: 2025-10-14 (Paper 41) — "Judgment Final Written Decision Determining All Challenged Claims Unpatentable." The panel held Petitioner showed by a preponderance that all challenged claims 1–152 are unpatentable, and issued a combined FWD across the two proceedings (joint hearing 2025-08-28). The panel also sua sponte struck Section II of Petitioner's reply claim-construction brief.
- Settlement / termination: none reported as to these proceedings.
- Appeal: the parallel IPR2025-00128/-00129 (Viant Technology v. Intent IQ, same '260 patent, filed 2024-11-01, instituted 2025-03-25) is docketed as "Final Written Decision – Appealed," Appeal No. 2026-1702.
- Defensive value (to the family, not the '779): Enormous. US 7,861,260 is the root of the '779's priority chain (11/736,544 → 12/860,666 → 13/097,885 → 14/246,525). The family's broadest patent had every challenged claim canceled. Any defendant facing the '779 should immediately ask whether the art that killed the '260 maps onto the '779's narrower claims.
- Source: FWD filed as Ex. 1023 in IPR2025-01317 (Docket Alarm); IP Verse IPR2024-00421.
IPR2022-01315 — Roku, Inc. v. Intent IQ, LLC — US 10,715,878 (child of the '779; NOT the '779)
- Type: Inter Partes Review
- Filed: 2022-07-27
- Status: Institution denied (Paper 9)
- Judge panel: not confirmed in what I retrieved
- Petition grounds: § 103 (Madhavan US 8,180,674; Whitehead US 2008/0281697; Vallier US 9,495,682, among others) against the '878.
- Institution decision: denied — insufficient factual showing that the combination taught the recited "common local area network" limitation (the panel examined Baum's FIG. 8 largely in isolation).
- Final Written Decision: none.
- Settlement / termination: Roku filed a Request for Rehearing (2023-04-12) and a POP request, both unsuccessful.
- Appeal: none (no FWD to appeal).
- Defensive value: a pre-2025 denial on the merits of a sibling. It is not protection for the '779: it turned on the sufficiency of that petition's evidentiary mapping, and it predates the current discretionary-denial regime.
- Source: IPR2022-01315 documents, Docket Alarm.
IPR2022-01505 — Samsung Electronics Co., Ltd. v. Intent IQ, LLC — US 10,715,878 (NOT the '779)
- Type: Inter Partes Review
- Filed: 2022-09-07 (petition exhibits filed 2022-09-07)
- Status: Institution denied, and joinder denied
- Judge panel: not confirmed in what I retrieved
- Petition grounds: § 103 against the '878 (same common-LAN theory family).
- Institution decision: denied 2023-03-22, expressly relying on IPR2022-01315 Paper 9 — petitioner failed to make a sufficient factual showing as to the "common local area network."
- Defensive value: same as above; a merits-based denial, not a validity holding, and no estoppel.
IPR2026-00330 — Viant Technology LLC, Mediaocean LLC, AppLovin Corp. v. Intent IQ, LLC — US 11,949,962 (NOT the '779)
- Type: Inter Partes Review
- Filed: 2026-04-02 (Notice of Filing Date Accorded 2026-04-08; PO Mandatory Notice 2026-04-29)
- Status: Discretionary Denial (institution decision date 2026-08-06)
- Judge panel: not confirmed in what I retrieved (Tech Center 2400, Art Unit 2425)
- Petition grounds: single § 103 ground against claims 1–34, combining US 2009/0172728 (Shkedi) with US 2010/0094758 (Chamberlain); declaration of Dr. Michael Mitzenmacher.
- Institution decision: denied 2026-08-06, on discretionary grounds.
- Defensive value: shows the current discretionary-denial gatekeeper is active against this family even for younger members. Highly relevant to whether a new petition against the '779 (in force since 2016-06-14) would ever be instituted.
- Source: IP Verse IPR2026-00330; Docket Alarm IPR2026-00330.
IPR2025-01317 — LiveIntent, Inc. v. Intent IQ, LLC — US 8,677,398 (NOT the '779)
- Type: Inter Partes Review
- Filed: 2025-07-18 (Notice of Filing Date Accorded 2025-07-31)
- Status: Discretionary Denial — Director Discretionary Decision Deny, 2025-11-20; Notice refund approved 2026-01-12 (post-institution fees refunded, consistent with denial).
- Petition grounds: not confirmed in what I retrieved.
- Defensive value: another discretionary denial in the family under the 2025 Director-led regime.
- Source: Docket Alarm search, patent 8677398.
Other family PTAB activity I could not fully verify (flagged, not asserted)
- IPR2022-00773 — Meta Platforms, Inc. v. (Intent IQ / AlmondNet), filed 2022-03-28. Patent number not confirmed in my retrieval.
- IPR2017-01299 — Yahoo! Inc. v. (Intent IQ / AlmondNet), filed 2017-04-24; panel Kristen Droesch, Minn Chung, Stacey White. Patent number not confirmed; likely the '398 or another then-asserted family member.
- A LiveIntent IPR against US 8,494,904 (Power of Attorney dated 2025-06-12; Lead Counsel W. Karl Renner, Fish & Richardson) — proceeding number not retrieved; this is a different Shkedi family and not the '779.
- Unified Patents maintains a page for US-9369779-B2, but I found no Unified-filed petition against the '779. (Unified's portal page is a monitoring artifact, not proof of a filed challenge.)
Strategic summary
Which claims of 9,369,779 are canceled / sustained / untested. All claims of the '779 are UNTESTED. No AIA tribunal has ever construed, instituted on, or decided a single claim of this patent. Nothing has been canceled and nothing has been sustained at the Board. Contrast this with its chain-of-title ancestor US 7,861,260, whose claims 1–152 were all held unpatentable in the combined IPR2024-00421/-00422 FWD of 2025-10-14, now on appeal as No. 2026-1702. The practical takeaway: the family's broadest claims are dead at the Board (subject to appeal), while the '779's own claims — which the earlier sections of this analysis indicate may carry narrower no-PII-to-the-TV-service-provider limitations — have never been tested. I could not retrieve the '779's verbatim printed claim set in this session, so I am not going to tell you a specific claim number survived or fell. Flag that as the single most important verification gap.
Estoppel landscape. Because there is no Final Written Decision on the '779, § 315(e)(2) estoppel does not attach to any ground against this patent. Estoppel is patent- and claim-specific: the '260, '878, '398, and '962 outcomes do not estop anyone — including the petitioners in those cases (Roku, Samsung, Meta, Viant, FreeWheel, LiveIntent) — from raising the same or different art against the '779 in district court or at the Board. Two caveats that cut the other way for a prospective petitioner:
- § 315(e)(2) is a floor, not a ceiling. A court may still apply Kessler-style or general estoppel principles, and the same petitioner that already litigated sibling patents may face General Plastic follow-on factors (factors include whether the petitioner previously filed a petition "directed to the same claims of the same patent" and, as the Board has applied it, to related patents in the same family). A Roku, Samsung, Meta, or Viant second bite at the '779 would face a real General Plastic argument; a new defendant/petitioner would not.
- No IPR estoppel protects a defendant from the '779 either, so invalidity defenses in district court remain fully available — subject to your own contentions and the court's rules.
Pattern signals.
- Multiple petitions, no single-petitioner stacking on the '779 — the same petitioner population (Roku, Samsung, Meta, FreeWheel, Viant, LiveIntent) has spread its fire across the family, but none has touched the '779.
- The patent owner does not appear to have pursued PTAB appeals aggressively on the '779 — there is nothing to appeal. The one live family appeal I confirmed is No. 2026-1702 (from the '260 FWD, adverse to Intent IQ).
- Defensive aggregator in the chain? Not on this patent. Unified Patents pages the '779 but has not petitioned on it. Inverse-signal note carried forward from the earlier assignment section, unverified: a Unified portal entry associates an AlmondNet-origin different patent (US 11,610,226 B2) with an AST-linked vehicle — not the '779, do not carry it over.
- The 2025–2026 discretionary-denial regime is now the dominant risk factor for any new petition. Acting Director Stewart's 2025-03-26 memorandum created bifurcated institution (discretion first) and added "settled expectations" as a factor; Director Squires took personal control of institution decisions on 2025-10-17. The '779 has been in force since 2016-06-14 — more than ten years as of today (2026-09-30), squarely in the >6-year "settled expectations" band that produced denial in ~90% of the 71 decisions studied. Two data points in this very family (IPR2026-00330 on 2026-08-06 and IPR2025-01317 on 2025-11-20) were denied on exactly these grounds.
- That doctrine is under attack. An amicus brief in Google v. Cellular South, No. 26-1519 (Fed. Cir.) challenges the IPR-age/"settled expectations" bar, and empirical work (DeFosse/Smith/Kasai) shows >8,000 petitions (46%) since 2012 challenged patents 6+ years post-grant, with at least one claim canceled in 80%+ of proceedings reaching FWD. Treat the doctrine as unsettled — it may be narrowed or vacated on appeal.
Recommended next steps
If you are a defendant now facing assertion of the '779:
- Do not expect help from the PTAB record — there is none. No FWD exists to quote, no claim has been canceled, and no § 315(e)(2) estoppel binds anyone. Your two usable props are (a) the '260 FWD (2025-10-14, Paper 41) holding claims 1–152 of the ancestor patent unpatentable, which you can cite as persuasive authority and as a template for your own § 103 mapping, and (b) the family's demonstrated vulnerability at the Board. Link: IPR2024-00421 FWD via Docket Alarm.
- Get the '779's verbatim claims first. Everything else is speculation until you have the issued claim text. Pull the printed claims from USPTO Patent Center (application 14/246,525) or Google Patents and map the '260 FWD art onto them. If the '779's independent claims carry the no-transmission-of-online-behavioral-profile-to-the-third-party-TV-service-provider / no-PII-limitations that the earlier sections of this analysis identify as the allowance hook, that is where the FWD art will fall short — plan for it.
- If you file an IPR, budget for a discretionary-denial fight before the merits. Because the '779 is >10 years in force, your petition will likely be routed through the bifurcated discretionary phase first. Prepare for Fintiv/General Plastic/"settled expectations" opposition: a Sotera stipulation (waiving in district court any ground raised or that could reasonably be raised) is now "highly relevant but not dispositive," and General Plastic risk is real if you or your privies already petitioned on a sibling. Consider the § 325(d) posture too — the '779's prosecution history reached the Board once already (Exhibit 1060 in IPR2022-01315), which cuts both ways.
- Trial-stage milestones for any newly filed petition (35 U.S.C. §§ 314(b), 316(a)(11)): PO Preliminary Response ~3 months; institution decision within 6 months of the Notice of Filing Date Accorded; if instituted, FWD within 12 months of institution (extendable ~6 months for good cause). For orientation on a live example, IPR2026-00330 went from filing (2026-04-02) to a full discretionary denial by 2026-08-06 — roughly four months, without reaching the merits.
Verification queue (in priority order):
- USPTO PTAB E2E (
https://ptab.uspto.gov) — search patent 9,369,779 to independently confirm zero proceedings; then confirm the challenged patent numbers behind IPR2026-00330 ('962), IPR2025-01317 ('398), IPR2022-01315/-01505 ('878), IPR2022-00773, IPR2017-01299, and the LiveIntent petition against 8,494,904. Several of these are flagged above as number-unconfirmed. - USPTO ODP — re-pull the AIA trial feed for 9,369,779 to capture anything filed after the last ingest.
- DPF / Patent Center — the '779 file wrapper and printed claims (application 14/246,525).
- CourtListener / Fed. Cir. — docket No. 2026-1702 (the '260 FWD appeal) and No. 26-1519 (the settled-expectations challenge); watch for any decision that narrows the discretionary-denial doctrine before you decide whether an IPR against the '779 is worth filing.
Verification status of the above: the absence of AIA proceedings on 9,369,779 rests on (1) the structured ODP block, which I treat as authoritative, and (2) independent searches in which every "'779" hit resolved to a different patent number. I did not fabricate any proceeding number; where I could not confirm a challenged patent number or a panel, I have said so explicitly. The caveat I would carry into any filing: "not found" is not the same as "affirmatively confirmed never filed" — the single highest-value check remaining is a direct E2E/ODP search on the literal number.
Generated 9/30/2026, 11:22:43 PM
Ownership chain (3)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
2014-04-07 · Assignment
SHKEDI, ROY, MR.AlmondNet, Inc.
confirmatory assignment
2014-04-07 · Assignment
internal reorg
2014-04-07 · License
intra-group 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 the assignment chain and litigation record for US 9369779 before assembling the analysis.
Let me dig into the specific assignment records and litigation involving US 9,369,779.
Let me try to obtain the specific reel/frame records and correspondent of record.
US 9,369,779 B2 — Ownership Reconstruction
Data-provenance note up front, because it affects every citation below: I could not retrieve the underlying USPTO Assignment Center reel/frame numbers or the correspondent of record for this patent with the tools available to me. The three post-issuance/co-pending assignment records below are taken from the Google Patents legal-events panel (which mirrors USPTO assignment data), and Google renders those events with the execution date rather than reel/frame. I am therefore not citing reel/frame numbers — I don't have them, and I won't invent them. Verify at USPTO Assignment Center (search 9369779) and at the Google Patents legal events page.
Inventors
| Inventor | Employer at filing | Notes |
|---|---|---|
| Roy Shkedi (sole named inventor) | AlmondNet Group / AlmondNet, Inc. | Founder (1998), CEO and controlling principal of AlmondNet, Inc. and of both subsidiaries Intent IQ, LLC and Datonics, LLC. |
Pattern observations:
- This is a single-inventor patent. There is no co-inventor population to test for post-filing attrition.
- The classic "all inventors left within 12 months of filing" tell is absent and inverted: Shkedi remains the CEO/Chairman of AlmondNet, Intent IQ and Datonics as of the 2026 Amazon settlement press release, and is the named contact of record on USPTO correspondence for the family (the change-of-correspondence filing for related US 8,677,398 lists Intent IQ, LLC at 37-18 Northern Boulevard, Suite 404, Long Island City, NY, with email
roy@almondnet.com). - Family history per IAM's 2024 interview: AlmondNet came close to insolvency in 2013 and survived via a licensing deal Shkedi characterized in court testimony as a take-it-or-leave-it Google deal — relevant to the bankruptcy signal below (no filing occurred).
Original assignee
Two answers, and the distinction matters:
- Assignee on the issued face of US 9,369,779 (issued 2016-06-14): Intent IQ, LLC — Google Patents records "Original Assignee: Intent IQ, LLC," consistent with the AlmondNet→Intent IQ transfer having been recorded before issuance.
- Assignee on the original priority filing (2007-04-17, the '260 parent): AlmondNet, Inc. The 2009 pre-grant publication US20090049468A1 lists AlmondNet, Inc. as applicant, and the parent US 7,861,260 belongs to AlmondNet, Inc.
Entity profile:
- AlmondNet, Inc. — Delaware corporation, founded 1998, HQ 37-18 Northern Boulevard, Suite 404, Long Island City, NY. Self-described in the 2016 complaint as specializing in media/Internet advertising software, now "focused on R&D and the licensing of its patents."
- Intent IQ, LLC — Delaware LLC; majority-owned subsidiary of AlmondNet, Inc. (stated at ¶5 of the 2016 Yahoo complaint; corroborated by Rule 7.1 disclosure statements identifying AlmondNet, Inc. as corporate parent in AlmondNet v. LinkedIn, 1:23-cv-01373 and Intent IQ v. GrowthCode, 1:25-cv-00865).
- Products shipped: Yes. Intent IQ ships a commercial "Dynamic Device Map" cross-device identity-resolution product (cookieless/MAID-less/CTV), HQ New York City with an R&D center in Herzliya, Israel; Datonics ships data-segment products. The group claims 170+ granted patents and licenses Google, Microsoft, Meta, Roku, Samsung, FreeWheel, and (April 2026) Amazon.
- Status: Operating. No bankruptcy, no dissolution, no acquisition of the group.
Assignment timeline
Three recorded reassignments appear on the legal-events panel, all dated 2014-04-07 — the same date application 14/246,525 was filed. I present them in the logical chain order; the recording order on the source panel is the reverse of the transaction order.
2014-04-07 (per Google Patents event date) / recorded date not retrievable — Reel/frame not retrieved
- Conveyance: Assignment of assignors' interest
- Assignor: SHKEDI, ROY, MR.
- Assignee: ALMONDNET, INC.
- Correspondent: not retrievable (no reel/frame surfaced, therefore no correspondent field). Recurrence flag: cannot be assessed.
- Context: Confirmatory/clean-up inventor-to-company assignment executed contemporaneously with the filing of the divisional application.
2014-04-07 / recorded date not retrievable — Reel/frame not retrieved
- Conveyance: Assignment of assignors' interest
- Assignor: ALMONDNET, INC.
- Assignee: INTENT IQ, LLC
- Correspondent: not retrievable. Recurrence flag: cannot be assessed.
- Context: Internal corporate reorganization — consolidation of the targeted-advertising patent family under the operating subsidiary. Corroborating independent evidence: a terminal disclaimer filed 2013-07-11 in sibling application 13/167,605 (which issued as US 8,677,398) already lists "INTENT IQ, LLC — 100%" as owner, showing the AlmondNet→Intent IQ consolidation was underway about a year before this record; and the '398 change-of-correspondence filing moved the address of record to Intent IQ, LLC.
2014-04-07 / recorded date not retrievable — Reel/frame not retrieved
- Conveyance: License (see document for details)
- Assignor: INTENT IQ, LLC
- Assignee: ALMONDNET, INC.
- Correspondent: not retrievable. Recurrence flag: cannot be assessed.
- Context: Intra-group license-back — Intent IQ grants rights back to the parent, the entity that runs group-level R&D and licensing. Characteristically an internal arrangement, not a monetization transfer.
Why these dates cluster: recording three instruments on the same day the divisional was filed is consistent with a single housekeeping package (confirm inventor→company, move family into the operating subsidiary, license back to the parent). It is not a cascading third-party transfer chain.
No other post-2014 assignments appear. The patent has remained with Intent IQ, LLC since, which is consistent with the entire continuation family (US 9,813,778; 10,178,442; 10,715,878; 11,303,973; 11,564,015; 11,589,136; 11,805,300; 11,974,025; 12,212,818 — all listed as Intent IQ, LLC) staying in the same hands.
Timeline diagram
timeline
title Ownership of US 9369779
1998 : Roy Shkedi founds AlmondNet
2007 : Priority application filed
2010 : Parent US 7861260 issues to AlmondNet
2013 : AlmondNet nears insolvency
: Google license deal signed
: Family consolidating into Intent IQ
2014 : Divisional application filed
: Shkedi to AlmondNet assignment recorded
: AlmondNet to Intent IQ assignment recorded
: Intent IQ license back to AlmondNet
2016 : US 9369779 issues to Intent IQ LLC
: Family first asserted against Yahoo
2024 : Jury awards 122M against Amazon
2026 : Amazon dispute settled with license
NPE / troll-pattern signals
1. Shell-entity transfer — not present.
The only operating-assignee-to-LLC movement is AlmondNet, Inc. → Intent IQ, LLC (2014-04-07). This is intra-group: Intent IQ is a majority-owned subsidiary of AlmondNet (¶5, AlmondNet, Inc. v. Yahoo! Inc., 16-cv-1557, E.D.N.Y.; Rule 7.1 disclosures in 1:23-cv-01373 and 1:25-cv-00865). Intent IQ is not licensing-only: it ships the Dynamic Device Map identity product, has an R&D center in Herzliya, and its address of record is a real office (37-18 Northern Blvd, Suite 404, Long Island City) with the CEO's email — not a registered-agent service address. The same-day license-back to the parent is the opposite of a monetization-only transfer. Caveat and honest limit: Intent IQ, LLC is a Delaware LLC, and AlmondNet, Inc. describes itself as "focused on R&D and the licensing of its patents," so the licensing-only characterization does apply to the parent; and I could not verify domicile/registered-agent data or the reel/frame without Assignment Center access.
2. Known asserter in the chain — not present.
No assignee in this chain matches Acacia, Marathon Patent Group, Intellectual Ventures, IPNav, Wi-LAN, Mosaid/Conversant, Vringo, Pendrell, Innovatio IP Ventures, MPHJ, Lumen View, Round Rock, Document Generation Corp, or Spangenberg entities, based on the searches run. What is present is a high-volume self-funded enforcer: the group has sued Amazon, Samsung, Meta, Microsoft/Xandr, Roku, FreeWheel/Beeswax, Viant, Lotame, LiveIntent, LinkedIn, Oath/Yahoo, Oracle and GrowthCode. Unified Patents maintains a page for this patent (portal.unifiedpatents.com/patents/patent/US-9369779-B2) and the family has drawn IPRs from Roku, Samsung, Meta, Amazon and Microsoft. Active enforcer ≠ listed NPE, and I am not collapsing the two.
3. Repeat correspondent across the chain — unclear (data not available).
This is the signal I most wanted and could not close: no correspondent of record for any of the three 2014-04-07 records was retrievable, so I cannot test for recurrence and I will not infer it from names. Two adjacent, non-assignment data points worth carrying forward for whoever has Assignment Center access:
- Prosecution correspondent on sibling application 13/167,605 (2011–2013 filings, including the 2013-07-11 terminal disclaimer listing Intent IQ, LLC as 100% owner) was "Louis J. Hoffman / Donald Hertz." Whether Hoffman also signed the 2014 assignment cover sheets is the open question.
- Litigation counsel is Farnan LLP — Brian E. Farnan and Michael J. Farnan, appearing for the group across AlmondNet v. LinkedIn (1:23-cv-01373), AlmondNet v. Viant (1:23-cv-00174), AlmondNet v. FreeWheel (1:23-cv-00220), Roku v. AlmondNet (1:21-cv-01035) and Intent IQ v. GrowthCode (1:25-cv-00865). Farnan is litigation, not recording, counsel — a single firm handling all assertion work is an enforcement-consolidation tell, not a shell-shelling tell.
4. Cascading transfers — not present.
Three instruments, one day, one corporate group, no chained unrelated LLCs, no <24-month relay. Nothing here resembles the Acacia/Marathon multi-hop pattern.
5. Pre-litigation transfer — not present.
The last transfer is 2014-04-07. The earliest family assertion I can date is AlmondNet, Inc., Datonics, LLC and Intent IQ, LLC v. Yahoo! Inc., No. 16-cv-1557 (E.D.N.Y., 2016) — roughly a 24-month gap, well outside the 6-month window. Note US 9,369,779 itself was not issued until 2016-06-14, so no transfer could have been timed to a pre-issuance suit on this patent.
6. Bankruptcy fire-sale — not present.
No Chapter 7/11 proceeding, no 363 sale. The near-death episode was 2013, and per Shkedi's own court testimony (reported by IAM, 2024) it was resolved by a Google licensing deal that preserved headcount — not by a patent sale. If anything, the 2014-04-07 intra-group reorganization reads as the recovery restructuring, not a distress sale.
7. Privateering — not present.
There is no operating-company parent on whose behalf an NPE is asserting against the parent's competitors. AlmondNet/Intent IQ/Datonics litigate for their own portfolio and their own product businesses.
8. Defensive aggregator — not present.
The chain terminates at Intent IQ, LLC (operating), not at RPX, AST, LOT Network, Unified Patents or OIN. Inverse-signal note, unverified and flagged: Unified's portal associates an AlmondNet-origin patent, US 11,610,226 B2, with "Blue Hills Series 95 of Allied Security Trust I." If accurate, some AlmondNet-family assets have passed to an AST-linked vehicle — but that is a different patent and is not in the '779 chain. Do not carry it into this verdict without confirming the assignment record.
Verdict
Operating-company assertion.
The chain terminates at Intent IQ, LLC, which per the 2014-04-07 AlmondNet→Intent IQ assignment (recorded date, no reel/frame retrieved; issued 2016-06-14 with Intent IQ, LLC as assignee of record) is a majority-owned operating subsidiary of AlmondNet, Inc. — shipping a commercial cross-device identity-resolution product, with a real office and its CEO as contact of record, and litigating the same family against genuine competitors (Amazon, Roku, Meta, Microsoft/Xandr, Viant, Lotame, LinkedIn, Oracle) rather than against end users or shell holding companies. None of the shell-entity, known-asserter, cascading-transfer, bankruptcy, privateering or defensive-aggregator signals is present; the only two live questions are the unretrieved assignment correspondents (signal 3) and the fact that AlmondNet, Inc. is self-described as licensing-focused, with group counsel publicly stating the annual revenue mix "depends on the year" between ad-tech vendor and patent litigant.
Honest qualification: if one applies a purely economic NPE definition (majority of revenue from licensing/enforcement), this family trends toward NPE — moderate confidence, and signal 3 could materially shift that call if the 2014 recording correspondents turn out to recur across the group's other recordings. On the evidence actually in hand, "operating-company assertion" is the defensible call, and I flag signal 3 as the thing to verify first.
Verification: USPTO Assignment Center — search patent number 9369779; cross-check the patent-number record against USPTO Patent Assignment Search and the Google Patents legal events for US 9,369,779.
Generated 9/28/2026, 12:34:07 PM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll research the prior art citations for US 9,369,779. Let me search multiple sources.
Let me dig into the specific citations listed on the patent's Google Patents page.
Excellent — I found key sources including the prosecution history and an IPR. Let me get the patent's front-page "References Cited" and the IPR grounds.
I hit my research step limit, so I'll report what I verified and be explicit about what I could not verify. Below I build on — and in one place refine — the earlier litigation section rather than repeat it.
Prior art analysis — US 9,369,779 B2
1. Identifier check (USPTO record)
| Field | Value |
|---|---|
| Patent number | US 9,369,779 B2 |
| Title | Targeted television advertisements based on online behavior |
| Application | 14/246,525, filed 2014-04-07 |
| Granted | 2016-06-14 |
| Inventor | Roy Shkedi |
| Current assignee | Intent IQ, LLC (originally AlmondNet, Inc. per the assignments block) |
| Prioritized ("prior art") date on the Google Patents record | 2007-04-17 |
| Continuity | Div. of 13/097,885 (US 8,695,032) → div. of 12/860,666 (US 8,281,336) → cont. of 11/736,544 (US 7,861,260) |
Source: the authoritative full text supplied in this analysis (Google Patents, https://patents.google.com/patent/US9369779/en), corroborated by the PTAB prosecution-history exhibit titled "Prosecution History of U.S. Patent No. 9,369,779," filed 2022-07-27 as Exhibit 1060 in IPR2022-01315, Roku, Inc. v. Intent IQ, LLC (docketalarm.com/cases/PTAB/IPR2022-01315/...).
Important caveat on scope of this answer: My queries hit the tool step limit before I could pull the certified front page (the "(56) References Cited" block, which typically runs ~50–60 U.S. patents plus foreign references and non-patent literature). The reference list below is the verifiable subset I could tie to a source — the prosecution record and the Unified Patents prior-art index for this exact patent — not a verbatim reproduction of Form PTO-892/1449. I flag each source. I did not auto-correct or normalize any number.
2. Refinement to the earlier litigation section (flagged, not a contradiction)
The earlier section concluded that no litigation asserting the '779 patent could be found, and that the "Family has litigation" flag reflects other family members. My searches are consistent with that, but I found one additional fact worth adding, because it bears on prior art:
- The '779 is not a stranger to the PTAB record. Its prosecution history was filed as an exhibit in Roku, Inc. v. Intent IQ, LLC, IPR2022-01315 (petition filed 2022-07-27). Per the Unified Patents index, IPR2022-01315 concerned the parent/related U.S. Pat. No. 10,715,878 and institution was denied ("insufficient factual showing to support its allegations regarding the recited common local area network" — Samsung IPR2022-01505 institution decision quoting IPR2022-01315 Paper 9). The '779 appears as a related/parent patent whose prosecution history was used as evidence, not as the challenged patent. This refines (does not contradict) the earlier "not asserted" conclusion.
- Several invalidity contentions / IPR appendices (e.g., Roku's "State of the Art References for Asserted Patents," filed in the Delaware and PTAB matters) recite the '779 in the family chain (No. 14/246,525 → '779, "a divisional of application Ser. No. 13/097,885").
3. Prior-art references cited in / against this patent
All dates below are as reported by the sources cited; where a title was not shown in the source I say so rather than guess.
3a. References that appear in the '779's own prosecution history (highest confidence)
| # | Full citation | Date | Brief description | Potential § 102 / statutory basis and claims |
|---|---|---|---|---|
| 1 | U.S. Pub. 2001/0049620 A1 ("Blasko") | Pub. 2001-12-06 (per publication-number year; exact date unverified) | Primary reference in the Examiner's rejection of the parent application's claims. Title/contents not verified by me. | Cited as the primary reference in a 35 U.S.C. § 103 obviousness rejection (not a §102 anticipation), in combination with McCarthy. The prosecution-history note states: "The Office Action rejects all pending claims as allegedly obvious under 35 U.S.C. § 103 based on U.S. 2001/0049620 ('Blasko') in combination with U.S. Patent Pub. 2007/0115389 ('McCarthy')." Potential §102 relevance would attach to the independent method/system claims (the IP-association + online-behavior-triggered TV-ad flow recited in the '779 abstract). I could not map it to specific claim numbers. |
| 2 | U.S. Pub. 2007/0115389 A1 ("McCarthy") | Pub. 2007-05-24 (year per number; exact date unverified) | Secondary reference in the same § 103 combination. Contents not verified. | Secondary reference in the § 103 rejection; on its own would face a § 102(a)/(e) date question relative to the 2007-04-17 priority date (published May 2007, i.e., potentially after the priority date). Claim mapping unverified. |
Source: PTAB prosecution-history exhibit (docketalarm.com/cases/PTAB/IPR2022-01315/...Exhibit-1060-Prosecution_History_of_US_Patent_No_9,369,779.pdf) and a related IDS/transmittal in the same family (PTACTS/docketalarm exhibit for app. 13/097,885).
3b. Prior art indexed against this exact patent
The Unified Patents portal entry for US-9369779-B2 lists "Patent Art (201)" — an index of references associated with this patent (it may span the family). The following entries were retrieved with titles and dates; each is a § 102(a)/(b)/(e) candidate depending on its effective date relative to the 2007-04-17 priority date. The strongest structural candidates for single-reference (§ 102) anticipation of the IP-association + cross-device-targeting concept are the cross-device / profile-delivery references (items 7, 11, 13, 17); the remainder are more naturally § 103 combination material.
| # | Full citation | Date shown | Description (from listing) | § 102 note |
|---|---|---|---|---|
| 3 | US 2009/0049468 A1 | ─ | (Title not shown in source) | § 102(e)-candidate if filed pre-2007-04-17; date unverified |
| 4 | US 2011/0258049 A1 — Jumptap, Inc. | priority 2005-09-13 | "Integrated Advertising System" | § 102(a)/(e)-candidate (priority predates '779) — targets the independent claims |
| 5 | US 2004/0163101 A1 — Alphonso Inc. | 1997-01-05 (priority as listed) | "Method and System for Providing Targeted Advertisements" | § 102(a)/(b)-candidate |
| 6 | US 2003/0041156 A1 — International Business Machines Corp. | 2001-08-20 | "Method, System, and Product for Embedding Demographic Information in Network Packets" | § 102(a)/(b)-candidate; bears on the demographic/profile limitations |
| 7 | US 2011/0040607 A1 — AlmondNet Inc. | 2000-11-27 | "Added-revenue Off-site Targeted Internet Advertising" | § 102(e)-candidate (early priority). Same-assignee family — probably cited as background, not § 102 art |
| 8 | US 6,073,241 A — CBS Interactive Inc. | 1996-08-28 | "Apparatus and Method for Tracking World Wide Web Browser Requests Across Distinct Domains Using Persistent Client-side State" | § 102(b)-candidate; bears on the cookie/online-activity-tracking limitations |
| 9 | US 8,244,583 B2 | 1999-12-12 | "Method, Stored Program, and System for Improving Descriptive Profiles" | § 102(e)-candidate |
| 10 | US 2008/0040742 A1 — AT&T | 2006-08-10 | "Method and System for Inserting Advertisement Data into an Internet Protocol Television Network" | § 102(e)-candidate (filed pre-2007-04-17); bears on IPTV ad insertion |
| 11 | US 2006/0271953 A1 — Verizon | 2005-01-04 | "System and Method for Delivering Personalized Advertisements" | § 102(a)/(e)-candidate; strong on personalized TV ad delivery |
| 12 | US 2002/0129368 A1 — Prime Research Alliance E Inc. | 2001-01-10 | "Profiling and Identification of Television Viewers" | § 102(a)/(b)-candidate; bears on TV-viewer profiling |
| 13 | US 8,239,264 B2 — Shkedi / AlmondNet | ─ | "Method and Stored Program for Sending Descriptive Profile Data, for Accumulation Along with Source Information, for Use in Targeting Third-party Advertisements" | Same-inventor family → normally not § 102 art; background |
| 14 | US 6,055,573 A — Catalina Marketing Corp. | 1998-12-29 | "Communicating with a Computer Based on an Updated Purchase Behavior Classification of a Particular Consumer" | § 102(b)-candidate; behavioral targeting |
| 15 | US 8,200,822 B1 | 2006-06-15 | "Media Properties Selection Method and System Based on Expected Profit from Profile-based Ad Delivery" | § 102(e)-candidate |
| 16 | US 8,677,398 B2 — Shkedi | ─ | "Systems and Methods for Taking Action with Respect to One Network-connected Device Based on Activity on Another Device Connected to the Same Network" | Structurally the closest single reference to the '779's core concept, but same-inventor/related family → background, not § 102 |
| 17 | US 6,385,592 B1 — Mineral Lassen LLC | 1996-08-19 | "System and Method for Delivering Customized Advertisements Within Interactive Communication Systems" | § 102(b)-candidate |
| 18 | US 2005/0076393 A1 | 2003-10-05 | "Television System to Extract TV Advertisement Contact Data and to Store Contact Data in a TV Remote Control" | § 102(a)/(b)-candidate |
| 19 | US 8,244,574 B2 — Datonics LLC | 2006-06-18 | "Method, Computer System, and Stored Program for Causing Delivery of Electronic Advertisements Based on Provided Profiles" | § 102(e)-candidate; strong on profile-based ad delivery |
| 20 | US 7,188,085 B2 — Sandpiper CDN LLC | 2001-07-19 | "Method and System for Delivering Encrypted Content with Associated Geographical-based Advertisements" | § 102(a)/(b)-candidate |
| 21 | US 2008/0016540 A1 | 2006-07-12 | "System and Method for a Video Content Service Monitoring & Provisioning Architecture" | § 102(e)-candidate |
| 22 | US 2006/0137015 A1 — Comcast Cable Communications LLC | 2004-12-17 | "System and Method for Secure Conditional Access Download and Reconfiguration" | § 102(a)/(b)-candidate |
| 23 | US 2005/0187823 A1 | 2004-02-22 | "Method and System for Geographically-targeted Internet Advertising" | § 102(a)/(b)-candidate |
| 24 | US 2008/0244076 A1 — Bridge and Post Inc. | 2007-03-09 | "Method and Apparatus for Tagging Network Traffic Using Extensible Fields in Message Headers" | § 102(e)-candidate; bears on network-traffic tagging / IP association |
| 25 | US 2003/0051242 A1 | ─ | "Method of Advertising Utilizing a Catalog Program with Locator Index Bar" | § 102(a)/(b)-candidate; date unverified |
Additional references that Google Patents cross-links to this patent (all candidates for the "(56) References Cited" block; descriptions unverified):
- US 5,809,242 A — Shaw et al. — "Electronic mail system for displaying advertisement at local computer received from remote system…" (
patents.google.com/patent/US5809242/en) - US 5,995,943 A — Bull et al. — "Information aggregation and synthesization system" (
patents.google.com/patent/US5995943A) - US 5,848,396 A (Gerace), US 5,855,008 A (Goldhaber et al.), US 5,933,811 A and US 6,385,592 B1 (Angles et al.), US 5,948,061 A (Merriman et al.), US 6,160,989 A (Hendricks et al.), US 6,216,129 B1 (Eldering), US 6,366,298 B1 (Haitsuka et al.), US 6,377,986 B1 (Philyaw), US 6,446,261 B1 (Rosser), US 6,718,551 B1 (Swix et al.), US 6,771,290 B1 (Hoyle), US 6,845,396 B1 (Kanojia), US 6,868,392 B1 (Ogasawara), US 6,944,585 B1 (Pawson) — plus the Shkedi-family originals US 6,832,207 B1; 6,925,440 B1; 6,973,436 B1; 7,072,853 B2.
- Foreign: EP 1150508 A2 and EP 1058999 (both appear in the References Cited of sibling/related U.S. patents 8,566,164 and 8,607,267).
- Non-patent literature: Battelle, John, The Search (Portfolio, N.Y., 2005), pp. 167–171 — cited as background and, per the specification, the source for the Google/BSkyB cross-media targeting example.
Sources: Unified Patents portal, https://portal.unifiedpatents.com/patents/patent/US-9369779-B2; Google Patents pages for the cross-linked numbers above; front pages of related Shkedi-family patents (e.g., patentimages.storage.googleapis.com/…/US10645438.pdf, …/US8566164.pdf, …/US8607267.pdf).
4. Assessment — § 102 vs § 103
- No verified single-reference § 102 anticipation. Nothing I could retrieve shows one reference disclosing the full combination claimed — (i) electronically associating an online-access IP address with a set-top-box IP address for a multitude of users, and (ii) selecting and automatically directing a TV ad to the associated STB using online-behavior/demographic profile information. The references cluster into three groups (online behavioral targeting; IPTV/ad-insertion; TV-viewer profiling) that together support § 103 combinations, not standalone anticipation.
- The documented rejection was § 103, not § 102 — Blasko + McCarthy in the parent application 13/097,885.
- Self-citation risk. A large fraction of the "patent art" are Shkedi/AlmondNet/Datonics family members (e.g., US 8,239,264; 8,244,583; 8,677,398; US 2011/0040607). These are the same inventive entity/common ownership and normally are not § 102 prior art against the '779 — they were cited for background and family continuity.
- Claim mapping limitation. The '779's granted claim set was not retrievable within my search budget. The only claim text I could verify is from the parent's amendment (claim 52, added 2014-08-08: "receiving … electronic indicia of a first online user interface device identifier; … derived automatically from online activity …; … automatically facilitating direction of a first television advertisement … via a first set-top box … electronically associated with the first online user interface device identifier by the television service provider, without causing online behavioral profile information … to be transmitted to the television service provider, and without receiving … personally identifiable information"). Accordingly, the § 102 mapping above is directed at the independent method/system claims covering this subject matter, not to specific granted claim numbers. I will not invent claim numbers I could not read.
5. What I could not verify (stated explicitly, per instructions)
- The certified front-page "References Cited" block of US 9,369,779 (exact count, examiner-vs-applicant distinction, and foreign/NPL entries) — not retrieved.
- The exact publication/filing dates of Blasko (US 2001/0049620 A1) and McCarthy (US 2007/0115389 A1), and their full contents.
- Whether any reference is a § 102(b) vs § 102(a)/(e) reference — this turns on the actual invention date, which is not established in the record I have.
- The exact list of patents asserted against Roku/Samsung etc. — the earlier section already flagged this; my only addition is the IPR2022-01315 linkage in § 2 above.
6. Recommended verification steps
- Pull the front page of US 9,369,779 from USPTO Patent Center / Google Patents PDF (
patentimages.storage.googleapis.com/.../US9369779.pdf) to get the definitive (56) list. - Pull the file wrapper for 14/246,525 (and parent 13/097,885) via USPTO Patent Center to obtain the PTO-892/1449 and the Blasko/McCarthy rejection on the record.
- Read IPR2022-01315 Exhibit 1060 in full — it is the actual prosecution history of the '779 and will contain every reference and rejection verbatim.
- Check IPR2024-00666, -00701, -00709 (Roku-related) and the Delaware contentions (Case 1:21-cv-01035-MN) for any charting that names the '779.
If you'd like, I can run these targeted follow-ups individually to close the gaps above.
Generated 9/28/2026, 12:34:31 PM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll research the prior art cited on the '779 patent page and related references before building the obviousness analysis.
I found the prosecution history and an IPR reference. Let me dig into the specific prior art and the claim set.
Let me retrieve the exact claim set of the '779 patent and details on the key prior-art references.
Obviousness Analysis — U.S. Patent No. 9,369,779 (Shkedi / Intent IQ)
0. Scope, law, and confidence notes
Legal standard applied. Because the '779 patent's earliest effective filing date is 2007‑04‑17 (via 11/736,544 → 12/860,666 → 13/097,885 → 14/246,525), the pre‑AIA version of 35 U.S.C. § 103(a) governs. The analysis below follows the Graham v. John Deere, 383 U.S. 1 (1966) factors (scope/content of the prior art; differences from the claims; level of ordinary skill; objective evidence) and the KSR Int'l v. Teleflex, 550 U.S. 398 (2007) rationales — notably (a) known elements combined by known methods to yield predictable results, (b) use of a known technique to improve a similar device in the same way, and (c) a finite set of identified, predictable solutions with a reasonable expectation of success. A motivation to combine must be articulated and supported by the record (which is why the prosecution record and the PTAB expert declarations cited below matter).
Confidence / accuracy caveats (required by my operating rules):
- I was cut off by my search-step limit before retrieving the verbatim, full claim set of the '779 patent. I therefore analyze by limitation groups reconstructed from (i) the Google Patents abstract and definitions, (ii) the prosecution history of application 14/246,525 (the '779 application) introduced as Roku Exhibit 1060 in IPR2022‑01315, and (iii) the closely related claim text quoted in the AlmondNet v. FreeWheel infringement chart. Where I use a sibling's claim text as a proxy, I flag it.
- Three of the four references the examiner called "closest prior art" (Ertugrul, Howcroft, Haeuser) have publication dates after 2007‑04‑17. They are only available as prior art under pre‑AIA § 102(e) if their own effective filing dates precede the '779 priority date. I could not confirm those filing dates in this session; treat the § 102(e) status of those three as a to‑verify item.
- Search results that appear to contradict training data were treated as ground truth; no patent number has been auto‑corrected.
Contradiction check against the earlier Litigation Summary. No contradiction. The earlier section concluded the '779 patent itself was "not found" as an asserted patent. The new material is consistent — but adds an important nuance: the '779's prosecution history is in the PTAB record as an exhibit (Roku Exhibit 1060 in IPR2022‑01315), even though the patents challenged in the petitions I saw were the '198 (10,321,198) and the '878 (10,715,878), not the '779. IPR2022‑01315 is styled Roku, Inc. v. AlmondNet, Inc. & Intent IQ, LLC and resulted in a denial of institution (Paper 9, 2023‑03‑13) on the "common LAN" limitation, followed by a rehearing request and a POP request. Denial of institution is not a § 103 adjudication and carries no preclusive weight.
1. The invention as claimed (limitation groups)
The '779 shares the specification of the family (7,861,260 / 8,281,336 / 8,695,032). The Google Patents page states "Prior art keywords: online, address, television, top box, user" and "Prior art date: 2007‑04‑17." The claims fall into these functional groups:
| Group | Limitation (reconstructed) | Why it is the crux |
|---|---|---|
| A | For each of a multitude of users, electronically associating an online access IP address with a set‑top box IP address (in the broader/’260‑style claims, "based on a common IP address"; in some claims, via a database of STB identifiers, online access IP addresses, and times/dates) | This is the association step. |
| B | Using user profile information derived from online activity from a first online access IP address to automatically cause/select a first television advertisement directed to the STB indicated by the associated STB IP address | The cross‑media targeting step. |
| C | The "common IP address" refinement — network traffic routed via the common IP address to both an online user interface device and a set‑top box (dynamically assigned modem/router IP) | The differentiator the PTAB found not taught by Roku's combination. |
| D | Privacy limitations — the association and/or the profile information are handled "without using personally identifiable information"; the examiner's stated allowability reason required that online behavioral profile information not be transmitted to the third‑party television service provider and that no PII be received from that provider | The strongest nonobviousness hook, and the issue on which the examiner allowed claims 52‑80. |
The examiner's reasons for allowance (application 14/246,525, Primary Examiner Nnenna Ekpo, Art Unit 2425, 2015‑07‑13) expressly relied on the Group D language and stated that Ertugrul, Blasko, Howcroft, and Haeuser "show similar method" but "do not disclose nor suggest" the third‑party‑TVSP/no‑PII‑transmission combination. That is the rejection–allowance battleground a § 103 challenge must attack.
2. Level of ordinary skill
A POSITA here would be a software/network engineer or systems architect with ~2–4 years' experience in networked content delivery, online advertising systems, and/or IP‑based television (IPTV), familiar with DHCP dynamic IP allocation, NAT/router IP addressing, HTTP cookies, ad‑serving infrastructure, and set‑top‑box middleware. The IPR expert declaration in the family (Dr. Samrat Bhattacharjee, ROKU‑1003) and the PTAB's own framing align with this level.
3. The prior art of record (the "Prior Art" materials on the page)
(i) References cited by the examiner in the '779 prosecution (PTO‑892, 2015‑07‑13):
| Ref | Identifier | Subject matter |
|---|---|---|
| Ertugrul et al. | US 2008/0222283 A1 (09‑2008) | Monitoring network activities of client devices across multiple service providers; correlating activity to client devices/service providers; rules to identify a user to receive targeted content; targeted content to the client device |
| Blasko | US 2001/0049620 A1 (12‑2001) | Remote databases of transactional data; local profilers generating profile vectors; secure profiling server (915) receiving vectors from set‑top boxes; privacy via arbitrary transaction IDs |
| Howcroft et al. | US 2008/0040742 A1 (02‑2008) | IPTV targeted advertising to a selected subscriber segment based on subscriber profile/behavioral data; insertion of targeted ad into video; reporting of delivery |
| Haeuser et al. | US 2007/0283384 A1 (12‑2007) | STB receives targeted ad with the television programming from an IPTV video server; recognizes an ad‑insertion point; inserts the targeted ad |
| Lee, Ki Kuk | US 2002/0010653 A1 | Cited as pertinent, not relied upon |
| Conkwright et al. | US 2002/0133490 A1 | Cited as pertinent, not relied upon |
(ii) References on the face of the family (56) lists and Unified Patents "Patent Art (201)" (selected): Merriman, US 5,948,061 (online ad targeting/delivery based on a client‑side profile — DoubleClick); Guyot, US 6,119,098 (targeted ads to a computer using a unique proprietary identifier and subscriber data); Kung, US 6,055,573 (customized advertising); Eldering‑era TV targeting; US 2002/0129368 (Prime Research Alliance E — "Profiling and Identification of Television Viewers"); US 6,073,241 (CBS Interactive — tracking browser requests across distinct domains using persistent client‑state); US 6,385,592 (delivering customized ads in interactive communication systems); Warrier, US 7,949,785 (private/public address mapping via a gateway — supports the "common IP address"/NAT concept); foreign art including JP 2003‑331183 and JP 2006‑004441.
(iii) References used by Roku in the family's IPRs (PTAB record): Madhavan, US 8,180,674; Whitehead, US 2008/0281697; Baum; Damick; Varghese; Vallier, US 9,495,682; and Shkedi's own US 2005/0086112.
4. Combinations that render the claims obvious
Ground 1 — Ertugrul + Blasko (the examiner's own "closest art" pairing)
- Ertugrul supplies Group A/B architecture: collecting network‑activity information from client devices and correlating it to client devices and to service providers, applying rules to identify a user, and providing targeted content to the client device associated with that user — i.e., cross‑device, cross‑provider behavioral targeting.
- Blasko supplies the missing TV linkage and the privacy mechanism: a profiling server that receives profile vectors from set‑top boxes alongside Internet surfing data, with transaction identifiers deliberately chosen to "protect the privacy of the consumer."
- Motivation: Both are in the same field (targeted advertising across devices/networks) and address the same problem — matching ads to users based on prior behavior. A POSITA seeking to extend Ertugrul's correlation to television delivery would look to Blasko's STB‑profile‑vector teaching; the result (profile the online behavior, associate it with the household's STB, deliver a targeted TV ad) is the predictable aggregation of two known systems, and Blasko expressly supplies the non‑PII/privacy motivation that the '779's spec asserts as its advantage.
- This pairing was actually applied by the examiner against dependent claims (claims 61‑62 rejected over Blasko in view of Ertugrul per the family prosecution record), which is powerful evidence that the combination was considered technically sound.
Ground 2 — Ertugrul + Howcroft + Haeuser (IPTV delivery)
- Howcroft teaches the Group B end‑to‑end flow in an IPTV environment: build subscriber profile/behavioral data, select a segment, insert a targeted ad into video, and report delivery to the advertiser.
- Haeuser teaches the STB‑side mechanism: receive targeted ad content with the TV programming from the IPTV video server, detect the ad‑insertion point, and splice the targeted ad.
- Motivation: Both are IPTV targeted‑advertising references; Haeuser supplies the client‑side enabler without which Howcroft's segment‑targeted ads cannot be presented. Combining a server‑side targeting/insertion system with a known STB insertion mechanism is a textbook KSR "known technique improving a similar device in the same way," and the IPTV service provider inherently knows the STB identity/address (the "common IP address"/STB identifier of Groups A and C).
Ground 3 — Madhavan + Whitehead (± Vallier) — the combination Roku actually ran
- Madhavan (US 8,180,674) provides an advertising/content management entity that matches ads to user events/actions/interests, with user profiles containing demographic, geographic, and behavioral data.
- Whitehead (US 2008/0281697) is the key reference for Group C: it expressly teaches that multiple IP‑enabled devices of a residential home network — PCs, laptops, set‑top boxes, mobile handsets — are accessed "through a single IP connection managed by a home‑router," so that "a single IP access session can involve multiple devices," and that devices/IP addresses can be associated using the router's single IP address plus a timestamp (e.g., "1180474.4374" or "2007.06.01.22:05:36" formats), all as non‑PII/anonymous addressability. Whitehead even articulates the motivation: "anonymous marketing techniques can be considered more desirable, from a privacy standpoint, than non‑anonymous marketing techniques."
- Vallier (US 9,495,682) adds TV‑viewing‑habit monitoring and interactive‑ad feedback for more effective targeting (relied on for dependent claims such as timing/feedback limitations).
- Motivation: Whitehead itself supplies the express privacy motivation and the exact LAN/common‑IP‑address association mechanism the claims require, while Madhavan supplies the ad‑selection engine. Roku's expert (Dr. Bhattacharjee) averred a POSITA would combine them for "improved content management… and improved privacy protection without using PII."
Ground 4 — Merriman / Guyot + Blasko or Whitehead (extend known online behavioral targeting to TV)
- Merriman (US 5,948,061) and Guyot (US 6,119,098) establish, well before 2007, that ads can be selected from an online behavioral profile tied to a computer identifier (cookie / "unique proprietary identifier"). The '779 specification itself admits this: "the use of cookies enables an ad server to recognize an Internet site visitor… The ad server can target future advertising to the site visitor based on that previous activity."
- The only remaining problem is transporting that known targeting decision to the household's television. Whitehead (or Blasko's STB profile vectors, or Hauser/Howcroft's IPTV delivery) supplies that transport.
- Motivation: The specification also admits the prior art of cross‑media targeting — the announced Google–BSkyB arrangement is described as using BSkyB portal searches to target that subscriber's DVR with ads. The '779 characterizes the sole shortcoming of those systems as the need to use PII. Once a non‑PII association (Whitehead's common router IP + timestamp; Blasko's privacy‑preserving transaction IDs) is available, the claimed subject matter is the predictable combination of admitted prior art with a known anonymity technique — squarely KSR.
5. Dependent‑claim targets
Dependent limitations on common‑IP‑address identity ("online access IP address and STB IP address are the same"), dynamic DHCP reassignment, periodic/irregular STB reporting, matching by time+date, identifiers/cookies placed on the STB, and mobile/roaming devices are each independently met by Whitehead's IP‑access‑session + timestamp model, Blasko's STB profiler/server architecture, and, for mobile, Whitehead's inclusion of mobile handsets in the same IP session. These are the kinds of "routine" secondary limitations the PTAB treats as obvious once the independent claim falls.
6. Objective evidence and counter‑arguments (why the patent survives today)
A defensible § 103 opinion must also present the weaknesses:
- The "common LAN / common IP address routed to both the computer and the STB" limitation is the sticking point. In IPR2022‑01315 the Board denied institution, finding an insufficient showing that the asserted combination taught associating devices of a common LAN (it examined Baum's FIG. 8 largely in isolation). Roku moved for rehearing and POP review, arguing the Board ignored Baum's FIG. 5 (multiple IP‑addressed devices on a common LAN) and Madhavan's own teachings. This shows a real, litigated dispute about whether the prior art reaches the specific common‑IP‑address‑routing architecture. However, the decision is preliminary and non‑precedential, and the denial turned on the evidentiary sufficiency of that petition's mapping — not on a holding of validity.
- Group D (no online‑behavioral‑profile transmission to, and no PII receipt from, the third‑party TVSP) is the limitation the examiner used to allow claims 52‑80. Howcroft and Haeuser are, respectively, an IPTV network operator's and a TVSP's own systems — i.e., the profile naturally sits inside the TV service provider. A challenger must therefore supply a reference in which the ad‑selection profile is held by an entity outside the TVSP (e.g., an online ad server / profile provider, as in Ertugrul's multi‑party correlation or Whitehead's anonymous IP‑session marketer) and explain why no PII needs to cross to the TVSP. This is articulable but is precisely where the prosecution record shows the art falling short.
- § 102(e) timing. Confirm the effective filing dates of Ertugrul (US 2008/0222283), Howcroft (US 2008/0040742), and Haeuser (US 2007/0283384) against 2007‑04‑17. Their publication dates all post‑date the '779 priority date; only a § 102(e) showing (or reliance on the earlier‑published Blasko, Merriman, Guyot, and Whitehead references) will support a § 103 ground.
- No secondary‑considerations record has surfaced (no nexus evidence of commercial success, long‑felt need, or industry praise attributable to the claimed subject matter), so objective evidence currently weighs neither way.
- Design‑around / hindsight risk. Because the specification expressly frames the invention as PII avoidance, a challenger must be careful that the motivation to combine is drawn from the references (Whitehead's express anonymity rationale; Blasko's express privacy transaction IDs) rather than from the '779's own disclosure.
7. Bottom line
On the record available, the '779 patent is vulnerable under § 103 for its broad claims via:
- Ertugrul + Blasko (the examiner's own "closest art," already applied to dependent claims), and
- Madhavan + Whitehead (+ Vallier) — the strongest combination for the common‑IP‑address / common‑LAN limitation, because Whitehead expressly teaches associating a PC, STB, and mobile device of one home network via the single router IP plus timestamp, and expressly motivates doing so anonymously without PII.
Its best defense rests on the Group D privacy limitations (prohibiting transmission of online behavioral profile data to the third‑party TV service provider and receipt of PII from it, claim type allowed as claims 52‑80) and on the untested factual dispute over whether the art teaches the common IP address routing traffic to both the online device and the STB — the same issue on which the PTAB denied institution of Roku's IPR against the sibling '878 patent.
Highest‑value next steps: (a) pull the verbatim claim set of 14/246,525 / US 9,369,779 from the issued patent PDF to lock down every limitation; (b) confirm the effective filing dates of Ertugrul, Howcroft, and Haeuser for § 102(e) purposes; (c) obtain the full ROKU‑1002/ROKU‑1003 declarations and the IPR2022‑01315 institution decision text; and (d) review the AlmondNet v. FreeWheel and AlmondNet v. Roku invalidity contentions, which likely already chart these exact combinations against the family.
Sources: Google Patents US9369779B2; Roku Exhibit 1060 — Prosecution History of US 9,369,779; IPR2022-01315 Petition (’878); IPR2022-01315 Request for Rehearing; P‑TACTS petition 1549592 (Madhavan/Whitehead/Vallier expert declaration, ’198 patent); FreeWheel infringement chart (’260 claim 1); Unified Patents US‑9369779‑B2; US9813778 (sibling, (56) references).
Generated 9/28/2026, 12:34:45 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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