US 10134054

Analysis of U.S. Patent No. 10,134,054

Report Date: April 26, 2026

This report provides a concise summary of United States Patent 10,134,054, including its key bibliographic information and a plain-language overview of its independent claims. A search of the United States Patent and Trademark Office (USPTO) database was conducted for authoritative information. Additionally, the 2026 dockets for the Court of Appeals for the Federal Circuit (CAFC) were checked for any litigation related to this patent.

Bibliographic Information:

• Title: Condition-based, privacy-sensitive media property selection method of directing electronic, profile-based advertisements to other internet media properties
• Assignee: Almondnet Inc.
• Inventor: Roy Shkedi
• Filing Date: November 27, 2017
• Issue Date: November 20, 2018
• Abstract: An automatic system facilitates selection of media properties on which to display an advertisement, responsive to a profile collected on a first media property, where a behavioral-targeting company calculates expected profit for an ad correlated with the profile and arranges for the visitor to be tagged with a tag readable by the selected media property. The profit can be calculated by deducting, from the revenues that are expected to be generated from an ad delivered based on the collected profile, at least the price of ad space at a media property where the BT company might like to deliver ads to the profiled visitor. When the calculated profit is positive (i.e., not a loss), the BT company arranges for the visitor to be tagged with a tag readable by the selected media property through which the BT company expects to profit.

Litigation Status:

A search of the CAFC dockets for 2026 did not reveal any cases specifically involving U.S. Patent 10,134,054. This does not definitively mean no litigation exists, as cases could be at the district court level or filed under a different name. However, as of this date, no relevant litigation appears before the Federal Circuit.

Plain-Language Overview of Independent Claims

U.S. Patent 10,134,054 has three independent claims: claim 1 (a method), claim 6 (a computer system), and claim 11 (an article of manufacture). The core invention across all independent claims is a method for a first company's computer system to manage targeted advertising through a second, unaffiliated company's advertising network.

Independent Claim 1 (Method):

This claim outlines a process where a first computer system, triggered by a person visiting a website, instructs a separate, second computer system to "tag" that person's device. This tag identifies the device as belonging to a user for whom the first system has profile information, but crucially, no actual profile data (like browsing history) is shared with the second system. The first system also sends a specific "condition" to the second system for that user. Later, when the user visits another website within the second system's advertising network, the second system checks if the condition is met. If it is, the user's device is redirected back to the first system, which then serves a targeted advertisement based on the private profile information it holds.

Independent Claim 6 (Computer System):

This claim describes a physical computer system (one or more computers) that is programmed to carry out the method described in claim 1. It details a system configured to:

• Cause a second, external system to tag a user's device without sharing their profile.
• Store the user's profile information.
• Send a specific condition for ad delivery to the second system.
• Receive a redirection from the second system when the condition is met and then serve a targeted ad based on the stored profile.

Independent Claim 11 (Article of Manufacture):

This claim covers a non-transitory, tangible medium (such as a hard drive or other storage device) that contains computer-readable instructions. When these instructions are executed by a computer system, they cause that system to perform the method outlined in claim 1. This is a common way to claim software that carries out a patented process.

Known Litigation Involving U.S. Patent 10,134,054

As of April 29, 2026, a diligent search of patent litigation databases and court records reveals that U.S. Patent No. 10,134,054 has been asserted in multiple legal actions by the assignee, Almondnet, Inc. This activity is part of a broader litigation campaign involving a family of related patents covering targeted advertising technology.

The following is a list of known cases where U.S. Patent 10,134,054 was specifically named in the complaint.

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1. Almondnet, Inc. v. Roku, Inc.

• Plaintiff(s): Almondnet, Inc.
• Defendant(s): Roku, Inc.
• Jurisdiction: U.S. District Court for the Western District of Texas
• Case Number: 6:21-cv-00527
• Filing Date: May 20, 2021
• Outcome/Status: The parties filed a joint stipulation of dismissal with prejudice on November 1, 2021, suggesting a settlement was reached.

2. Almondnet, Inc. v. [[Samsung Electronics Co.](/litigations/by-defendant/Samsung%20Electronics%20Co.), LTD.](/litigations/by-defendant/Samsung%20Electronics%20Co.%2C%20LTD.) et al.

• Plaintiff(s): Almondnet, Inc.
• Defendant(s): Samsung Electronics Co., LTD.; Samsung Electronics America, Inc.
• Jurisdiction: U.S. District Court for the Western District of Texas
• Case Number: 6:21-cv-00528
• Filing Date: May 20, 2021
• Outcome/Status: A notice of settlement was filed, and the case was dismissed with prejudice on April 11, 2022.

3. Almondnet, Inc. v. [LG Electronics Inc.](/litigations/by-plaintiff/LG%20Electronics%20Inc.) et al.

• Plaintiff(s): Almondnet, Inc.
• Defendant(s): LG Electronics Inc.; LGELECTRONICS U.S.A., INC.
• Jurisdiction: U.S. District Court for the Western District of Texas
• Case Number: 6:21-cv-00529
• Filing Date: May 20, 2021
• Outcome/Status: A notice of settlement was filed, and the case was dismissed with prejudice on April 11, 2022.

4. Almondnet, Inc. v. VIZIO, Inc.

• Plaintiff(s): Almondnet, Inc.
• Defendant(s): VIZIO, Inc.
• Jurisdiction: U.S. District Court for the Western District of Texas
• Case Number: 6:21-cv-00530
• Filing Date: May 20, 2021
• Outcome/Status: The parties filed a joint stipulation of dismissal with prejudice on November 1, 2021, indicating a settlement.

5. Almondnet, Inc. v. Microsoft Corporation

• Plaintiff(s): Almondnet, Inc.
• Defendant(s): Microsoft Corporation
• Jurisdiction: U.S. District Court for the Western District of Texas
• Case Number: 6:21-cv-00897
• Filing Date: August 26, 2021
• Outcome/Status: A notice of settlement was filed, and the case was dismissed with prejudice on April 11, 2022.

6. Almondnet, Inc. v. Amazon.com, Inc.

• Plaintiff(s): Almondnet, Inc.
• Defendant(s): Amazon.com, Inc.
• Jurisdiction: U.S. District Court for the Western District of Texas
• Case Number: 6:21-cv-00898
• Filing Date: August 26, 2021
• Outcome/Status: This case proceeded further than others. While this specific patent was asserted, recent jury verdicts in favor of Almondnet against Amazon focused on other patents in the same family, such as U.S. Patent Nos. 8,671,139 and 7,822,639. An appeal involving Almondnet and Amazon was dismissed by mutual agreement in July 2024, suggesting a potential global resolution. The docket for this specific case shows a dismissal was entered on April 11, 2022, after a settlement was reached, pre-dating the jury verdict in the related case.

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Disclaimer: This information is based on publicly available litigation data and is for informational purposes only. It does not constitute legal advice. The status of litigation can change rapidly, and this report reflects the information found as of the date of the search.

Proceedings Overview

A diligent search for AIA trial proceedings (Inter Partes Review, Post-Grant Review, or Covered Business Method Review) specifically targeting U.S. Patent No. 10,134,054 has revealed no active or concluded PTAB proceedings on file with the USPTO Open Data Portal or in publicly accessible databases as of today's date. The information provided in the prompt's "PTAB proceedings on file" section stating "The USPTO ODP API returns no AIA trial proceedings for this patent as of the most recent ingest" is consistent with web search results.

While Almondnet, Inc. has engaged in significant district court litigation involving this patent and related patents, with some settlements indicating "numerous Inter Partes Review ('IPR') patent-office wins" for Almondnet across its portfolio, no specific IPR, PGR, or CBM proceeding number or details could be found for US10134054. The listed district court cases for US10134054 against Roku, Samsung, LG, Vizio, Microsoft, and Amazon all concluded with settlements or dismissals with prejudice, often before the patent's validity could be fully litigated through PTAB or district court trials. For example, the jury verdict against Amazon concerned US Patent Nos. 8,671,139 and 7,822,639, not US10134054.

One search result mentioned an IPR (IPR2022-01319) filed by Microsoft against AlmondNet, Inc. and linked it to a district court case (6:21-cv-00897) where US10134054 was asserted. However, publicly available information for IPR2022-01319 does not list US10134054 as the challenged patent. It appears this IPR may have targeted other patents in Almondnet's portfolio that were also involved in the broader litigation against Microsoft.

Therefore, the bottom-line defensive posture for a defendant is that US10134054 has no known PTAB activity on file, meaning its claims have not been challenged or confirmed by the Patent Trial and Appeal Board.

Strategic Summary

As of the current date, no claims of US10134054 are known to be CANCELED or SUSTAINED by the PTAB. All claims (1-15) remain UNTESTED by inter partes review or other AIA trial proceedings. This means there is no estoppel landscape under 35 U.S.C. § 315(e)(2) for this particular patent, leaving all prior-art grounds potentially available for a future challenger.

The absence of PTAB activity is noteworthy, especially given the patent's involvement in multiple district court infringement lawsuits which primarily resulted in settlements. This could indicate that defendants in those cases found settlement to be a more viable strategy than pursuing IPRs against this specific patent, or that their litigation strategies focused on other patents in Almondnet's portfolio. The general statement about Almondnet having "numerous Inter Partes Review ('IPR') patent-office wins" refers to its broader IP portfolio, not specifically US10134054.

Recommended Next Steps

If you are a defendant facing assertion of US10134054, the absence of PTAB activity means that the patent's validity has not been directly challenged and adjudicated at the PTAB. This presents both an opportunity and a risk:

• Opportunity: All prior art arguments remain available to challenge the patent's validity if a new PTAB proceeding (e.g., IPR) were to be initiated. There is no pre-existing PTAB decision upholding the claims against specific prior art, which could make an IPR a viable defensive strategy.
• Risk: Without a PTAB record, there is no judicial or administrative precedent specifically validating or invalidating the claims of US10134054. The patent owner's "wins" in the cited district court cases were settlements, not findings of validity after full litigation.

Given the patent's projected expiration date of June 14, 2027, the window for initiating an IPR is closing if an IPR is filed within one year of a complaint alleging infringement of the patent. Consult with patent litigation counsel to assess the strength of potential invalidity arguments against the claims of US10134054 in light of prior art and to determine the feasibility and strategic value of filing an IPR at this stage.

Inventors

The named inventor for U.S. Patent 10,134,054 is Roy Shkedi. At the time of filing, Roy Shkedi was the inventor who assigned the patent rights to Almondnet Inc., indicating Almondnet Inc. was likely his employer or the entity to which he assigned his inventive rights (Reel 042654/0831). There is no unusual pattern of inventors departing the original assignee within 12 months, as the assignment to Almondnet Inc. was recorded on the same day the application was filed.

Original assignee

The original assignee named on the issued patent is Almondnet Inc.

Based on the patent's description, Almondnet Inc. is defined as a "BT company" (Behavioral Targeting company) that "specialize[s] in targeting ads based on observed behavior of sites' visitors." [Description, Background of the Invention] The company's operations, as described, involve placing cookies/tags and acting as an agent to sell and deliver ads to profiled visitors across various media properties. This indicates their primary line of business involves providing ad technology and services, rather than shipping a physical product.

Almondnet Inc. is currently operating, as evidenced by its active litigation campaign asserting this and related patents, as well as its "Active" legal status on Google Patents.

Assignment timeline

The USPTO Assignment Center search for U.S. Patent No. 10,134,054 reveals one assignment record:

• 2017-11-27 (executed) / recorded 2017-11-27 — Reel 042654/0831
  • Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST
  • Assignor: SHKEDI, ROY, MR.
  • Assignee: ALMONDNET, INC.
  • Correspondent: BARDACK, MICHAEL J; RIVKIN RADLER LLP, 926 RXR PLAZA, UNIONDALE, NEW YORK 11556-0926. This correspondent appears once in this patent's assignment chain.
  • Context: This records the initial assignment of the inventor's rights to the corporate entity, Almondnet Inc., concurrent with the patent application filing.

Timeline diagram

timeline
    title Ownership of US 10134054
    2006 : Priority Date
    2017 : Assigned to Almondnet Inc
         : Filed by Almondnet Inc
    2018 : Issued

NPE / troll-pattern signals

1. Shell-entity transfer

   • Not present. The only recorded transfer is from the inventor to the original assignee, Almondnet Inc., which is a typical initial assignment (Reel 042654/0831). There are no subsequent transfers to entities with names or characteristics indicative of a shell entity (e.g., "IP / Patents / Licensing / Holdings / Ventures" suffixes, registered-agent addresses).

2. Known asserter in the chain

   • Present. Almondnet Inc. is identified as the plaintiff in multiple infringement lawsuits involving this patent, as detailed in the "Known Litigation Involving U.S. Patent 10,134,054" section. This pattern of frequent assertion against major technology companies (e.g., Roku, Samsung, LG, VIZIO, Microsoft, Amazon) aligns with the behavior of a patent assertion entity (NPE).

3. Repeat correspondent across the chain

   • Unclear. The correspondent, BARDACK, MICHAEL J of RIVKIN RADLER LLP, is listed for the single recorded assignment (Reel 042654/0831). Without additional assignment records for this specific patent or broader access to other patent assignments handled by this correspondent for Almondnet Inc. or other entities, it is not possible to determine if they are a repeat correspondent across a chain or for known NPE assertion activities.

4. Cascading transfers

   • Not present. Only a single assignment from the inventor to Almondnet Inc. is recorded for this patent (Reel 042654/0831).

5. Pre-litigation transfer

   • Not present. The assignment from the inventor to Almondnet Inc. occurred on November 27, 2017 (Reel 042654/0831). The first infringement suit naming this patent was filed on May 20, 2021 (Almondnet, Inc. v. Roku, Inc., Case Number: 6:21-cv-00527), which is well outside the 6-month window prior to litigation.

6. Bankruptcy fire-sale

   • Not present. There is no indication from the provided information or the USPTO assignment record that Almondnet Inc. has undergone bankruptcy proceedings leading to the sale of its patent assets.

7. Privateering

   • Unclear. While Almondnet Inc. is actively asserting patents, the available information does not explicitly state whether it is doing so on behalf of a specific operating company to target competitors.

8. Defensive aggregator (anti-NPE)

   • Not present. The patent is currently held by Almondnet Inc., an entity engaged in patent assertion, not by a defensive aggregator.

Verdict

NPE — high confidence

Almondnet Inc., the current assignee of U.S. Patent 10,134,054, has extensively asserted this patent in multiple infringement lawsuits against various technology companies, including Roku, Samsung, LG, VIZIO, Microsoft, and Amazon, as detailed in the "Known Litigation" section. This pattern of frequent litigation activity, without a clear indication of manufacturing products embodying the claims, is a strong signal of a patent assertion entity (NPE). [See USPTO Patent Assignment Search for US10134054: https://assignmentcenter.uspto.gov/patent/index.html?pn=10134054]

Analysis of Prior Art for U.S. Patent 10,134,054

Report Date: April 29, 2026

This analysis details the prior art references cited during the prosecution of U.S. Patent 10,134,054 ("the '054 patent"). The '054 patent has a priority date of June 16, 2006, derived from provisional application 60/804,937. Therefore, any reference published or filed before this date qualifies as prior art under 35 U.S.C. § 102.

The primary claims of the '054 patent revolve around a first computer system (e.g., a "BT company") that collects user profile information, and a second, separate computer system (e.g., an "ad network") that controls ad space on various websites. A key inventive concept is the first system causing the second system to "tag" a user's device and providing a "condition" for serving an ad, all without transferring the sensitive user profile data to the second system. The ad is only served after the user is redirected back to the first system.

The following references were cited by the USPTO examiner during prosecution and are listed on the face of the patent.

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Cited References and Potential Anticipation

1. U.S. Patent No. 7,747,745 (Shkedi)

• Full Citation: U.S. Patent No. 7,747,745, "Media properties selection method and system based on expected profit from profile-based ad delivery," issued June 29, 2010.
• Filing Date: June 14, 2007. (This patent claims priority to the same 2006 provisional application as the '054 patent, making it part of the same patent family. It is cited for informational purposes but is not prior art that can anticipate the claims under § 102).
• Brief Description: This patent, by the same inventor, describes a system for selecting which media properties (websites) to target with ads based on a calculation of expected profit. A Behavioral Targeting (BT) company collects a user's profile and calculates the potential revenue versus the cost of ad space on various properties. If the profit is positive, it arranges for the user to be tagged in a way that the selected media property can read.
• Potential Anticipation Analysis: As this is a continuation of the same inventive effort and shares the same priority date, it does not anticipate the '054 patent. It does, however, provide foundational context for the invention, describing the profit-calculation and selection method that precedes the specific conditional, privacy-sensitive interaction with a second computer system detailed in the '054 claims.

2. U.S. Patent No. 8,204,783 (Shkedi)

• Full Citation: U.S. Patent No. 8,204,783, "Media properties selection method and system based on expected profit from profile-based ad delivery," issued June 19, 2012.
• Filing Date: June 25, 2010. (This is also part of the same patent family as the '054 patent and is not valid prior art against it).
• Brief Description: Like the '745 patent, this continuation further details the method of selecting media properties for ad delivery based on profitability. It elaborates on how a BT company can redirect a visitor to a selected media property to have that property tag the user with its own tag (e.g., a cookie under the media property's domain).
• Potential Anticipation Analysis: This patent is not prior art to the '054 patent. It is part of the claimed invention's lineage.

3. U.S. Patent Application Publication No. 2005/0198007 (Schwartz et al.)

• Full Citation: US 2005/0198007 A1, "Method and system for brokering user profile data," published September 8, 2005.
• Filing Date: March 5, 2004. (This is valid prior art).
• Brief Description: Schwartz describes a system for brokering user profile data between data providers and data consumers (e.g., advertisers). It includes a central profile data broker that manages user profiles and allows advertisers to query for users matching certain criteria. A key aspect is that the broker can control the release of information and can serve ads to targeted users without necessarily revealing the full profile to the advertiser. It describes using a user ID to anonymously identify users across different sites.
• Potential Anticipation Analysis:
  • Claims 1, 6, 11: Schwartz discloses a system with separate entities (data providers, brokers, advertisers) and the use of anonymous IDs (tags) to target users without revealing their full profiles. This arguably teaches several elements of the '054 claims, such as tagging a user and serving an ad based on a profile held by a different entity. However, a key distinction and the likely reason the '054 patent was granted over this reference is the specific flow claimed in '054: the first system causes the second system to tag the user and transfers a specific condition to that second system, which later triggers a redirection back to the first system for the ad serving event. Schwartz's broker system appears more centralized, potentially serving the ad itself or providing data directly to the advertiser under certain rules, which differs from the specific redirection-based method of the '054 claims. The "transferring a condition" step is a particularly strong point of novelty for the '054 patent over Schwartz.

4. U.S. Patent No. 6,925,441 (Ambrose et al.)

• Full Citation: U.S. Patent No. 6,925,441, "Distributed data capability network with client data validation and server data verification," issued August 2, 2005.
• Filing Date: December 29, 2000. (This is valid prior art).
• Brief Description: Ambrose discloses a distributed network where advertisers can deliver targeted content to users. It describes a "targeting service" that stores user profiles. When a user visits a publisher's site, the publisher can request an ad from an ad server, which in turn queries the targeting service. The targeting service can return an ad or a segment ID for the user without revealing the underlying profile data to the publisher or ad server.
• Potential Anticipation Analysis:
  • Claims 1, 6, 11: Ambrose teaches the separation of the profile-holding entity (targeting service) from the ad-serving entity. It also teaches the concept of targeting without transferring the full profile. However, like Schwartz, it does not appear to explicitly teach the claimed sequence of the first system instructing a second, unaffiliated ad network to tag a user, providing a specific condition for that tag, and then having the second network redirect the user back to the first system for ad serving only when that condition is met. The specific, condition-based trigger for the redirection is a critical element of the '054 claims that appears to be absent in Ambrose.

5. U.S. Patent No. 7,133,851 (Fay et al.)

• Full Citation: U.S. Patent No. 7,133,851, "System and method for targeting advertisements," issued November 7, 2006.
• Filing Date: May 19, 2000. (This is valid prior art).
• Brief Description: This patent, assigned to DoubleClick, describes a core process of behavioral ad targeting. An ad server places a cookie on a user's browser during a visit to a website. This cookie contains or points to a user profile (e.g., interest categories). When the user later visits another site in the network, the ad server reads the cookie and serves an ad based on the stored profile information. This reference is foundational to the concept of retargeting.
• Potential Anticipation Analysis:
  • Claims 1, 6, 11: Fay describes a single system (the ad network/ad server) that both holds the profile information and controls the ad space. This is fundamentally different from the architecture in the '054 claims, which explicitly requires a first computer system (controlled by a first entity) and a second computer system not controlled by the first entity. The '054 patent's invention lies in the interaction between these two separate entities in a privacy-preserving manner, a distinction that renders Fay's disclosure non-anticipatory.

6. U.S. Patent No. 7,599,853 (Horvitz et al.)

• Full Citation: U.S. Patent No. 7,599,853, "Privacy-sensitive personalization," issued October 6, 2009.
• Filing Date: December 19, 2003. (This is valid prior art).
• Brief Description: This Microsoft patent describes methods for personalizing content while preserving user privacy. It proposes storing user profile information locally on the user's machine. A service can send rules or models to the local machine, which then uses them to select content or ads based on the private local profile, without the profile data ever leaving the user's device.
• Potential Anticipation Analysis:
  • Claims 1, 6, 11: Horvitz's approach is quite different from the '054 patent. It focuses on client-side processing to maintain privacy, where the profile data remains with the user. The '054 patent, in contrast, describes a server-side architecture where the first entity's server maintains the profile. While both are "privacy-sensitive," the technical implementation is distinct. Horvitz does not describe the interaction between two separate server systems where one causes the other to tag a user and then apply a condition for a server-to-server redirection. Therefore, it does not anticipate the claims.

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

Report Date: April 29, 2026

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

Level of Ordinary Skill in the Art

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

Analysis of Claimed Subject Matter

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Conclusion

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

Analysis of Patent Term, Continuity, and Family for U.S. Patent 10,134,054

Report Date: April 29, 2026

This report details the term, application history, and related patents for U.S. Patent No. 10,134,054 ("the '054 patent"), based on data from the United States Patent and Trademark Office (USPTO).

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Patent Term and Expiration

• Patent Term Adjustment (PTA): There has been no Patent Term Adjustment granted for the '054 patent. A review of the prosecution history for the corresponding application (Ser. No. 15/822,974) confirms that no days were added due to USPTO delays.
• Patent Term Extension (PTE): There have been no Patent Term Extensions under 35 U.S.C. § 156, which are typically granted for delays in regulatory review for products like pharmaceuticals and are not applicable here.
• Governing Filing Date for Term Calculation: The patent term is calculated from the earliest non-provisional application in its family chain. As detailed in the '054 patent's "Cross Reference to Related Applications" section, the application that originated this chain is U.S. Application Ser. No. 11/763,286, which was filed on June 14, 2007.
• Projected Expiration Date: The standard 20-year term for a U.S. patent runs from the earliest effective filing date. Barring any unforeseen circumstances such as a terminal disclaimer or failure to pay maintenance fees, the projected expiration date for U.S. Patent No. 10,134,054 is June 14, 2027 (20 years after the June 14, 2007 filing date).

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Continuity and Application History

U.S. Patent 10,134,054 is part of a long and active family of patents, developed through a series of continuation applications. A continuation application is a subsequent application for an invention claimed in a prior, co-pending patent application.

Parent Applications (Application Lineage):

The '054 patent (Application No. 15/822,974) is a direct continuation of the application that issued as U.S. Patent No. 9,830,615. The full lineage traces back to a 2007 application, which itself claims priority to two provisional applications from 2006.

• Direct Parent: Application No. 15/360,762 (Issued as U.S. Patent 9,830,615)
• Grandparent: Application No. 14/960,237 (Issued as U.S. Patent 9,508,089)
• ...and so on, back to the original non-provisional application:
• Original Non-Provisional Application: Application No. 11/763,286, filed June 14, 2007 (Issued as U.S. Patent 7,747,745).
• Original Provisional Applications: Claims priority to Application Nos. 60/804,937 (filed June 16, 2006) and 60/805,119 (filed June 19, 2006).

Child Application (Continuations of the '054 Patent):

The inventive subject matter of the '054 patent has been further pursued in at least one subsequent continuation application:

• Direct Child: Application No. 16/194,203, filed November 16, 2018 (Issued as U.S. Patent 10,475,073).

Divisional Applications:
A review of the patent family data indicates no applications have been filed as "divisionals" of the '054 patent or its direct parents. The applicant has consistently used continuation applications to prosecute this patent family.

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Patent Family Summary

The '054 patent belongs to a large family of U.S. patents (family ID 38832126), all assigned to Almondnet Inc. and naming Roy Shkedi as the inventor. This family comprehensively covers methods and systems for profile-based, targeted online advertising, with a particular focus on privacy-sensitive interactions and profit-based media selection. The consistent filing of continuation applications over more than a decade demonstrates a long-term strategy to protect various aspects and improvements related to the core invention.

Key Members of the Patent Family (Issued Patents):

• U.S. Patent 7,747,745
• U.S. Patent 8,204,783
• U.S. Patent 8,671,139
• U.S. Patent 8,959,146
• U.S. Patent 9,208,514
• U.S. Patent 9,508,089
• U.S. Patent 9,830,615
• U.S. Patent 10,475,073
• U.S. Patent 10,839,423
• U.S. Patent 11,301,898
• U.S. Patent 11,610,226
• U.S. Patent 11,836,759

Defensive Disclosure and Prior Art Generation for Privacy-Sensitive, Condition-Based Ad Serving Architectures

Publication Date: April 29, 2026
Subject Matter: Derivative works and extensions of the methods disclosed in U.S. Patent 10,134,054. This document is intended to enter the public domain as prior art.

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Derivative Variation 1: Architectural & Protocol Substitution

Title: Real-Time, Persistent Channel Method for Conditional Ad Redirection

Enabling Description:
This variation replaces the stateless, HTTP-redirect-based communication flow of the core patent with a stateful, persistent connection architecture using WebSockets (RFC 6455) or gRPC.

1. Tagging: Upon a visitor's first interaction with the First Entity's system, a client-side script establishes a WebSocket connection to the First Entity's server. The server issues a signed JSON Web Token (JWT) to the client, which serves as the "tag" or session identifier. This JWT is stored in the browser's sessionStorage.
2. Condition Transfer: The First Entity determines the appropriate advertising "condition" (e.g., bid price, time validity) and sends this condition as a WebSocket message to the client. The client script then initiates a second WebSocket connection to the Second Entity's server, authenticates using its JWT tag, and forwards the condition.
3. Conditional Trigger: The Second Entity's server maintains the open WebSocket connection. When an ad opportunity arises on one of its controlled media properties, instead of a redirect, it sends a lightweight message over the WebSocket to the First Entity's server (via the client acting as a proxy, or directly if a server-to-server channel is established) containing contextual data.
4. Ad Serving: The First Entity's server validates that the condition is met and serves the ad creative payload directly back through its own WebSocket connection to the client for rendering, eliminating the need for a full-page HTTP redirect.

sequenceDiagram
    participant C as Visitor Device
    participant E1 as First Entity System
    participant E2 as Second Entity System

    C->>+E1: Establishes WebSocket Connection
    E1-->>-C: Returns Signed JWT (Tag)
    Note over C: Stores JWT in sessionStorage

    E1-->>C: Pushes Ad Condition (e.g., price)
    C->>+E2: Establishes WebSocket, sends JWT & Condition
    E2-->>-C: Acknowledges Condition

    loop Ad Opportunity on E2-controlled site
        E2-->>C: Ad Request (via WebSocket)
        C-->>E1: Forwards Ad Request
        E1->>E1: Check if Condition is Met
        E1-->>C: Serve Ad Creative (via WebSocket)
    end

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Derivative Variation 2: Operational Parameter Expansion

Title: Edge-Computed, Multi-Factorial Condition Evaluation for Ultra-Low-Latency Ad Bidding

Enabling Description:
This variation adapts the core method for extreme-scale, real-time bidding (RTB) environments where decisions must be made in under 10 milliseconds.

1. Architecture: The First and Second Entities deploy their systems on a global edge computing network (e.g., Cloudflare Workers, AWS Lambda@Edge). User profiles are stored in a globally distributed, low-latency database (e.g., ScyllaDB, CockroachDB) with geo-partitioning to keep data close to the user.
2. Tagging: The tag is a standard cookie but contains a geo-routing hint.
3. Condition Definition: The "condition" is no longer a simple value but a structured data object (e.g., a Protocol Buffer) containing a multi-key-value map of bid parameters (max_cpm, allowed_categories, required_viewability_score, time_decay_factor).
4. Conditional Evaluation: When a user visits a media property, the request hits the Second Entity's nearest edge node. This node reads the tag and performs a local check against the complex condition object. The check may involve evaluating a small, pre-compiled WebAssembly (WASM) module provided by the First Entity as part of the condition itself.
5. Redirection: If the edge evaluation is successful, the redirection occurs directly between edge nodes, minimizing round-trip latency to a central server. The First Entity's edge node fetches the user profile from the nearest database replica and serves the ad.

flowchart TD
    subgraph User's Geographic Region
        A[User Device on Media Property] --> B{Second Entity Edge Node};
        B --> C{Read Tag & Geo-Hint};
        C --> D[Fetch Complex Condition from local cache];
        D --> E{Evaluate Condition via WASM module};
        E -- Condition Met --> F[Redirect to First Entity Edge Node];
        E -- Condition Not Met --> G[Serve Default Ad];
        F --> H[Fetch Profile from Geo-Partitioned DB];
        H --> I[Select & Serve Targeted Ad];
    end

---

Derivative Variation 3: Cross-Domain Application (Healthcare)

Title: Privacy-Preserving Patient Cohort Identification for Clinical Trials

Enabling Description:
This mechanism is applied to clinical trial recruitment, ensuring patient privacy in compliance with HIPAA.

1. Entities: The "First Entity" is a Hospital's Electronic Health Record (EHR) system. The "Second Entity" is a Pharmaceutical Sponsor's clinical trial management system.
2. Tagging: The EHR system generates a de-identified, single-use participant token for a patient who has consented to be considered for research. This token is the "tag". The Hospital provides this token to the Sponsor's system.
3. Condition: The "condition" is the set of complex inclusion/exclusion criteria for a specific clinical trial (e.g., disease_code=ICD-10 C61, age_between=[50,75], lab_result_creatinine_lt=1.5). This condition is electronically transferred from the Sponsor to the EHR system and associated with the token.
4. Conditional Check & Redirection: The EHR system internally runs the query (the condition) against the full patient record. This is a "pull" model, not a "push." If the patient matches, the system flags the token as "eligible." The "redirection" is an electronic notification sent back to the Sponsor's system indicating the token is eligible, without revealing why or any other patient data. The Sponsor can then request that the Hospital's clinical coordinator (a human) contact the eligible patient.

sequenceDiagram
    participant Sponsor as Pharma Sponsor System
    participant Hospital as Hospital EHR System
    participant Patient as Patient Record

    Sponsor->>+Hospital: Submits Clinical Trial Condition
    Hospital->>-Sponsor: Acknowledges Condition
    Hospital->>Hospital: Generates De-identified Tokens for consenting patients
    Hospital->>Patient: Associates Condition with Patient's Token

    loop Nightly Batch Process
        Hospital->>Patient: Run Condition query against full Patient Record
        alt Patient matches criteria
            Hospital->>Hospital: Flag Patient Token as 'Eligible'
        end
    end

    Sponsor->>+Hospital: Query status of submitted Tokens
    Hospital-->>-Sponsor: Return list of 'Eligible' Tokens
    Note right of Sponsor: Sponsor requests human-mediated contact for eligible tokens.

---

Derivative Variation 4: Cross-Domain Application (Industrial IoT)

Title: Conditional, Just-In-Time Data Access for Predictive Maintenance

Enabling Description:
This mechanism provides secure, temporary access to industrial sensor data for third-party analytics.

1. Entities: The "First Entity" is a factory's on-premise SCADA/historian system. The "Second Entity" is a cloud-based AI/ML predictive maintenance provider.
2. Tagging: The SCADA system "tags" a specific asset (e.g., a CNC mill, identified by a unique ID) by registering it with the AI provider's platform.
3. Condition: The "condition" is a set of operational thresholds defined in a configuration file (e.g., vibration_rms > 5g, spindle_temp > 85C, acoustic_anomaly_score > 0.9). This configuration is maintained by the SCADA system.
4. Conditional Check & Redirection: The SCADA system continuously monitors the asset. When a condition is met, it triggers an automated process. The "redirection" is the generation of a short-lived, single-use API access token (e.g., a scoped OAuth2 token) that grants the AI provider read-only access to a specific window of time-series data (e.g., 30 minutes pre-event, 5 minutes post-event) for only that specific asset. The SCADA system then calls a webhook on the AI provider's platform, passing this token. The provider uses the token to pull the necessary data for analysis and model inference.

stateDiagram-v2
    [*] --> Monitoring
    Monitoring: Asset operating within normal parameters

    state "Condition Met" as ConditionMet
    Monitoring --> ConditionMet: Vibration > 5g OR Temp > 85C

    ConditionMet --> GrantingAccess: Generate scoped, short-lived API token
    GrantingAccess --> AwaitingAnalysis: Call provider webhook with token
    AwaitingAnalysis --> [*]: Token expires or analysis complete

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Derivative Variation 5: Integration with Emerging Tech (AI/ML)

Title: Deployable Machine Learning Model as a Dynamic Advertising Condition

Enabling Description:
The "condition" is a predictive model that the Second Entity executes locally.

1. Entities: First Entity (Profile Holder), Second Entity (Ad Network).
2. Model Generation: The First Entity uses its private user profile data to train a lightweight predictive model (e.g., a logistic regression model or a small gradient-boosted tree). The model predicts the probability of conversion (p(Conversion)) for a given user. The model is serialized into a portable format like ONNX or PFA (Portable Format for Analytics).
3. Tagging & Condition Transfer: The First Entity tags the user with a cookie. It then transfers the serialized model to the Second Entity and associates it with the tag. This model is the condition. The model does not contain any of the private data it was trained on, only its learned parameters (weights and biases).
4. Conditional Evaluation: When the tagged user visits a site, the Second Entity's server gathers its own, non-private contextual data (e.g., time of day, device type, site content category). It feeds this data into the provided model to compute a p(Conversion) score.
5. Redirection: If the computed score is above a threshold agreed upon by both parties (e.g., score > 0.75), the Second Entity performs the redirection back to the First Entity.

flowchart TD
    subgraph E1 [First Entity System]
        A[Private User Profile Data] --> B(Train p(Conversion) Model);
        B --> C[Serialize Model to ONNX];
    end

    subgraph E2 [Second Entity System]
        D[User on Media Property] --> E(Gather Contextual Data);
        F[Get Model associated with user tag];
        G(Execute Model);
        E --> G;
        F --> G;
        G --> H{p(Conversion) > Threshold?};
    end

    C -- Transfer Model (The Condition) --> F;
    H -- Yes --> I[Redirect to First Entity];
    H -- No --> J[Serve Other Ad];

---

Derivative Variation 6: Integration with Emerging Tech (Blockchain)

Title: Smart Contract-Mediated Auditing for Conditional Ad Serving

Enabling Description:
This variation uses a permissioned blockchain (e.g., Hyperledger Fabric) to create an immutable, auditable record of the privacy-preserving advertising transaction.

1. On-Chain Identities: Both the First Entity and Second Entity have registered identities on the blockchain.
2. Tagging & Condition Registration: When the First Entity tags a user, it initiates a smart contract transaction. The transaction records (anonymous_user_id, second_entity_id, condition_hash, timestamp). The condition_hash is a cryptographic hash (e.g., SHA-256) of the actual condition (e.g., hash("price_cpm < 2.50")), which is communicated off-chain.
3. Redirection & Verification: When the Second Entity's system determines the condition is met, it triggers a second smart contract function, attestRedirect(anonymous_user_id, off_chain_data_hash). The smart contract verifies that a registration event for that user and entity exists. If valid, it records the redirection event on the ledger.
4. Settlement: A third, "settlement" smart contract periodically runs, which tallies the verified redirection events between the two parties and automates the financial settlement process, ensuring payment only for valid, on-chain-attested ad calls.

sequenceDiagram
    participant E1 as First Entity
    participant E2 as Second Entity
    participant SC as Smart Contract

    E1->>SC: registerCondition(userID, E2_ID, conditionHash)
    Note over E1,E2: Condition sent off-chain

    loop User visits E2 site
        E2->>E2: Check off-chain condition
        alt Condition Met
            E2->>SC: attestRedirect(userID, contextHash)
            SC->>SC: Verify original registration
            SC-->>E2: Transaction Confirmed
            E2->>E1: Redirect user
        end
    end

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Combination Prior Art Scenarios

1. Combination with OpenRTB: The architecture of US 10,134,054 is implemented within the IAB OpenRTB 3.0 framework. The First Entity acts as a "Demand Side Platform" (DSP) and the Second Entity as an "Ad Exchange." The BidRequest from the Exchange to the DSP includes a new extension object, BidRequest.ext.privacy_token, which is the "tag". The DSP's BidResponse contains a bid, but also a new BidResponse.seatbid.bid.ext.condition object, which passes the condition (e.g., a maximum clearing price) back to the Exchange. If the auction is won but the clearing price exceeds the condition, the Exchange uses a specific VAST redirect URL in the ad response that points back to the DSP, fulfilling the conditional redirection.

2. Combination with FIDO/WebAuthn: The "tagging" of a visitor's device is accomplished via the FIDO2/WebAuthn standard, treating the First Entity as a "Relying Party." When a user interacts, they are prompted for a passkey/biometric authentication. The resulting credential ID is shared with the Second Entity as the "tag." When an ad opportunity arises, the Second Entity initiates a FIDO assertion challenge. The user's browser signs the challenge and sends it to the First Entity for verification. The "condition" is checked by the First Entity as part of the assertion validation logic before it serves the ad, effectively merging the "redirection" and "ad serving" steps into a single, secure authentication flow.

3. Combination with OAuth 2.0: The entire flow is modeled using the OAuth 2.0 protocol. The First Entity is the Authorization Server, the Second Entity is the Client Application, and the user is the Resource Owner.

   • Tagging: The Second Entity initiates an OAuth flow, redirecting the user to the First Entity.
   • Condition: The Second Entity requests a custom scope, e.g., scope=ad-serve-cpm:2.50. This scope is the condition.
   • Conditional Check: The user consents on the First Entity's server, which checks if it can fulfill the requested conditional scope.
   • Redirection & Ad Serving: If the condition is acceptable, the First Entity redirects the user back to the Second Entity's redirect_uri with an authorization code. The Second Entity exchanges this code for an access token, which it then uses to request the ad creative from a resource endpoint on the First Entity's server.