Snap Inc. v. Palo Alto Research Ctr.

• Decision Date: 24 March 2023
• Docket Number: IPR2021-00987,IPR2021-01294,IPR2021-01458,Patent 8,489,599 B2
• Parties: SNAP INC., Petitioner, v. PALO ALTO RESEARCH CENTER LLC, Patent Owner. FACEBOOK, INC., Petitioner, v. PALO ALTO RESEARCH CENTER LLC, Patent Owner. TWITTER, INC., Petitioner, v. PALO ALTO RESEARCH CENTER LLC, Patent Owner.
• Court: Patent Trial and Appeal Board

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SNAP INC., Petitioner,
v.
PALO ALTO RESEARCH CENTER LLC, Patent Owner.

FACEBOOK, INC., Petitioner,
v.
PALO ALTO RESEARCH CENTER LLC, Patent Owner.

TWITTER, INC., Petitioner,
v.
PALO ALTO RESEARCH CENTER LLC, Patent Owner.

Nos. IPR2021-00987, IPR2021-01294, IPR2021-01458

Patent 8,489,599 B2, Patent 8,489,599 B2, Patent 8,489,599 B2

United States Patent and Trademark Office, Patent Trial and Appeal Board

March 24, 2023

PETITIONERS: Naveen Modi Joseph Palys PAUL HASTINGS LLP.

Heidi Keefe Phillip Morton Andrew Mace Mark R. Weinstein COOLEY LLP.

J. Steven Baughman Megan Raymond Michael F. Milea GROOMBRIDGE, WU, BAUGHMAN & STONE LLP.

PATENT OWNER: James Quigley Alexandra Easley MCKOOL SMITH, P.C.

Before KARL D. EASTHOM, SHEILA F. McSHANE, and CHRISTOPHER L. OGDEN, Administrative Patent Judges.

JUDGMENT FINAL WRITTEN DECISION DETERMINING ALL CHALLENGED CLAIMS UNPATENTABLE DENYING PATENT OWNER'S MOTIONS TO AMEND CONSOLIDATING IPR2021-00987, IPR2021-01294, AND IPR2021-01458 35 U.S.C. §§ 315(D), 318(A); 37 C.F.R. §§ 42.121, 42.122(A)

McSHANE, Administrative Patent Judge.

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I. BACKGROUND

We have jurisdiction to hear these inter partes reviews under 35 U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a). As discussed in more detail below, this Final Written Decision addresses challenges to U.S. Patent No. 8,489,599 B2 (Ex. 1001, "the '599 patent") raised in three different proceedings: Snap Inc. v. Palo Alto Research Center LLC^[1], IPR2021-00987 ("Snap IPR" or "987 IPR"); Facebook, Inc. v. Palo Alto Research Center LLC, IPR2021-01294 ("Facebook IPR" or "1294 IPR"), and Twitter, Inc. v. Palo Alto Research Center LLC, IPR2021-01458 ("Twitter IPR" or "1458 IPR").

On November 23, 2021, we instituted trial in the Snap IPR, in which Snap Inc. ("Snap") challenges claims 1-25 of the '599 patent, assigned to Patent Owner, Palo Alto Research Center LLC ("Patent Owner" or "PARC"). See Snap IPR, Papers 1, 13. Approximately two months later, on January 25, 2022, we instituted trial in the Facebook IPR in which Facebook, Inc. ("Facebook") challenges claims 1, 4, 6, 7, 9-12, 15, 17-19, 22, 24, and 25 of the '599 patent. See Facebook IPR, Papers 2, 13. Approximately three months later, on April 6, 2022, we instituted trial in the Twitter IPR in which Twitter, Inc. ("Twitter") challenges claims 1, 4, 6, 7, 9-12, 15, 17, and 18 of the '599 patent, and consolidated the 1458 IPR with IPR2021-01459 ("1459 IPR"), which challenges claims 19, 22, 24, and 25 of the '599 patent.^[2] See Twitter IPR, Papers 3, 11, 12, 14. In each case, the different petitioners use different prior art as the basis for the invalidity

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challenges to the '599 patent claims in the respective petitions. 987 IPR, Paper 1, 2; 1294 IPR, Paper 2, 3; 1458 IPR, Paper 3, 12; 1459 IPR, Paper 3.

On February 25, 2022, in the Snap IPR, Patent Owner filed a Contingent Motion to Amend to substitute claims 26-40 to replace original claims 1, 4, 6, 7, 9-12, 15, 17-19, 22, 24, and 25 of the '599 patent. Snap IPR, Paper 22. Patent Owner filed similar Contingent Motions to Amend in the Facebook and Twitter IPRs that seek to substitute the same proposed substitute claims as those proposed in this case. That is, on April 15, 2022, in the Facebook IPR, Patent Owner filed a Contingent Motion to Amend to substitute claims 26-40 to replace claims 1, 4, 6, 7, 9-12, 15, 17-19, 22, 24, and 25 of the '599 patent. Facebook IPR, Paper 20. On July 7, 2022, in the Twitter IPR, Patent Owner filed a Contingent Motion to Amend to substitute claims 26-40 to replace claims 1, 4, 6, 7, 9-12, 15, 17-19, 22, 24, and 25 of the '599 patent. Twitter IPR, Paper 24. The proposed substitute claims in each of the cases are identical. See Snap IPR, Paper 22; Facebook IPR, Paper 20; Twitter IPR, Paper 24.

The Chief Administrative Patent Judge determined that good cause existed to extend the one-year period for issuing a Final Written Decision in the Snap and Facebook IPRs. See Snap IPR, Paper 47; Facebook IPR, Paper 40.

II. CONSOLIDATION OF IPR2021-00987, IPR2021-01294, AND IPR2021-01458

"Where another matter involving the patent is before the Office, the Board may during the pendency of the inter partes review enter any appropriate order regarding the additional matter including providing for the stay, transfer, consolidation, or termination of any such matter." 37 C.F.R. § 42.122(a) (2019) (emphasis added); see also 35 U.S.C. § 315(d). Under

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this Rule, the Board has the authority to consolidate proceedings, even absent a motion from the parties. See id.

As discussed supra Section I, the respective petitioners challenge many of the same claims of the '599 patent, including all of the patent's independent claims, in each of the respective cases. Additionally, Patent Owner's Contingent Motions to Amend seek to substitute the same proposed substitute claims for the same original claims of the '599 patent.

In view of the same proposed substitute claims being at issue in all the cases, we find that good cause exists for the consolidation of 987, 1294, and 1458 IPRs. Consolidation of the cases allows the Board to more efficiently and consistently address issues in a consolidated Final Written Decision. Thus, we order the consolidation of the 987, 1294, and 1458 IPRs.

Petitioners should continue to file any future papers in each of Petitioner's respective IPR. The respective Petitioner's challenges to the original claims remain specific to the Petitioner bringing the challenge.

Accordingly, we address the petitioners' respective challenges to the original claims separately and, in view of the overlap of issues, we will address Patent Owner's Contingent Motions to Amend in a combined manner.

III. SNAP'S CHALLENGES TO CLAIMS 1-25 OF THE '599 PATENT

A. Procedural Background

Snap filed a Petition for inter partes review of claims 1-25 of the '599 patent, along with the Declaration of Steve Smoot. Snap IPR, Paper 1 ("Snap Pet."); Snap IPR, Ex. 1002. Patent Owner filed a Preliminary Response. Snap IPR, Paper 11 ("Snap Prelim. Resp."). Pursuant to

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35 U.S.C. § 314(a), on November 23, 2021, we instituted inter partes review on the following grounds:

Claim(s) Challenged	35 U.S.C §	Reference(s)/Basis
1, 2, 4-7, 10-13, 17-20, 22-25	102(e)[3]	Rosenberg[4]
4, 5, 15, 16, 19, 20, 22-25	103(a)	Rosenberg
3, 8, 9, 14, 21	103(a)	Rosenberg, Suzuki[5]

Snap Pet. 2; Snap IPR' Paper 13 ("Snap Inst. Dec." or "Snap Dec.").

Patent Owner filed a Patent Owner Response ("Snap PO Resp."). Snap IPR, Paper 28. Patent Owner also filed a Declaration of David Martin, Ph.D., with the Response to support its positions. Snap IPR, Ex. 2003. Petitioner filed a Reply ("Snap Pet. Reply") to the Patent Owner Response, along with the Declaration of Kevin Almeroth, Ph.D. Snap IPR, Paper 25; Ex. 1022. Patent Owner filed a Sur-reply to Petitioner's Reply ("Snap PO Sur-reply"). Snap IPR, Paper 34.

An oral hearing was held on August 24, 2022. A transcript of the hearing is included in the record. Snap IPR, Paper 44 ("Snap Tr.").

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B. Related Matters

The parties indicate this Petition is related to the district court litigations, Palo Alto Research Center Inc. v. Snap Inc., No. 2:20-CV-10755-AB-MRW (C.D. Cal.), Palo Alto Research Center Inc. v. Twitter, Inc., No. 2:20-CV-10754-AB-MRW (C.D. Cal.) and Palo Alto Research Center Inc. v. Facebook, Inc., No. 2:20-CV-10753-AB-MRW (C.D. Cal.).

Snap Pet. 1; Snap IPR, Paper 4, 2-3. As discussed above, claims of the '599 patent are also challenged in the Facebook and Twitter IPRs.

C. The '599 Patent

The '599 patent is titled "Context And Activity-Driven Content Delivery And Interaction" and issued on July 16, 2013, from an application filed on December 2, 2008. Snap IPR, Ex. 1001, codes (22), (45), (54).

The '599 patent is directed to "a computing device that delivers personally-defined context-based content to a user." Snap IPR, Ex. 1001, code (57). The '599 patent states that

[t]his computing device receives a set of contextual information with respect to the user, and processes the contextual information to determine whether some aspect of the current context can be associated with a probable activity being performed by the user. The computing device then determines whether either or both the context and current activity of the user satisfy a trigger condition which has been previously defined by the user. If so, the computing device selects content from a content database, based on the context or activity, to present to the user, and presents the selected content.

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Snap IPR, Ex. 1001, 1:52-62. Figure 1, reproduced below, illustrates a content management system in accordance with the invention. Id. At 2:5455.

(Image Omitted)

As depicted in Figure 1, above, content management system 100 presents content 112 to a user. Snap IPR, Ex. 1001, 5:18-19. Content 112 can be presented in response to actions being performed by the user, or in accordance with other information associated with the user. Id. at 5:18-21. Content management system 100 allows a user to create and store content, and associate the content with a given user-defined context. Id. at 5:21-23. For instance, content management system 100 can remind a user to buy groceries as the user is driving past a grocery store after work or can read specific items on a grocery list to a user when walking across a specific grocery store aisle. Id. at 5:28-32. Input mechanism 102 receives user input 101, content manager 104 controls how content 112 is stored in content database 106 and how it is selected for playback, and content delivery mechanism 108 controls how content 112 is presented to a user. Id. at 5:36-57.

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D. Illustrative Claim

Snap challenges claims 1-25 of the '599 patent. Claims 1, 12, and 19...