“The technology covered by claim 25 is arguably foundational to internet advertising and to Google’s ad revenue, which in 2023 was $237.86 billion overall.”
The U.S. Court of Appeals for the Federal Circuit (CAFC) on August 14 issued a Rule 36 decision that affirms several Patent Trial and Appeal Board (PTAB) rulings relating to petitions brought by Twitter and Google. The PTAB held most claims of three B.E. Technology patents unpatentable, save for one arguably key claim that covers “real-time targeted advertising.”
The underlying inter partes review (IPR) decisions, IPR2021-00482/IPR2021-00483, IPR2021-00484 and IPR2021-00485, were all issued in September 2022. The Board found all challenged claims unpatentable except for Claim 25 of U.S. Patent No. 8,769,440, which was only challenged in the ‘482 IPR. Claim 25 recites “providing reactive targeting of advertising to the user in real time by selecting and presenting an advertisement based at least in part on user interaction with the computer.”
In their Cross-Appellant’s Response and Opening Brief on appeal to the CAFC, Google and Twitter argued that the Board erred in its construction of claim 25. Among other issues, the brief explained:
“The Board erred when it construed claim 25’s ‘real time’ requirement of targeting ads based ‘at least in part on user interaction’ to exclude selecting and presenting an ad based on any past interaction and instead limiting that claim to targeting based solely on current interaction. That was a mistake because, like claim 1, claim 25 includes no exclusionary language.”
But in their Response and Reply Brief, B.E. said “Appellees quibble with secondary aspects of the Board’s analysis but cannot escape the fact that the intrinsic record overwhelmingly indicates the proper construction requires a targeted advertisement selection that is based, at least in part, on current user interaction.”
B.E. Technology, which has dubbed IPR proceedings a “Kafkaesque nightmare,” filed a petition for writ of mandamus with the CAFC in 2021, asking the court to intervene in the ‘482 – ‘485 IPRs to “prevent an unconstitutional deprivation of B.E.’s property rights in the onslaught of IPR proceedings that have been brought to challenge the validity of its most critical patents.”
The petition argued that the PTAB’s due process violations, which B.E. grouped into three broad categories, taken together, “have rendered adjudications before the PTAB so profoundly unfair and biased against independent inventors that B.E. doesn’t stand a chance at a fair trial against its ‘Big Tech’ adversaries in the pending IPR proceedings.”
While that prediction has largely panned out with the PTAB’s invalidation of most of the challenged claims at issue in the four IPRs, the technology covered by claim 25 is arguably foundational to internet advertising and to Google’s ad revenue, which in 2023 was $237.86 billion overall.
B.E. Technology’s attorney, Kayvan B. Noroozi of Noroozi PC, said the Rule 36 decision is a win for the company and that “significant damages are at stake” in the continuing proceedings:
“We are pleased that the Federal Circuit affirmed the PTAB’s finding in favor of BE Technology regarding claim 25 of the ‘440 patent, which covers real time targeted advertising selection and provision that is reactive to the user’s interaction.
In view of the Federal Circuit’s affirmance, the dispute between BE Technology, Google, and Twitter will now continue before the District of Delaware, where Google and Twitter will face statutory estoppel under 35 USC 315(e), with significant damages at stake.”
Image Source: Deposit Photos
Author: Primakov
Image ID: 363259238
