Federal Circuit Upholds PTAB Rulings that Invalidated Most Claims Challenged By Google But Upheld Key Targeted Advertisements’ Claim For B.E. Technology
“The technology covered by the claim 25 is arguably fundamental to internet advertising and Google’s ad revenues, which in 2023 will be $237.86 Billion overall.”
The U.S. Court of Appeals of the Federal Circuit (CAFC), on August 14, issued a Rule 36 ruling that affirms several Patent Trial and Appeal Boards (PTAB) decisions relating to petitions filed by Twitter and Google. The PTAB ruled that 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 that all challenged claims were unpatentable, except for Claim 25, of U.S. Patent No. Claim 25 of U.S. Patent No. 8,769 440 was only challenged during the ‘482 ‘IPR. Claim 25 states “providing real-time reactive targeting of advertising by selecting and presenting advertisements based at least partially on user interaction with a computer.” 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. B.E. Technology, which has dubbed IPR procedures a “Kafkaesque horror,” filed a petition with the CAFC for a writ mandamus in 2021. The court was asked to intervene in ‘482 – ‘485 IPRs in order to “prevent a constitutionally unconstitutional deprivation B.E.’s property rights when IPR proceedings are brought to challenge B.E.’s most critical patents The petition argued that the PTAB’s due process violations, which 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.”
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Author: Primakov
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Eileen McDermott
Eileen McDermott, Editor-in Chief of IPWatchdog.com is a veteran IP and legal journalist. Eileen McDermott is a veteran IP journalist and has held editorial and management positions at
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