Federal Circuit Invalidates Mobile Device Targeted Ad Claims on Section 101 Cross-Appeal

By Steve Brachmann
May 13, 2021

“[E]ven assuming, as [Samba] argues, that the claimed advance is in the ability to pierce the sandbox of a mobile device, [Samba] has not demonstrated that this is something more than a mere use of a computer as a tool.” – CAFC

Section 101 - https://depositphotos.com/10042948/stock-illustration-red-boxing-glove-conceptual-vector.htmlOn May 11, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Free Stream Media Corp. v. Alphonso Inc. in which the appellate court reversed-in-part a ruling from the Northern District of California that had denied Alphonso’s motion to dismiss the case. In overturning the district court, the Federal Circuit panel found that patent claims covering a system of presenting targeted advertising to mobile phone users based on data gathered from the user’s television were directed to an unpatentable abstract idea under 35 U.S.C. § 101.

Alphonso Renews Section 101 Challenges on Appeal After District Court Upholds Validity

Free Stream Media d/b/a Samba TV (Samba) first filed this patent infringement suit in November 2015 in Northern California, which was later consolidated with a second patent suit against Alphonso filed in the Eastern District of Texas. Claim construction in the Eastern Texas case, which was adopted by the Northern California court, led Samba Media to stipulate to Alphonso’s noninfringement of one of the two asserted patents in the case. The Northern California court denied Alphonso’s motion to dismiss the case for Section 101 invalidity and Alphonso raised Section 101 as grounds for cross-appeal after Samba Media, which does business as Samba TV, appealed Northern California’s summary judgment ruling adopting the Eastern Texas claim construction and finding noninfringement for Alphonso.

The patent at issue in Alphonso’s Section 101 appeal is U.S. Patent No. 9386356, Targeting With Television Audience Data Across Multiple Screens. The patent claims a system related to relevancy improvement through targeting of information based on data gathered from a networked device associated with a security sandbox of a client device. The system includes a television generating fingerprint data, a relevancy-matching server matching primary data generated from the fingerprint data with targeted data, a mobile device associated with the television that executes a sandboxed application, and a content identification server communicating the primary data to associated devices. The invention covered by the ‘356 patent is designed to create a revenue opportunity for advertisers by presenting relevant information to mobile device users based upon data collected by a networked television device, including movies viewed, geolocation information or user behavioral characteristics.

Although the Northern California court ruled that the ‘356 patent was not ineligible under Section 101 at step one of the Alice/Mayo framework, the Federal Circuit agreed with Alphonso on appeal that the ‘356 patent was directed to the abstract idea of targeted advertising, specifically the abstract ideas of (1) gathering information about TV user viewing habits; (2) matching that information with targeted ads based on relevancy to the user; and (3) sending that content to a second device.

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Judge Reyna: Sandbox Bypass Adds No Improvement to Computer Functionality

On appeal, Samba Media had argued that the patent claimed an improvement in computing capabilities over conventional televisions and mobile devices, specifically by creating a system for intermediating televisions and mobile devices associated with a user so that a sandboxed mobile device can receive content from the television despite communication barriers imposed by the sandbox. However, the Federal Circuit opinion authored by Circuit Judge Jimmie Reyna found that Samba Media’s patent claims were distinguishable from the line of cases under Enfish v. Microsoft, in which patent claims were upheld as valid under Section 101 because they claimed a specific improvement in computer functionality rather than economic or other tasks that a computer ordinarily performs.

There is nothing in claims 1 or 10 that demonstrates an improvement to computer functionality. And, even assuming, as [Samba Media] argues, that the claimed advance is in the ability to pierce the sandbox of a mobile device, [Samba Media] has not demonstrated that this is something more than a mere use of a computer as a tool. The sandboxed application here is breached unbeknownst to the user through a “vulnerability” or “relaxation of the rules” that are conventionally in place to effectively prevent such a communication. In fact, Samba readily admits that the “problem” solved by the invention is “to provide relevant information across a sandboxed environment without requiring “installation, configuration, login, and/or user registration.”

Having determined at step one of Alice/Mayo that the challenged claims of the ‘356 patent were directed to the abstract idea of targeted advertising, Judge Reyna’s opinion then struck down Samba Media’s step two argument that the ordered combination of claim elements produced an unconventional operation involving the use of fingerprinting, servers for content identification and relevancy matching, and bypassing the mobile device security sandbox. The Federal Circuit found nothing inventive about bypassing sandbox security and that the claims recited no elements that enabled a new type of communication that previously was not possible. This distinguished Samba Media’s patent claims from those upheld as valid in DDR Holdings v. Hotels.com, which solved the issue of allowing a website visitor to view a hyperlinked advertisement without leaving the website when the hyperlink was clicked, and BASCOM Global Internet Services v. AT&T Mobility, where the unconventional arrangement of conventional elements, including a filtering tool with customizable filtering features specific to each end user, produced an inventive concept.

After ruling for Alphonso on its Section 101 cross-appeal, the Federal Circuit turned to Samba Media’s appeal of the summary judgment of noninfringement of the other patent in suit, U.S. Patent No. 9026668, Real-Time and Retargeted Advertising on Multiple Screens of a User Watching Television. The appellate court affirmed the claim construction order originally issued by the Eastern District of Texas, which defined “communication session” to mean a “period of time during which information is sent and received either directly or indirectly,” the definition the district court adopted instead of either Samba Media’s or Alphonso’s proposed constructions. On appeal, Samba Media argued that the ordinary meaning of “communication session” would include one-way communication as disclosed by the ‘668 patent. However, the Federal Circuit panel found that the portion of the specification referenced by Samba Media did not refer to the same type of “communication session” as covered by the claims, and that reading a one-way communication would improperly read “session” out of the claim because the resulting construction would cover any communication.

The Author

Steve Brachmann

Steve Brachmann is a freelance journalist located in Buffalo, New York. He has worked professionally as a freelancer for more than a decade. He writes about technology and innovation. His work has been published by The Buffalo News, The Hamburg Sun, USAToday.com, Chron.com, Motley Fool and OpenLettersMonthly.com. Steve also provides website copy and documents for various business clients and is available for research projects and freelance work.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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There are currently 9 Comments comments. Join the discussion.

  1. Pro Say May 13, 2021 5:56 pm

    . . . and yet one more despicable obliteration of patent-protected innovation at the hands of the CAFC.

    And — as well-evidenced by their twisting themselves into legal and factual knots in order to so obliterate — this eligibility case wasn’t even close.

    Not. Even. Close.

    As 2022 begins to come into view, is Congress ever going to put an end to this unconstitutional carnage?

    Ever?

    Do our Congress men and women even care about American innovation anymore?

  2. concerned May 13, 2021 7:44 pm

    When my application and evidence proved that the claimed process did more than the Administering Agency computer network, working professionals and experts, the PTAB simply stated the claim process does not do what is claimed. No proof offered by the PTAB.

    The USPTO examiners conceded the claim process did solve the problem and so did the university studies, however, what the PTAB says goes. Period.

    Of course, the above PTAB revelation was after the PTAB stated my process meets the law as written by Congress, but not the legal meaning decided by judges.

    All hail the PTAB! I am not worthy!

  3. TFCFM May 14, 2021 10:48 am

    It’s a shame the article doesn’t reproduce the “anything-and-everything-that-performs-a-data-handling-function” claims rejected here. Follow the article’s link to the ‘356 patent and marvel at claim 1.

    This was an easy one. The only easier case I can imagine is one in which someone writes a claim that LITERALLY recites

    “1. Anything and everything that achieves function X.”

  4. Anon May 14, 2021 11:00 am

    Nowhere else – across any art unit – is the anti-patent animus stronger than “mere use or a computer as a tool.”

    Remind me again – explicitly – where did Congress single out innovation by use of tool of a computer as somehow being the type of innovation NOT to be covered by patent law?

    Hint: NO ONE can show this because it just does not exist.

    We have a rampant ultra vires problem here.

    Not only is the score board broken, but we have an active and malignant force seeking to break any score board that reflects any reality of score for this Kondratiev Fifth Wave.

  5. David Lewis May 16, 2021 1:59 pm

    To TFCFM, including the text of the claims in the article is a fair point, and so I pasted the text of the claims are below (but I did not bother to keep the nice format that they are in in the decisions). However, I am not sure what issue you have with the breadth of the claims. The wording of your comments suggests that they are something close to single means claims, but they are not. Perhaps that suggestion was not what you intended.

    It is the job of the broadest claim to cover anything that is the invention?

    Please feel free to elaborate, what issue you have with the breadth of the claims.

    1. A system comprising:

    a television to generate a fingerprint data;

    a relevancy-matching server to:

    match primary data generated from the fingerprint data with targeted data, based on a relevancy factor, and

    search a storage for the targeted data;

    wherein the primary data is any one of a content identification data and a content identification history;

    a mobile device capable of being associated with the television to:

    process an embedded object,constrain an executable environment in a security sandbox, and execute a sandboxed application in the executable environment; and

    a content identification server to:

    process the fingerprint data from the television, and

    communicate the primary data from the fingerprint data to any of a number of devices with an access to an identification data of at least one of the television and an automatic content identification service of the television.

    10. A relevancy-matching server communicatively coupled with

    a television and

    a mobile device through a network, comprising:

    a processor;

    a memory communicatively coupled with the processor; and

    instructions stored in the memory and executed using the processor configured to:

    match primary data generated using a fingerprint data with targeted data, based on a relevancy factor comprising

    at least one of a category of the primary data,

    a behavioral history of a user,

    a category of a sand-boxed application, and

    another information associated with the user,

    search a storage for the targeted data,

    wherein the primary data is any one of a content identification data and a content identification history, and

    wherein the relevancy-matching server is to cause a rendering of the targeted data to the user through the sandboxed application of the mobile device.

  6. B May 16, 2021 5:39 pm

    Dyk, Reyna, and Hughes — This patent never had a chance

    “The Federal Circuit found nothing inventive about bypassing sandbox security and . . . ”

    Nothing “inventive?” Garbage from garbage minds

    “. . . no elements that enabled a new type of communication that previously was not possible.”

    This isn’t the standard of patentability under any section of Title 35, but, hey, garbage thinking

    “Judge Reyna: Sandbox Bypass Adds No Improvement to Computer Functionality”

    Neither did the software from McRO v. Bandai, which Reyna found patent eligible, but Reyna’s consistency case-to-case is less than a sane mind would accept.

  7. B May 16, 2021 5:55 pm

    @ David Lewis “However, I am not sure what issue you have with the breadth of the claims. The wording of your comments . . . .”

    TFCFM is not a patent attorney, and he knows nothing of patent law. He just pops in here occasionally to display his ignorance with statements like the one you just addressed.

    @ Anon “Remind me again – explicitly – where did Congress single out innovation by use of tool of a computer as somehow being the type of innovation NOT to be covered by patent law?”

    Same place as the Supreme Court did. Unfortunately, the CAFC is too intellectually lazy to actually read Slice Corp.

  8. Anon May 16, 2021 7:11 pm

    Thanks B,

    I think that I “get” the intent of your last post, but I would be remiss if I did not correct you and note that my question was explicitly to Congress.

    The correct answer of course is that Congress never did any such thing.

    There is zero actual written law by Congress that supports the actions of the Judicial Branch.

  9. TFCFM May 17, 2021 10:49 am

    DL@#5: “Please feel free to elaborate, what issue you have with the breadth of the claims.

    The issue that I have with the breadth of claim 1 (the one you reproduced @#5) is that it is infinitely broader than the invention made by the patentee.

    The claim recites a “system” that includes:

    – a first “server to” achieve some generic data-handling functions (any server, programmed with an algorithm that will achieve those functions in any way, disclosed or not-disclosed). Although the particular algorithms (for “match”ing or “search”ing) and/or the first server’s particular relation with the “storage” or the data formats might be disclosed, these are not limited to the ones disclosed.

    – a “mobile device” that can (in any way, disclosed or not-disclosed) be associated with the recited television “to” (in any manner, whether disclosed or not) achieve a certain goal. Again although particular algorithms (for “processing”ing, “constrain”ing, and “execute”ing) for achieving that function are presumably disclosed, the claimed algorithms are not limited to the ones disclosed — they can be anything, including algorithms never envisioned by the patentee and invented by others.

    – a second “server to” achieve some other generic data-handling functions (again any server, programmed in any way(s) with an algorithm that will achieve those functions, whether disclosed or not). Although particular algorithms (for “process”ing or “communicate”ing) that can be used for the second server are again presumably disclosed, the claimed ones are not limited to the ones disclosed.

    (Similarly lengthy analysis would apply to claim 10).

    This is why I characterize the claims as “anything-and-everything-that-performs-certain-functions” claims.

    US patent law requires that claims encompass no more than what is fairly described in a patent’s specification and does NOT support claims further directed to “… and anything-I-haven’t-invented that would achieve the same ends as what-I-did-invent.

    See O’Reilly v. Morse, 56 U.S. (15 How.) 62 (1853).

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