Targeted advertising claims survive Alice step two

Takeaway: Improvement arguments succeeded in overturning § 101 subject-matter eligibility rejections of claims relating to Internet-based directed-advertising under circumstances involving broadcast TV and simultaneous chat room participation.  The arguments had failed to persuade at step one of the Alice framework but worked at step two.

Details:

Ex parte Relyea
Appeal No. 2017-001443; Application No. 12/410,588; Tech. Center 3600
Decided: Apr. 18, 2018

Inventors for Verizon filed a patent application including the following representative claim for targeted advertising:

1.      A method comprising:
        providing, by one or more devices, broadcast programming to a plurality of user devices, associated with a plurality of users, via a television network;
        hosting, by the one or more devices, at least one chat group associated with the broadcast programming provided via the television network,
             hosting the at least one chat group including hosting a virtual chat room for the chat group that provides interaction via at least one of text-based discussion or a video client,
             the at least one chat group being displayed with the broadcast programming;
        determining, by the one or more devices and based on hosting the at least one chat group, information identifying a group of users, of the plurality of users, currently in a same chat group, of the at least one chat group, associated with the broadcast programming provided via the television network;
        defining, by the one or more devices, a micro-group to include user accounts associated with the group of users in the same chat group, the user accounts being added to the microgroup based on the group of users joining and currently being in the same chat group associated with the broadcast programmmg;
        creating, by the one or more devices, a profile associated with the micro-group based on user information associated with the user accounts;
        monitoring, by the one or more devices and based on hosting the at least one chat group, real time behavior of the group of users in the same chat group to detect one or more actions taken by one or more users of the group of users, the one or more actions being associated with content of the chat group;
        modifying, by the one or more devices, the profile associated with the micro-group based on the one or more actions;
        retrieving, by the one or more devices, advertising content targeted to the group of users in the same chat group based on the profile that is created based on the user information associated with the user accounts of the group of users in the same chat group and that is modified based on the one or more actions taken by the one or more users of the group of users in the same chat group; and
        providing, by the one or more devices, the advertising content to user devices, of the plurality of user devices, associated with users currently in the chat group, the advertising content being displayed in a same view as the chat group and being integrated into a television program included in the broadcast programming provided to the group of users in the same chat group. 

As explained in the specification, 

Target advertising typically seeks to generate improved customer response rates by directing particular advertisements to consumers based on observed behavior.  Television service providers that can simultaneously direct a variety of advertisements to smaller similarly-interested groups may be poised to generate more revenue than those using a single advertisement to all viewers watching the same program. . . . Implementations . . . may allow a subscription television service provider to define micro-groups of users and identify micro-group tendencies to provide targeted advertising to members of the micro-group . . . of subscribers to the subscription television service that are associated by an expressed interest.  The micro-group may be created based on a variety of techniques, including social networking (e.g., chat group participation, accepting an invitation as a group member, etc.), past viewing histories, and/or real-time viewing behavior.  In some implementations, the micro-group tendencies may change dynamically as different users join or leave the micro-group.  Implementations described herein may be incorporated using a television display and video client (e.g., a set-top box), a personal computer, a mobile telecommunications device, and/or combinations thereof.

The examiner identified the abstract idea to which the claims were allegedly directed as "targeting of advertisements to a micro-group of users based on profile data and chat group content."  The examiner found that such a concept was similar to the decision SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x 950 (Fed. Cir. 2014), in which new and stored information was compared and analyzed using rules to identify options.  While acknowledging the more recent Enfish decision, the examiner nevertheless found that the claims merely used conventional computers to implement abstract ideas, unlike the self-referential table of Enfish which improved the computing technology itself.

Appealing the examiner's Alice rejections, the appellants argued that the claims were not abstract because they provided an improvement in a computer-related technology and addressed a problem "necessarily rooted in computer technology at least because the claims do not recite a process that can be performed in the human mind, or by a human using a pen and paper."

The Board did not credit appellants' arguments relating to step one of the Alice framework. The Board found that the claims did not attempt to solve a challenge particular to the Internet, and thus DDR Holdings was of no particular help.  The Board also found the advertising claims not to be analogous to the rule-based automated computer animation claims found eligible in McRO.

However, the Board appeared to be persuaded by the appellants' arguments relating to step two of the framework, the "search for an inventive concept" step, i.e., that the claims "improve[d] the technical field of broadcasting television programs by dynamically integrating targeted advertising content into the television programs that are broadcast to users of the chat group," and thus provided "a detailed level of targeted advertising [that] was not technologically achievable for television broadcasting in the past"; further that the claims included limitations "not widely prevalent in the field" that "leverage[d] [the] real-time behavior of users in the chat groups to integrate targeted advertising content into broadcast programming"; and still further that the claims were confined to the particular useful application of integrating targeted advertising content "into a television program included in the broadcast programming provided to the group of users in the same chat group."  The Board appeared to credit the appellants' assertion that "[t]he ability to integrate the claimed level of detailed targeted advertising was not achievable for television broadcasting in the past" and noted, as the examiner had, that the particular combination of circumstances recited in the claims appeared to be somewhat unique.  Thus, the Board reversed the Alice rejections.

My two cents:

Claims for innovations in targeted advertising on the Internet have been prime targets for Alice rejection or invalidation.  See, e.g., Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1271 (Fed. Cir. 2016); Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369-70 (Fed. Cir. 2015) Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014); Ex parte Greene, No. 2016-007319 (P.T.A.B Apr. 18, 2018) (claims directed to "identifying indeterminacy for activity-based advertising" deemed an unpatentably abstract "method of organizing human activity"); Ex parte Ferber, No. 2016-008650 (P.T.A.B. Jan. 9, 2018) (claims directed to targeted advertising deemed an unpatentably abstract fundamental economic practice); Ex parte Malden, No. 2016-004867 (P.T.A.B. Jul. 24, 2017) (claims directed to targeted advertising and brokerage of ads held an unpatentably abstract comparison of new and stored information and using rules to identity options); Ex parte Kendall, No. 2015-008182 (P.T.A.B. Apr. 19, 2017) (claims directed to communicating actions within a social network for the purpose of advertising a product and/or selling advertising held an unpatentably abstract fundamental economic practice and method of organizing human activities), reh'g denied, Kendall (P.T.A.B. Aug. 23, 2017); Ex parte Kendall, No. 2015-008149 (P.T.A.B. Apr. 19, 2017) (same).  An overarching reason for this may be because the benefits provided by such claims are characterized not as technical or technological improvements, but instead as business benefits in better targeting a customer's needs or dynamically adjusting to a customer's activity.  So it is remarkable that the Internet advertising claims in Relyea passed muster at the Board.  Why were they able to get past Alice?

The Board compared the claims to the dynamic-display electronic securities trading claims in Trading Technologies International, Inc. v. CQG, Inc., 675 F. App'x 1001 (Fed. Cir. 2017), pointing out that the claims in this case "provide a detailed level of targeted advertising that changes dynamically based on the real-time behavior of users in a chat group."

It may be that such dynamic functioning inventively amounts to "significantly more" than the identified abstract idea itself, but on the other hand, it is not clear why such is "more" than "using rules to identify options," the previously held abstract concept.  The extension of the Trading Technologies holding to apply to dynamic advertising claims may just be yet another example of the subject-matter eligibility pendulum swinging back.