An invention created by viewer-tracking app maker Free Stream Media Corp – also known as Samba TV – related to targeting mobile ads based on a viewer’s television habits isn’t patentable, the U.S. Court of Appeals for the Federal Circuit ruled Tuesday.
Samba’s invention related to the abstract idea of tailored advertising, which can’t be patented, U.S. Circuit Judge Jimmie Reyna wrote for a three-judge panel in a dispute between Samba and TV-data company Alphonso Inc.
The panel reversed a California federal court decision finding the patent valid, but affirmed that Alphonso – now owned by LG Electronics Inc and known as LG Ads – wasn’t liable for infringement.
LG Ads CEO Ashish Chordia said in a statement that the company was “pleased” with the decision, and that its practices have been “validated across the board.”
Samba and its attorney Matthew Powers of Tensegrity Law Group didn’t immediately respond to a request for comment.
San Francisco-based Samba sued Mountain View, California-based Alphonso in California and Texas federal courts in 2015 for allegedly infringing the two patents. The Texas case was eventually transferred to the U.S. District Court for the Northern District of California in 2017, where the cases were consolidated.
In a 2018 ruling, U.S. District Judge Richard Seeborg rejected Alphonso’s argument that one of the patents was directed to the patent-ineligible abstract idea of tailored advertising, finding it addressed “barriers to certain types of information exchange between various technological devices.”
Seeborg found later that year that Alphonso didn’t infringe the patent because Alphonso’s system of tailoring mobile ads based on TV-watching habits didn’t practice all of its elements.
Samba agreed that Alphonso didn’t infringe the other patent under the interpretation of one of the patents by the Texas court before it was transferred. It appealed the noninfringement ruling and the Texas claim construction, while Alphonso appealed the patent-eligibility ruling.
Reyna, joined by Circuit Judges Timothy Dyk and Todd Hughes, agreed with Alphonso that the patent was invalid, and that the Texas court’s interpretation of a patent term to require the technology to both send and receive information during a communication session was correct.
Samba argued the invention was a patentable improvement to computer capabilities by allowing televisions and mobile devices to interact in an unconventional way and claimed the ability to bypass a mobile device’s security “sandbox” application made it patentable.
But the relevant parts of the patent “do not at all describe how that result is achieved,” Reyna said. And even if they did, the invention wouldn’t be patentable because Samba “has not demonstrated that this is something more than a mere use of a computer as a tool.”
“The alleged technological improvement does nothing more than implement a computer to achieve the abstract idea of providing targeted advertising to the mobile device user,” Reyna said.
The patent also didn’t include an inventive concept that would save it.
“Even assuming the bypassing of mobile device security mechanisms had not been done before, there is nothing inventive disclosed in the claims that permits communications that were previously not possible,” Reyna said.
The case is Free Stream Media Corp. v. Alphonso Inc., U.S. Court of Appeals for the Federal Circuit, No. 19-1506.
For Samba TV: Matthew Powers of Tensegrity Law Group
For Alphonso: Neel Chatterjee of Goodwin Procter
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