Rokt Pte Ltd - [2017] APO 34

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Rokt Pte Ltd [2017] APO 34

Patent Application: 2013201494

Title:A digital advertising system and method

Patent Applicant:  Rokt Pte Ltd
Delegate:  Dr N.R. Madsen
Decision Date:  11 July 2017
Hearing Date:  Written Submissions filed 11 November 2016 and 20 June 2017

Catchwords: PATENTS – amendments made following adverse finding of hearing officer – examiner objection during re-examination – manner of manufacture – online advertising – substance of the invention is in the field of digital (internet) advertising being directed towards a scheme – application refused

Representation: Counsel for the applicant: Dr Ben Kremer

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2013201494

Title:A digital advertising system and method

Patent Applicant: Rokt Pte Ltd
Date of Decision: 11 July 2017
DECISION
Amendments and submissions made do not overcome my finding in the original decision of Rokt Pte Ltd [2016] APO 66 that the claims are directed to non-patentable subject matter. Furthermore, I do not consider that the application contains any patentable subject matter. I refuse the application.
REASONS FOR DECISION
Background

This matter relates to a final determination in respect of patent application number 2013201494, filed by Rocklive Pte Ltd (subsequently Rokt Pte Ltd) on 13 March 2013. On 11 October 2016, I decided the matter of an outstanding manner of manufacture objection that was the result of re-examination after acceptance of the application (Rokt Pte Ltd [2016] APO 66, the original decision). In that decision I found that none of the claims before me were directed to patentable subject matter in that each claim was not for a manner of manufacture. While expressing that I did not see at hand any patentable subject matter in the specification absent specific submissions, I invited the applicant to file amendments and present submissions with respect to those amendments.
The applicant took that opportunity to amend and file submissions dated 11 November 2016. A further re-examination report was issued. In that report, the examiner found that:
“The proposed amendments provide further details of the scheme that was held previously to be the substance of the invention (e.g. selecting engagement offers based on standard criteria such as maximising revenue or engagement rates). Nothing in those further details involves any improvement to, or ingenuity in the use of, the functions of the computer and it follows that the claims as proposed to be amended are not directed to a manner of manufacture.”
Also in that re-examination report, a period of two months was provided for the applicant to file any further submissions. It was noted that following that period, a final determination would issue. On 20 June 2017 the applicant filed further submissions.
Reference is made to the original decision for background regarding the application in question. In this regard I make specific reference to the description of the invention contained in that decision at [5]-[17], and summary of the relevant law at [23]-[27]. This material is equally relevant to the present decision.
The amendment
The applicant sought to amend the claims on 11 November 2016 by adding features to independent claims 1 and 16, and removing some dependent claims resulting in new independent claims 1 and 15. Claim 1 is directed towards a computer implemented method for linking a computer user to an advertising message, while claim 15 is directed towards a system for linking a user to an advertising message. Otherwise the independent claims are essentially of the same scope. It is sufficient at this stage for me to present the amendments to claim 1 which are as follows (underlined text constitutes an addition and struck out text constitutes a deletion):
A computer implemented method for linking a computer user to an advertising message by way of an intermediate engagement offer which is operable to drive a higher level of engagement with the advertising message than if the advertising message was present without the offer, the method comprising:
providing computer program code to be delivered with publisher content to a computing device operated by the computer user and which computing device comprises an interface arranged to display the publisher content, the computer program code operable to be implemented by a processor of the computing device to perform the additional steps of:
gathering engagement data associated with the user, the engagement data derived from interactions made by the user with the interface and related to at least one of the following:
an attribute of the publisher content;
  an interaction with the publisher content by the computer user; and
  an attribute of the user;
evaluating the engagement data to determine an opportunity to insert an engagement offer into the publisher content for linking the computer user to the advertising message at a contextually relevant time;
communicating the engagement data as it is gathered to a remote advertising system implementing an engagement engine ~~in real time~~, the engagement engine operable to ~~further evaluate the engagement data~~ :
continuously evaluate the engagement data to determine whether a predefined engagement trigger has occurred, the predefined engagement trigger being representative of a user response or action that is contextually relevant for presentation of the engagement offer;
responsive to determining that the predefined engagement trigger has occurred, ~~for~~ selecting an ~~relevant~~ engagement offer from a pool of different engagement offers stored by the remote advertising system that is relevant to the evaluated engagement data and wherein, where multiple engagement offers are deemed to be relevant, the engagement engine implements a ranking algorithm operable to dynamically rank the relevant engagement offers based on at least one of:
(a)    an engagement score determined from one or (sic) performance metrics recorded from past user interactions with the corresponding engagement offers;
(b)   a revenue score determined from one or more revenue metrics recorded from past user interactions with the corresponding engagement offers, and
wherein the engagement engine selects which engagement offer to present based on the rankings;
causing the interface to insert the selected engagement offer into the publisher content for displaying to the computer user,;
implementing the computer program code to determine~~ing~~ an acceptance of the engagement offer by the computer user based on a user interaction with the engagement offer; and
following the determined acceptance, presenting the advertising message
comprising one or more advertisements selected from a pool of different advertisements on the interface and wherein user interactions with each of the presented advertisements are gathered by the widget script and communicated to the remote advertising system for use in selecting subsequent advertisements, and whereby the selection of engagement offer is additionally made such that there is no direct advertising benefit to the subsequent advertisers of the selected advertisements through presentation of the selected engagement offer to the computer user other than encouraging positive engagement by the user with the advertising system prior to presentation of the advertising message.
The effect of the amendment upon the claimed scope and substance of invention
It appears useful to analyse all of the changes made to claim 1 and consider their effect on the substance of the invention identified in the original decision at [33]. There I identified the substance of the invention as:
“[Inserting] an engagement offer before advertisements, whereby advertisements are only provided to a user if the user accepts the engagement offer, there being no direct advertising benefit to the subsequent advertisers of the selected advertisements other than encouraging positive engagement by the user with the advertising system.”
An “intermediate” engagement offer
A first change to independent claim 1 is the express characterisation of the “engagement offer” in line 2 of the claim as an “intermediate engagement offer”. Reading the remainder of the claim it is clear that there is only one engagement offer provided, and that this engagement offer is provided before any advertisements are provided. Here the engagement offer is “intermediate” in the sense that it is provided as a subsidiary step in the method of linking a user to an advertising message. To me that is no different to the engagement offer in the claim before amendment. As such I do not consider that this particular amendment materially affects the scope of the claims, nor does it add to the substance of the invention identified in the previous decision.
Communicating the engagement data “as it is gathered” to a remote advertising system
A second change is the amendment whereby engagement data is communicated “as it is gathered” to a remote advertising system implementing an engagement, with the text “in real time” removed. I accept that the amendment provides a clear limitation to the scope in that there is no delay between the gathering of data and its transmission to a remote advertising system. It appears that one reasonably could argue however, that communication of data to the advertising system in real time represents communication of data without delay after it is gathered. On this basis I do not consider that the particular amendment alters the substance of the invention or materially alters the scope of the claim.
Evaluation of engagement data moved from computer program code to engagement engine
Prior to amendment, the claimed invention was limited in that the following feature was performed by the program of the computing device:
…evaluating the engagement data to determine an opportunity to insert an engagement offer into the publisher content for linking the computer user to the advertising message at a contextually relevant time…
In addition to this, the engagement engine was operable to “further evaluate the engagement data”.
Amendment removed these features and replaced them with functionality at the remote advertising system engagement engine in the form of:
…continuously evaluate the engagement data to determine whether a predefined engagement trigger has occurred, the predefined engagement trigger being representative of a user response or action that is contextually relevant for presentation of the engagement offer…
Materially, the amendment provides that functionality of evaluating data to determine a trigger must occur at the engagement engine. There is nothing present within the specification to suggest that this feature is in any way part of the substance of the invention. There is no discussion in the specification of this providing any benefit to the invention or why such a selection might be made. There is also no discussion in the specification to indicate that continuous evaluation itself might be where the invention lies. The original decision discusses the determination of the substance of the invention at [28] – [35]. This discussion focusses on the fact that the applicant considered the essence of the invention to be:
“… one that commences by inserting not an advertisement but a targeted engagement
offer into the publisher’s content at an appropriate time: allows the user to interact with
and, if they wish, accept the offer; and then – if and only if the offer is accepted – presents
an advertisement.”
Following this, and taking into account the fact that the specification is silent on any specific implementation details regarding the location and functionality of trigger determination, I conclude that determining a trigger condition based on engagement data at the engagement engine by continuously evaluating data does not constitute any part of the substance of the invention.
Responsive to determining a trigger, implement a ranking engine
Further amendments were made to the operation of the engagement engine after a trigger event has occurred in the context of selecting an engagement offer. The key amendment made to this function that requires consideration because it produces a material change in the claim is where multiple engagement offers are deemed relevant, a ranking algorithm is activated as follows:
…wherein, where multiple engagement offers are deemed to be relevant, the engagement engine implements a ranking algorithm operable to dynamically rank the relevant engagement offers based on at least one of:
(a) an engagement score determined from one or (sic) performance metrics recorded from past user interactions with the corresponding engagement offers;
(b) a revenue score determined from one or more revenue metrics recorded from past user interactions with the corresponding engagement offers, and
wherein the engagement engine selects which engagement offer to present based on the rankings;
I accept that such an amendment provides further detail to the manner of inserting engagement offers that further expands upon the ingenuitive concept of the application. This subject matter is clearly related to the problems of user engagement with advertisements via the use of intermediate engagement offers. In this regard, the inclusion of features where multiple engagement offers are ranked and a selection is made based upon the rankings adds to the substance of the invention identified in the original decision. It follows that I must consider this subject matter for patentability in this final determination.
Implementing computer program code, based on a user interaction with engagement offer
Amendment was also made to add to the previously broadly defined feature of “determining an acceptance of the engagement offer by the computer user”. The feature was amended to read:
…implementing the computer program code to determine an acceptance of the engagement offer by the computer user based on a user interaction with the engagement offer;
I do not consider this amendment has any material effect on the claim in the context of the substance of the invention. Inevitably computer code will determine acceptance of an offer which is presented to a user via their device, whereby this determination requires some form of interaction with the engagement offer. The addition of words of this type to the original claim does not add to the substance of the invention as already determined.
Further gathering of data of user interactions with advertisements that are presented
A final amendment to claim 1 was that following acceptance of an engagement offer and presentation of selected advertisements:
…user interactions with each of the presented advertisements are gathered by the widget script and communicated to the remote advertising system for use in selecting subsequent advertisements …
As with the change discussed above in relation to ranking engagement offers, I have no difficultly in accepting that this feature provides further detail regarding the substance of the invention which is related to targeted advertising. In this sense the substance of the invention now includes collection of data regarding interactions with advertisements and using this data for selecting subsequent advertisements. Again, it follows that I must consider this subject matter for patentability in this final determination.
The substance of the invention
The substance of the invention as determined in the original decision lies in;
“…the use of analysed data to insert an engagement offer before advertisements, whereby advertisements are only provided to a user if the user accepts the engagement offer, there being no direct advertising benefit to the subsequent advertisers of the selected advertisements other than encouraging positive engagement by the user with the advertising system.”
In accordance with my construction of the claims above, the substance of the invention is considered to also include the features wherein multiple engagement offers are ranked and a selection is made based upon the rankings; and collection of data regarding interactions with advertisements is made wherein this data is used for selecting subsequent advertisements.
The applicant’s submissions
I have considered the submissions of 11 November 2016 and 20 June 2017. It is clear that a large proportion of these submissions are generally focussed upon the analysis of the law and the appropriateness of the original decision. I have considered these submissions and find no new arguments that could potentially alter the findings of the original decision. With this in mind I will pay specific regard to submissions made by the applicant in the context of the particular amendments to claim 1.   Importantly I note that the applicant has not provided precise submission as to how the particular amendments alter the substance of the invention. Instead, the applicant’s primary relevant submission (as exemplified in their submissions of 20 June 2017 at [11] – [12]) is that:
“Here, the substance of the invention is the creation of an ad-hoc, networked pairing of the user’s computing device (the ‘computer’) with a central server, which interact via a computer program or programs running on each of those two devices:
(a)    a program (‘the widget’) is run on the user’s computer alongside the user’s web browser (specification p12);
(b)   the widget gathers information about the user, the content on the website being viewed on their computer and, crucially, the user’s interaction with that website… This is an active process that is not part of the ‘normal functioning’ of a computer and, additionally, involves ingenuity in the use of the user’s computer;
(c)    the widget sends the engagement data for processing to the server;
(d)   the server processes that data to determine an appropriate engagement offer to display to the user. The server does this via a ranking engine that retrieves objects from a database … and which then algorithmically ranks those objects according to two scores that it calculates (specification p18). One of those scores is based on algorithmic analysis of how well the consumer engages with the object, and the other is based on an algorithmic analysis of how much revenue has resulted from presentation of engagement offers to users… The scores are combined algorithmically and used to select the most relevant engagement offers;
(e)    the server returns information to the widget, including a list of and content of the most relevant engagement offer(s) to display to the user;
(f)     the widget ‘continuously evaluate(s)’ the user’s actions and interactions with the website they are viewing to determine the optimum contextually relevant opportunity to present an engagement offer… Again, this is an active, novel process that is not part of the normal functioning of the user’s computer, but is done especially by the widget;
(g)    the widget causes the computer to display an engagement offer at that contextually relevant time…;
(h)    the widget tracks the user’s engagement with the engagement offer… and sends that information to the server;
(i)   if the user positively engages with the engagement offer, then the server selects one or more advertisements (that are unrelated to the engagement offer)… and communicates them to the widget. Again, this is performed by evaluating information gathered by the widget against the data stored about the user’s previous interactions with engagement offers and advertisements, and about other users’ interactions;
(j)     the widget then causes the computer to display the advertisement(s) or alternative(s).
As the amendments to claim 1 make clear, the invention is for two computer programs to interoperate in real time over the internet over an ad hoc network connection between the two, and for each to carry out substantial calculation and processing, including processing that is unique to the user. The widget ‘continuously evaluate(s) the engagement data’ to determine when an ‘engagement trigger’ – which is contextually relevant to a user response or action – has occurred; selects an appropriate offer ‘relevant to the evaluated engagement data’; implements computer code to determine acceptance of the engagement offer based on user interaction with the engagement offer; and gathers user interactions with each presented advertisement and sends it to the server, while the server works with the widget to ‘continuously evaluate the engagement data’ and ‘implements a ranking algorithm operable to dynamically rank the relevant engagement offers’ according to defined criteria.”

Importantly, the premise of these submissions precludes a proper analysis of the substance of the invention. The argument that there are two computer programs operating in real time over the internet is an analysis of form and not substance. Not only do I consider that it is the normal state of affairs to create such system architecture (being two programs in two computers in communication) in the context of computers and the internet in general, but also in the context of contextual advertising across the internet. In this regard, I see no reason to consider that it is not normal for local collection of data to occur at a user device wherein this data is used by a third party advertiser (in the form of an advertising server) to select advertisements to add into user content.
I refer to the issues discussed in the specification where digital search and display based advertising are discussed as being effective means of advertising to date with their being a need to increase levels of customer engagement (page 1 lines 33-37). As discussed in the original decision this problem is solved by the insertion of a unique piece of information (an engagement offer) designed to encourage the consumer to initially engage with advertisements in a positive sense (original decision at [11]-[14]).
It is important to note that the existence of two computers and the mere fact that they are communicating with each other, performing various functions, does not inevitably ensure patentability. The decision of the Full Federal Court in Commissioner of Patents v RPL Central Pty Ltd (2015) 328 ALR458 (RPL) depicts this concept well. In that case claim 1 was to:
A method of gathering evidence relevant to an assessment of an individual's competency relative to a recognised qualification standard, including the steps of:
a computer retrieving via the Internet from a remotely-located server a plurality of assessable criteria associated with the recognised qualification standard, said criteria including one or more elements of competency, each of which is associated with one or more performance criteria;
the computer processing the plurality of assessable criteria to generate automatically a corresponding plurality of questions relating to the competency of an individual to satisfy each of the elements of competency and performance criteria associated with the recognised qualification standard;
an assessment server presenting the automatically-generated questions via the Internet to a computer of an individual requiring assessment; and
receiving from the individual via said individual's computer a series of responses to the automatically-generated questions, the responses including evidence of the individual's skills, knowledge and/or experience in relation to each of the elements of competency and performance criteria,
wherein at least one said response includes the individual specifying one or more files stored on the individual's computer, which are transferred to the assessment server.
In such a case there is no doubt that there must be plural software programs running on a plurality of different devices, including the computer, remotely located server and the assessment server. There is also clearly data transfer between those devices. Their honours found at [110] that:
“RPL Central does not claim any invention or ingenuity in any program or operation of a computer, or implementation by a computer to operate the method. Accordingly, the ingenuity of the inventors must be in the steps of the method itself. The method does utilise the speed and processing power and ability of a computer but there is no suggestion that this is other than a standard operation of generic computers with generic software…”
In the context of the applicant’s arguments, I consider the same said in RPL can be said in regard to claim 1 as amended in the present application. Where the applicant argues there are two specific programs interacting in a specific way this is nothing more than generic computer operation. Important to the claimed invention’s substance are the specifics of the method performed by the computers in terms of what steps the programs are actually performing.
It follows that I do not consider that any of the applicant’s submissions alter my assessment of the substance of the invention of amended claim 1 as identified above. I will proceed to determine patentability on the basis of this substance.
Is the substance patentable subject matter?
I consider that the amendments filed by the applicant add the following subject matter to the substance of the invention:
·Multiple engagement offers are ranked (based on certain metrics) and a selection is made of an offer to present based on those rankings
·Collection of data regarding interactions with advertisements is made wherein this data is used for selecting subsequent advertisements
In deciding whether these features add patentable subject matter I refer to paragraph [46] of the original decision.
“With reference in particular to the seminal law of NRDC, I fail to see any result in an art whereby a material advantage of utility might be observed. In this, the substance of the invention does not lie in what may be regarded as a practical art, but instead lies in a scheme for advertising to a customer such that they are more inclined to positively interact with advertisements. This is achieved by inserting something that is not an advertisement before the provision of an advertisement, such that a customer might be more interested in seeing said advertisements. While there may be a positive effect measurable when using the technique, this effect simply relates to a positive human disposition. To me, it must be said that the invention is merely an advertising scheme which is not patentable subject matter in accordance with established case law. The subject matter is in an art of human activity or human interaction, and clearly distinguishable from cases like CCOM and IBM where the substance of the invention solved what could be regarded as a technical limitation in computer technology.”
I do not consider the features identified above add anything more than further specifics to the advertising methodology. Ranking based on non-technical metrics, and collecting further data to use in the future to select subsequent advertisements, are contributions that are simply strategic innovations in the field of advertising for improving customer engagement with ads that amount to a mere scheme.
I make further reference to the applicant’s submissions of 20 June 2017 at [27] which state:
“…it can be clearly be seen that the invention involves ‘an invention in the way in which the computer is utilised’, to use the words in RPL Central (238 FCR 27 at 51 [104]) – noting again that that is just ‘an example’ and not exhaustive of what will suffice. The methods of providing digital advertising disclosed in the prior art do not involve this kind of evaluative process, or an engagement offer (let along the function of determining an appropriate contextually relevant time to display the engagement offer), or the monitoring of the users interaction with the website so as only to present an engagement offer at an appropriate time, to determine an appropriate offer to present, to show an advertisement to them if they have interacted with the engagement offer, and to determine what advertisements to show. All of these steps involve the creation of custom software to utilise both the user’s computer and the server in a novel way. There is thus a ‘contribution to the claimed invention [that] is technical in nature’.”
Firstly, as I have already touched upon, I do not see that the invention lies in the way the computer is utilised. On the contrary, the contribution to the art appears to lie simply in what the computer is doing. Any questions of patentability must therefore consider whether the method itself performed by the computer meets the usual requirements of patentability, regardless of the fact that the method is inextricably linked to computer technology in the claims as a matter of form.
From my understanding of the art, there is no contribution in the computer systems involved in the evaluative process, but the contribution lies in the evaluative process itself. The applicant’s submissions identified above extensively list various aspects of the process relating to: the engagement offer itself; analysis of interactions to determine when to provide an engagement offer; the determination of an appropriate engagement offer; the determination of appropriate advertisements; and the display of advertisements. I agree that these features together provide a contribution to the art and, in this contribution, ensure that the computer and server are doing novel things. However these features are merely implemented by the “custom software”. As per Research Affiliates and RPL Central “there is a distinction between technological innovation which is patentable and business innovation which is not”, and the substance of the invention in this case amounts to business innovation.
Therefore I find that claim 1 is not directed to a manner of manufacture. The remaining claims do not add any patentable subject matter to the substance of the invention and hence all of the present claims are not patentable.
Conclusion
I conclude that the claims as proposed to be amended are not directed to a manner of manufacture. I do not see any subject matter in the specification that can be considered patentable.
I refuse the application.
Dr N.R. Madsen
Delegate of the Commissioner of Patents