Patent Lawyer Blog
In a notable Final Written Decision on Remand, the Patent Trial and Appeal Board (PTAB) conducted a detailed examination of the prior art status of the Krassner reference (US 10,380,602 B2) in the inter partes review between Duration Media LLC and Rich Media Club LLC. This analysis proved central to determining the patentability of claims related to internet advertising viewability testing.
The Intertwined Patent Lineage
Interestingly, the challenged patent (the ‘329 patent) and the Krassner reference share significant DNA. The ‘329 patent is a continuation of application No. 12/384,403, which itself is a continuation-in-part (CIP) of application No. 11/803,779 — the very application from which Krassner issued. This familial relationship was explicitly acknowledged in the decision: “The ‘329 patent states that its underlying application is a continuation of application No. 12/384,403 (“the parent ‘403 application”), filed on Apr. 4, 2009, now Pat. No. 11,004,090, which is a continuation-in-part ((“CIP”)) of application No. 11/803,779 (“the grandparent ‘779 application”), filed on May 16, 2007, now Pat. No. 10,380,602…” Both parties agreed that “the ‘329 patent includes new matter relative to Krassner.” Patent Owner explained this new matter related to “Rich Media Club’s invention of a method to determine if an advertisement on a web page had come within (or was approaching), the viewable portion of a user’s webpage in a browser (sometimes referred to as the ‘viewport’).” As the Board recognized, “Krassner and the ‘329 patent share a significant amount of disclosure, with Krassner issuing from an application in the chain of priority applications identified by the ‘329 patent.”
The § 102(b) Question
Duration Media initially asserted that Krassner qualified as prior art under 35 U.S.C. § 102(b). The Board rejected this theory, noting “[a]s we explained in the Institution Decision, none of these references is prior art under § 102(b) because none was patented or published more than one year prior to April 4, 2009.” Krassner issued on August 13, 2019, far too late to qualify under § 102(b), which requires publication or patenting more than one year before the effective filing date of the challenged patent. Duration Media attempted to argue that a related patent application publication (US 2007/0265923 A1), published November 15, 2007, contained “substantively identical disclosure” to Krassner. The Board firmly rejected this approach: “Petitioner’s resurrected argument is based on a fundamental misunderstanding of § 311(b)… Petitioner requested to cancel the claims of the ‘329 patent on the basis of Badros, Harkins, and Krassner. Petitioner did not base its request, in whole or in part, on the Krassner publication.”
The § 102(e) Analysis
Although Krassner failed as § 102(b) prior art, the Board determined it could qualify under § 102(e) as a reference “by another” filed before the critical date: “We previously determined that the record at institution supported that Krassner was prior under § 102(e) because it was filed ‘by another’ before April 4, 2009.” This conclusion stemmed from comparing the inventor lists on the two patents. The Board noted differences: “Ex. 1001, code (72) (listing Igor Tchibirev), with Ex. 1002, code (75) (not listing Mr. Tchibirev as an inventor),” and observed that Krassner’s filing date of May 16, 2007, preceded the critical date.
The Common Ownership Challenge
Rich Media Club attempted to invoke the safe haven of 35 U.S.C. § 103(c), arguing that, despite the different inventorship, both patents were commonly owned: “As demonstrated by the face of the patents, USPTO assignment records, and the Second Declaration of Igor Tchibirev, the Krassner reference and the ‘329 Patent were in fact commonly owned by the Patent Owner, Rich Media Club, LLC.” However, the Board identified a critical timeline issue: “Mr. Tchibirev did not assign his interest in what would become the ‘329 patent until November 24, 2008. And, as Petitioner argues, with persuasive support in the record, the invention that ultimately would be claimed in the ‘329 patent was made in early 2008.” Patent Owner’s evidence failed to establish common ownership at the time the invention was made, which is the crucial temporal reference point for the § 103(c) safe haven. The Board concluded that the “Patent Owner does not dispute that the invention was made before November 2008. Nor does Patent Owner argue, let alone provide evidence, that Mr. Tchibirev had, at the time the invention was made, an obligation to assign his rights therein.”
Patent Owner’s Failed Timeline Defense
In its Sur-Reply, Patent Owner attempted to rely on a conclusory statement from Mr. Tchibirev that “‘at the time of the invention of the ‘329 patent, the ‘329 patent and the Krassner reference were commonly owned.'” But the Board found this testimony unpersuasive, as it was “a legal conclusion, which is not supported by the evidence Mr. Tchibirev discusses.”
Significance of the Ruling
This ruling demonstrates how patents with shared lineage can still function as prior art against each other. Despite the ‘329 patent claiming priority to the same application from which Krassner issued, differences in inventorship and the timing of assignments proved critical to the prior art determination. The decision also illustrates the importance of understanding the temporal requirements of 35 U.S.C. § 103(c). Common ownership must exist at the time the claimed invention was made—not when applications are filed, not when assignments are recorded, and not when patents issue. For practitioners managing patent portfolios with multiple inventors and related applications, this case emphasizes the need for clear invention documentation and prompt execution of assignment agreements to preserve § 103(c) safe haven protections.
In the end, Duration Media prevailed, with the Board finding all challenged claims unpatentable as obvious over Krassner, Badros, and Harkins, despite the shared lineage and Rich Media Club’s efforts to disqualify Krassner as prior art.
The case was decided before Administrative Patent Judges Easthom, Fitzpatrick, and Repko, with Judge Fitzpatrick writing for the Board and joined by Judge Easthom. The decision is Duration Media LLC v. Rich Media Club LLC, Case No. IPR2023-00953, Paper 80 (Public Final Written Decision on Remand) (PTAB Mar. 7, 2025).
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Greg Cordrey at 949.623.7236 or GCordrey@jmbm.com.