IP Law Daily, PATENT—Fed. Cir.: Federal Circuit allows obviousness finding to stand in Wildseed’s patent dispute with Google, (May 4, 2026)

By Steven Melendez

The court found no fault in the PTAB’s claim construction or adherence to the Administrative Procedure Act.

A court allowed a Patent Trial and Appeal Board (PTAB) ruling of obviousness to stand in a case involving a patent held by Wildseed Mobile, LLC, rejecting challenges to the PTAB claim construction and its adherence to the Administrative Procedure Act (APA). The case arises from an inter partes review (IPR) sought by Google LLC (Wildseed Mobile, LLC v. Google LLC, No. 24-1846 (Fed. Cir. Apr. 30, 2026)).

Background. Wildseed’s patent in question, U.S. Patent No. 7,376,414, is titled “Method and System for Inserting Advertisements into Broadcast Content and is “directed to providing advertisements for playing on a mobile device based on previously provided information regarding the mobile device user.” The PTAB held claims 1-7 and 9-14 of the patent unpatentable based on a combination of three prior art references.

The claims involve selecting an advertisement based on information collected from a user’s mobile device, stopping the playback of user-selected audio material, playing the ad, recording the audio that would have played while the ad is played, and then playing back the recorded content. The inventors envisioned a use case involving traditional radio playing through a cellphone, according to the ruling in the case.

In an embodiment depicted in the patent, the system collects user information through a “client advertisement application” connected to several modules, including a demographic module that collects demographic information, a behavior module that collects the “type and frequency” of the user’s cellphone use, and an “other source” module that allows for other sources of information, “e.g., a message from another user of another mobile device that identifies characteristics of the current user of the mobile device.” The information is collectively used to determine which ad to play.

The original first claim of the application that produced the ‘414 patent did not specify the source of user information used to pick ads, “referring broadly to ‘information associated with a user of the mobile device.’” It was rejected by the examiner as obvious in light of prior art. In response, the applicant moved specific categories of information from independent claim 1 to dependent claim 2—and added a limitation involving information “taken by the cellular device from a message sent to the cellular device.” The applicant argued that the prior art dealt with ad targeting based on an “affirmative act” of the user as distinct from another source—a message received from another user of another device.

During the IPR, Wildseed argued that “information taken by the cellular device from a message” is limited to verbatim extraction of information from the message, while Google argued it could include information derived from that text. For example, according to the ruling, in Google’s review, the system could examine the message “Let’s play Pebble Beach today” and derive the term “golf,” even though the word does not directly appear in the message.

The PTAB rejected Wildseed’s construction, finding nothing that limited the meaning of the language to verbatim extraction and noting Google’s construction was compatible with dictionary definitions submitted by both parties. The Board then found the independent claims obvious in light of prior art and, after accepting Google’s construction of a reference to “additionally include[d]” information, also found the challenged dependent claims unpatentable as obvious.

Claim construction. Wildseed argued on appeal that the PTAB improperly viewed the term “taken” in isolation and that something “taken” must already exist and cannot be “deduced,” according to the ruling. Wildseed also argued that the claim language elsewhere used the terms “determine” and “determine based on,” and argued “taken” must thus have a different meaning. But the appellate court rejected this argument.

“Wildseed’s suggestion that the doctrine of claim differentiation supports its position is mistaken, as nothing about the Board’s construction renders any claim term improperly superfluous,” according to the ruling. “Under the Board’s construction, ‘determined’ includes only generated information, while ‘taken’ includes both generative information and verbatim extraction, consistent with the presumption that different claim terms have different scope.”

Wildseed also argued that the broader construction didn’t take into account technical limitations in 2001. But the court found a skilled artisan of the era would know cellphones were then capable of deducing or deriving information through techniques like a database lookup.

The court also rejected Wildseed’s arguments based on the patent specification and the initial provisional application, finding both involve examples of generating and deriving information and no limitations to simply extracting text. And the court rejected Wildseed’s arguments based on dictionary definitions, finding that since the judges were able to resolve the claim construction based solely on intrinsic evidence, there is no need to consider such extrinsic evidence, upholding the conclusion the challenged independent claims are unpatentable.

With regard to dependent claims, the court also agreed with the PTAB that within the scope of “the provided information additionally includes” is information besides text messages. Wildseed had argued the information in dependent claims must be from the same source as in independent claims on which they rely, but the court noted that the preferred embodiment shows information being taken from different sources.

“Thus, the dependent claims, like the independent claims, require that some information be taken from the text messages received by the user, but they do not preclude taking information from other sources as well,” according to the ruling. “We agree with the Board’s construction of the disputed claim term. As Wildseed does not dispute that substantial evidence supports the Board’s finding that the dependent claims are obvious when this construction is applied, we affirm the Board’s finding that these claims are obvious.”

Administrative Procedure Act. Wildseed also argued that the PTAB’s analysis of dependent claims 2, 10, and 13 failed to satisfy the requirements of the APA as it did not enable appellate review.

But the appeals court judges disagreed. “The Board’s path with respect to these dependent claims is reasonably discernable,” the court found, noting the Board cited intrinsic evidence and provided analysis sufficient for review.

The Case is No. 24-1846.

Judge: Stark, L.

Attorneys: David Alberti (Alberti Lim & Tonkovich LLP) for Wildseed Mobile, LLC. Tara Lauren Kurtis (Perkins Coie LLP) for Google LLC.

Companies: Wildseed Mobile, LLC; Google LLC

Cases: Patent FedCirNews USPTO