PTAB

CBM2014-00054

Google Inc v. SimpleAir Inc

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Petition
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1. Case Identification

2. Patent Overview

  • Title: System and Method for Transmission of Data
  • Brief Description: The ’914 patent describes a method for transmitting data from central servers to remote devices and instantaneously notifying the devices upon receipt, regardless of whether the devices are online or offline from an associated data channel. The technology was aimed at overcoming the prior art's lack of immediate notification for services like email.

3. Grounds for Unpatentability

Ground 1: Obviousness over SkyTel - Claims 1-3, 7, 22-24, and 69 are anticipated by and/or obvious over the SkyTel system.

  • Prior Art Relied Upon: The SkyTel wireless messaging system, as evidenced by a collection of documents including corporate publications, user guides, and news articles from 1994-1995, and Hays (WO 95/26113) which describes the SkyTel network.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued the SkyTel system, in public use before the patent’s priority date, performed every step of the challenged claims. SkyTel transmitted data (news, stocks, email) from centralized servers (AT&T PersonaLink) to remote devices (e.g., Sony Magic Link communicators with pager cards). The system parsed this information, built data blocks using protocols like POCSAG and FLEX, and transmitted them through information and transmission gateways. Crucially, the system notified devices of new messages via the paging network, irrespective of whether the device was connected to the internet (online) or not (offline).
    • Motivation to Combine (if applicable): Not a combination ground, but Petitioner argued that all elements were present in the single, integrated SkyTel system.
    • Expectation of Success: Not applicable for an anticipation argument. For obviousness, success was demonstrated by the actual operation of the SkyTel system.

Ground 2: Obviousness over Tso in view of May - Claims 1-3, 7, 22-24, and 69 are obvious over Tso in view of May.

  • Prior Art Relied Upon: Tso (Patent 6,047,327) and May (Patent 5,043,721).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Tso taught a communication system that transmits filtered electronic information ("InfoBites") from a server to a client over a network. Tso disclosed all elements of claim 1, including transmitting data from information sources to a central server, preprocessing and parsing the data, building data blocks, and transmitting them through gateways to remote client devices for display. However, Tso did not explicitly teach notifying a device that was powered off. May was cited for its teaching of a paging accessory that could receive a signal and "wake up" a turned-off portable computing device to alert the user.
    • Motivation to Combine: A POSITA would combine May's wake-up functionality with Tso's wireless data delivery system to enhance the user experience. This would allow for reliable, instantaneous notification of important information, as taught by Tso, even if the user's device was powered off to conserve battery, a common concern taught by May. The combination would provide a more robust and power-efficient notification system.
    • Expectation of Success: The combination involved applying a known paging accessory function (waking a device) to a known data broadcast system. A POSITA would have a reasonable expectation of success because integrating paging receivers with portable computers was a well-known and straightforward practice at the time.

Ground 3: Obviousness over Palmer - Claims 1-3, 7, 22-24, and 69 are anticipated by and/or obvious over Palmer.

  • Prior Art Relied Upon: Palmer (Patent 5,906,865).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner contended that Palmer disclosed a system for sending URLs to receivers, like pagers connected to computers, in coordination with television or radio broadcasts. Palmer’s central office acted as a central broadcast server, receiving data (programming schedules and URLs) from information sources (broadcasters). The central office preprocessed this data, built data blocks for a paging system, and transmitted them to receivers. The system notified the user's computer of the URL regardless of its connection status to an online service, thereby meeting the "online or offline" limitation.
    • Motivation to Combine: Not a combination ground.
    • Expectation of Success: Not applicable for an anticipation argument; for obviousness, success was inherent in Palmer's disclosure of a functional system for transmitting URLs to user devices for immediate or later use.

  • Additional Grounds: Petitioner asserted numerous additional obviousness challenges, including combinations of SkyTel, Tso, and Palmer with secondary references Bezaire (Patent 5,758,088), Dasan (Patent 5,761,662), Dai (Patent 5,307,399), and DeLuca (Patent 5,663,717) to teach more specific methods of data parsing, subscriber database use, and displaying data in a scoreboard format.

4. Key Claim Construction Positions

  • "whether said computing devices are online or offline from a data channel...": Petitioner proposed this means "whether the remote computing devices are or are not connected via the Internet or another online service to a data channel... at the time the preprocessed data is received." This construction was central to arguing that prior art paging systems, which deliver notifications via a separate broadcast channel, met the limitation.
  • "information gateway" / "transmission gateway": Petitioner proposed constructions defining these terms as software programs or portions of programs that perform the recited functions (e.g., building data blocks, preparing them for transmission). This broad, software-based interpretation allowed Petitioner to map the claims onto prior art systems that used integrated software components rather than distinct hardware gateways.

5. Key Technical Contentions (Beyond Claim Construction)

  • Covered Business Method Patent: A central threshold argument was that the ’914 patent is a Covered Business Method (CBM) patent. Petitioner argued that claims reciting the transmission of stock quotes and displaying data on a "market scoreboard" are directed to the practice and management of financial products and services, making the patent eligible for CBM review.
  • Priority Date Challenge: Petitioner contended that the ’914 patent was not entitled to its claimed 1996 provisional priority date for key limitations. This argument, based on an analysis of the provisional application and prosecution history, was critical for establishing that Tso (filed February 16, 1996) qualifies as prior art under §102.

6. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not defer to the conclusions of the prior ex parte reexamination of the ’914 patent. It was argued that the reexamination was procedurally limited, as it could not consider prior art systems in public use (like SkyTel). Furthermore, regarding Tso, Petitioner contended that the Patent Owner only overcame the rejection by submitting an affidavit with source code that could not be proven to exist before Tso’s filing date, an issue the Board could now properly evaluate.

7. Relief Requested

  • Petitioner requested institution of a Covered Business Method Patent Review and cancellation of claims 1-3, 7, 22-24, 69, and 70 of the ’914 patent as unpatentable.