PTAB

CBM2014-00170

Google Inc v. SimpleAir Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Data Transmission and Notification System
  • Brief Description: The ’914 patent relates to a method for transmitting data to remote devices and instantaneously notifying those devices of the data’s receipt, regardless of whether the devices are online or offline from an associated data channel.

3. Grounds for Unpatentability

Ground 1: Anticipation over the Dartmouth System - Claims 1, 2, and 22-24 are anticipated by the Dartmouth System.

  • Prior Art Relied Upon: The Dartmouth System (a publicly used system described in a 1994 conference paper by Campbell, a declaration by co-developer Matthews, and associated source code).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the Dartmouth System, an email and bulletin board system publicly used at Dartmouth College before the ’914 patent’s priority date, disclosed every limitation of the challenged claims. The system used email and bulletin board servers as “information sources” that sent data to a central “notification server.” This notification server preprocessed the data by parsing messages to identify registered users, building data blocks (notifications), and assigning addresses based on a user registration table, which constituted the claimed “subscriber database.” The server then transmitted notifications to a driver (receiver) on a user’s device, which provided an alert (e.g., a beep or flashing icon) even if the primary email client application was not running, thereby notifying the device whether it was “online or offline.” This mapping met the limitations of independent claim 1 and dependent claims 2 (subscriber database) and 22-24 (alerts).

Ground 2: Obviousness over the Dartmouth System and Gunn - Claims 3 and 7 are obvious over the Dartmouth System in view of Gunn.

  • Prior Art Relied Upon: The Dartmouth System, Gunn (“Wireless Communications: Connecting Over The Airwaves,” published in PC Magazine, Aug. 1993).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground asserted that while the Dartmouth System taught the core notification method, claims 3 and 7 require the transmission to be wireless. The Gunn reference was cited for its disclosure of various then-available wireless technologies, such as two-way radio transceivers and cellular services (e.g., Cellular Digital Packet Data), which Gunn described as suitable for email transmission.
    • Motivation to Combine: A POSITA would combine Gunn’s wireless capabilities with the Dartmouth System to achieve the well-understood benefit of mobile, untethered access to notifications. Gunn was argued to provide the express motivation by highlighting the immense appeal of leaving behind the physical constraints of a desktop PC to achieve “wireless wide-area connectivity.”
    • Expectation of Success: Petitioner contended the combination would have been straightforward and predictable, as it involved applying a known technology (wireless data transmission) to an existing system (Dartmouth’s notification service) to gain a known benefit (mobility).

Ground 3: Obviousness over PIC Reference Guide and Hays - Claims 1-3, 7, and 22-24 are obvious over the PIC Reference Guide in view of Hays.

  • Prior Art Relied Upon: The PIC Reference Guide (a 1994 guide for the Sony Magic Link device), Hays (WO 95/26113).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that the PIC Reference Guide described the AT&T PersonaLink service, where a user’s “Smart Mailbox” (central server) could be configured to automatically send a page to their Magic Link device upon receiving an email. This system met the core limitations of claim 1 by preprocessing emails based on user-defined rules (e.g., sender/subject) and triggering a notification. The Hays reference, which describes the underlying mechanics of the SkyTel paging network used by the Magic Link device, was used to explicitly show the steps of building data blocks, assigning addresses, and transmitting them. The Magic Link device received these pages wirelessly, regardless of whether its modem was connected to a phone line, satisfying the “online or offline” limitation and the wireless limitations of claims 3 and 7.
    • Motivation to Combine: A POSITA would combine these references because Hays described the technical implementation of the exact paging service (SkyTel) used by the system in the PIC Reference Guide. The combination represented a complete picture of a single, existing commercial system, making it a simple case of using one reference to supply the known operational details of another.
    • Expectation of Success: Success was expected because the combination involved integrating components of a known, functional commercial system to achieve a predictable result.

  • Additional Grounds: Petitioner asserted §101 and §112 grounds. It also asserted additional obviousness grounds based on Kane (WO 94/08419), Gifford (a 1985 IEEE journal), Nelson (Patent 5,347,268), and Olazabal (Patent 5,323,148), which relied on similar theories of combining known paging systems with prior art disclosing features like multiple parsers, data channels, and user alerts.

4. Key Claim Construction Positions

  • Petitioner proposed constructions for several key terms, noting they had been adopted in co-pending litigation and a prior CBM proceeding. Key proposed constructions included:
    • “whether said computing devices are online or offline from a data channel”: Construed as "whether the remote 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 broad construction supported arguments that systems where a client application is closed but the device can still receive notifications meet the limitation.
    • “central broadcast server”: Construed as "one or more servers that are configured to receive data from a plurality of information sources and process the data prior to its transmission." This supported mapping the term to systems like the PersonaLink mailbox or the Dartmouth notification server.

5. Key Technical Contentions (Beyond Claim Construction)

  • Ineligibility under §101: Petitioner argued the challenged claims are directed to the abstract idea of "packaging and routing information as part of a subscription service." It contended the claims merely implement this longstanding human activity using generic, conventional computer and network components (servers, parsers, gateways) without adding an inventive concept, thus failing the Alice/Mayo test.
  • Indefiniteness under §112: Petitioner argued claim 1 is indefinite because the term "preprocessed data" lacks a clear antecedent basis. The claim uses "data," "data blocks," and "preprocessed data" in ways that create ambiguity as to their relationship and the sequence of method steps, failing to inform a POSITA of the scope of the invention with reasonable certainty.

6. Arguments Regarding Discretionary Denial

  • The petition noted that a prior CBM petition (CBM2014-00054) on the ’914 patent was denied institution. Petitioner argued against discretionary denial of the present petition by explaining that the grounds were substantially different. Specifically, the prior petition relied on art unavailable in CBM review, and the one remaining ground was reframed in the new petition to focus on a single product embodiment (the Magic Link) and was supplemented with new art not previously considered by the USPTO.

7. Relief Requested

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