Google Inc v. SimpleAir Inc

1. Case Identification

• Case #: CBM: Unassigned
• Patent #: 8,572,279
• Filed: October 29, 2014
• Petitioner(s): Google Inc.
• Patent Owner(s): SimpleAir, Inc.
• Challenged Claims: 1-4, 6-11, 13-21, 24, 27-35, 37, 38, 42, 43, 47-49, 54, 55, 62, and 63

2. Patent Overview

• Title: System and Method for Data Communication to Online and Offline Devices
• Brief Description: The ’279 patent describes a system for transmitting "notification centric information" from various sources to remote computing devices. The invention's central feature is its asserted ability to transmit data regardless of whether the remote devices are online or offline from an associated data channel, aiming to solve the problem of users not receiving immediate notifications from online services like email.

3. Grounds for Unpatentability

Ground 1: Patent Ineligibility - Claims 1-4, 6-11, 13-21, 24, 27-35, 37-38, 42-43, 47-49, 54-55, and 62-63 are ineligible under 35 U.S.C. §101

• Prior Art Relied Upon: Not applicable for a §101 challenge, but Petitioner cited prior art to demonstrate that claimed elements were conventional.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued the claims were directed to the abstract idea of "packaging and routing information as part of a subscription service," which is analogous to the long-standing practice of periodical mail delivery. The petition asserted that the claimed system components—a central broadcast server, parser, information gateway, and transmission gateway—were merely generic computer functions implemented with conventional technology known long before the patent filing.
  • Motivation to Combine (for §103 grounds): N/A
  • Key Aspects: Petitioner contended that implementing the abstract idea on generic computers and networks does not add an "inventive concept" sufficient to transform the abstract idea into a patent-eligible application. The claims did not improve computer functionality itself but merely used computers as a tool to perform a fundamental economic and communicative practice.

Ground 2: Anticipation by The Dartmouth System - Claims 1-2, 6-11, 13-14, 16, 20, 24, 29, 35, 42-43, 47-49, 54, and 63 are anticipated by The Dartmouth System

• Prior Art Relied Upon: The Dartmouth System, as evidenced by Campbell (a 1994 conference paper), the declaration of co-developer Jim Matthews, and system source code files.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that the Dartmouth System, a widely used email and bulletin board system publicly operational in 1994, disclosed every element of the independent and dependent claims. The system used a notification server (the claimed “central broadcast server”) that received data from information sources (email and bulletin board servers), parsed it, and sent notifications to user devices. Crucially, notifications were sent to a driver on the user’s device “asynchronously,” regardless of whether the main client application (BlitzMail) was running or connected to the servers. This met the key “online or offline” limitation of the ’279 patent. The system also used a subscriber table for addressing and provided various alerts (beeps, flashing icons), anticipating numerous dependent claims.

Ground 3: Obviousness over Kane, Gifford, and Maltz - Claims 1-4, 8, 20, 24, 29, 35, 37-38, 42, 54, and 63 are obvious over Kane in view of Gifford and Maltz

• Prior Art Relied Upon: Kane (WO 94/08419), Gifford (a 1985 IEEE journal article), and Maltz (a 1995 conference paper).

• Core Argument for this Ground:

  • Prior Art Mapping: Kane taught a system for sending email messages to pagers, featuring a central terminal that parses messages, looks up subscriber addresses, and transmits truncated messages over a low-bandwidth paging channel. Gifford taught a system for broadcasting data from multiple, varied information sources by using a background process to parse and standardize the data. Maltz taught using emails to send “pointers” (i.e., hyperlinks) to larger documents, which a user could then access via a separate, higher-bandwidth connection.
  • Motivation to Combine: A POSITA would combine Gifford with Kane to enable Kane's single-source system to handle multiple information sources, a common method for improving system flexibility. A POSITA would have been further motivated to incorporate Maltz's pointer-based messaging to address Kane’s stated goal of efficiently using the limited bandwidth of the paging channel.
  • Expectation of Success: The combination was a predictable integration of known elements. Using pointers (Maltz) to notify a user over a paging channel (Kane) and then allowing the user to retrieve the full document using a separate modem connection (also taught by Kane) would have been a straightforward application of known techniques to achieve the predictable result of efficient, multi-source information delivery.

• Additional Grounds: Petitioner asserted additional obviousness challenges, primarily building on the Dartmouth System and Kane/Gifford/Maltz combinations by adding references such as Gunn (for wireless transmission), Beard (for UI icons), Pettus (for a network of servers), and Handelman (for advertisements) to teach specific dependent claim features.

4. Key Claim Construction Positions

• Petitioner argued that the claim terms should be given their plain and ordinary meaning but highlighted several constructions adopted in a prior Covered Business Method (CBM) review of the parent ’914 patent, which shares an identical specification.
• “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 by the receivers." This construction was central to mapping the Dartmouth System, which sent notifications to a device driver irrespective of the client application’s connection state.
• “information gateway” / “transmission gateway”: Construed as "one or more software programs (or a portion of a program)" that perform the recited functions of building/addressing and preparing/transmitting data blocks, respectively.
• "communicatively coupled": Petitioner argued this term, new to the ’279 patent, should mean "coupled for communication" and encompass communication between software functions or processes on the same server, not necessarily requiring physically separate servers.

5. Arguments Regarding CBM Eligibility

• Petitioner asserted the ’279 patent was eligible for CBM review, a threshold requirement for the petition.
• The argument centered on showing the patent qualified as a "covered business method" under the America Invents Act. Petitioner contended the claims were directed to a financial product or service, pointing to the specification’s disclosure of transmitting stock quotes. Furthermore, Petitioner argued the patent was not for a "technological invention" because it merely recited the use of well-known, conventional components (servers, paging networks, generic computers) to implement the abstract business practice of information routing, without offering any technical improvement to the components themselves.

6. Relief Requested

• Petitioner requests institution of a covered business method patent review and cancellation of claims 1-4, 6-11, 13-21, 24, 27-35, 37, 38, 42, 43, 47-49, 54, 55, 62, and 63 as unpatentable.