PTAB

IPR2015-01142

Amazon.com Inc v. SimpleAir Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System and Method for Transmission of Data
  • Brief Description: The ’838 patent discloses a system for transmitting data notifications from various information providers to remote computing devices. The system is designed to deliver these notifications over a wireless broadcast network (e.g., a pager network), enabling receipt even when the remote device is not connected to the internet ("offline").

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 14, 15, 22, 23, 25, 26, and 29 are obvious over Hays in view of Pepe.

  • Prior Art Relied Upon: Hays (U.S. Application No. 08/215,817) and Pepe (Patent 5,742,905).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Hays discloses the core elements of independent claim 1. Hays teaches a telecommunication system that uses two channels—a cellular network and a paging network—to deliver messages to a mobile unit. This system includes a central "message manager" (a server system) that receives data, determines how to route it, and transmits a notification message via a paging network, which functions as a "transmission gateway." This process inherently notifies the device whether its primary cellular connection is online or offline. While Hays suggests the use of a subscriber database, Pepe was cited to explicitly teach building data blocks based on information in such a database (as required by claim 2). Pepe describes a personal communications interface that receives emails, queries a subscriber database to translate the email address to a pager address, and formats the message for the paging network.
    • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would have been motivated to combine the teachings of Hays and Pepe. Both references address the same technical problem of delivering data to mobile devices using pager networks and were filed contemporaneously. A POSITA would naturally have looked to Pepe’s detailed implementation of a subscriber database and address translation to improve the functionality of the broader system disclosed in Hays.
    • Expectation of Success: A POSITA would have had a high expectation of success, as incorporating a known database lookup and message formatting technique (Pepe) into a wireless notification system (Hays) uses conventional technologies to achieve a predictable result.

Ground 2: Claims 3-5, 13, 16, 27, and 30 are obvious over the combination of Hays, Pepe, and Throckmorton.

  • Prior Art Relied Upon: Hays (Application No. 08/215,817), Pepe (Patent 5,742,905), and Throckmorton (Patent 5,818,441).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on the Hays and Pepe combination by adding Throckmorton to address limitations in dependent claims related to interactive notifications. Throckmorton discloses a system for sending "associated data" along with a primary broadcast (e.g., a TV signal). This associated data can include URLs, which Petitioner argued meets the limitation of an "address for obtaining information" (claims 3 and 16). Throckmorton further teaches that clicking a URL can launch a browser ("viewer") to display the linked information, thereby allowing the display of data upon activation (claim 4). Throckmorton also discloses sending commands in the data stream to control the viewer, such as automatically activating a browser, which Petitioner mapped to the limitations of controlling viewers (claim 5) and causing a process to occur (claim 13).
    • Motivation to Combine: Petitioner asserted that Hays and Throckmorton share similar features, such as providing a user with a shorter message and a method to obtain more information. A POSITA would have been motivated to combine Throckmorton’s teachings on using URLs and commands with the Hays/Pepe notification system to create a more interactive and feature-rich user experience, which was a known design goal at the time.
    • Expectation of Success: The combination was presented as predictable. Adding a URL to a notification message sent via the Hays system would predictably allow a user to access more detailed information, as taught by Throckmorton.

Ground 3: Claims 1-5, 13-15, 22, 23, 25-27, 29, and 30 are obvious over Kane in combination with Hays and Throckmorton.

  • Prior Art Relied Upon: Kane (Patent 5,487,100), Hays (Application No. 08/215,817), and Throckmorton (Patent 5,818,441).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner presented Kane as an alternative primary reference that discloses all elements of claim 1. Kane teaches a system for sending messages to a remote unit via two channels: a wireless paging network and a dial-up telephone network. Kane’s "central terminal" receives messages (e.g., X.400 emails), parses them, uses a subscriber database to convert the destination email address to a pager number, builds data blocks for a pager message, and transmits it. Petitioner argued this maps to the server system and its various software subsystems. Hays was added to this combination primarily to supply its more explicit teaching of "instantaneously notifying" a device of message receipt whether it is online or offline. Throckmorton was used for the same purpose as in Ground 2: to teach the inclusion of URLs, commands, and the use of multiple viewers.
    • Motivation to Combine: A POSITA would have been motivated to combine Kane and Hays because they both disclose similar dual-channel messaging systems and address the same technical challenges. It would have been a simple and predictable design choice to incorporate Hays's specific online/offline notification logic into Kane's system. The motivation to further add Throckmorton’s interactive features remains the same as in Ground 2.
    • Expectation of Success: Combining these known elements from prior art systems to enhance functionality was argued to be a predictable exercise for a POSITA.

4. Key Claim Construction Positions

  • "server system": Petitioner argued for a construction of "one or more servers for transmitting data packets over a wireless broadcast network to both on- and off-line remote computing devices." Patent Owner contended no construction was necessary or, alternatively, "a system comprising one or more servers."
  • "transmission gateway": Petitioner noted it had challenged this term as indefinite in district court but, for the purposes of the IPR, adopted Patent Owner’s proposed construction: "one or more software programs (or a portion of a program) that prepare the data blocks for their transmission to receiver and interface with other resources used to transmit the preprocessed data."
  • "whether the selected remote computing devices are online or offline...": Petitioner argued this phrase did not require construction beyond defining "information provider" as an "information source." Patent Owner proposed a more detailed construction specifying that the online/offline status is relative to the information providers and that receiving data from the central broadcast server does not itself make a device "online."

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-5, 13-16, 22, 23, 25-27, 29, and 30 of the ’838 patent as unpatentable.