Amazon.com Inc v. M2M Solutions LLC

1. Case Identification

• Case #: IPR2019-01204
• Patent #: 9,961,477
• Filed: July 11, 2019
• Petitioner(s): Amazon.com, Inc.
• Patent Owner(s): M2M Solutions LLC
• Challenged Claims: 1-30

2. Patent Overview

• Title: System and Method for Remote Asset Management
• Brief Description: The ’477 patent discloses a system for remotely managing a plurality of consumer device "assets" (e.g., cell phones, laptops, utility meters) from a central server platform. The server receives "consumer usage information" and "operational status information" from the assets, processes the data, and sends "management instructions" back to the assets to perform actions and provide services.

3. Grounds for Unpatentability

Ground 1: Claims 1-6 are obvious over Kloba and Multer.

• Prior Art Relied Upon: Kloba (Patent 6,421,717) and Multer (Patent 6,671,757).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kloba taught the core elements of the challenged claims, including a remote server that manages a plurality of mobile devices. Kloba's server received "state" information (operational status) and user-selected channel/preference information (consumer usage) from the devices. In response, Kloba’s server sent instructions that caused the devices to synchronize and update their stored content, which constituted "management instructions" that provided a consumer service. The primary element missing from Kloba was the autonomous nature of the monitoring and managing.
  • Motivation to Combine: Kloba’s synchronization process was initiated manually by a user (e.g., pressing a "sync" button). Multer taught automatic, time-based, or event-based synchronization for devices like cellular phones that often lacked a manual sync button. Petitioner asserted a person of ordinary skill in the art (POSITA) would combine Multer's automatic synchronization with Kloba's system to improve usability, ensure content remained consistently updated, and provide an alternative synchronization method for devices without physical sync buttons. This combination was presented as a predictable solution to a known problem.
  • Expectation of Success: A POSITA would have had a high expectation of success, as automatic synchronization was one of a limited number of known, routine design choices for implementing a synchronization feature.

Ground 2: Claims 7, 14, 16, 17, and 19-25 are obvious over Kloba, Multer, and Loughran.

• Prior Art Relied Upon: Kloba (Patent 6,421,717), Multer (Patent 6,671,757), and Loughran (Application # 2002/0129107).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the Kloba/Multer combination to address limitations in dependent claims related to device power states. Loughran taught a system where a server could send a Short Message Service (SMS) message to an "alert module" in a mobile device. This module could remain active in a low-power standby mode even when the main device was "switched off." Upon receiving the SMS, the alert module would power up the device to autonomously download content like software updates or new data.
  • Motivation to Combine: A POSITA would have been motivated to incorporate Loughran's "wake-up" functionality into the Kloba/Multer system. This would enable managed devices to receive important updates and content even when powered down or in a low-power state, thus improving the robustness of the remote management system and furthering Kloba's goal of allowing offline access to the most recent content.
  • Expectation of Success: The combination involved applying a known technique (waking a device remotely) to an existing system (Kloba/Multer's remote management) to achieve the predictable benefit of constant connectivity for updates.

• Additional Grounds: Petitioner asserted additional obviousness challenges to address specific dependent claims. Ground 3 added Fong (Patent 7,197,011) to the primary combination for its teachings on monitoring device battery levels. Ground 4 added Chow (Application # 2002/0191557) for its teachings on using Virtual Private Networks (VPNs) for secure remote access.

4. Key Claim Construction Positions

• "management instructions": Petitioner proposed this term be construed as "commands for a device asset to perform particular actions." This construction was argued as consistent with the specification’s examples, such as instructions to lock doors or power down a module.
• "managing... based upon the results of having processed... consumer usage information, by sending... management instructions": This limitation was a central point of dispute. Petitioner argued that, based on a plain reading and the specification, the claim required that the act of sending the management instructions be triggered by the processing of consumer usage information. It did not, however, require the content of those instructions to be based on the usage information. This interpretation was critical to Petitioner's argument that Kloba's synchronization process met the limitation, as the server's "one-down" transmission (containing instructions) was a direct response to receiving the "one-up" transmission (containing usage info) from the device.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that institution was warranted under 35 U.S.C. §325(d) because the petition presented new substantive questions of patentability not previously before the Patent Office. Although the asserted prior art references were submitted in an Information Disclosure Statement during prosecution, the examiner allowed all 30 claims without issuing any office actions or providing any substantive commentary on the art. Therefore, Petitioner contended the core invalidity arguments had never been substantively considered by the USPTO.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-30 of the ’477 patent as unpatentable under 35 U.S.C. §103.