Google LLC v. Hammond Development Intl Inc

1. Case Identification

• Case #: IPR2020-00412
• Patent #: Patent 9,456,040
• Filed: January 14, 2020
• Petitioner(s): Google LLC
• Patent Owner(s): Hammond Development International, Inc.
• Challenged Claims: 18-30

2. Patent Overview

• Title: Communication System for Remote Application Execution
• Brief Description: The ’040 patent relates to a communication system where a client device remotely executes applications, such as voice applications, hosted on an application server. The system facilitates a communication session where the server retrieves an application from a repository and executes it to interact with the user's device over a network connection.

3. Grounds for Unpatentability

Ground 1: Claims 18-20, 22-24, and 26-30 are obvious over Gilmore in view of Dodrill.

• Prior Art Relied Upon: Gilmore (Application # 2003/0216923) and Dodrill (Patent 6,766,298).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Gilmore discloses a base communication system for remotely executing interactive voice applications at an Interactive Voice Response (IVR) system, teaching most elements of the challenged claims. Specifically, Gilmore’s voice gateway (an application server) remotely executes script-based voice applications in response to a request from a user’s communication device. Petitioner asserted that Dodrill supplies the remaining limitations, particularly for dependent claim 18 which requires a "device software program" that executes a portion of the system application. Dodrill taught a system with a similar client-server architecture but explicitly described client devices having software (e.g., a voice browser) that processes executable instructions (XML tags) sent from the server to present information. Petitioner also relied on Dodrill to teach that Gilmore’s "data store" would be implemented as a formal "database" to store applications.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Gilmore's IVR system with Dodrill’s teachings for known benefits. Implementing Gilmore’s application storage as a formal database, as taught by Dodrill, was a conventional and more efficient method for organizing and retrieving applications. More centrally, a POSITA would combine the teachings to implement Dodrill's split-execution model, where some processing is offloaded to the client device. This would reduce the computational load on the server, improve scalability, and facilitate more advanced client-side functionality, such as voice-browsing.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in combining the references. Both systems were based on the same underlying client-server architecture and XML-based voice application technology. Integrating a database for application storage or implementing a client-side browser to execute server-sent scripts were both well-understood techniques with predictable outcomes.

Ground 2: Claim 25 is obvious over the combination of Gilmore and Dodrill in view of Dhara.

• Prior Art Relied Upon: Gilmore (Application # 2003/0216923), Dodrill (Patent 6,766,298), and Dhara (Application # 2003/0202504).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Gilmore and Dodrill to address claim 25, which requires the device software program to be "capable of converting text to speech." While Gilmore taught a server-side text-to-speech (TTS) module, Petitioner argued Dhara explicitly disclosed a client device with its own onboard TTS module that converts text into synthesized speech to establish an audio interface. Therefore, adding Dhara’s client-side TTS capability to the Gilmore/Dodrill system would render claim 25 obvious.
  • Motivation to Combine: A POSITA would be motivated to incorporate Dhara's client-side TTS functionality into the base system to improve efficiency and performance. By moving TTS processing to the client device, the system could transmit more efficient text files over the network instead of bandwidth-intensive streamed audio. This would reduce network congestion, minimize the risk of audio degradation from an unreliable connection, and offload a computationally intensive task from the central server, thereby freeing resources.
  • Expectation of Success: Success would be reasonably expected because implementing TTS functionality on a client device was a known technique, as demonstrated by Dhara. Integrating this known client-side module into the established Gilmore/Dodrill architecture would be a straightforward application of existing technologies to achieve the predictable benefit of more efficient system operation.

Ground 3: Claim 21 is obvious over the combination of Gilmore and Dodrill in view of Ladd.

• Prior Art Relied Upon: Gilmore (Application # 2003/0216923), Dodrill (Patent 6,766,298), and Ladd (Patent 6,269,336).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed claim 21, which requires the device software to enable access to "services from a plurality of additional applications servers." Petitioner asserted that Ladd taught this missing element. While Gilmore taught a menu-based system, Ladd explicitly described a system where user menu selections (e.g., for "weather" or "news") direct the user’s device to different, specialized content provider servers. Petitioner argued it would be obvious to modify the Gilmore/Dodrill system to incorporate Ladd’s distributed, multi-server architecture.
  • Motivation to Combine: A POSITA would be motivated to adopt Ladd’s architecture to improve the efficiency, scalability, and organization of the IVR system. Rather than using a single, monolithic server to handle all possible functions, a primary server could manage the initial user interaction and menu, then route the user to a specialized server tailored to the requested content. This distributed model was a known design pattern for building more robust and efficient networked applications.
  • Expectation of Success: A POSITA would have expected to succeed in this combination. Distributing application services across multiple specialized servers was a well-known and conventional practice in network and system design at the time. Implementing Gilmore’s menu system to direct a client device to different content servers, as taught by Ladd, involved combining known design elements in a predictable manner to achieve an expected improvement in system efficiency.

4. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 18-30 of Patent 9,456,040 as unpatentable under 35 U.S.C. §103.