Amazon.com Inc v. Hammond Development Intl Inc

1. Case Identification

• Case #: IPR2020-01066
• Patent #: 9,705,937
• Filed: June 9, 2020
• Petitioner(s): Amazon.com, Inc.
• Patent Owner(s): Hammond Development International, Inc.
• Challenged Claims: 1-30

2. Patent Overview

• Title: System and Method for Processing a Request for a Service and a Corresponding Response
• Brief Description: The ’937 patent discloses a client-server system where a communication device (e.g., cell phone) connects to a remote application server over a network. The server retrieves and executes an application from a repository to establish a communication session with the device in response to a request from the device.

3. Grounds for Unpatentability

Ground 1: Obviousness over Maes, Maes 2, and Bookman - Claims 1-30 are obvious over Maes and Maes 2, in further view of Bookman.

• Prior Art Relied Upon: Maes (Patent 6,934,756), Maes 2 (WO PCT/US99/23008), and Bookman (Patent 5,761,673).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Maes, which expressly incorporates Maes 2 by reference, discloses nearly all elements of the challenged claims. The combination teaches a client-server architecture where a client device (e.g., a smartphone) with a processor and memory initiates a "conversational session" with a remote application server by making a request, such as a spoken command. The Maes server then executes a corresponding application (a SpeechML page) retrieved from a presentation server (the repository). Petitioner contended that Maes describes all limitations of claim 1 except for the specific requirement that the repository has access to applications maintained in a database that is "coupled to the repository." To supply this element, Petitioner relied on Bookman, which discloses a conventional web server environment where a web server (repository) retrieves HTML files (applications) from a coupled database.
  • Motivation to Combine: Petitioner asserted a POSITA would be motivated to combine these references because Maes explicitly incorporates the teachings of Maes 2. A POSITA seeking to implement the application storage for Maes's server would consult a reference like Bookman, which addresses the same problem of how a web server accesses applications. Bookman teaches that storing applications in a separate, coupled database is more efficient than local storage. Therefore, a POSITA would combine Bookman's database solution with Maes's system to achieve the predictable benefit of improved performance and scalability.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in making this combination. The argument centered on applying a known technique (using a database for application storage as in Bookman) to a known client-server system (Maes) to achieve a predictable improvement in system efficiency.

Ground 2: Obviousness over Bharedwaj and Salomon - Claims 1-30 are obvious over Bharedwaj in view of Salomon.

• Prior Art Relied Upon: Bharedwaj (WO PCT/US01/17274) and Salomon (Application # 2003/0041125).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Bharedwaj teaches a "thin client" system where a communication device (e.g., a PDA) sends requests to a remote application server, which establishes a session and runs applications for the client. The Bharedwaj server downloads these applications from the Internet. Petitioner asserted that this combination taught most claim limitations but relied on Salomon to explicitly disclose a repository that has access to applications stored in a coupled database. Salomon describes a remote application server that downloads applications from a "central site application server" (a repository), which is coupled to databases containing the applications.
  • Motivation to Combine: Petitioner contended a POSITA starting with Bharedwaj's system, which downloads applications from the Internet, would be motivated to look to references like Salomon to implement a conventional and robust architecture for storing and retrieving those applications. Salomon explicitly teaches the advantages of this repository/database model, including increased distribution efficiency and better security management. Combining Salomon's architecture with Bharedwaj's system was presented as a predictable combination of prior art elements according to their established functions.
  • Expectation of Success: A POSITA would have reasonably expected success because the proposed combination integrates a standard database and repository architecture (from Salomon) into a similar client-server system (Bharedwaj). This was argued to be a straightforward implementation of well-known design principles for managing digital content over a network.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including a challenge to claim 25 that added Braddy (Patent 8,613,048) to the Bharedwaj/Salomon combination to teach a specific authentication collection agent.

4. Key Claim Construction Positions

• Petitioner argued that no claim terms required formal construction to resolve the obviousness challenges. However, for the purposes of the petition, it adopted the Patent Owner's proposed construction of "establish a communication session" from the co-pending litigation.
• This construction posits that a client can "establish" a session by indirectly initiating the process—specifically, by making a request to the application server, which then formally establishes the communication session in response. This interpretation was critical to Petitioner's argument, as it allowed the "request" actions described in the prior art to satisfy the "establish" limitation of the claims.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under the Fintiv factors based on co-pending district court litigation. The core reasons asserted were:
  • The majority of claims challenged in the IPR petition (1-30) are not asserted in the parallel litigation, meaning the court will not address their validity.
  • The litigation was in a very early stage, with fact and expert discovery stayed until after a recent Markman hearing. The court had not yet substantively addressed obviousness.
  • Institution would serve judicial and system efficiency, as the Board has already invested considerable resources in evaluating related patents in other IPR proceedings.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-30 of Patent 9,705,937 as unpatentable under 35 U.S.C. §103.