Amazon.com Inc v. Freshub Ltd

1. Case Identification

• Patent #: 10,239,094
• Filed: June 22, 2020
• Petitioner(s): Amazon.com, Inc., Amazon.com Services LLC, Prime Now LLC, AND Whole Foods Market Services, Inc.
• Patent Owner(s): Freshub, Ltd.
• Challenged Claims: 1-24

2. Patent Overview

• Title: SYSTEMS AND METHODS FOR SCANNING INFORMATION FROM STORAGE AREA CONTENTS
• Brief Description: The ’094 patent specification discloses a networked food storage system that scans items, indicates expirations, and suggests replenishments. The challenged claims, however, are directed to a computer-implemented method and system for voice-based e-commerce, wherein a user's spoken order is received by a first computer system from a second, remote system. The order is then digitized, translated to text, matched to item descriptions in a data store, and the corresponding item is added to a user's list.

3. Grounds for Unpatentability

Ground 1: Obviousness over Core E-Commerce References - Claims 1, 2, 10-18, and 20 are obvious over Calderone, Ogasawara, and Sanchez.

• Prior Art Relied Upon: Calderone (Application # 2001/0056350), Ogasawara (Patent 6,543,052), and Sanchez (Application # 2002/0194604).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of these references teaches all limitations of the independent claims. Calderone was asserted to disclose the fundamental client-server architecture for voice-based e-commerce, comprising a central speech recognition system (the claimed "first computer system") and a user-site apparatus with a remote and set-top box (the "second computer system"). Calderone's system receives spoken commands, digitizes them, transmits them over a network, performs speech-to-text translation, and matches the text to items (e.g., movies for on-demand shopping) in a database. Ogasawara was argued to supplement Calderone by teaching specific details of an internet-based shopping system using a similar architecture, including a wireless remote with a microphone, a set-top box with voice recognition software, and a database that uses Stock Keeping Unit (SKU) numbers. Sanchez was introduced to explicitly teach the common e-commerce feature of a "virtual shopping cart" or "shopping list" for adding identified items for later review, modification, and purchase.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to combine the teachings of Calderone and Ogasawara because they operate in the same field (speech-based e-commerce via interactive television) and share a similar system architecture. A POSITA would refine Calderone’s general system with the specific e-commerce database and SKU details from Ogasawara. Further, a POSITA would find it obvious to incorporate the "virtual shopping cart" from Sanchez, a well-known and expected feature in e-commerce, to improve the usability of the combined system.
  • Expectation of Success: Petitioner asserted that combining these references involved applying known technologies for their intended purposes (e.g., using a shopping cart for shopping), which would have yielded predictable and successful results.

Ground 2: Obviousness with Personalization Features - Claims 3, 4, 7-9, 19, and 22-24 are obvious over Calderone, Ogasawara, and Sanchez, in view of Partovi.

• Prior Art Relied Upon: Calderone (Application # 2001/0056350), Ogasawara (Patent 6,543,052), Sanchez (Application # 2002/0194604), and Partovi (Patent 7,376,586).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground builds on the base system established in Ground 1 and adds Partovi to teach specific personalization and presentation features for dependent claims. Petitioner argued that Partovi, which discloses a voice portal for telephone-to-web commerce, teaches providing users with a "voice receipt" or list of purchases that can be reviewed on a website or over the telephone, thus rendering obvious the limitations of claims 3 and 4. Partovi was also asserted to teach personalizing commerce suggestions using the user's location ("locale") and explicit or implicit user preferences, mapping to the limitations of claims 7, 8, 22, and 23. Finally, Partovi’s disclosure of "accessory services" such as adding reminders related to a purchase was argued to render claim 9 obvious.
  • Motivation to Combine: A POSITA would have been motivated to enhance the base e-commerce system of Calderone/Ogasawara/Sanchez with the personalization and presentation techniques from Partovi. The goal would be to improve the user experience and better address purchase requests. Petitioner asserted that because Partovi describes its components as modular and easily implementable in a distributed fashion, a POSITA would have found it straightforward to integrate these features into another voice-based e-commerce system.
  • Expectation of Success: Integrating Partovi's known personalization techniques into the base system would have been a predictable combination of existing technologies to achieve the known benefit of a more customized user experience.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on adding a single reference to the Calderone, Ogasawara, and Sanchez combination to teach other dependent claim features. Specifically, Ground 3 asserted claim 5 is obvious in view of Cooper (Patent 6,757,362), which teaches providing information to a user via a short messaging system (SMS). Ground 4 asserted claims 6 and 21 are obvious in view of Sichelman (Application # 2003/0235282), which teaches improving speech recognition accuracy by placing more weight on words related to a user's past purchase history.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) or §325(d) would be inappropriate. The petition is the only one filed against the ’094 patent, it is based on prior art that was not before the Patent Office during prosecution, and it does not duplicate the invalidity arguments made in a parallel district court litigation. Petitioner contended the petition was timely filed within the one-year statutory window, and that denying institution would undermine the objective of the America Invents Act (AIA) to provide an efficient and effective alternative to district court litigation.

5. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-24 of the ’094 patent as unpatentable.