Amazon.com Inc v. M2M Solutions LLC

1. Case Identification

• Case #: IPR2022-00260
• Patent #: 10,791,442
• Filed: December 10, 2021
• 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 ’442 patent relates to a system for autonomously monitoring and managing a plurality of consumer device assets using a remote computer server platform. The assets are wirelessly connected to communication networks and report operational and usage data to the server, which in turn sends management instructions to the assets.

3. Grounds for Unpatentability

Ground 1: Claims 1-6 and 13 are obvious over Kloba in view of Multer and Hoyle.

• Prior Art Relied Upon: Kloba (Patent 6,421,717), Multer (Patent 6,671,757), and Hoyle (Patent 6,141,010).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kloba discloses a base system with a remote server that manages client devices (e.g., cell phones, PDAs) by synchronizing data. During synchronization, the client devices report operational status and user behavior information to the server. Petitioner contended this meets most limitations of independent claim 1. However, Kloba’s synchronization is initiated manually via a "sync" button. Multer was introduced for its teaching of automatic synchronization triggered by pre-set conditions, thus supplying the "autonomous" monitoring and managing limitation. Hoyle was added to teach that management instructions sent from the server can be based on the received user data, as Hoyle describes using "computer usage information" to select and send targeted advertisements to a user.
  • Motivation to Combine: A POSITA would combine Kloba and Multer to automate the synchronization process, improving user convenience and ensuring data remains current, especially for devices like cell phones that typically lacked a manual sync button. A POSITA would incorporate Hoyle’s teachings to make Kloba’s system more effective by using tracked user data to provide more relevant content, such as targeted advertisements. This was a well-known method for increasing user engagement and improving client-server systems.
  • Expectation of Success: Automating a known manual process was a predictable design choice with known benefits. Similarly, using tracked user data to target content was a conventional technique applied to similar systems, giving a POSITA a reasonable expectation of success in implementing the combination.

Ground 2: Claims 1-6 and 13 are obvious over Kloba in view of Multer and Davis.

• Prior Art Relied Upon: Kloba (Patent 6,421,717), Multer (Patent 6,671,757), and Davis (Patent 5,796,952).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented a similar argument to Ground 1, using Kloba for the foundational client-server management system and Multer for automatic synchronization. This combination substitutes Davis for Hoyle to supply the teaching of basing management instructions on user data. Petitioner asserted Davis teaches a server that tracks user interaction with a resource, analyzes that usage information, and then assembles and sends new resources (e.g., targeted ad banners) "geared toward the user's interests."
  • Motivation to Combine: The motivation mirrored that of combining Hoyle in Ground 1. A POSITA would combine Davis’s technique with the Kloba/Multer system to improve it by sending content better tailored to user interests. Davis explicitly teaches that this technique allows for downloading information on a "more intelligent basis," providing a clear reason for its inclusion.
  • Expectation of Success: Petitioner argued success would be expected because Davis and Kloba disclose highly similar autonomous client-server systems. Modifying Kloba's server to select content based on tracked user information, a technique Davis states "may be easily accomplished," would be a minor and predictable modification for a POSITA.

Ground 5: Claims 8-12, 15, 18, and 26-30 are obvious over Kloba/Multer/Hoyle/Loughran in view of Fong.

• Prior Art Relied Upon: Kloba (Patent 6,421,717), Multer (Patent 6,671,757), Hoyle (Patent 6,141,010), Loughran (Application # 2002/0129107), and Fong (Patent 7,197,011).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the base combination of Kloba, Multer, and Hoyle. Loughran was added to address claim limitations requiring the server to communicate a Short Message Service (SMS) message that causes a device to "power up from a powered down state" to facilitate further communication (recited in claim 7, on which others depend). Fong was added to provide the express teaching of monitoring and storing data "indicative of battery charge levels" (recited in claim 8). Fong discloses a server that monitors the battery power of mobile terminals.
  • Motivation to Combine: A POSITA would combine Loughran to enhance the reliability of the Kloba system, enabling it to deliver updates even when a device is in a low-power mode, furthering Kloba's goal of allowing offline access to current content. A POSITA would add Fong's battery monitoring functionality as a valuable and logical feature for a remote management system to ensure devices have sufficient power for synchronization and to help diagnose device issues.
  • Expectation of Success: Incorporating battery level data into the "state" information already collected by Kloba's system would have been a simple and logical extension for a POSITA.
• Additional Grounds: Petitioner asserted additional obviousness challenges based on the combination of Kloba/Multer/Davis with Loughran and/or Fong, relying on similar rationales for the incremental additions.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) or §325(d). The petition asserted that the Board has already found claims in five related patents—which are materially identical to the challenged ’442 patent claims—to be unpatentable over many of the same prior art references. Petitioner noted that the art was not substantively considered by the examiner during prosecution of the ’442 patent and that the parallel district court litigation is stayed, making an IPR the most efficient forum for resolving the validity dispute.

5. Relief Requested

• Petitioner requests institution of an inter partes review and a determination that claims 1-30 of the ’442 patent are unpatentable.