Google LLC v. Songbird Tech LLC

1. Case Identification

• Case #: IPR2024-01096
• Patent #: 8,825,787
• Filed: August 14, 2024
• Petitioner(s): Google LLC
• Patent Owner(s): Songbird Tech, LLC
• Challenged Claims: 1-10

2. Patent Overview

• Title: Audio Message Driven Customer Interaction Queuing System
• Brief Description: The ’787 patent describes a software system for delivering customer service over a network. It discloses a connectionless, voice message-driven system allowing web users to record audio questions via a browser-resident application, which are then queued and distributed to customer service agents for response.

3. Grounds for Unpatentability

Ground 1: Obviousness/Anticipation over Sastry, optionally in view of Valentine - Claims 1-2 and 4-10 are anticipated by or obvious over Sastry, or obvious over Sastry in view of Valentine.

• Prior Art Relied Upon: Sastry (Patent 6,687,877), Valentine (Application # 2001/0056351).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Sastry, which discloses a web-based call center, teaches all limitations of the challenged claims. Sastry’s system includes a customer terminal with "annotation plug-in software" operating with a web browser, which Petitioner contended is the claimed "user client application." This plug-in allows a user to record dynamic annotations, including voice, on a web document (the "audio query message"), locally store the annotated document, and transmit it to a host server at the call center. Sastry's host server, comprising web, annotation, and ACD servers, then receives the message, assigns it to a qualified agent based on skills, and distributes it to the agent's terminal. The agent uses a similar plug-in to record and transmit an audio response. Petitioner asserted this same mapping covers the system limitations of independent claims 8, 9, and 10. For claim 2, Petitioner argued a POSITA would have understood that transferring web documents over the Internet, as in Sastry, inherently uses standard protocols like HTTP or FTP.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Sastry with Valentine to implement Sastry's multi-server architecture on a single, consolidated server. Valentine explicitly taught that multiple servers (database, application, web) can be "clustered together" or that a system can "include one or more servers." The motivation was to improve efficiency, reduce system costs, streamline maintenance, and better handle traffic, which were known benefits of server consolidation.
  • Expectation of Success: A POSITA would have an expectation of success because both references disclosed consolidating servers into single units to perform similar server-side functions for connectionless messaging.

Ground 2: Obviousness over Sastry and Boies, optionally in view of Valentine - Claim 3 is obvious over Sastry and Boies, or Sastry, Valentine, and Boies.

• Prior Art Relied Upon: Sastry (Patent 6,687,877), Boies (Application # 2002/0065759), Valentine (Application # 2001/0056351).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that claim 3, which depends from claim 1, adds the limitation that the host server comprises Java servlets, an Enterprise Java Bean (EJB) component, a web and application server, and generic database technology. Petitioner argued Sastry disclosed a host server with web, application, and database functionalities. While Sastry did not expressly disclose Java Servlets or EJB components, Boies did. Boies taught a coordination server that used "Java Servlets" and an "Enterprise Java Bean (EJB)" component to facilitate messaging between users and service providers.
  • Motivation to Combine: A POSITA would combine Boies's teachings with Sastry's system to provide a concrete, robust implementation. Sastry already used Java for its web documents, motivating a POSITA to use compatible Java-based server-side components for other aspects of the system. Boies provided the necessary technical details for using known, scalable, and fundamental Java components (Servlets and EJBs) to build the server architecture required by Sastry. This combination would ensure compatibility and operational reliability.
  • Expectation of Success: The combination involved applying known Java server-side technologies (Boies) to a Java-based system (Sastry) to achieve the predictable result of a robust, scalable server architecture.

Ground 3: Anticipation/Obviousness over Valentine - Claim 10 is anticipated by or obvious over Valentine.

• Prior Art Relied Upon: Valentine (Application # 2001/0056351).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Valentine anticipated or rendered obvious claim 10, the broadest independent claim directed to the user's electronic device. Valentine disclosed an "initiating device" (e.g., PC or cell phone) with a "recorder applet" that operates with a web browser. This applet allowed a user to record a "spoken audio clip" using a microphone, store it locally in a temporary file, and transmit it. Petitioner asserted the "initiating device" was the claimed "electronic device," the "recorder applet" was the "client application," and the audio clip was the "audio query message." Valentine further disclosed that the initiating device includes a non-transitory, computer-readable storage medium and a processor to execute the applet.
  • Motivation to Combine (for §103 grounds): If Valentine was found not to explicitly teach that its audio messages were "query" messages, Petitioner argued it would be an obvious modification. Valentine’s system was used for threaded discussions and online auctions, environments where a POSITA would understand that users naturally ask questions (queries). Modifying the system to explicitly handle queries would be a minor, predictable extension to expand the invention's utility.
  • Expectation of Success: There was an expectation of success because applying Valentine's known audio recording and transmission system to the context of queries, a common form of communication, would yield the predictable result of a user being able to ask a question via a recorded audio message.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325, stating that the Patent Office had not previously considered the same or similar prior art and grounds. The claims were allowed during prosecution because the examiner believed the prior art failed to teach locally recording, storing, and transmitting an audio message—features Petitioner contended were expressly disclosed by Sastry and Valentine.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-10 of the ’787 patent as unpatentable.