Paper No. 1 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD AMAZON.COM, INC., - vs. - Petitioner SIMPLEAIR, INC., Patent Owner Patent No. 8,572,279 Issued: October 29, 2013 Inventors: John M. Payne, Tim Von Kaenel, Jeffrey Wang, Jeffrey Odell, David Starr, and Jason Katz Title: SYSTEM AND METHOD FOR TRANSMISSION OF DATA Inter Partes Review No. PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,572,279 UNDER 35 U.S.C. 311-319 AND 37 C.F.R. 42.1-.80, 42.100-.123 June 10, 2015 Mail Stop Patent Board Patent Trial and Appeal Board P.O. Box 1450 Alexandria, VA 22313-1450
TABLE OF CONTENTS Page I. INTRODUCTION... 1 II. MANDATORY NOTICES (37 C.F.R. 42.8(A)(1))... 1 A. Real Party-In-Interest (37 C.F.R. 42.8(b)(1))... 1 B. Notice of Related Matters (37 C.F.R. 42.8(b)(2))... 1 C. Designation of Lead and Backup Counsel (37 C.F.R. 42.8(b)(3))... 2 D. Service of Information (37 C.F.R. 42.8(b)(4))... 2 III. GROUNDS FOR STANDING (37 C.F.R. 42.104(A))... 2 IV. IDENTIFICATION OF CHALLENGE (37 C.F.R. 42.104(B))... 2 A. Effective Filing Date of the 279 Patent... 2 B. There Is a Reasonable Likelihood That at Least One Claim of the 279 Patent Is Unpatentable Under 35 U.S.C. 102, 103.... 3 V. OVERVIEW OF THE 279 PATENT... 4 VI. CONSTRUCTION OF THE CHALLENGED CLAIMS (37 C.F.R. 42.104(B)(3))... 5 A. There Is Nothing New About Providing Notifications to an Online or Offline Remote Device Over a Wireless Connection.... 9 1. U.S. Patent Application No. 08/215,817 ( Hays )... 9 2. U.S. Patent No. 5,487,100 ( Kane )...11 3. U.S. Patent No. 5,742,905 ( Pepe )...13 B. Specific Grounds for the Petition...13 1. Ground 1: A Combination of Hays and Pepe Renders Claims 1-7, 9, 11-12, 29, 35-38, 40-41, 43, 45-46, and 63 Obvious....13 i
TABLE OF CONTENTS (CONTINUED) ii Page a. Claims 1 and 35: Hays, alone or in combination with Pepe, renders obvious a central broadcast server configured to receive data from at least one information source and process the received data with at least one parser....15 b. Claims 1 and 35: Hays on its own or in combination with Pepe discloses an information gateway communicatively coupled to the central broadcast server, the information gateway configured to build data blocks from the parsed data and assign addresses to the data blocks....20 c. Claims 1 and 35: Hays on its own or in combination with Pepe discloses a transmission gateway communicatively coupled to one or both of the central broadcast server and the information gateway, the transmission gateway configured to prepare the addressed data blocks for transmission to receivers communicatively coupled to the remote computing devices....22 d. Claims 1 and 35: Hays discloses initiate transmission of the addressed data blocks to the receivers, wherein the transmission is made whether the remote computing devices are online or offline from a data channel associated with each remote computing device....23 e. Claim 35: Hays discloses a plurality of remote computing devices configured to receive the addressed data blocks transmitted from the transmission gateway utilizing the receivers....28 f. Claim 35: Hays discloses wherein the remote computing devices are capable of being notified of the
TABLE OF CONTENTS (CONTINUED) iii Page receipt of the transmitted data blocks by the receivers whether the remote computing devices are online or offline from a data channel associated with each remote computing device....29 g. Claims 2 and 36: Hays, alone or in combination with Pepe, renders obvious wherein the information gateway is further configured to assign addresses to the data blocks based on information in a subscriber database....29 h. Claims 3 and 37: Hays discloses wherein the transmission gateway is further configured to initiate the wireless transmission of the addressed data blocks to the receivers....31 i. Claims 4 and 38: Hays discloses wherein the transmission gateway is further configured to initiate the wireless transmission of the addressed data blocks by one or more of a digital carrier, a cellular carrier, a GSM carrier, and a PCS carrier....31 j. Claims 5 and 39: Hays in combination with Pepe renders wherein the transmission gateway is configured to transmit the [addressed] data blocks to the receivers by wired transmission obvious....32 k. Claims 6 and 40: Hays discloses wherein the central broadcast server comprises a network of servers....32 l. Claims 7 and 41: Hays discloses wherein one or both of the information gateway and the transmission gateway form part of the network of servers....33 m. Claims 9, 11, 43, and 45: Hays discloses wherein the remote computing devices are further configured to provide a visual alert to notify users of the remote
TABLE OF CONTENTS (CONTINUED) iv Page computing devices of the receipt of the transmitted data blocks / wherein the remote computing devices are further configured to provide an audio alert to notify the users of the remote computing devices of the receipt of the transmitted data blocks...33 n. Claims 12 and 46: Hays renders obvious wherein the remote computing devices are configured to provide at least one of a visual alert and an audio alert to notify the users of the remote computing devices of the receipt of the transmitted data blocks, wherein the alert is related to the content of the transmitted data blocks. 34 o. Claims 29 and 63: Hays discloses wherein the receiver and the remote computing device form part of a consumer electronic device....34 2. Ground 2: Kane Anticipates Claims 1-4, 12, 29, 35-38, 46 and 63....35 a. Claims 1 and 35: Kane discloses a central broadcast server configured to receive data from at least one information source and process the received data with at least one parser....35 b. Claims 1 and 35: Kane discloses an information gateway communicatively coupled to the central broadcast server, the information gateway configured to build data blocks from the parsed data and assign addresses to the data blocks....36 c. Claims 1 and 35: Kane discloses a transmission gateway communicatively coupled to one or both of the central broadcast server and the information gateway, the transmission gateway configured to prepare the addressed data blocks for transmission to receivers communicatively coupled to the remote
TABLE OF CONTENTS (CONTINUED) v Page computing devices....38 d. Claims 1 and 35: Kane discloses initiate transmission of the addressed data blocks to the receivers....39 e. Claims 1 and 35: Kane discloses wherein the transmission is made whether the remote computing devices are online or offline from a data channel associated with each remote computing device....40 f. Claim 35 specifically: Kane discloses a plurality of remote computing devices configured to receive the addressed data blocks transmitted from the transmission gateway utilizing the receivers....42 g. Claims 2 and 36: Kane discloses wherein the information gateway is further configured to assign addresses to the data blocks based on information in a subscriber database....43 h. Claims 3 and 37: Kane discloses wherein the transmission gateway is further configured to initiate the wireless transmission of the addressed data blocks to the receivers....43 i. Claims 4 and 38: Kane discloses wherein the transmission gateway is further configured to initiate the wireless transmission of the addressed data blocks by one or more of a digital carrier, a cellular carrier, a GSM carrier, and a PCS carrier....43 j. Claims 12 and 46: Kane discloses wherein the alert is related to the content of the transmitted data blocks.... 44 k. Claims 29 and 63: Kane discloses wherein the receiver and the remote computing device form part of a consumer electronic device....44
TABLE OF CONTENTS (CONTINUED) vi Page 3. Ground 3: Kane Renders Claims 6-9, 11, 13, 30, 40-43, 45, 47, 51, and 64 Obvious....45 a. Claims 6 and 40: Kane renders obvious wherein the central broadcast server comprises a network of servers is obvious in view of Kane...45 b. Claims 7 and 41: Kane renders obvious wherein one or both of the information gateway and the transmission gateway form part of the network of servers is obvious in view of Kane...45 c. Claims 8 and 42: Kane renders obvious wherein the data channel comprises an established connection via the Internet between the remote computing device and an information source associated with the transmitted data....46 d. Claims 9 and 43: Kane renders obvious wherein the remote computing devices are further configured to provide a visual alert to notify users of the remote computing devices of the receipt of the transmitted data blocks....47 e. Claims 11 and 45: Kane renders obvious wherein the remote computing devices are further configured to provide an audio alert to notify the users of the remote computing devices of the receipt of the transmitted data blocks....48 f. Claims 13 and 47: Kane renders obvious wherein the remote computing device is configured to provide the visual alert via an alert panel....48 g. Claims 17 and 51: Kane renders obvious wherein the remote computing device is further configured to display contextual graphics in a predefined format
TABLE OF CONTENTS (CONTINUED) Page when the transmitted data is displayed is obvious in view of Kane...49 h. Claims 30 and 64: Kane renders obvious wherein the information gateway is further configured to assign addresses to the data blocks based on information in a subscriber database...49 i. Claims 30 and 64: Kane renders obvious the transmission gateway is further configured to initiate the wireless transmission of the addressed data blocks to the receivers....49 j. Claims 30 and 64: Kane renders obvious the transmission gateway is further configured to initiate the wireless transmission of the addressed data blocks by one or more of a digital carrier, a cellular carrier, a GSM carrier, and a PCS carrier....50 k. Claims 30 and 64: Kane renders obvious one or both of the information gateway and the transmission gateway form part of the network of servers....50 l. Claims 30 and 64: Kane renders obvious the data channel comprises an established connection via the Internet between the remote computing device and an information source associated with the transmitted data....50 m. Claims 30: Kane renders obvious the receiver and the remote computing device form part of a consumer electronic device....50 VII. CONCLUSION...50 vii
TABLE OF AUTHORITIES Page(s) CASES In re Cuozzo Speed Techs., LLC, 778 F.3d 1271 (Fed. Cir. 2015)... 6 STATUTES 35 U.S.C. 102... 3, 4, 13 35 U.S.C. 103... 4 35 U.S.C. 314... 4 OTHER AUTHORITIES 37 C.F.R. 42.100... 6 viii
EXHIBIT LIST (37 C.F.R. 42.63(e)) Exhibit Description 1001 U.S. Patent No. 8,572,279 to Payne, et al. 1002 File History of U.S. Patent No. 8,572,279 1003 Declaration of David B. Johnson, Ph.D. 1004 U.S. Patent No. 5,487,100 to Kane 1005 U.S. Patent Application Serial No. 08/215,817 to Hays, et al. 1006 U.S. Patent No. 5,742,905 to Pepe, et al. 1007 U.S. Patent No. 4,518,961 to Davis, et al. 1008 U.S. Patent No. 5,818,441 to Throckmorton 1009 Reexamination File History of U.S. Patent No. 7,035,914 (Reexamination Control No. 90/09,906) 1010 SimpleAir, Inc. v. Microsoft Corp., et al., Case No. 2:11-cv- 00416 (JRG), May 20, 2013 Memorandum Opinion and Order (Dkt. No. 379) 1011 Google Inc. v. SimpleAir, Inc., CBM2014-00054, May 13, 2014 Institution Decision (Paper 19) 1012 Excerpts from Trial Transcript of SimpleAir, Inc. v. Microsoft Corp., et al., Case No. 2:11-cv-00416 (JRG) (January 13, 2014) 1013 Excerpts from Trial Transcript of SimpleAir, Inc. v. Microsoft Corp., et al., Case No. 2:11-cv-00416 (JRG) (January 14, 2014) 1014 Curriculum vitae of David B. Johnson, Ph.D. 1015 PCT application PCT/US95/03046 to Hays, et al. 1016 PCT application PCT/US93/08091 to Kane (II) ix
1017 U.S. Patent No. 5,337,044 to Folger, et al. 1018 U.S. Patent No. 5,109,403 to Sutphin 1019 U.S. Patent No. 7,035,914 to Payne x
I. INTRODUCTION In accordance with 35 U.S.C. 311-319 and 37 C.F.R. 42.1-.80 & 42.100-42.123, inter partes review is respectfully requested for claims 1-4, 6-9, 11, 17, 29, 30, 35-43, 45, 51, 63 and 64 of United States Patent No. 8,572,279 to Payne, et al., titled System and Method for Transmission of Data (the 279 patent ) owned by SimpleAir, Inc. ( SimpleAir ). (EXHIBIT 1001 ( Ex. 1001 ).) This petition demonstrates that there is a reasonable likelihood that the petitioner will prevail on at least one of the claims challenged in the petition. The challenged claims of the 279 patent should therefore be canceled as unpatentable. II. MANDATORY NOTICES (37 C.F.R. 42.8(A)(1)) A. Real Party-In-Interest (37 C.F.R. 42.8(b)(1)) The real party-in-interest for this petition is Amazon.com, Inc. B. Notice of Related Matters (37 C.F.R. 42.8(b)(2)) The 279 patent is presently the subject of the patent infringement lawsuits brought by SimpleAir in the Eastern District of Texas, Marshall Division: Case No. 2:14-cv-00679 (JRG) against Petitioner (along with other members of the same patent family) and Case Nos. 2:14-cv-00011 (JRG) and 2:13-cv-00937 (JRG) against Google Inc. The 279 patent is also the subject of pending proceedings before the Board brought by Google: CBM2015-00019 and IPR2015-00179. Other members of the same patent family are presently the subject of the following patent infringement lawsuits brought by SimpleAir in the Eastern District of Texas, Marshall Division, against Google Inc.: Case No. 2:13-cv-00587 (JRG) (originally filed as No. 2:11-cv-00416 (JRG). Other patents in the same family are or have also been the subject of the following pending proceedings before the Board: 1
CBM2014-00170, CBM2014-00054, CBM2015-00020, IPR2015-00180, IPR2015-01000, IPR2015-01281, and IPR2015-01142. C. Designation of Lead and Backup Counsel (37 C.F.R. 42.8(b)(3)) Petitioner designates J. David Hadden (Reg. No. 40,629) as its lead counsel and Saina S. Shamilov (Reg. No. 48,266) and David D. Schumann (Reg. No. 53,569) as its back-up counsel. D. Service of Information (37 C.F.R. 42.8(b)(4)) Service of any documents via hand-delivery may be made at the postal mailing address of Fenwick & West, 801 California Street, Mountain View, CA 94041 (Tel: (650) 988-8500 and Fax: (650) 988-5200 with courtesy copies to the email addresses dhadden@fenwick.com, sshamilov@fenwick.com, and dschumann@fenwick.com. Petitioner consents to electronic service. III. GROUNDS FOR STANDING (37 C.F.R. 42.104(A)) Petitioner certifies pursuant to Rule 42.104(a) that the 279 patent is available for inter partes review and that Petitioner is not barred or estopped from requesting an inter partes review challenging the validity of the above-referenced claims of the 279 patent on the grounds identified in the petition. IV. IDENTIFICATION OF CHALLENGE (37 C.F.R. 42.104(B)) A. Effective Filing Date of the 279 Patent The 279 patent issued from U.S. Application No. 13/018,420 filed January 31, 2011. The 420 application claims the benefit of U.S. Provisional Application Nos. 60/010,651, filed January 26, 1996; 60/014,341, filed March 29, 1996; 60/014,735, filed April 1, 1996; and 60/026,471, filed September 23, 1996. The effective filing date of the challenged claims is no earlier than January 26, 1996. 2
B. There Is a Reasonable Likelihood That at Least One Claim of the 279 Patent Is Unpatentable Under 35 U.S.C. 102, 103. The challenged claims are generally directed to a system and method for transmitting notifications to remote online or offline devices. Prior art discloses the subject matter of these claims. The claims are anticipated by or unpatentable in view of the following patents and publications: U.S. Patent Application No. 08/215,817 (EXHIBIT 1005 ( Ex. 1005 )), filed on March 22, 1994, published as PCT application PCT/US95/03046 (EXHIBIT 1015 ( Ex. 1015 )) on September 28, 1995 and titled A Telecommunications Network and Method for a Mobile Phone/Pager Device ( Hays ). Ex. 1005 and Ex. 1015 disclose identical subject matter. Hays is prior art to the 279 patent under 102(a) and (e).u.s. Patent No. 5,487,100, filed on May 17, 1994 and titled Electronic Mail Message Delivery System ( Kane ). (EXHIBIT 1004 ( Ex. 1004 ).) Kane is a continuation of U.S. Patent Application No. 07/954,179 (the 179 application ), filed on September 30, 1992. Kane is prior art to the 279 patent under 102(e). Kane incorporates by reference U.S. Patent No. 4,518,961 titled Communication system message receiving device ( Davis ). U.S. Patent No. 5,742,905 ( Pepe ), filed on September 19, 1994 and titled Personal Communications Internetworking ( Pepe ). (EXHIBIT 1006 ( Ex. 1006 ).) Pepe is prior art to the 279 patent under 102(e). Section VI below explains how the above-cited patents and patent application publications create a reasonable likelihood that Petitioner will prevail on at least one of the challenged claims. See 35 U.S.C. 314(a). Indeed, Section VI0, as supported by the claim charts in the Declaration of David B. Johnson, 3
Ph.D. (EXHIBIT 1003 ( Decl. Ex. 1003)), demonstrates that all of the challenged claims are anticipated by, or rendered obvious in view of, these references. Petitioner requests cancellation of the challenged claims as unpatentable under 35 U.S.C. 102 and 103. V. OVERVIEW OF THE 279 PATENT The 279 patent discloses a system for providing message arrival notifications to users of computers over a first data connection that may or may not be online with respect to a second, different data connection. Figure 1 of the 279 patent illustrates a user s computer 14 and a receiver 32 that is connected to it. A central broadcast server 34 receives information (e.g., news feeds, emails) from a number of information sources 12. (Ex. 1001 at 6:25-7:9.) The central broadcast server 34 parses information received from the information sources 12. (Id.) It then creates a message to be sent to the user s computer 14 by building data blocks that make up the message and assigning an address (stored in the receiver 32) for the destination of the message. (Id. at 8:62-9:28.) Various internal software modules within the central broadcast server 34 perform these steps, such as an information gateway 134 and a wireless/transmission gateway 136, both illustrated in Figure 2 of the patent. (Id.) Once the outbound message is constructed, the central broadcast server 34 broadcasts the message through a commercial wireless carrier 36 over a wireless broadcast network. (Id. at 9:29-55.) The 279 patent describes this wireless broadcast network as a nationwide pager network that uses standard paging protocols such as Inter and Intra System Protocol (TNPP). (Id.) To deliver pager messages to geographically diverse areas, the pager network may use satellite links between pager transmitters to deliver the message to the pager 4
receivers. (Id.) Once the receiver 32 of Figure 1 receives the pager message over the wireless broadcast network, a viewer 20 on the user s computer 14 generates a notification message and displays it on the computer screen. (Id. at 6:52-7:9.) The user can retrieve information related to the notification (e.g., details about the news or a complete text of the email message) from the information sources 12 via a separate Internet connection and a web browser that is launched when the user clicks on a URL embedded in the notification displayed by the viewer. (Id., see also 6:1-25.) According to the 279 patent, the advantage of its system is that the user can receive notifications even when the computer is not connected to the Internet because the notifications travel over the wireless network connection instead: Thus, a user has the ability to receive online information even when the user is off-line. (Id. at 7:13-14.) VI. CONSTRUCTION OF THE CHALLENGED CLAIMS (37 C.F.R. 42.104(B)(3)) The terms in the challenged claims are to be given their broadest reasonable interpretation ( BRI ), as understood by one of ordinary skill in the art and consistent with the disclosure. See 37 C.F.R. 42.100(b); see also In re Cuozzo Speed Techs., LLC, 778 F.3d 1271 (Fed. Cir. 2015). The following claim constructions were proposed by Petitioner and SimpleAir in Case No. 2:14-cv-00679 (JRG). 1 1 The constructions identified with an asterisks were adopted by the district court in Case No. 2-13-cv-00587 (JRG) against Google Inc. (originally filed as No. 5
Term data channel associated with each device (and its variations) information source Advanced by SimpleAir in District Court Proceeding data channel is: one or more communication channels or paths for accessing or viewing a category or subcategory of information that is provided by an information source over a communications network* [no additional construction of the phrases is necessary] one or more content or on-line service providers that provide data to the central broadcast server, such as an online source of news, weather, sports, financial information, games, personal messages, or emails* Advanced by Petitioner in District Court Proceeding a path through which the device connects to the Internet or other online service a source of information such as the Internet or online service process the received data with at least one using multiple computer software programs, routines, or functions to break or divide data received from an infor- 2-11-cv-00416 (JRG)) and by the Board in CBM2014-00054. (Ex. 1010; Ex. 1011.) 6
parser Term Advanced by SimpleAir in District Court Proceeding Advanced by Petitioner in District Court Proceeding mation source into components whose content or format can be analyzed, processed or acted upon* an information gateway a transmission gateway one or more software programs (or a portion of a program) that build data blocks and assign addresses to the data blocks* one or more software programs (or a portion of a program) that prepare the data blocks for their transmission to receivers and interface with other resources used to transmit the preprocessed data* See paragraph below See paragraph below 7
Term central broadcast server Advanced by SimpleAir in District Court Proceeding one or more servers that are configured to receive data from a plurality of information sources and process the data prior to its transmission to one or more selected remote computing device Advanced by Petitioner in District Court Proceeding one or more servers that transmit data packets over a wireless broadcast network to both on- and off-line computers. The term wireless broadcast network in this construction means network in which wireless transmissions are received by all receivers. (Ex. 1010 at 8-9, 25, 28, 34, 37, 39; Ex. 1011 at 10-11.) For the terms information gateway and transmission gateway, the Petitioner has proposed a construction pursuant to 35 U.S.C. 112, paragraph 6 in district court litigation. However, SimpleAir has proposed an alternate construction that does not treat these terms pursuant to Section 112, paragraph 6, and therefore is broader than Petitioner s proposal. For that reason, SimpleAir s proposal should be used for purposes of this petition. 8
The prior art described in this petition renders the challenged claims unpatentable under either the construction advanced by SimpleAir and the constructions advanced by Petitioner. (Ex. 1003 at 3.) A. There Is Nothing New About Providing Notifications to an Online or Offline Remote Device Over a Wireless Connection. The concept of providing wireless notifications to an online or offline remote unit, as claimed in the 279 patent, was known before the filing date of the 279 patent and described in patents and patent applications. 1. U.S. Patent Application No. 08/215,817 ( Hays ) Like the 279 patent, the Hays application describes a user device with two means for receiving messages, a pager receiver and a cellular phone connection. (See Ex. 1005 at 6; see also Ex. 1003 at 55-56.) When the cellular connection is unavailable for message transmissions, the Hays system sends the mobile device a page notification alerting the user that a message is waiting for her. (Ex. 1005 at 6-7.) Hays describes that the system includes a determining means for determining whether digital data can be successfully transmitted to a subscriber by said first transmitting means, and means for transmitting a predetermined page message to the subscriber via a second transmitting means when said determining means determines that the digital data cannot be successfully transmitted to the subscriber by said first transmitting means. (Id. at 6-7.) As shown in Figure 1, the calling device 12 is any device capable of transmitting digital data over telephone lines, such as a phone, computer, or other terminal device. (Id. at 9.) Users may enter messages directly into the calling device 12 or the messages may be automatically generated by the calling device 12 when 9
it is connected to a stock market or news reporting service. (Id.) The calling device transmits these data messages to a message manager 15 via a central switching office (CSO) 14. (Id. at 10.) The message manager is a central clearinghouse for storing and managing data messages received from calling devices and intended for subscribers. (Id.) Hays notes that the location of the message manager is not important and it can be located before or after the CSO 14. (Id.) Hays also explains that message manager 15 could be a local area network (LAN) or other proprietary system for storing and managing messages from a plurality of calling devices. (Id.) Upon receiving a message, the CSO 14 or message manager 15 determines whether a data message is intended for a mobile unit, such as mobile unit 15 of Figure 1. (Id. at 13.) The data message is stored in the message manager 15. (Id. at 10.) The Mobile Telephone Switching Office (MTSO) 16 attempts to contact the mobile telephone 15 via the cellular station. (Id. at 14) If the MTSO cannot handshake with the mobile telephone, it sends a paging message to the Universal Messaging System (UMS) 24 (id.), which Hays describes as a central computer for a paging system. (Id. at 10.) The page message can be, for example, a short message, such as an indication that a message is waiting or an instruction to turn on the mobile telephone, or a longer message, such as a data message sent by a caller. (Id. at 12.) The UMS 24 then transmits a page to the mobile unit s pager 21 via the paging system 28, 30. (Id. at 10-11.) The pager 21 responds by alerting the subscriber by display, tone, vibration, etc. of the message. (Id. at 15.) If the mobile telephone 20 of the mobile unit 19 is turned off when a page notification is received, it is automatically turned on. (Id.) The mobile unit can retrieve the 10
message via the cellular network, the notification of which it received via the paging network. (E.g., id. at 15-16.) 2. U.S. Patent No. 5,487,100 ( Kane ) Like the 279 patent, Kane describes a system for transmitting information through two different channels, a wireless paging network (labeled Path B in Figure 1) and a dial-up Internet connection via a public switched telephone network (PSTN) (labeled Path A in Figure 1). (See Ex. 1004 at Abstract, 2:58-5:6; see also Ex. 1003 at 59-61.) In Kane, a central terminal 102 receives information from multiple sources (104, 106, 107, 108, 109, 113) including computers and telephones connected through a PSTN or other non-pstn inputs. (Ex. 1004 at 3:20-24.) One non- PSTN input is an X.400 gateway server that connects the central terminal 102 to an X.400 network 113 through which the central terminal 102 can receive email messages from one or more originating devices on the X.400 network. (Id. at 3:12-20.) Upon receiving a message from the X.400 network 113, the central terminal 102 creates a message record by storing a copy of the message in memory 118 and then separately identifying and storing a message ID and a time tag in separate fields linked to the copy of the message. (Id. at 5:40-54.) As X.400 is an email standard, the message includes both a destination address for the recipient and an origination address within the X.400 network 113 for the sender. (Ex. 1003 at 59.) Because the origination and destination addresses of the message are email addresses and therefore not suitable for a pager network, the controller 114 of the 11
central terminal 102 queries a subscriber database to obtain a pager number associated with the destination address, and creates an originator alias that is a compressed version of the origination address. (Ex. 1004 at 6:53-7:20; Ex. 1003 at 60.) The controller 114 then constructs a pager message including the message body, the pager address, the originator alias, and the stored time tag. (Id. at 3:60-4:9.) The central terminal 102 encodes the message for transmission and transmits it to remote units 130 over the paging network using paging transmitter systems 124 and 126. (Id. at 3:60-4:9; labeled as PATH B in Fig. 1.) A remote unit 130 receives the message using a paging receiver 134 and displays the received message to the user. (Id. at 4:10-36.) The remote unit 130 further includes a modem transceiver 144 allowing the user to reply to the message over a data connection such as dial-up Internet connection over a PSTN 107. (Id. at 4:45-5:5; labeled as PATH A in Fig. 1.) This connection is separate and distinct from the pager network ( PATH B in Fig. 1). In addition to sending whole messages, Kane also provides users with the ability to set a maximum message length for the pager channel in the memory 118 of the central terminal 114. (Id. at 7:63-8:7.) When the number of characters in a message exceeds the specified maximum, the central terminal 102 either truncates the message for transmission or sends an alternative short message notifying the user that an oversized message has been received and stored at the central terminal for download by the remote unit 130. (Id. at 8:13-23.) In response, the remote unit 130 can use the modem 144 and dial-up Internet connection to obtain the entire message. (Id.) 12
3. U.S. Patent No. 5,742,905 ( Pepe ) Like the 279 patent, Pepe describes broadcasting messages over a pager network. Pepe describes a personal communications interface (PCI) that routes messages received as emails over the X.400 messaging protocol to a number of different devices including mobile wireless devices, such as PDAs or pagers, as pager messages. (Ex. 1006 at 5:40-52, 8:31-35; see also Ex. 1003 at 54-56.) Pepe describes the PCI receiving an email message and converting it to a pager message. (Ex. 1006 at 25:51-26:35.) This includes querying a database of subscriber profiles to determine how to process the message, and formatting the message appropriately. (Id.) If an e-mail message is to be delivered to an alphanumeric paging address, the PCI server translates the e-mail message into a paging message and sends the paging message to the paging network specified in the subscriber profile. The protocol between the PCI server and the paging network is the Telocater Alpha Numeric (TAP). (Id.) B. Specific Grounds for the Petition The challenged claims are 1-4, 6-9, 11-13, 17, 29-30, 35-38, 40-43, 45-47, 51, and 63-64 of the 279 patent. The prior art discussed herein anticipates or renders obvious each of the challenged claims. 1. Ground 1: A Combination of Hays and Pepe Renders Claims 1-7, 9, 11-12, 29, 35-38, 40-41, 43, 45-46, and 63 Obvious. As discussed above, Hays and Pepe are both prior art pursuant to 35 U.S.C. 102(e). Hays is titled Telecommunication Network and Method for a Mobile Phone/Pager Device and relates to telecommunication networks for transmitting digital data to mobile subscribers. (Ex. 1005 at Field of the Invention.) More 13
specifically, Hays describes [a] telecommunication system... which allows messages to be transmitted via a cellular phone channel and a paging channel to a mobile device. (Id. at Abstract.) Similarly, Pepe describes Personal Communications Internetworking where [t]he network operates as an interface between various wireless and wireline networks, and also performs media translation where necessary. (Ex. 1006, Abstract.) Like Hays, Pepe s system includes both cellular communications and paging communications. (Id. at 5:41-53.) Both Hays and Pepe describe delivering a data message over a pager network. (Ex. 1005 at 9 ( If the MTSO determines in step 112 that the attempt to handshake with the mobile telephone 20 is not successful, MTSO 16 routes the data message entered by the caller to UMS 24... and transmits a page message to the pager 21 in the mobile unit 19. ); Ex. 1006 at 26:14-29 ( If an e-mail message is to be delivered to an alphanumeric paging address, the PCI server translates the e-mail message into a paging message and sends the paging message to the paging network specified in the subscriber profile. )) Thus, both references disclose methods for transmitting data to selected remote devices as required by independent claim 1 of the 279 patent from which other challenged claims depend. And, both references, which were filed around the same time, deal with cellular phone and pager messaging technologies. Hays and Pepe have the same international classification, H04Q 7/XX. As such, one of ordinary skill dealing with the various issues inherent in mobile, cellular, and paging messaging systems would have been aware of both Hays and Pepe, and would have naturally combined Hays system with Pepe s implementation of the subscriber database and the message protocol and address translation for conversion of messages for 14
transmission over the paging network. (Ex. 1003 at 71-74.) a. Claims 1 and 35: Hays, alone or in combination with Pepe, renders obvious a central broadcast server configured to receive data from at least one information source and process the received data with at least one parser. As described above, SimpleAir s interpretation of information source is one or more content or online service providers that provide data to the central broadcast server, such as online source of news, weather, games, personal messages, or email. Petitioner interprets this terms as a source such as the Internet or other online service. Hays describes information sources that meet both interpretations. For example, Hays describes information sources such as the calling devices and news or stock market reporting services: Calling device 12 can be any device capable of transmitting digital data over telephone lines, such as a telephone, a computer, or some other data terminal device. A caller may enter a data message directly or request an operator to enter the message. Alternatively, the message may be automatically generated by calling device 12, when, for example, it is connected to a stock market or news reporting service. (Ex. 1005 at 9.) Hays also explains that there is a plurality of calling devices: message manager 15 could be a local area network (LAN) or other proprietary system for storing and managing messages from a plurality of calling devices. (Id. at 10.) Hays also describes transmitting data from the reporting services and the plurality of calling devices to a central broadcast server (and thus receiving data from these sources at the central broadcast server) under both proposed interpretations of central broadcast server. In Hays, the data message from the caller, stock market or news reporting service (i.e., the 279 patent s data from an 15
information source ) is transmitted from the calling device 12 and received by the message manager, which along with UMS performs the functions of the central broadcast server of the 279 patent. [C]alling device 12 is connected to CSO 14 in a conventional manner. In one embodiment, CSO 14 routes data messages received from a calling device 12 to message manager 15. Message manager 15 is a central clearing house for storing and managing data messages received from calling devices and intended for subscribers. Although message manager 15 is shown between CSO 14 and MTSO 16 in Fig. 1, it could also be located between calling device 12 and CSO 14. In such a case, message manager 15 could be a local area network (LAN) or other proprietary system for storing and managing messages from a plurality of calling devices. (Id. at 10.) Therefore, Hays discloses a central broadcast server configured to receive data from at least one information source under SimpleAir s proposed interpretation of central broadcast server as one skilled in the art would recognize that the message manager 15 and UMS are necessarily servers and Hays discloses that they process data prior to transmitting it to the mobile units. (Ex. 1005 at 10, Ex. 1003 at 78-79, 88, 92.) Hays also meets this limitation under Petitioner s interpretation of central broadcast server which, additionally, requires that the central broadcast server send data packets over a wireless broadcast network to on- and off-line computers. In Hays, UMS, which along with the message manager is the central broadcast server of the 279 patent, broadcasts the message over the paging network, which is a wireless broadcast network that broadcasts pages to all pagers on the network. (Ex. 1003 at 84.) Further, as described in the 279 patent, remote computing 16
devices are offline when they are not connected to the Internet or online service and are online when they are connected to the Internet or online service. (Ex. 1001 at 7:4-13.) In Hays, pages are broadcasted to the mobile units regardless of whether the mobile telephones are connected to the cellular network through which the telephones can connect to the Internet or online services. Hays also discloses processing data with at least one parser at the central broadcast server, which Hays describes as the Message Manager. Hays describes a number of preprocessing steps, including determin[ing] whether the received call is valid (step 502), and check[ing] whether the destination address(es) require the data message to be broadcast to one or more mobile units (step 506). Notably, Hays describes these steps as optionally occurring at the message manager, which along with Hays UMS is the component identified above as the central broadcast server. Steps 500-512 are not required to be performed at CSO 14, and may be performed at Message Manager 15. (Ex. 1005 at 21.) Therefore, Hays discloses process the received data with at least one parser. Additionally, as one of skill in the art would understand from this disclosure in Hays, the Hays system necessarily parses the data it receives. The parties agree that process the received data with at least one parser means using multiple computer software programs, routines, or functions to break up or divide data received from an information source into components whose content or format can be analyzed, processed or acted upon. Hays discloses this in two ways. First, it discloses checking (i.e., analyzing) the validity of the received message. (Id. ( determin[ing] whether the received call is valid (step 502) ).) It also determines whether the message is intended to be broadcast to multiple recipients (i.e., ana- 17
lyzed and acted upon). (Id. ( checks whether the destinations address(es) require the data message to be broadcast to one or more mobile units ).) One of skill in the art would understand that both these steps require examination and analysis of specific components of the message contents, which necessarily requires dividing the message into those components. (Ex. 1003 at 79-80.) This dividing would necessarily be performed by routines or functions corresponding to the message manager, i.e., along with UMS, the central broadcast server of the 279 patent, because that is where Hays describes the data messages are stored and managed and that is where the preprocessing of the data messages takes place. (Ex. 1005 at 10, 21; Ex. 1003 at 56, 88.) Second, Hays describes receiving a single message and address(es) to which the message must be delivered. [A] central station, such as CSO 14, receives from calling device 12 a data message and one or more destination addresses of one or more mobile units to which the data message is to be sent (step 500). (Ex. 1005 at 20-21.) Hays then sends that data message to multiple pagers identified by multiple destination addresses. UMS 24 broadcasts the data message to one or more pagers 21 identified by the destination address(es). (Id. at 21.) In order to do that, the Hays system must necessarily parse the message body from whatever header was sent with it and then append the addresses for each recipient. (Ex. 1003 at 78, 81.) Thus, the system disclosed in Hays necessarily performs the claimed parsing step. Additionally, Pepe discloses process the received data with at least one parser..., and as described above, one of skill in the art would combine Hays with Pepe. Pepe describes a personal communications interface (PCI) that routes 18
messages received over the X.400 messaging protocol (data messages) to a number of different devices including mobile wireless devices. (Ex. 1006 at 8:31-35.) Pepe describes the PCI receiving an email message and converting it to a pager message. (Id. at 25:51-26:35.) This includes identifying a recipient s address in the email message (for example, of the format 201-555-5555 @ pci.net where 201-555-5555 is the subscriber s ten-digit personal number and pci.net is the PCI server s domain name in the Internet), by necessarily parsing the message to retrieve the address, querying a database of subscriber profiles to determine how to process, address (which can be wireless, wireline, or paging address ) and route the message, and formatting the message accordingly. (Id.) If an e-mail message is to be delivered to an alphanumeric paging address, the PCI server translates the e-mail message into a paging message and sends the paging message to the paging network specified in the subscriber profile. The protocol between the PCI server and the paging network is the Telocater Alpha Numeric (TAP). The PCI server formats the paging message into a maximum page limit with a maximum number of characters per page. For example, the page limit may be two pages and a maximum of 256 characters per page. (Id. at 25:51-26:35.) One of ordinary skill in the art would understand that the message protocol translation disclosed in Pepe would necessarily require dividing the incoming message into its constituent parts prior to such translation in order to lookup the destination address and to format the message accordingly for delivery to pagers, and that separation and translation would take place by software functions and subroutines. (Ex. 1003 at 80.) It would be obvious to one skilled in the art, in 19
light of Pepe, to modify the Hays disclosure to include Pepe s description of how one of ordinary skill in the art would convert data messages, such as Pepe s email messages, to pager messages. (Ex. 1003 at App. A at 53-55.) The parsing of the email message for translation, in accordance with Pepe s disclosure, would be performed by routines and functions corresponding to the message manager because the message manager of Hays is a central clearing house for storing and managing data messages received from calling devices and intended for subscribers and it performs the preprocessing of the messages as described in Hays. (Ex. 1005 at 10, 21; Ex. 1003 at 78, 88.) b. Claims 1 and 35: Hays on its own or in combination with Pepe discloses an information gateway communicatively coupled to the central broadcast server, the information gateway configured to build data blocks from the parsed data and assign addresses to the data blocks. For the purposes of this petition, the BRI of information gateway... one or more software programs (or a portion of a program) that build data blocks and assign addresses to said data blocks. Hays describes receiving a data message, converting it to a format suitable for transmission over a pager network, and transmitting it. In particular, Hays describes receiving a single message and address(es) to which the message must be delivered, and delivering it to the address(es). (Ex. 1005 at 20-21.) In order to do this, one of ordinary skill in the art would recognize that the Hays system must convert the incoming data message to conform with relevant pager standards and assign the individual pager addresses to the message body so that it can be transmitted via the pager network to each ad- 20
dress. 2 (Ex. 1003 at 79, 81.) This function would necessarily be performed by software and the message would be transmitted from the caller device to the software for building the data blocks and assigning addresses to the data blocks. (Id.) One of skill in the art would further recognize that the message body is necessarily comprised of one or more data blocks, for example, message header and payload, which are reassembled into the page message again by software. (Id.) Thus, Hays discloses this limitation. As described above, one of ordinary skill in the art would combine Hays with Pepe. Pepe describes translating messages from a data message network (i.e., X.400) to a pager network, which at least requires translation from X.400 protocol to TAP protocol. (Ex. 1006 at 25:51-26:35) This function would necessarily be performed by software. (Ex. 1003 at 80-83.) Pepe describes that the translation from X.400 data message to TAP paging message would require not only translation of the address from an email address to a pager number, but also translating the message from the email protocol to the pager protocol. (Ex. 1006 at 25:51-26:35; Ex. 1003 at 83.) Doing so would require parsing and rebuilding the 2 One of ordinary skill in the art would understand that paging systems, like the one described in Hays, broadcast messages to all paging receivers within range of the transmitter. Individual paging devices determine whether the paging message is intended for it by comparing the address in the paging message to the address or addresses stored in the paging device itself. (Ex.1005 at 20-21; Ex. 1003 at 84.) 21
data blocks, including assigning addresses to the data blocks. (Ex. 1006 at 25:51-26:35; Ex. 1003 at 79-83; see also VII.B.1.a.) As described above, it would be obvious to one skilled in the art, in light of Pepe, to modify the Hays disclosure to include Pepe s description of how one of ordinary skill in the art would convert data messages, such as Pepe s email messages, to pager messages. (Ex. 1003 at 80.) Thus, the combination of Hays and Pepe renders this limitation obvious. c. Claims 1 and 35: Hays on its own or in combination with Pepe discloses a transmission gateway communicatively coupled to one or both of the central broadcast server and the information gateway, the transmission gateway configured to prepare the addressed data blocks for transmission to receivers communicatively coupled to the remote computing devices. The BRI of transmission gateway, is one or more software programs (or a portion of a program) that prepare the data blocks for their transmission to receivers and interface with other resources used to transmit the preprocessed data. Hays discloses this limitation under either construction. As discussed above, Hays system receives data messages comprised of one or more data blocks. (See Section VII.B.1.b.) Additionally, Hays discloses a Universal Message System, which is a central computer for a paging system, such as the UMS owned and operated by SkyTel Corporation in Washington, D.C.... UMS 24 sends out paging messages via satellite 28 to regional paging transmitter 30, which in turn transmits paging messages throughout a desired geographic area. (Ex. 1005 at 10-11.) One of skill in the art would understand that in Hays the UMS includes software that prepares pager messages to be sent. (Ex. 1003 at 82.) In Hays, UMS 24 transmits the data message to pager(s) 21 via satellite 28 and paging transmitter 30 and thus interfaces with resources (e.g., satellite and paging 22
transmitter) used to transmit the preprocessed data to the pagers (i.e., the receivers of the 194 patent). (Ex. 1005 at 21.) Thus, in Hays, the message, and its data blocks built by software with addresses assigned by this software, are transmitted to and prepared for transmission to the pagers by another software that is part of the UMS. 3 (Ex. 1003 at 82.) Moreover, Hays discloses that pager messages are transmitted over pager networks, which are networks that broadcast pages to pagers. (Id.; Ex. 1005 at 10-11.) d. Claims 1 and 35: Hays discloses initiate transmission of the addressed data blocks to the receivers, wherein the transmission is made whether the remote computing devices are online or offline from a data channel associated with each remote computing device. In Hays, UMS 24 transmits the [preprocessed, as described above,] data message to pager(s) 21 via satellite 28 and paging transmitter 30. (Ex. 1005 at 21.) Pager(s) 21 are part of mobile unit 19 along with the mobile telephone 4 (Id. at Fig. 1.) The paging receivers in Hays communicate with the mobile telephone 3 Consistently, the 279 patent describes that the transmission gateway is part of the central broadcast server. (Ex. 1001 at 8:1-25, Figures 1, 2.) And during the 279 reexamination the inventors stated in a declaration that both the content manager and information gateway are part of what we called the central broadcast server. (Ex. 1009 at 2.) 4 During trial in SimpleAir v. Google, Google s expert identified the remote computing device as the CPU of a mobile phone, where the receiver is within the same housing. (Ex. 1012 at 113-115 (Google Trial Transcript, Dkt. 652).) 23
which is the claimed computing device. (Id. at 9, 15, Fig. 1.) Pager 21 is preferably a conventional page receiver, including RF antenna 200 for receiving RF page signals, and a radio pager 202 coupled to RF antenna 200. Radio pager 202 converts paging signals received from the RF antenna 200 into data signals representing a page message. (Id. at 11-12, Fig. 2.) Therefore, Hays discloses this initiat[ing] transmission of the addressed data blocks to the receivers. Hays discloses wherein the transmission is made whether the remote computing devices are online or offline from a data channel associated with each remote computing device. Hays describes that Pager(s) 21 receive the data (step 516), and the mobile unit(s) 19 display the data message (step 518). This method allows for connectionless, one way, point-to-point and point-to-multipoint broadcast messaging not found in conventional cellular systems. (Id. at 21.) Hays describes as scenario where the system cannot connect with the user s mobile telephone via the mobile telephone connection, i.e., the mobile telephone is offline, and instead sends a page message to alert the user that a message is waiting. (Id. at 14-15.) 5 In Hays, the pager messages are sent to the user when the mobile 5 Hays also discloses several methods of operation that describe notifying the computing devices of receipt of data blocks. (Ex. 1005 at 8-9.) These methods of operation are all described as ways Hays invention can be used, and are not described as alternatives to one another; as such, one of skill in the art would not consider them mutually exclusive, but rather, they form a system capable of performing any or all of the described methods of operation. 24