Google Inc.v.SimpleAir, Inc.

Patent Trial and Appeal Board

Apr 17, 2015

13018420 (P.T.A.B. Apr. 17, 2015)

Trials@uspto.gov Paper 11
571-272-7822 Date: April 17, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GOOGLE INC.,
Petitioner,

v.

SIMPLEAIR, INC.,
Patent Owner.
____________

Case IPR2015-00179
Patent 8,572,279 B2
____________

Before JAMES P. CALVE, JUSTIN T. ARBES, and TINA E. HULSE,
Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. BACKGROUND
Petitioner Google Inc. (“Google”) filed a Petition (Paper 1, “Pet.”)
seeking inter partes review of claims 1–4, 6–11, 13–21, 24, 27–35, 37, 38,
42, 43, 47–49, 54, 55, 62, and 63 of U.S. Patent No. 8,572,279 B2 (Ex.
1001, “the ’279 patent”). Patent Owner SimpleAir, Inc. (“SimpleAir”) filed
a Preliminary Response. Paper 8 (“Prelim. Resp.”). We have jurisdiction
under 35 U.S.C. § 314(a), which provides that inter partes review may not
be instituted “unless . . . there is a reasonable likelihood that the petitioner
would prevail with respect to at least 1 of the claims challenged in the
petition.” 35 U.S.C. § 314(a). For the reasons that follow, Google has not
established a reasonable likelihood that it would prevail with respect to at
least one challenged claim.
A. Related Proceedings
The parties identify the following proceedings as affecting or being
affected by a decision in this proceeding: SimpleAir, Inc. v. Amazon.com
Inc., No. 2-14-cv-00679 (E.D. Tex.); SimpleAir, Inc. v. Microsoft Corp., No.
2-11-cv-00416 (E.D. Tex.); SimpleAir, Inc. v. Google Inc., No. 2-13-cv-
00587 (E.D. Tex.); SimpleAir, Inc. v. Google Inc., No. 2-13-cv-00937 (E.D.
Tex.); and SimpleAir, Inc. v. Google Inc., No. 2-14-cv-00011 (E.D. Tex.).
Pet. 52–53; Paper 4, 1–2. The ’279 patent also is the subject of
Case CBM2015-00019.
B. The ’279 Patent (Ex. 1001)
The ’279 patent discloses wired and non-wired data transmission
communication systems. Ex. 1001, 1:31–33. In one embodiment, wireless
communication system 10 connects on-line information sources 12 with on-
and off-line computers, such as personal computers 14. Id. at 5:40–43, Fig.
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1. Data parsed from a plurality of incoming data feeds 16 from information
sources 12 is transmitted wirelessly from central broadcast server 34 through
commercial wireless carrier 36 nationwide to wireless receiving devices 32
that are connected to personal computers 14. Id. at 5:60–67, 6:46–50. Data
received at wireless receiver 32 is processed to form a complete message at
which point communications server 38 notifies a user interface in alert panel
50, which presents an icon that can be clicked to display particular data on
user computers 14. Id. at 6:46–60. Thus, remote computer 14 can receive
information even while it is off-line (i.e., not connected to the Internet or
another on-line service). Id. at 7:10–13. Figure 1 is reproduced below.

Figure 1 is a schematic diagram of a communication network.
Real time data feeds from information sources 12 from the Internet
are provided to a network of servers 33 in central broadcast server 34 such
as FTP server 102 and SMTP server 104. Id. at 8:9–15. Data includes stock
quotes, weather, lotto, and email, which are parsed by stock quote parser
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106, weather parser 108, lotto parser 110, and mail parser 112, and
transmitted to content manager 114, which determines priorities for different
types of information. Id. at 8:16–21, 41–45. Content manager 114 also
communicates with information gateway 134, where data blocks are built
and applicable real and virtual addresses are determined based on the type of
information in the data block and user subscription data from subscriber
database 130. Id. at 8:62–67, 22:13–18. Wireless gateway 136 packetizes,
compresses, and encrypts data blocks for transmission over the wireless
broadcast network. Id. at 9:18–20, 11:31–40. Figure 2 is reproduced below.

Figure 2 is a block diagram of a wireless communication network as
illustrated in Figure 1.
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C. Illustrative Claim
Claims 1 and 35 are independent. Claims 2–4, 6–11, 13–21, 24, and
27–34 depend from claim 1. Claims 37, 38, 42, 43, 47–49, 54, 55, 62, and
63 depend from claim 35. Claim 1 is illustrative of the claimed subject
matter and reproduced below.
1. A system to transmit data from an information source to
remote computing devices, the system comprising:
a central broadcast server configured to receive data from at
least one information source and process the received
data with at least one parser;
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;
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 and 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.

D. Prior Art
Google relies on the following references:
Reference Patent/Printed Publication Date Exhibit
Oberlander US 5,509,000 Apr. 16, 1996
(filed June 10,
1994)
1038
Throckmorton US 5,818,441 Oct. 6, 1998
(filed June 15,
1995)

1039
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Reference Patent/Printed Publication Date Exhibit
Yan SIFT – A Tool for Wide-Area
Information Dissemination,
PROCEEDINGS OF THE 1995
USENIX TECHNICAL
CONFERENCE 177
Jan. 16–20,
1995
1042
Simon The Windows 95 User
Interface, PC MAGAZINE,
July, at 307
July 1995 1043
Reilly US 5,740,549 Apr. 14, 1998
(filed June 12,
1995)
1044
Olazabal US 5,323,148 June 21, 1994 1045
Lynch-Freshner US 5,668,997 Sept. 16, 1997
(filed Dec. 18,
1995)
1046
E. Asserted Grounds of Unpatentability
Google challenges the patentability of claims 1–4, 6–11, 13–21, 24,
27–35, 37, 38, 42, 43, 47–49, 54, 55, 62, and 63 of the ’279 patent on the
following grounds:
References Basis Claims Challenged
Oberlander, Throckmorton § 103 1–4, 8, 24, 27, 29, 35, 37, 38,
42, 63
Oberlander, Throckmorton, Reilly § 103 9, 10, 14–21, 43, 48, 49, 54,
55
Oberlander, Throckmorton,
Reilly, Simon
§ 103 13, 47
Oberlander, Throckmorton,
Olazabal
§ 103 11
Oberlander, Throckmorton,
Lynch-Freshner
§ 103 28, 62
Oberlander, Throckmorton, Yan § 103 6, 7, 30, 33, 34
Oberlander, Throckmorton, Yan,
Reilly
§ 103 31, 32
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II. ANALYSIS
A. Claim Interpretation
In an inter partes review, claims of an unexpired patent are given their
broadest reasonable construction in light of the specification of the patent in
which they appear. 37 C.F.R. § 42.100(b); see Office Patent Trial Practice
Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); In re Cuozzo Speed
Tech., LLC, 778 F.3d 1271, 1278 (Fed. Cir. 2015). Claim terms are given
their ordinary and customary meaning as would be understood by one of
ordinary skill in the art in the context of the entire disclosure. In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
1. “information gateway configured to build data blocks from the parsed
data and assign addresses to the data blocks” (claims 1, 35)
The parties assert that an “information gateway configured to build
data blocks from the parsed data and assign addresses to the data blocks”
should mean “one or more software programs (or a portion of a program)
that build data blocks and assign addresses to the data blocks.” Pet. 10;
Prelim. Resp. 13. As this interpretation is consistent with claims 1 and 35
and the ’279 patent Specification, we adopt it for purposes of this Decision.
2. “a transmission gateway” (claims 1, 35)
The parties also appear to agree that the limitation “a transmission
gateway” should mean “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.” Pet.
10; Prelim. Resp. 14. As this interpretation is consistent with claims 1 and
35 and the ’279 patent Specification, we adopt it for purposes of this
Decision.
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B. Asserted Grounds of Unpatentability
1. Claims 1–4, 8, 24, 27, 29, 35, 37, 38, 42, and 63
Obvious Over Oberlander and Throckmorton
a. Overview of Oberlander (Ex. 1038)
Oberlander discloses a communication system that routes information
to a subscriber device over a network. Ex. 1038, 1:7–11. Communication
system 100 includes wireless and wireline communication networks that
comprise server 110 and subscriber devices 120–124. Id. at 2:29–32. Figure
1, which is reproduced below, illustrates such a system.

Figure 1 is a block diagram of communication system 100.
Devices 120, 122, 124 communicate with server 110 via a wireless
communication media while device 122 also communicates with server 110
over wireline connection 130. Id. at 2:40–50. Communication manager
(CM) 111 is a software program that controls all communications resources
of server 110, and all messages entering and exiting server 110 pass through
CM 111. Id. at 3:6–10. Device mobility manager (DMM) 113 selects a
destination device address to be appended to a received message. Id. at
3:10–12. Network mobility manager (NMM) 115 is a software program that
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receives the message from DMM 113 and selects one of a plurality of
networks for transmission of the message. Id. at 3:13–15.
b. Analysis
Google argues that claims 1–4, 8, 24, 27, 29, 35, 37, 38, 42, and 63
would have been obvious under 35 U.S.C. § 103 over Oberlander and
Throckmorton. Pet. 14, 18. For the reasons that follow, Google has not
demonstrated a reasonable likelihood of prevailing with respect to its
challenge of these claims.
Google relies on Oberlander to disclose all features of the systems
recited in independent claims 1 and 35, including a central broadcast server,
an information gateway, and a transmission gateway, wherein transmission
is made whether remote computing devices are online or offline. Pet. 15–23,
27. Google relies on Throckmorton to disclose remote computing devices
with a separate data channel that communicates back to information sources
to the extent that the limitation “whether the remote computing devices are
online or offline from a data channel associated with each remote computing
device” requires a separate data channel. Id. at 23–26. Google illustrates its
contentions on Figure 1 of Oberlander (Pet. 16), which is reproduced below.

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Figure 1 is a block diagram of communication system 100. See also
Ex. 1002 ¶ 85 (providing similar contentions).
Google makes several assertions regarding Oberlander’s disclosure of
an information gateway, including: (1) “Oberlander discloses server 110 as
an information gateway that takes multiple parsed messages 300 and builds
the data blocks and assigns destination addresses for each of the messages
using [CM 111, which] . . . ‘is a software program (i.e., process) that
controls all communication resources allocated to server 110’” (Pet. 19);
(2) “DMM 113 functions as an information gateway by selecting a
destination device address and appending it to the received message” (id. at
20); and (3) DMM 113 and NMM 114 constitute the information gateway
“as together they build the messages 300 into data blocks by adding a device
ID to the message and assign network ID addresses to the data blocks” (id.).
Google’s annotations of Figure 1 of Oberlander identify server 110 as
the central broadcast server and information gateway. Google contends that
server 110 is the central broadcast server that receives information from
device 120 and parses the data by extracting a subscriber ID from the header
of message 300 and using the extracted subscriber ID to determine the
device to which the message is to be routed. Id. at 16–19. Google asserts
that Oberlander discloses server 110 as an information gateway that takes
multiple parsed messages 300, builds data blocks, and assigns destination
addresses to each message using CM 111, which controls all communication
resources of server 110. Id. at 19. Google asserts that all messages entering
and exiting server 110 pass through CM 111. Id. at 19–20. The Declaration
of Vijay Madisetti supports these contentions with similar statements. See
Ex. 1002 ¶ 92.
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Google also asserts that the information gateway assigns addresses to
data blocks where null field 306 of message 300 is filled by server 110 with
the address of a destination device that is to receive the data portion of the
message. Pet. 20. Google then asserts that DMM 113 thereby functions as
an information gateway because it selects a destination device address and
appends the address to the message. Id. Google contends that DMM 113 is
coupled communicatively to central broadcast server because DMM 113
“resides and runs on server 110.” Id. The Madisetti Declaration further
states that DMM 113 functions as an information gateway by selecting an
address for a destination device and appending the destination device
address to the received message. Ex. 1002 ¶ 92. The Madisetti Declaration
also states that addresses are assigned to data blocks when null field 306 is
filled by server 110 with the address of a destination device that is to receive
the data portion of the message. Id.
Google argues further that if adding a network ID is considered to be
a function of an information gateway, then DMM 113 and NMM 115
together constitute the information gateway because they build messages
300 into data blocks by adding a device ID to the message and assigning
network ID addresses to the data blocks. Pet. 17, 20. Google asserts that
DMM 113 appends a device ID to the message and passes the new block of
data to NMM 115 to determine which network to use for transmitting the
message so that “an information gateway builds data blocks from the parsed
data and assigns addresses to the data blocks” Id. at 17. The Madisetti
Declaration also states that DMM 113 and NMM 115 constitute the
information gateway as together they build messages 300 into data blocks by
adding a device ID to the message and assign network ID addresses to the
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data blocks. Ex. 1002 ¶¶ 93, 98. The Madisetti Declaration states that
Oberlander discloses building data blocks from parsed data because DMM
113 selects a destination device address to append to a received message,
and NMM 115 receives the message from DMM 113 and selects one of a
plurality of communications networks to transmit the message. Id. Thus,
after a data block is built, it is addressed by adding a network ID address to
the message. Id. ¶ 93.
SimpleAir argues that Google’s first theory focuses on how CM 111
and DMM 113 assign addresses to data blocks and does not address how
these elements “build data blocks from . . . parsed data,” as claimed. Prelim.
Resp. 37. SimpleAir also asserts that Google fails to establish that
Oberlander discloses CM 111 and DMM 113 “communicatively coupled” to
the central broadcast server, as claimed. Id. at 38–39.
SimpleAir argues that Google’s second theory that DMM 113 and
NMM 115 together form the information gateway relies on the network ID
as the claimed address. But SimpleAir argues that Oberlander only discloses
that the network ID identifies the network and CMM 111 uses this identifier
to cause delivery of the message to the target devices via one of the available
networks listed in the network ID list in field 308. Id. at 39–40.
Google has not established that Oberlander discloses an information
gateway that is “configured to build data blocks from . . . parsed data and
assign addresses to the data blocks,” as recited in independent claims 1 and
35. First, Google’s assertion that server 110 is an information gateway that
builds data blocks and assigns destination addresses to each message using
CM 111 does not explain how CM 111 builds data blocks or assigns
addresses. Oberlander’s disclosure that all messages entering and exiting
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server 110 must pass through CM 111 does not establish that CM 111 builds
data blocks into messages or assigns addresses to data blocks, as claimed. In
addition, this assertion conflicts with Google’s contention that server 110
constitutes the claimed central broadcast server. Pet. 18–19; Ex. 1002 ¶ 86.
Claims 1 and 35 recite “a central broadcast server” and “an information
gateway” as separate elements in which the information gateway is
“communicatively coupled to the central broadcast server.”
Second, Google’s contention that DMM 113 functions as an
information gateway by selecting a destination device address and
appending the address to the received message does not explain how DMM
113 thereby builds data blocks and assigns addresses to the data blocks. See
Prelim. Resp. 36–38 & n.2. Oberlander discloses that DMM 113 assigns an
address to a data block by filling null field 306 of a message header with the
address of a destination device. Ex. 1038, 3:56–62; see Pet. 20 (stating “the
information gateway assigns addresses to the data blocks where ‘[n]ull field
306 is a field which shall be filled by server 110 with the address of a
destination device which is to receive the data portion of the message in
question’”). Claims 1 and 35 recite that the information gateway builds data
blocks and assigns addresses to data blocks as separate elements, which is
consistent with the ’279 patent Specification.
1

1
The ’279 patent discloses that data from information sources are packed
into 8-bit binary format data blocks in central broadcast server 34, as
illustrated in Figures 5 and 6. Ex. 1001, 12:64–13:10. Data blocks are built
in information gateway 134 and all real and virtual addresses are determined
based on the type of information in the data block and subscription data from
subscriber database 130. Id. at 22:13–18, Fig. 15. If a data block is targeted
to a specific virtual address, the virtual address is inserted by information

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Third, Google’s contention that DMM 113 and NMM 115 constitute
an information gateway as together they build messages 300 into data blocks
by adding a device ID to the message and assigning network ID addresses to
the data blocks (Pet. 20) also is not persuasive. Google’s apparent treatment
of the insertion of a destination device address into message 300 as building
a data block is inconsistent with Oberlander’s disclosure that null field 306
is filled with the address of a destination device that receives the message.
Ex. 1038, 3:60–62. Oberlander addresses data blocks by inserting a device
ID (address) into null field 306 of message 300 and by inserting a network
ID into null field 308 of message 300. Id.at 3:60–66. Oberlander also
discloses that DMM 113 generates a key from a subscriber ID and device ID
(address), and NMM 115 uses this key to determine which network to use
for transmission of a message. Id. at 4:38–65, Figs. 4, 5. Google does not
explain sufficiently how inserting a device ID (address) into message field
306 results in building a data block, whereas inserting a network ID into
message field 308 constitutes assigning an address to a data block. See
Prelim. Resp. 39–40. The Madisetti Declaration states that both DMM 113
and NMM 115 are used to assign an address to the data blocks. Ex. 1002
¶ 95. Thus, Google has not persuaded us that DMM 113 and NMM 115

gateway 134 into the virtual address field of the data block header and the
virtual address flag is set. Id. at 22:18–21. Thus, information from content
manager 114 is applied to information gateway 134 (step 115), which builds
data blocks and assigns real and virtual capcodes to data blocks by resolving
the logical destination address to a physical wireless address based on
information in a subscriber database (step 117). Id. at 11:31–36, Fig. 4.
Wireless gateway 136 performs packetization, compression, and encryption
to prepare the data block for transmission over the wireless broadcast
network (step 119). Id. at 11:37–40, Fig. 4.
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constitute an information gateway that builds data blocks and assigns
addresses to data blocks, as claimed.
Google’s argument that DMM 113 and NMM 115 function as an
information gateway also conflicts with Google’s assertion that NMM 115 is
a transmission gateway because NMM 115 receives addressed blocks from
DMM 113 and selects a communication network for transmission of the
message. Pet. 21. Google does not explain how this functionality results in
NMM 115 being “configured to prepare the addressed data blocks for
transmission to receivers communicatively coupled to the remote computing
devices and initiate transmission of the addressed data blocks,” as recited in
claims 1 and 35. This contention also conflicts with Google’s assertions that
NMM 115 functions as an information gateway by selecting a network for
transmission of a message and DMM 113 builds data blocks by inserting a
device ID (address) into the messages. See Pet. 20; Ex. 1002 ¶ 93. Claims 1
and 35 recite “an information gateway” and “a transmission gateway” as
separate elements in which the transmission gateway is “communicatively
coupled to one or both of the central broadcast server and the information
gateway.”
Google does assert that:
[O]nce a network or networks is chosen, the addressed blocks
must be prepared for transmission. For example, “wireless
transceiver 201 utilizes digital data to modulate a carrier signal
to transmit the desired data.” ([Ex. 1038], 3:26–29, [Ex. 1002]
¶ 99.) Further, device 122 may communicate with server 100
via private or public networks employing an appropriate
protocol suitable for data packet communication. ([Ex. 1038],
2:55–62.) Thus, NMM 115 constitutes a transmission gateway
to prepare the addressed data blocks for transmission to
multiple receivers as properly construed.
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Id. at 22. These contentions do not explain sufficiently how NMM 115
prepares data blocks for transmission to receivers or initiates transmission of
the addressed data blocks. Oberlander discloses that wireless transceiver
201 is common to server 110 and remote devices 120–124. Ex. 1038, 3:26–
27, Figs, 1, 2. Google does not identify any disclosure in Oberlander
relating wireless transceiver 201 to NMM 115, such that any functions of
transceiver 201 are attributable to NMM 115. Google thus does not explain
sufficiently how NMM 115 prepares data blocks for transmission and
initiates transmission of addressed data blocks. See 37 C.F.R. § 42.104.
Finally, Google contends that “if SimpleAir argues the claimed
transmission gateway requires more than NMM 115 provides, ‘CM 111 is a
software program (i.e., process) that controls all communication resources
allocated to server 110’ and . . . ‘all messages entering and exiting server
110 must necessarily pass through CM 111.’” Pet. 22. However, Google
does not explain sufficiently how CM 111 prepares the addressed data
blocks for transmission or initiates transmission of addressed data blocks, as
claimed, either by itself or in conjunction with NMM 115. See id.
Google has not persuaded us that Oberlander discloses an information
gateway and a transmission gateway. Thus, Google has not demonstrated a
reasonable likelihood of prevailing with respect to claims 1 and 35 or their
dependent claims 2–4, 8, 24, 27, 29, 37, 38, 42, and 63.
2. Dependent Claims 6, 7, 9–11, 13–21, 28,
30–34, 43, 47–49, 54, 55, and 62
a. Analysis
Google asserts the unpatentability of dependent claims 6, 7, 9–11, 13–
21, 28, 30–34, 43, 47–49, 54, 55, and 62 under 35 U.S.C. § 103(a) based on
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Oberlander and Throckmorton in combination with other references, which
Google relies on to disclose features of those dependent claims. Pet. 14–15,
32–50. Google does not rely on Reilly, Simon, Olazabal, Lynch-Freshner,
or Yan as disclosing features of claims 1 and 35. Thus, for the same reasons
as stated above, Google has not demonstrated a reasonable likelihood of
prevailing with respect to its challenges of claims 6, 7, 9–11, 13–21, 28, 30–
34, 43, 47–49, 54, 55, and 62.
III. CONCLUSION
For the above reasons, Google has not demonstrated a reasonable
likelihood that it would prevail in showing the unpatentability of at least one
of the challenged claims of the ’279 patent.
IV. ORDER
Accordingly, it is
ORDERED that the Petition is denied and no trial is instituted.

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PETITIONER:

Michael V. Messinger
Joseph E. Mutschelknaus
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
mikem-PTAB@skgf.com
jmutsche-PTAB@skgf.com

PATENT OWNER:

Charles F. Wieland III
Robert G. Mukai
BUCHANAN INGERSOLL & ROONEY PC
Charles.Wieland@bipc.com
robert.mukai@bipc.com