Google Inc.v.SimpleAir, Inc.

Patent Trial and Appeal Board

May 19, 2015

13018421 (P.T.A.B. May. 19, 2015)

Trials@uspto.gov Paper 11
571-272-7822 Entered: May 19, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GOOGLE INC.,
Petitioner,

v.

SIMPLEAIR, INC.,
Patent Owner.
____________

Case CBM2015-00020
Patent 8,601,154 B2

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

ARBES, Administrative Patent Judge.

DECISION
Denying Institution of Covered Business Method Patent Review
37 C.F.R. § 42.208
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Patent 8,601,154 B2

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Petitioner Google Inc. filed a Petition (Paper 1, “Pet.”) requesting
covered business method patent review of claims 1–4, 6–11, 13–17, 19–21,
24, 27, and 29–34 of U.S. Patent No. 8,601,154 B2 (Ex. 1001, “the ’154
patent”) pursuant to 35 U.S.C. §§ 321–29. Patent Owner SimpleAir, Inc.
filed a Preliminary Response (Paper 9, “Prelim. Resp.”). With its
Preliminary Response, Patent Owner provided evidence that it filed with the
Office a statutory disclaimer of claims 19, 24, 27, 33, and 34 of the ’154
patent pursuant to 37 C.F.R. § 1.321(a). See Prelim. Resp. 26–27; Ex. 2005.
Accordingly, no covered business method patent review will be instituted for
claims 19, 24, 27, 33, and 34. See 37 C.F.R. § 42.207(e).
For the remaining claims 1–4, 6–11, 13–17, 20, 21, and 29–32, we
determine whether to institute a covered business method patent review
under 35 U.S.C. § 324.1 Pursuant to 35 U.S.C. § 324(a), the Director may
not authorize a covered business method patent review unless the
information in the petition, if unrebutted, “would demonstrate that it is more
likely than not that at least 1 of the claims challenged in the petition is
unpatentable.” For the reasons that follow, we have decided not to institute
a covered business method patent review.

1 See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,764–65
(Aug. 14, 2012) (“[A] patent owner may file a statutory disclaimer of one or
more challenged claims to streamline the proceedings. Where no challenged
claims remain, the Board would terminate the proceeding. Where one or
more challenged claims remain, the Board’s decision on institution would be
based solely on the remaining claims.”).
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I. BACKGROUND
A. The ’154 Patent2
The ’154 patent describes a “system and method for data
communication connecting on-line networks with on-line and off-line
computers.” Ex. 1001, col. 2, ll. 55–58. 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 col. 5,
ll. 40–43, Fig. 1. Data parsed from a plurality of incoming data feeds 16 of
information sources 12 are transmitted wirelessly from central broadcast
server 34 to commercial wireless carrier 36 to wireless receivers 32 that are
connected to personal computers 14. Id. at col. 5, l. 60–col. 6, l. 1, col. 6,
ll. 46–52. When data packets are processed and formed into a complete
message, communications server 38 notifies user interface alert panel 50,
which presents an icon that, when clicked, notifies viewers 20, which
display particular data on computers 14. Id. at col. 6, ll. 46–60. Thus,
remote computer 14 can receive information even while it is off-line
(i.e., not connected to the Internet or on-line service). Id. at col. 7, ll. 10–13.
Uniform Resource Locators (URLs) embedded in the data packets provide
an automated wired or wireless connection or link 22 to information source
12 for obtaining detailed data. Id. at col. 6, ll. 62–66.

2 The ’154 patent also is the subject of Case IPR2015-00180, in which an
inter partes review of certain claims was instituted on May 5, 2015.
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Figure 1 of the ’154 patent is reproduced below.

As shown in Figure 1 above, real time data feeds from information
sources 12 on the Internet are provided to server network 33 in central
broadcast server 34, such as FTP server 102 and SMTP server 104. Id. at
col. 8, ll. 9–15, Fig. 2. Data, “which can include but [are] not limited to
stock quotes, weather, lotto, E-mail, etc.,” are “parsed by parsers, such as the
stock quote parser 106, weather parser 108, lotto parser 110 and mail parser
112, and then transmitted to the content manager 114 located in the central
broadcast server 34.” Id. at col. 8, ll. 15–21, 41–45. Content manager 114
communicates with information gateway 134, which builds data blocks and
determines all applicable real and virtual addresses based on the type of
information in the data block and user subscription data from subscriber
database 130. Id. at col. 8, l. 62–col. 9, l. 17, col. 22, ll. 7–12. Wireless
gateway 136 packetizes, compresses, and encrypts data blocks for
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transmission over the wireless broadcast network to receivers. Id. at col. 9,
ll. 18–24, col. 11, ll. 31–42, Fig. 4.

B. Illustrative Claim
Claim 1 of the ’154 patent recites:
1. A method to transmit data from an information source
via a central broadcast server to remote computing devices, the
method comprising:
(a) generating data at the information source, wherein the
information source is associated with an online service relating
to the generated data;
(b) identifying one or more users that have subscribed to
receive a notification relating to the generated data;
(c) transmitting the generated data to a central broadcast
server configured to process the generated data using at least
one parser and transmit the processed data to receivers
communicatively coupled with remote computing devices
associated with subscribed users, wherein the central broadcast
server:
(i) comprises one or more servers associated with a
parser to parse the generated data received from the
information source;
(ii) is communicatively coupled to at least one
information gateway, the information gateway
configured to build data blocks from the parsed data and
assign addresses to the data blocks; and
(iii) is communicatively coupled to at least one
transmission gateway, the transmission gateway
configured to prepare the addressed data blocks for
transmission to the receivers and configured to cause the
addressed data blocks to be transmitted to the receivers,
and wherein the transmission is made whether the remote
computing devices are online or offline from a data
channel associated with the remote computing devices.
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C. The Prior Art
Petitioner relies on the following prior art:
U.S. Patent No. 4,899,136, issued Feb. 6, 1990
(Ex. 1004, “Beard”);
U.S. Patent No. 5,339,392, issued Aug. 16, 1994
(Ex. 1031, “Risberg”);
U.S. Patent No. 5,414,773, issued May 9, 1995
(Ex. 1022, “Handelman”);
International Patent Application Publication No.
WO 94/08419, published Apr. 14, 1994 (Ex. 1009, “Kane”);
International Patent Application Publication No.
WO 95/17062, published June 22, 1995 (Ex. 1021, “Pettus”);
David K. Gifford et al., The Application of Digital
Broadcast Communication to Large Scale Information Systems,
SAC-3 IEEE J. ON SELECTED AREAS COMM. 457–67 (May
1985) (Ex. 1007, “Gifford”);
Sara Parker, Windows cc:Mail Shines at Multiple
Document Handling, PC MAGAZINE, July 1991, at 49
(Ex. 1016, “Parker”);
Angela Gunn, Wireless Communications: Connecting
Over the Airwaves, PC MAGAZINE, Aug. 1993, at 359–84
(Ex. 1017, “Gunn”);
George H. Forman & John Zahorjan, The Challenges of
Mobile Computing, 1994 COMPUTER 38–47 (Ex. 1034,
“Forman”);
Douglas Comer & Vincent Russo, Using ATM for a
Campus-Scale Wireless Internet, 1995 WORKSHOP ON MOBILE
COMPUTING SYSTEMS AND APPLICATIONS 75–79 (Ex. 1051,
“Comer”);
David Maltz & Kate Ehrlich, Pointing The Way: Active
Collaborative Filtering, 1995 CHI ’95 MOSAIC OF CREATIVITY
202–209 (Ex. 1062, “Maltz”); and
Steve Harris, Internet: A Plague that Travels by Post;
Easy to Do and Often Tricky to Trace, Spamming is Sweeping
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the Net, THE GUARDIAN (LONDON), July 6, 1995, at 4 (Ex. 1005,
“Harris”).
Petitioner also relies on the following materials, which Petitioner
contends are evidence of a publicly disclosed prior art system referred to by
Petitioner as the “Dartmouth System”:
Stephen Campbell, Campus Email for Everyone: Making
It Work in Real Life, PROC. 1994 SANS III CONFERENCE: THE
THIRD ANNUAL SYSTEM ADMINISTRATION, NETWORKING, AND
SECURITY CONFERENCE 23–38 (Ex. 1011);
Declaration of James Matthews (Ex. 1010); and
Source code files (Exs. 1012–1015).

D. The Asserted Grounds
Petitioner challenges claims 1–4, 6–11, 13–17, 19–21, 24, 27, and
29–34 of the ’154 patent on the following grounds:3
Reference(s) Basis Claim(s) Challenged
N/A 35 U.S.C. § 101 1–4, 6–11, 13–17, 19–21,
24, 27, and 29–34
Dartmouth System 35 U.S.C. § 102(a) 1, 2, 6–11, 13, 14, 16, 20,
24, and 29
Dartmouth System 35 U.S.C. § 103(a) 1, 2, 6–11, 13, 14, 16, 20,
24, and 29
Dartmouth System
and Gunn
35 U.S.C. § 103(a) 3, 4, 30, 31, and 33
Dartmouth System
and Beard
35 U.S.C. § 103(a) 15

3 As explained above, we do not consider any grounds challenging claims
19, 24, 27, 33, and 34, which Patent Owner statutorily disclaimed. See
37 C.F.R. § 42.207(e).
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Reference(s) Basis Claim(s) Challenged
Dartmouth System,
Beard, and Risberg
35 U.S.C. § 103(a) 17
Dartmouth System,
Beard, and Harris
35 U.S.C. § 103(a) 19
Dartmouth System
and Comer
35 U.S.C. § 103(a) 21
Dartmouth System
and Harris
35 U.S.C. § 103(a) 27
Dartmouth System,
Gunn, and Beard
35 U.S.C. § 103(a) 32
Dartmouth System,
Gunn, and Harris
35 U.S.C. § 103(a) 34
Kane, Gifford, and
Maltz
35 U.S.C. § 103(a) 1–4, 8, 20, 24, and 29
Kane, Gifford,
Maltz, and Pettus
35 U.S.C. § 103(a) 6 and 7
Kane, Gifford,
Maltz, and Beard
35 U.S.C. § 103(a) 9, 10, 14–16, and 30–33
Kane, Gifford,
Maltz, and Parker
35 U.S.C. § 103(a) 11 and 13
Kane, Gifford,
Maltz, Beard, and
Risberg
35 U.S.C. § 103(a) 17
Kane, Gifford,
Maltz, Beard, and
Handelman
35 U.S.C. § 103(a) 19
Kane, Gifford,
Maltz, Beard, and
Forman
35 U.S.C. § 103(a) 21
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Reference(s) Basis Claim(s) Challenged
Kane, Gifford,
Maltz, and
Handelman
35 U.S.C. § 103(a) 27
Kane, Gifford,
Maltz, Beard, and
Handelman
35 U.S.C. § 103(a) 34

II. DISCUSSION
Section 18 of the Leahy-Smith America Invents Act, Pub. L. No.
112-29, 125 Stat. 284 (2011) (“AIA”), provides for the creation of a
transitional program for reviewing covered business method patents, and
limits reviews to persons or their privies that have been sued or charged with
infringement of a “covered business method patent,” which does not include
patents for “technological inventions.” AIA §§ 18(a)(1)(B), 18(d)(1); see
37 C.F.R. § 42.302. Petitioner bears the burden of demonstrating that the
’154 patent is a covered business method patent. See 37 C.F.R. § 42.304(a).
For the reasons explained below, Petitioner has not demonstrated that the
’154 patent is a covered business method patent.
A “covered business method patent” is “a patent that claims a method
or corresponding apparatus for performing data processing or other
operations used in the practice, administration, or management of a financial
product or service, except that the term does not include patents for
technological inventions.” AIA § 18(d)(1) (emphasis added); see 37 C.F.R.
§ 42.301(a). In promulgating rules for covered business method patent
reviews, the Office considered the legislative intent and history behind the
AIA’s definition of “covered business method patent.” See Transitional
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Program for Covered Business Method Patents—Definitions of Covered
Business Method Patent and Technological Invention; Final Rule, 77 Fed.
Reg. 48,734, 48,735–36 (Aug. 14, 2012). The “legislative history explains
that the definition of covered business method patent was drafted to
encompass patents ‘claiming activities that are financial in nature, incidental
to a financial activity or complementary to a financial activity.’” Id. at
48,735 (emphasis added) (citing 157 Cong. Rec. S5432 (daily ed. Sept. 8,
2011) (statement of Sen. Schumer)). When determining whether a patent is
eligible for covered business method patent review, the focus is on “what the
patent claims.” Id. at 48,736. A patent need have only one claim directed to
a covered business method to be eligible for review. Id.
Petitioner cites two claims of the ’154 patent in support of its
argument that the ’154 patent is a covered business method patent: claims 1
and 24. Pet. 5–7.

Claim 1
With respect to claim 1, Petitioner contends that the claim
“‘encompasses a method used in the management of a financial product or
service—that is, the disclosure of stock quotes and lotto results,’” citing a
prior decision in Case CBM2014-00054 holding that U.S. Patent No.
7,035,914 B1 (“the ’914 patent”), a parent of the ’154 patent, was a covered
business method patent. Pet. 6–7 (citing Google Inc. v. SimpleAir, Inc.,
CBM2014-00054, slip op. at 5–6 (PTAB May 13, 2014) (Paper 19)).
According to Petitioner, the claims of the ’154 patent “overlap significantly”
with the claims of the ’914 patent, and are “used in financial services.” Id.
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Petitioner, however, provides no analysis of the language of claim 1
or explanation as to why the particular language of claim 1 recites a method
for performing data processing or other operations used in the practice,
administration, or management of a financial product or service, as required
by § 18(d)(1) of the AIA. As explained above, the focus of the “covered
business method patent” inquiry is on the claims. Although claim 1 of the
’154 patent has some terms in common with various claims of the ’914
patent, it is not identical to any claim of the ’914 patent. They are different
patents with different claims. Merely stating that claim 1 overlaps with
claims of the ’914 patent, particularly without explaining how the claims
overlap or even specifying what claims of the ’914 patent overlap, is
insufficient for Petitioner to meet its burden. Further, to the extent Petitioner
is attempting to rely on arguments it made for eligibility of the ’914 patent in
the prior proceeding, such arguments cannot be incorporated by reference in
its Petition in this proceeding. See 37 C.F.R. § 42.6(a)(3) (“Arguments must
not be incorporated by reference from one document into another
document.”).
Petitioner also argues that the Specification of the ’154 patent
discloses data feeds that may include “stock quotes” or “lotto,” parsed by
a “stock quote parser” or “lotto parser,” and that the ’154 patent
“contemplates notification of financial news stories and pay-per-view
events.” Pet. 6–7 (citing Ex. 1001, col. 8, ll. 11–13, 15–24, col. 20,
ll. 35–50, col. 28, l. 40, Fig. 2) (emphasis omitted). Petitioner, however,
does not explain any relationship between the cited portions of the
Specification and the specific language of claim 1, which is the focus of our
inquiry. Again, Petitioner fails to show how the ’154 patent claims a method
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for performing data processing or other operations used in the practice,
administration, or management of a financial product or service.
Further, we find persuasive Patent Owner’s argument that claim 1
recites only generic, context-neutral “data,” without any language relating to
a financial product or service. See Prelim. Resp. 16–35 (citing a statement
in the legislative history of the AIA that § 18(d)(1) is not intended to cover
“technologies common in business environments across sectors and that
have no particular relation to the financial services sector, such as
computers, communications networks, and business software,” 157 Cong.
Rec. S5441 (daily ed. Sept. 8, 2011) (statement of Sen. Leahy)). Claim 1
recites generating “data” at an information source and transmitting the
generated data to a central broadcast server configured to process the data
using “at least one parser,” where an information gateway builds “data
blocks” from the parsed data and assigns addresses to the data blocks and a
transmission gateway causes the addressed data blocks to be transmitted to
receivers. Claim 1, though, never specifies the type or nature of the “data.”
This broad scope is reflected in the Specification, which describes numerous
examples of data feeds and contemplates the use of any type of data and
parser:
[I]nformation sources 12 provide data feeds to the central
broadcast server 34 which performs selection, scheduling and
addressing 28. In particular, real time data feeds from the
Internet 13 in the information source 12 are provided to a
network of servers 33 in the central broadcast server 34, such as
the FTP server 102 and the SMTP server 104 illustrated in FIG.
2. The data, which can include but is not limited to stock
quotes, weather, lotto, E-mail, etc. is then respectively parsed
by parsers, such as the stock quote parser 106, weather parser
108, lotto parser 110 and mail parser 112, and then transmitted
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to the content manager 114 located in the central broadcast
server 34. . . . The present invention is not limited to the
information sources or parsers described herein. Rather, any
type of information source and corresponding parser may be
used.
Ex. 1001, col. 8, ll. 9–28 (emphasis added); see also id. at col. 7, l. 66–col. 8,
l. 3, col. 12, ll. 10–14 (describing the use of any type of data).
Other panels of the Board have found patents not to meet the
definition of “covered business method patent” in similar circumstances.
See, e.g., Sega of Am., Inc. v. Uniloc USA, Inc., CBM2014-00183, slip op.
at 11–13 (PTAB Mar. 10, 2015) (Paper 11) (claims were “directed to
technology that restricts the use of software” where the software had “no
particular relationship to a financial product or service”); Salesforce.com,
Inc. v. Applications in Internet Time LLC, CBM2014-00162, slip op. at 9–10
(PTAB Feb. 2, 2015) (Paper 11) (patent specification referred to “banking,
financial and securities activities” as “part of a long list of regulated
industries . . . that use business software and could benefit from the
invention”); J.P. Morgan Chase & Co. v. Intellectual Ventures II LLC,
CBM2014-00160, slip op. at 6–12 (PTAB Jan. 29, 2015) (Paper 11) (claims
pertaining to secure electronic communications had “general utility not
limited or specific to any application”); PNC Fin. Servs. Group, Inc. v.
Intellectual Ventures I LLC, CBM2014-00032, slip op. at 6–15 (PTAB May
22, 2014) (Paper 13) (claims described “software systems that have general
utility not specific to any application”). We likewise conclude that
Petitioner’s arguments regarding claim 1 and the Specification do not
establish that the ’154 patent claims a method for performing data
processing or other operations used in the practice, administration, or
management of a financial product or service.
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Claim 24
With respect to claim 24, Petitioner points to the claim’s recitation
that “the transmitted data blocks comprise information relating to news,
sports, financial markets, weather, an online chat, or an online forum.” See
Pet. 7. Patent Owner, however, statutorily disclaimed claim 24, along with
other dependent claims reciting the same limitation, pursuant to 35 U.S.C.
§ 253(a) and 37 C.F.R. § 1.321(a). See Prelim. Resp. 26–27; Ex. 2005.
Accordingly, we treat the ’154 patent as though claim 24 never existed. See
Vectra Fitness, Inc. v. TWNK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998)
(“This court has interpreted the term ‘considered as part of the original
patent’ in section 253 to mean that the patent is treated as though the
disclaimed claims never existed.”); Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed.
Cir. 1996) (“A statutory disclaimer under 35 U.S.C. § 253 has the effect of
canceling the claims from the patent and the patent is viewed as though the
disclaimed claims had never existed in the patent.”); see also Genetics Inst.,
LLC v. Novartis Vaccines & Diagnostics, Inc., 655 F.3d 1291, 1299 (Fed.
Cir. 2011) (holding that the Board’s interference jurisdiction under
35 U.S.C. § 291 required “the existence of an interference, and a claim that
‘never existed’ [due to a statutory disclaimer] cannot form the basis for an
interference”). Petitioner’s argument regarding claim 24, therefore, is not
persuasive.
For the foregoing reasons, based on the present record and particular
facts of this proceeding, we determine that the information presented in the
Petition does not establish that the ’154 patent qualifies as a “covered
business method patent” under § 18(d)(1) of the AIA. Therefore, we
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do not institute a covered business method patent review on any of the
asserted grounds as to any of the challenged claims.

III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied as to all challenged claims of
the ’154 patent.
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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