IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Civil Action No. 2:14-cv-00011-JRG
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`Jury Demanded
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`Civil Action No. 2:13-cv-00937-JRG
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`Jury Demanded
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`SimpleAir, Inc.,
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` Plaintiff,
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`vs.
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`Google Inc., et al.,
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` Defendants.
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`SimpleAir, Inc.,
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` Plaintiff,
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`vs.
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`Google Inc.,
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` Defendant.
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`SimpleAir’s Objections and Supplemental Responses to Defendants’ Common
`Interrogatories 1-9
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`references and combinations.
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`Defendants’ Common Interrogatory No. 6
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`State whether Plaintiff contends there are secondary considerations that should be considered
`by the Court in connection with its determination pursuant to 35 U.S.C. § 103 of the validity of any
`of the claims of the Patents-in-Suit, and if the answer is anything other than an unqualified negative,
`identify each such secondary consideration and describe in detail Plaintiff’s contentions with respect
`to each such secondary consideration.
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`Response
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`SimpleAir objects to this interrogatory for the reasons set forth above in the Objections to
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`Definitions and Instructions. SimpleAir objects to this interrogatory to the extent that it seeks
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`information that is subject to the attorney-client communication privilege and/or work product
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`doctrine. SimpleAir objects to this interrogatory to the extent that it seeks the premature
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`disclosure of expert opinions.
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`[This response is designated confidential]
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`Except as objected to, SimpleAir responds as follows:
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`Discovery in this matter is ongoing, the Court has not yet construed the asserted claims of
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`the patents-in-suit, and the parties are not required at this stage to provide expert analysis or
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`opinions regarding issues of validity. SimpleAir reserves its right to supplement, amend, or
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`revise its response to this interrogatory at any subsequent stage in the litigation in accordance
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`with Rule 26(e) and the Court’s rulings and deadlines. Each of the asserted claims of the
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`patents-in-suit is non-obvious and each claim’s non- obviousness is demonstrated by objective
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`indicia of non-obviousness including:
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`(a) commercial success
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`The AirMedia Live! Internet Broadcast service, to the extent the service practices one or
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`more of the asserted claims of the patents-in-suit under the Court’s claim construction, met with
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`commercial success in the form of praise, popularity, and demand for the service by consumers
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`and technology reviewers upon the service’s introduction. See, e.g., S12960-67, S18259-60. In
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`addition, the commercial success of the AirMedia Live! service is demonstrated by the interest
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`and enthusiasm in working with AirMedia expressed by PageNet, the OEMs who manufactured
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`the AirMedia Live! receivers for sale nationally under their brands (including Global Village
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`Communications, Inc., Hewlett Packard, Inc., Compaq, Inc., NEC, Inc., and Phillips, Inc.), and
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`the more than 60 content providers who provided information feeds to the service and the
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`agreements entered between the foregoing parties and AirMedia.
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`In addition, the Defendants’ Accused Instrumentalities, as well as those of former
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`Defendants Apple and Microsoft, which practice the asserted claims of the patents, have met
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`with substantial commercial success in the form of consumer and industry praise, popularity,
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`demand, and sales revenues.
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`(b) long-felt but unmet need
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`From the first introduction of private online communities (such as CompuServe) and later
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`the World Wide Web, a need existed for a product or service that would notify users that
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`information of interest to them was available online without requiring them to either search for
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`the information or to be accessing the online source of the information at the time the
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`information was generated or became available (or the notification was provided). This need was
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`particularly significant during a time when dial-up technology was still predominant and ISPs
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`charged on relatively expensive, time-based rates. This need was ultimately addressed
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`successfully by the inventions claimed by the SimpleAir patents, which allow, among other
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`benefits and implementations, users to receive notifications concerning information available
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`from various online services or content providers without having to search for such information
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`online or be online to such services at the time the information is generated or becomes
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`available.
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`(c) skepticism
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`The non-obviousness of the claimed inventions is further demonstrated by the initial
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`skepticism expressed by AirMedia’s OEMs that the AirMedia Live! service would be successful.
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`For example, OEM Global Village expressed skepticism that AirMedia Live! would be
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`commercially feasible without AirMedia having contracted with a critical mass (potentially
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`dozens or more) of content providers to provide information feeds to the service. Global Village
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`further expressed doubt that the service would be sufficiently attractive to content providers to
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`enable AirMedia to contract with a sufficient number of content providers. AirMedia was,
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`however, successful in attracting the interest of numerous content providers and securing
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`contracts with them for their provision of data to the service. In addition, many industry
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`participants expressed skepticism that the AirMedia implementation would be able to achieve the
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`desired service delivery given the narrow bandwidth nature of wireless networks at that time and
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`the lack of devices that would sufficiently complete the set of components necessary to achieve
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`the deliverable, a gap AirMedia resolved by building its own reference design hardware and
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`software for its particular implementation.
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`(d) licenses showing industry respect
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`The non-obviousness of the claimed inventions is further demonstrated by the numerous
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`parties that have agreed to license the patents, Microsoft, Apple, RIM, Facebook,
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`Disney/ESPN/ABC, AccuWeather, Amazon.com, eBay, m-Qube, VeriSign, Yahoo!, AWS
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`Convergence, and The Weather Channel.
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`(e) industry praise and recognition
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`The non-obviousness of the claimed inventions is further demonstrated by the extensive
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`praise and acclaim that the AirMedia Live! service received upon its introduction. See, e.g.,
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`S12960-67; S018259-60. In addition, Defendants’ Accused Instrumentalities have received
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`widespread recognition and praise from industry experts and consumers.
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`(f) unexpected benefits
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`The non-obviousness of the claimed invention is further demonstrated by the unexpected
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`benefits of the invention. In particular, Defendants’ use of the claimed inventions to deliver
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`notification messages with their Accused Instrumentalities increases the battery life of devices
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`that receive the messages.
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`(g) copying or imitation
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`SimpleAir is currently investigating the extent to which Defendants, or others with
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`similar products or services, have directly copied or imitated the AirMedia Live! service or the
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`SimpleAir patents. Additional secondary considerations are described in Dr. Knox’s Expert
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`Report regarding validity, served on November 1, 2013 in SimpleAir v. Microsoft, Case No.
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`2:11-cv-416.
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`Supplemental Response
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`SimpleAir objects to this interrogatory for the reasons set forth above in the Objections to
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`Definitions and Instructions. SimpleAir objects to this interrogatory to the extent that it seeks
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`information that is subject to the attorney-client communication privilege and/or work product
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`doctrine. SimpleAir objects to this interrogatory to the extent that it seeks the premature
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`disclosure of expert opinions.
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`Except as objected to, SimpleAir further responds as follows:
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`SimpleAir identifies John Payne, Tim von Kaenel, and Dr. James Knox as witnesses with
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`knowledge relevant to this interrogatory.
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`Additional contentions regarding the non-obviousness of the patented inventions are set
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`forth in Dr. Knox’s expert report regarding the validity of the ‘914 patent, served on November
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`1, 2013 in the Google I case. SimpleAir incorporates this section of Dr. Knox’s report into its
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`response. In addition, SimpleAir expects to serve an invalidity report in this case and
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`incorporates the relevant section of that report into its response.
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`SimpleAir further identifies the following additional documents (which demonstrate
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`commercial success and industry praise and recognition as well as industry licenses showing
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`industry respect):
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`Document Description
`Press Releases from Air Media Live! Partners
`Press Releases and Technology Reviews about Air Media Live!
`from Demo 96 Conference
`License Agreement with AccuWeather, Inc.
`License Agreement with Amazon.com, Inc.
`License Agreement with The Weather Channel Interactive, Inc.
`License Agreement with AWS Convergence Technologies, Inc.
`License Agreement with CBS Broadcasting, Inc.
`License Agreement with eBay, Inc.
`License Agreement with Yahoo! Inc.
`License Agreement with m-Qube, Inc. and VeriSign, Inc.
`License Agreement with MySpace Inc.
`License Agreement with clearTXT, Inc.
`License Agreement with Facebook, Inc.
`License Agreement with Handmark, Inc.
`License Agreement with Disney Online, American Broadcasting
`Companies, Inc., ESPN Enterprises, Inc., and ABC News
`License Agreement with Research in Motion Limited
`License Agreement with Apple, Inc.
`License Agreement with Microsoft Corporation
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`Defendants’ Common Interrogatory No. 7
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`Bates No.
`S011292-301
`S011312-331
`S013223-236
`S013262-268
`S018422-431
`S023218-228
`S023229-231
`S023232-240
`S023241-256
`S023293-306
`S023307-321
`S023322-334
`SA1669-80
`SA1681-87
`SA1688-703
`SA1705-22
`SA1723-38
`SA2509-26
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`For each element of each Asserted Claim of the Patents-in-Suit, identify, in claim chart form,
`the portions of the specification you contend provide written description support, an enabling
`disclosure, and a disclosure of the best mode contemplated by the inventor.
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`Response
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`SimpleAir objects to this interrogatory for the reasons set forth above in the Objections to
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`Definitions and Instructions. SimpleAir objects to this interrogatory to the extent that it seeks
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`information that is subject to the attorney-client communication privilege and/or work product
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`reasonably calculated to lead to the discovery of admissible evidence.
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`Except as objected to, SimpleAir further responds as follows:
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`SimpleAir identifies John Payne, Tim von Kaenel, and Steven Sereboff as witnesses with
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`knowledge relevant to this interrogatory.
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` The following patents in the same family as the Asserted Patents are owned by
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`SimpleAir: U.S. Patent No. 6,021,433; U.S. Patent No. 7,035,914; U.S. Patent No. 8,090,803 B2;
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`U.S. Patent No. 8,489,707 B2; U.S. Patent No. 8,572,279; U.S. Patent No. 8,601,154; U.S.
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`Patent No. 8,639,838; U.S. Patent No. 8,656,048; U.S. Patent No. 6,167,426; U.S. Patent No.
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`6,735,614.
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`In addition, the following patent applications in the same family as the asserted patents
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`are pending: U.S. Patent Application No. 14/174,666; U.S. Patent Application No. 14/339,305.
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`Date: March 20, 2015
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`Respectfully submitted,
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`By: /s/ Simon Franzini
`Simon Franzini
`CA State Bar no. 287631
`(admitted to practice before the U.S. District
`Court for the Eastern District of Texas)
`Email: simon@dovellaw.com
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`DOVEL & LUNER, LLP
`201 Santa Monica Blvd., Suite 600
`Santa Monica, CA 90401
`Telephone: 310-656-7066
`Facsimile: 310-657-7069
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`ATTORNEYS FOR PLAINTIFF
`SIMPLEAIR, INC.
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`I certify that this document is being served on counsel of record by email on the date
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`listed above.
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`/s/ Simon Franzini
`Simon Franzini
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