Facebook, Inc.v.EveryMD LLC

Patent Trial and Appeal Board

May 12, 2015

12621407 (P.T.A.B. May. 12, 2015)

Trials@uspto.gov Paper 31
571-272-7822 Entered: May 12, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

FACEBOOK, INC.,
Petitioner,

v.

EVERYMD LLC,
Patent Owner.

Case IPR2014-00242
Patent 8,499,047 B2

Before KRISTEN L. DROESCH, MICHAEL R. ZECHER, and
PETER P. CHEN, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
Facebook, Inc. (“Petitioner”) filed a Corrected Petition requesting an
inter partes review of claims 1–3, 5, and 6 of U.S. Patent No. 8,499,047 B2
(Ex. 1001, “the ’047 patent”). Paper 6 (“Pet.”). EveryMD LLC (“Patent
Owner”) timely filed a Patent Owner Preliminary Response. Paper 14
(“Prelim. Resp.”). In a Decision to Institute (Paper 15, “Dec. to Inst.”)
issued May 21, 2014, we instituted an inter partes review of claims 1–3, 5,
and 6 of the ’047 patent.
Patent Owner did not file a Patent Owner Response, and instead filed
a Motion to Amend (Paper 21, “Mot.”). Petitioner filed an Opposition to the
Motion to Amend (Paper 22, “Opp.”), and Patent Owner filed a Reply
(Paper 24, “PO Reply”). We held an oral hearing on January 6, 2015, and a
transcript of the oral hearing (Paper 30, “Tr.”) is included in the record.
Both Petitioner and Patent Owner presented declaration testimony in
support of their respective positions. With its Petition, Petitioner provided a
declaration from Edward R. Tittel (Ex. 1002, “Tittel Decl.”). With its
Motion to Amend, Patent Owner provided a declaration from Frank Weyer,
one of the named inventors of the ’047 patent (Ex. 1019, “Weyer Decl.”).1
With its Opposition, Petitioner provided a second declaration from Mr. Tittel

1 Both parties have filed their exhibits under the 1000 number range.
Exhibits must be uniquely numbered sequentially in the appropriate range
(1001–1999 for Petitioner, and 2001–2999 for Patent Owner). 37 C.F.R.
§ 42.63 (c). In this case, however, Patent Owner filed its exhibits in the
range reserved for Petitioner. We exercise our discretion to waive this rule
because, based on the papers filed by each party, we are able to differentiate
the exhibits filed and relied upon by Petitioner from those filed and relied
upon by Patent Owner. See 37 C.F.R. § 42.5(b).
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(Ex. 1020), and with its Reply, Patent Owner provided a second declaration
from Mr. Weyer (Ex. 1025).
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73, and
addresses issues raised during trial.
In its Motion to Amend, Patent Owner requests cancellation of claims
1–3, 5, and 6, and substitution of those claims with proposed claims 7–11.
Mot. 1. Patent Owner’s request to cancel challenged claims 1–3, 5, and 6 is
granted and we need not address these claims further. Instead, we analyze
proposed substitute claims 7–11 set forth in the Motion to Amend. For the
reasons discussed below, we determine that Patent Owner has not met its
burden of proving by a preponderance of the evidence that the proposed
substitute claims are patentable. Accordingly, Patent Owner’s Motion to
Amend is granted with respect to the cancellation of claims 1–3, 5, and 6,
and denied with respect to the proposed substitution of claims 7–11.
A. Related Proceedings
Both Petitioner and Patent Owner state that the ’047 patent is involved
in two pending cases in the United States District Court for the Central
District of California: (1) EveryMD LLC v. Facebook, Inc. (13-cv-04202);
and (2) EveryMD LLC v. eBay Inc. (13-cv-08017-gw). Pet. 1; Paper 8, 2.
B. The ’047 Patent
The ’047 patent, titled “Method, Apparatus and Business System for
Online Communication with Online and Offline Recipients,” generally
relates to online communications over a network among members of a group
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of recipients. Ex. 1001, Abstract. The challenged claims of the ’047 patent
describe a method for facilitating e-mail communications between a sender
and recipient and, in particular, modifying e-mail return addresses to route
e-mails through an intermediate (“interface”) server. Id. at 3:35–4:22.
Figure 1 of the ’047 patent is reproduced below.

Figure 1 depicts user’s computer 100 that communicates via Internet
connection 105 with interface server 110 connected to contact database 115,
which contains contact information for one or more groups of recipients.
Ex. 1001, 3:35–39, 53–55. A recipient at computer 125 with an existing
online presence, i.e., an existing e-mail address or website known and
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accessible to interface server 110, may receive e-mail communications from
the sender. Id. at 4:3–18.
Figure 8A of the ’047 patent is reproduced below.

Figure 8A depicts the process of delivering e-mail messages from a
sender to a recipient with an existing e-mail address. The sender composes
an e-mail and selects a desired recipient. Ex. 1001, 6:67–7:2. At step 800,
an e-mail address using the naming convention of the interface server is
created for the sender. Id. at 7:8–12. At step 805, the newly created address
and the sender’s existing e-mail address are stored in a contact information
database. Id. at 7:22–30. At step 810, the sender’s created e-mail address is
added to the sender’s e-mail message as the “reply to” address, and replaces
any pre-existing “reply to” address. Id. at 7:30–35. At step 815, the e-mail
is sent to the recipient’s existing e-mail address. Id. at 7:51–54.
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Figure 8B of the ’047 patent is reproduced below.

Figure 8B depicts the corresponding process of delivering a reply
message from the original recipient to the original sender. At step 850, the
interface server receives a reply e-mail message addressed to the sender, at
an address created by the server for the original sender. Ex. 1001, 7:60–63.
At steps 855 and 860, the server identifies the source of the e-mail message
(the original recipient, who sent the reply) and determines whether the server
previously created an e-mail address for that person. Id. at 7:63–8:6. If so,
at step 865, the server modifies the reply message, replacing the existing
address for the original recipient with the address created by the server. Id.
at 8:7–11. At step 870, the server forwards the message to the sender at its
pre-existing address. Id. at 8:23–29.
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C. Illustrative Proposed Substitute Claim
In its Motion to Amend, Patent Owner proposes to add substitute
claims 7–11. Proposed substitute claim 7 is the only independent claim.
Proposed substitute claims 8–11 directly or indirectly depend from proposed
substitute claim 7. Proposed substitute claim 7 is illustrative of the proposed
substitute claims and is reproduced below, with bracketed subject matter
indicative of subject matter deleted from challenged claim 1 and underlined
subject matter indicative of subject matter added to challenged claim 1:
7. A method for providing e-mail communications
between a sender and a recipient member of a group comprising
a plurality of members and for providing information about said
members of said group by a first computer system comprising
the steps of:
said first computer system storing information about said
plurality of members in a database;
said first computer system creating a webpage for said
recipient member comprising information about said recipient
member from said database;
said first computer system creating a first created e-mail
address for [a] said recipient member;
said first computer system providing said webpage to a first
sender;
said first computer system receiving an incoming first e-
mail message from a sending entity other than said first
computer system comprising a first existing e-mail address of
[a] said first sender addressed to said first created e-mail
address of said recipient member;
said first computer system determining that said first sender is a
member of said group;
said first computer system creating a second created
e-mail address for said first sender different from said first
existing e-mail address and from said first created e-mail
address;

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said first computer system creating a first modified
e-mail message by replacing said first existing e-mail address in
said incoming first e-mail message with said second created e-
mail address;
said first computer system delivering said first modified
e-mail message to said recipient member;
wherein said step of said first computer system delivering
said first modified e-mail message to said recipient member
comprises said first computer system sending said first
modified e-mail message to a second existing e-mail address of
said recipient member different from said first created e-mail
address of said recipient member.

Mot. 1–3.
II. ANALYSIS
A. Claim Construction
In an inter partes review, we interpret claim terms in unexpired
patents according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
2012). There is a “heavy presumption” that a claim term carries its ordinary
and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
1359, 1366 (Fed. Cir. 2002). However, a “claim term will not receive its
ordinary meaning if the patentee acted as his own lexicographer and clearly
set forth a definition of the disputed claim term in either the specification or
prosecution history.” Id.
In the Decision to Institute, we determined that no explicit
construction was necessary for any of the claim terms beyond their ordinary
and customary meanings. Dec. to Inst. 8–9. Neither party has challenged
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that determination, and based on the record adduced during trial, we see no
reason to provide an express construction for any term.
For the proposed substitute claims, Patent Owner states that:
Like the terms in the original claims, all of [the newly added
claim terms in the proposed substitute claims] are simple [claim
terms] whose ordinary meaning applies and for which no
construction is required, with the possible exception of
“member” and “group.” As explained in the specification
(Ex. 1) at 3:2–4, “The present invention comprises a method . . .
for allowing on-line communications with members of a group
of recipients for whom the invention has been implemented.” In
the context of proposed independent claim [7], the claimed
invention requires that “said first computer system storing
information about said plurality of members in a database.”
Thus, in the context of the proposed amended claims[,] a
“group” is a group of a plurality of members for whom the first
computer system has stored information in a database.

Mot. 7. Petitioner does not propose alternative constructions for the claim
terms “member” or “group.” We cannot discern how the constructions
proffered by Patent Owner add any clarity to the terms “member” and
“group,” which are simple and commonly understood terms. We decline to
provide an express construction for either “member” or “group.”
B. Motion to Amend
As noted above, Patent Owner did not file a Patent Owner Response
to the Petition. In its Motion to Amend, Patent Owner requests that
challenged claims 1–3, 5, and 6 be canceled and replaced with proposed
substitute claims 7–11.” Mot. 1; see 35 U.S.C. § 316(d)(1); 37 C.F.R.
§ 42.121(a)(3) (“A motion to amend may cancel a challenged claim or
propose a reasonable number of substitute claims.”). Patent Owner’s request
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to cancel challenged claims 1–3, 5, and 6 is not contingent on the claims
being determined to be unpatentable. Patent Owner’s request to cancel
challenged claims 1–3, 5, and 6 is granted, and we need not address these
claims further. Instead, we analyze proposed substitute claims 7–11 set forth
in the Motion to Amend.
C. Level of Ordinary Skill in the Art
The parties agree that a person of ordinary skill in the art would have
the equivalent of either a Bachelor’s degree in information technology or
computer science, with two years of practical experience in computer
programming and network communications, or, in the absence of such a
Bachelor’s degree, four such years of experience. Ex. 1002 ¶ 14; Ex. 1019
¶ 20. We determine that the parties’ description of the level of ordinary skill
is acceptable.
D. Proposed Substitute Claims
An inter partes review is more adjudicatory than examinational.
Unlike examination, entry of the proposed substitute claims in an inter
partes review is not automatic. As the moving party, Patent Owner must
establish that it is entitled to the requested relief. See 37 C.F.R. § 42.20(c).
In its Motion to Amend, Patent Owner bears the burden to show, inter alia,
that a reasonable number of substitute claims is proposed, there is no
broadening of scope, the proposed claims are supported adequately by the
written description of the application as filed originally, and the proposed
claims are patentable over the prior art. See 37 C.F.R. § 42.121; Idle Free
Sys. Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 5–6 (PTAB
June 11, 2013) (Paper 26) (“Idle Free”). We address each of these
requirements in turn.
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1. Reasonable Number of Substitute Claims
A patent owner may propose a reasonable number of substitute claims
for each challenged claim. 35 U.S.C. § 316(d)(1)(B). Absent special
circumstances, it is presumed that only one substitute claim is needed to
replace each challenged claim. 37 C.F.R. § 42.121(a)(3). This presumption
may be rebutted by showing that the substitute claims are patentably distinct
from each other. Idle Free, Paper 26, 8–9. To the extent that no patentable
distinction is shown, we may deny entry of the excess claims, or group them
together for purposes of considering patentability over the prior art. See id.
In its Motion to Amend, Patent Owner proposes to add five claims 7–11 as
substitutes for the five challenged claims 1–3, 5, and6, respectively. Given
this one-to-one correspondence, we determine the number of proposed
substitute claims to be reasonable.
2. No Broadening of Scope
Proposed substitute claims in an inter partes review “may not enlarge
the scope of the claims of the patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R.
§ 42.121(a)(2)(ii). In its Motion to Amend, Patent Owner proposes claim 7
as a substitute for claim 1, claim 8 as a substitute for claim 2, claim 9 as a
substitute for claim 3, claim 10 as a substitute for claim 5, and claim 11 as a
substitute for claim 6. Mot. 1–5. Each claim includes all of the limitations
of the corresponding challenged claim for which it is a substitute, and adds
additional limitations. Id. No limitations from the challenged claims were
deleted in the proposed substitute claims. Patent Owner asserts that the
proposed substitute claims do not enlarge the scope of the claims of the ’047
patent. See Mot. 1. Petitioner does not dispute this assertion (“patent
owner’s proposed substitute claims . . . add ancillary features”). Opp. 1. We
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are persuaded that each of the proposed substitute claims does not enlarge
the scope of each of the challenged patent claims it intends to replace.
3. Written Description Support
Pursuant to 37 C.F.R. § 42.121(b), Patent Owner bears the burden in
its Motion to Amend to set forth “[t]he support in the original disclosure of
the patent for each claim that is added or amended,” and “[t]he support in an
earlier-filed disclosure for each claim for which benefit of the filing date of
the earlier filed disclosure is sought.” The test for written description
support is “whether the disclosure of the application relied upon reasonably
conveys to those skilled in the art that the inventor had possession of the
claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly
& Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). The purpose of the written
description requirement is to convey with reasonable clarity to those skilled
in the art that, as of the filing date sought, applicant was in possession of the
invention as now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563–64 (Fed. Cir. 1991).
Petitioner argues that only proposed substitute claim 10 lacks written
description support, particularly the limitation of “said first computer system
forwarding said third incoming e-mail message to said recipient member
without replacing said third existing e-mail address of said second sender.”
Opp. 12–13. Patent Owner’s Motion to Amend contains a table stating that
support for the entirety of proposed substitute claim 10 is found in the
following disclosure of the ’047 patent: “[i]f it is determined at step 860 that
the source of the reply message is not a member of the group, the message is
forwarded to the recipient at step 870 without any changes being made to the
‘from’ and ‘reply to’ e-mail addresses listed in the e-mail.” Mot. 6 (citing
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Ex. 1011, 17:9–12); see Ex. 1001, 8:25–29. Patent Owner makes no
additional arguments for written description support as to proposed
substitute claims 7–11 other than its table of citations. See Mot. 5–6.
Petitioner argues that the one sentence of the specification cited by
Patent Owner “relates to an advanced step (860) of processing a ‘reply’ to an
earlier message. . . . The newly recited ‘third incoming e-mail message’
however, has no connection to any other recited message and is not limited
to a reply message.” Opp. 12–13. We agree with Petitioner that the single
sentence cited by Patent Owner does not provide sufficient written
description support for proposed substitute claim 10’s limitation regarding
the forwarding of the third incoming e-mail message without replacing the
third address of the second sender.
In addition, in this case, the Patent Owner’s mere citation in a table to
various portions of the original disclosure, without any explanation why a
person of ordinary skill in the art would have recognized that the inventor
possessed the claimed subject matter as a whole, is inadequate to satisfy the
written description requirement, not only for proposed substitute claim 10,
but also for claims 7–9 and 11. See also Nichia Corp. v. Emcore Corp.,
Case IPR2012-00005, slip op. at 4 (PTAB June 3, 2013) (Paper 27)
(“However, [if] the claim language does not appear in ipsis verbis in the
original disclosure, a mere citation to the original disclosure without any
explanation as to why a person of ordinary skill in the art would have
recognized that the inventor possessed the claimed subject matter as a whole
may be similarly inadequate.”).
Petitioner, however, contends in its Opposition and at the oral hearing
that it viewed only proposed substitute claim 10 as lacking sufficient written
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description support. Opp. 12–13; Tr. 28:3–10. Accordingly, because Patent
Owner has failed to demonstrate sufficient written description support only
as to proposed substitute claim 10, we proceed to address the parties’
arguments on whether the proposed substitute claims are patentable over the
prior art.
4. Patentability Over the Prior Art
In a motion to amend, the patent owner bears the burden to
demonstrate patentability of its proposed substitute claims over the prior art,
and, thus, entitlement to the claims. Idle Free at 7. This does not mean that
the patent owner is assumed to be aware of every item of prior art known to
a person of ordinary skill in the art. The patent owner, however, should
explain in its motion why the proposed substitute claims are patentable over
the prior art of record, as well as prior art known to the patent owner:
A patent owner should identify specifically the feature or
features added to each substitute claim, as compared to the
challenged claim it replaces, and come forward with technical
facts and reasoning about those feature(s), including
construction of new claim terms, sufficient to persuade the
Board that the proposed substitute claim is patentable over the
prior art of record, and over prior art not of record but known to
the patent owner. The burden is not on the petitioner to show
unpatentability, but on the patent owner to show patentable
distinction over the prior art of record and also prior art known
to the patent owner. Some representation should be made
about the specific technical disclosure of the closest prior art
known to the patent owner, and not just a conclusory remark
that no prior art known to the patent owner renders obvious
the proposed substitute claims.
Id. This includes addressing the basic knowledge and skill set possessed by
a person of ordinary skill in the art even without reliance on any particular
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item of prior art. Id. at 7–8. The petitioner then has the opportunity, in its
opposition, to argue any deficiency in the patent owner’s motion and “come
forward with specific evidence and reasoning, including citation and
submission of any applicable prior art,” to rebut the patent owner’s position
on patentability. Id. at 8.
We instituted an inter partes review of claims 1–3, 5, and 6 of the
’047 patent because Petitioner had demonstrated a reasonable likelihood of
showing that these claims were rendered obvious by Bacard (Ex. 1003)2,
Gabber (Ex. 1004)3, and Wayner (Ex. 1009).4 Paper 15. Patent Owner did
not file a Patent Owner Response, and we accept Petitioner’s unrebutted
contention that the combination of Bacard, Gabber, and Wayner teaches or
suggests all of the limitations of challenged claims 1–3, 5, and 6. In its
Motion to Amend, Patent Owner states that in addition to these references,
the closest “prior art of which the [Patent Owner] is aware” are a user
manual for the 1990s webhosting service GeoCites, entitled, “Creating
GeoCities Websites,”5 and U.S. Patent No. 5,796,395 to deHond.6 Mot. 7–8.
Patent Owner provides explanations why Bacard, Gabber, Wayner,
GeoCities and deHond, either alone or in combination, do not disclose,

2 A. Bacard, The Computer Privacy Handbook (1995), ISBN #1-56609-171-
3, Ex. 1003 (“Bacard”).
3 U.S. Patent No. 6,591,291 B1, issued July 8, 2003, Ex. 1004 (“Gabber”).
4 P. Wayner, Disappearing Cryptography (1996), ISBN #0-12-738671-8,
Ex. 1009 (“Wayner”).
5 B. Sawyer and D. Greely, Creating GeoCities Websites (1999), Exs. 1013–
17 (“GeoCities”).
6 U.S. Patent No. 5,796,395, issued Aug. 18, 1998, Ex. 1018 (“deHond”).
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teach, or suggest the newly added limitations in proposed substitute claims
7–11. Mot. 10–15.
In its Opposition to the Motion to Amend, Petitioner first contends the
proposed substitute claims would be obvious over the combination of
Bacard, Gabber, Wayner, and GeoCities. See Opp. 2. Petitioner argues that
“GeoCities was cited in [an appeal of] a reexamination of a parent
[application] to the ’047 patent [Control No. 95/001,411] in which the Board
found all claims in that patent anticipated by or obvious over GeoCities.” Id.
at 2–3 (citing Ex. 1023, 70). Petitioner further states that, in appealing the
outcome of the reexamination proceeding, the Patent Owner did not
challenge “the Board’s finding that GeoCities renders obvious a member
webpage being created by a computer system, without assistance from the
member.” Id. at 3, fn.1. Patent Owner’s Reply, however, correctly states
that the reexamination proceeding cited by Petitioner involved the parent
application of the application for the ’047 patent, and consequently includes
“claims different from the proposed claims,” PO Reply 1, fn.1. See
Tr. 10:21–11:20. As a result, we are not persuaded by Petitioner’s argument
that the proposed substitute claims are unpatentable over Bacard, Gabber,
Wayner, and GeoCities simply by virtue of the outcome of the prior
reexamination appeal before the Board involving the parent application to
the ’047 patent.
Petitioner next contends that proposed claims 7–9 and 11 would be
obvious over Bacard, Gabber, and Wayner, in view of the additional
teachings of U.S. Patent No. 5,913,212 to Sutcliffe (Ex. 1021),7 a reference

7 U.S. Patent No. 5,913,212, issued June 5, 1999, Ex. 1021 (“Sutcliffe”).
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not cited by Patent Owner. Opp. 4–11; Ex. 1020 ¶¶ 5, 17–18. Therefore,
we consider whether Sutcliffe teaches or suggests the limitations added in
proposed substitute claims 7–9 and 11, and whether Petitioner has presented
an articulated reasoning supported by a rational underpinning for combining
the teachings of Sutcliffe with those of Bacard, Gabber, and Wayner.
Bacard (Exhibit 1003)
Bacard is titled, “The Computer Privacy Handbook.” Ex. 1003, Title.
Bacard discloses anonymous e-mail re-mailer systems and, in particular, the
anon.penet.fi re-mailer that was based in Finland and operated by Johan
Helsingius. Id. at 66. Bacard describes a “way to privatize your e-mail is to
use an anonymous re-mailer.” Id. at 65.8 Bacard further describes the
anon.penet.fi re-mailer and its Penet server, and discloses an example of
responding to an e-mail from a victim of domestic abuse who wishes to
remain anonymous.
Suppose you want to respond to the (fictitious) battered woman
calling out for help. You can write her a message and e-mail it to
. Helsingius’ computer will strip away your
real return address (the header at the top of your e-mail), replace it
with a dummy address like , and forward your
message to Victim. Also, Helsingius’ computer will notify you that
is your new anonymous address.

Ex. 1003, 66.

8 The page numbers in Bacard refer to the original page numbers located in
either the top, right-hand corner or top, left-hand corner of each page.
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Gabber (Exhibit 1004)
Gabber is titled, “System and Method for Providing Anonymous Re-
mailing and Filtering of Electronic Mail.” Ex. 1004, Title. Gabber
discloses systems for, and methods of, anonymous re-mailing and filtering
of e-mail messages by generating an alias source e-mail address for a
message being sent over a computer network, such as the Internet. Id. at
2:53–3:22. Gabber describes prior art anonymous re-mailing systems, such
as the anon.penet.fi re-mailer, and discloses that bidirectional e-mailing in a
re-mailing system replaces the sender’s real source address with a
corresponding alias source address and re-mails the message to the intended
recipient. The recipient can reply to the message, but only by using the
anonymous sender’s alias source address. Upon receipt of a reply from the
original recipient, the re-mailer substitutes the anonymous sender’s real
source address for the alias source address and re-mails the reply to the
anonymous sender. Id. at 1:66–2:23.
Wayner (Ex. 1009)
Wayner is a book, titled Disappearing Cryptography -- Being and
Nothingness on the Net. Ex. 1009, Title. Wayner describes anonymous re-
mailers, including the anon.penet.fi re-mailer system. Id. at 179–83.9
Wayner discloses that recipients of an e-mail can reply to the e-mail, and the
anonymous re-mailer program “repackages the letter and sends it on.” Id. at
180.

9 The page numbers in Wayner refer to the original page numbers located in
the top, right-hand corner or top, left-hand corner of each page.

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Sutcliffe (Ex. 1021)
Sutcliffe is titled, “Personal Journal,” and discloses an online
matchmaking website and, specifically, a “method for tracking personal
contacts with other people over a computer network.” Ex. 1021, 1:12–13.
Sutcliffe describes a Personals Online Network (“PON”) that enables users
to “find activity partners, to make new friends, to make acquaintances or to
find people with whom intimate relationships may be formed.” Id. at 1:18–
25; see id. at Abstract, 6:22–44, 7:14–17. Each member has a personal
profile that includes information such as gender, interests and user
identification (or “handle”), all of which is stored in a database. Id. at 2:31–
37, 7:40–9:44, 11:47–57. Each member also can search the database to
identify others with whom the member may wish to initiate contact. Id. at
2:37–40, 11:58–12:12.
Members can retain information about other members with a
“personal journal” that includes login‐protected pages. Ex. 1021, 11:40–
12:65. Personal journal web pages are created by a “Journal Generator”
based on information stored in a database. Id. at 11:40–57, 12:21–32,
12:38–40, 12:52–55, Figs. 5, 6.

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Figure 7 of Sutcliffe is reproduced below.

In Figure 7 of Sutcliffe, an exemplary web page for a member of the
network named “caps” is depicted, with “Send mail” hyperlink 226 for
sending email to that member. Ex. 1021, 12:58–65. A form allows a
sending member to enter a message for the recipient member. Id. at
10:39–42, Fig. 3. In order to protect the privacy of members involved in
e‐mail exchanges, Sutcliffe discloses a remailer system that assigns each
member an anonymous e‐mail address, such as
“username@anon.tpigroup.com.” Id. at 9:46–52. The PON system
“stores the true email address of each user,” which allows the system to
route all e‐mail communications through the PON server and then to the
recipient’s true e‐mail address. Id. at 9:53–59, 10:42–44.
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Proposed substitute claim 7
Proposed substitute independent claim 7 would replace challenged
independent claim 1. Patent Owner does not attempt to rebut our
preliminary determination that Petitioner presented sufficient evidence to
support a finding that the combination of Bacard, Gabber, and Wayner
taught or suggested all the limitations of challenged claim 1. Dec. to Inst.
9–13. We, therefore, agree with Petitioner that Patent Owner has not
challenged that the limitations of proposed substitute claim 7 reproduced
from challenged claim 1, are taught or suggested by the prior art references
cited in the Petition – namely, the combination of Bacard, Gabber, and
Wayner. Opp. 1. We adopt the preliminary determination from the
Decision to Institute for purposes of this Final Written Decision.
Petitioner further argues that Sutcliffe discloses all of the added
limitations in proposed substitute claim 7. Id. at 7–8. For the limitation,
“said first computer system storing information about said plurality of
members in a database,” Petitioner contends “Sutcliffe teaches a PON
computer system that includes a database system that stores information
about PON members.” Id. at 7 (citing Ex. 1021, 2:31–37, 7:40–9:44, 11:40–
57, 12:21–32, Fig. 5). We agree with Petitioner that Sutcliffe’s database
tables perform this storage function. Id.
For the limitations, “said first computer system creating a webpage for
said recipient member comprising information about said recipient member
from said database,” and “said first computer system providing said
webpage to a first sender,” Petitioner contends:
Sutcliffe also teaches that each PON member has a “personal
journal” that includes web pages—for example, the web page
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for “caps” shown in Figure 7 above [citing Ex. 1021, 11:40–
12:65, Figs. 6 and 7]. A member web page is created by the
system’s “Journal Generator” 186 using information from the
journal database 164 [citing Ex. 1021, 11:40–57, 12:21–32, Fig.
5]. . . . As noted previously, the member web page also includes
a “Send mail” 226 link that allows the viewer to send a message
to the member [citing Ex. 1021, 12:58–65, 10:39–42, Fig. 3
(item 160)].
Opp. 7–8. We agree with Petitioner that Sutcliffe’s disclosure teaches these
added limitations. Finally, for the limitation, “said first computer system
determining that said first sender is a member of said group,” Petitioner
contends Sutcliffe “teaches that PON members must ‘log in’ in order to
access” their personal journal pages and send and receive emails with other
members. Opp. 8; Ex. 1021, 12:33–37, 12:58–65, Fig. 7; see Tr. 24:8–21,
25:8–22. We also agree with Petitioner that Sutcliffe’s log in functionality
teaches this limitation.
Patent Owner makes two arguments in its Reply. First, Patent Owner
states that Sutcliffe does not disclose a limitation that is reproduced nearly
verbatim from challenged claim 1, reciting, “said first computer system
receiving an incoming first e-mail message from a sending entity other than
said first computer system comprising a first existing e-mail address of [a]
said first sender . . . .” PO Reply 2–3. Proposed substitute claim 7 replaces
“a sender” in challenged claim 1 with “said first sender.” As we explained
previously, we determined that Petitioner presented sufficient evidence to
support our preliminary determination that the combination of Bacard,
Gabber, and Wayner taught or suggested this limitation of challenged claim
1. See Dec. to Inst. 9–13. Because we adopt the preliminary determination
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in this regard, we address only Patent Owner’s argument directed to the
added “said first sender” element.
Patent Owner argues that Sutcliffe does not disclose the “said first
sender,” PO Reply 2–3, but its isolated focus on Sutcliffe ignores the
Petitioner’s asserted combination of Sutcliffe with Bacard, Gabber, and
Wayner. One cannot show nonobviousness by attacking references
individually. In re Keller, 642 F.2d 413, 425-26 (CCPA 1981). Each
reference must be read, not in isolation, but for what it fairly teaches in
combination with the prior art as a whole. See In re Merck & Co., Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986). The Petition explained how Bacard
disclosed an anonymous remailer system in which an incoming first email
message has a first existing email address of the sender, Pet. 27–28, and
Sutcliffe, in combination with the references cited in the Petition, teach or
suggest an incoming first email message with a first existing email address
of a first sender in a group, who has been provided a webpage with
information about a recipient member of the group. See Opp. 4 (“all of the
features of proposed claims 7–9 and 11 are fully disclosed by Sutcliffe and
[Bacard, Gabber, and Wayner]”), 7–9.
Second, Patent Owner argues that the limitation, “said first computer
system determining that said first sender is a member of said group,”
requires the step of “determining” to occur only after the first computer
system receives the incoming email message. PO Reply 3–4; Tr. 5:24–6:22,
9:13–24, 12:25–13. We agree with Petitioner that the claim language does
not recite explicitly when the determination step occurs. See Tr. 25:1–15.
To the extent Patent Owner argues for importing such a temporal restriction
into the claim language from the specification (e.g., Tr. 6:4–22), such
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importation is improper. Altiris Inc. v. Symantec Corp., 318 F.3d 1363,
1371 (Fed. Cir. 2003) (determining that it is improper to impose a sequence
of steps from a patent’s specification). We, thus, agree with Petitioner that
Sutcliffe teaches a log in process for a member to use the system. Opp. 8;
Ex. 1021, 12:33–37.
Petitioner also contends that combining the teachings of Sutcliffe with
those of Bacard, Gabber, and Wayner would have been “predictable and
proper” to one of ordinary skill in the art. Opp. 6 (citing Ex. 1020 ¶¶ 19–
22). Bacard, Gabber, and Wayner all describe remailer systems for
anonymous emailing. See Dec. to Inst. 9–11. Petitioner notes that Sutcliffe
expressly discloses a remailer system for use with its web-based member
web pages, where “the email system provides anonymous email . . .
provided by assigning to each user an anonymous email address.” Opp. 6;
Ex. 1021, 9:45–59. Petitioner also states that Wayner “provides an explicit
motivation to combine by explaining that ‘[t]here is also a great need for
anonymous dating services on the Net.’” Opp. 6 (emphasis omitted); Ex.
1009 at 196. Patent Owner argues that interaction with and information
sharing with others (as disclosed by GeoCities and DeHond, and also by
Sutcliffe) is “the opposite of the purpose” of anonymous remailers. Mot. 10.
We agree with Petitioner’s argument, however, that such remailers can
facilitate interaction and information sharing by promoting communications
where users may keep their true email addresses private. Opp. 6–7; Ex.
1009 at 180; Ex. 1020 ¶¶ 19–20. Accordingly, we agree with Petitioner’s
rationale for combining the teachings of Sutcliffe with those of Bacard,
Gabber, and Wayner, and conclude that Patent Owner’s Motion to Amend
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fails to demonstrate the patentability of proposed substitute claim 7 over the
prior art.
Proposed Substitute Claim 8
Proposed substitute claim 8 would replace challenged claim 2,
depends from proposed substitute claim 7, and adds a limitation that “the
first created e‐mail address for said recipient member comprises a name of
said recipient member.” Mot. 3. Petitioner contends Sutcliffe discloses that
each user is assigned an email address that “may consist of the user’s user
identification name.” Opp. 8–9 (emphasis omitted); Ex. 1021, 9:50–59. In
its Reply to the Opposition, Patent Owner makes no specific patentability
arguments regarding proposed substitute claim 8. See PO Reply 4. We
agree that Sutcliffe discloses the added limitation regarding the name of the
recipient member, and conclude that Patent Owner’s Motion to Amend fails
to demonstrate the patentability of proposed substitute claim 8 over the prior
art.
Proposed Substitute Claim 9
Proposed substitute claim 9 would replace challenged claim 3,
depends from proposed substitute claim 7, and adds a limitation for “a
control for activating a user interface for sending a message to said recipient
member.” Mot. 3. Petitioner contends that the “send mail” hyperlink 226 in
Figure 7 of Sutcliffe discloses the claimed “control.” Opp. 9–10. Proposed
substitute claim 9 also adds a limitation that the recipient web page is
“created by said first computer system without assistance from said recipient
member.” Mot. 3. Petitioner contends that Sutcliffe teaches that the
member web pages are generated by the “Journal Generator” of the PON
system, rather than by the member. Opp. 10; Ex. 1021, 11:40–57, 12:21–32,
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12: 52–65; Ex. 1020, ¶ 40.10 Patent Owner argues that Petitioner’s
contention is not supported specifically by the testimony of Petitioner’s
expert, Mr. Tittel. PO Reply 4. We disagree, as the Tittel declaration
states, “[t]his limitation is also disclosed by Sutcliffe, which teaches that the
member web pages are generated by the PON system.” Ex. 1020, ¶ 40. We
agree with Petitioner that Sutcliffe discloses these added limitations, and
conclude that Patent Owner’s Motion to Amend fails to demonstrate the
patentability of proposed substitute claim 9 over the prior art.
Proposed Substitute Claim 11
Proposed substitute claim 11 would replace challenged claim 6,
depends from proposed substitute claim 9, and adds limitations related to
sending an email from the user interface recited in proposed substitute claim
9. Mot. 5. Petitioner’s Opposition and the second declaration of Mr. Tittel
explain how Sutcliffe discloses the additional limitations in proposed
substitute claim 11. Opp. 10–11; Ex. 1020, ¶¶ 38–42. Patent Owner argues
only that proposed substitute claim 11, like proposed substitute claim 9,
includes a limitation for the webpage being created “without assistance from
said user member.” PO Reply 4. That limitation, however, appears only in
proposed substitute claim 9, and does not appear in proposed substitute
claim 11. See Mot. 5. We conclude that Patent Owner’s Motion to Amend

10 At the oral hearing, Petitioner’s counsel appeared to state that Sutcliffe did
not disclose explicitly this limitation, and argued the recited creation of the
webpage without member assistance would be obvious to one of ordinary
skill in the art. Tr. 28:11–30:2. We rely only on the arguments made in
Petitioner’s Opposition and supported by the accompanying second
declaration of Mr. Tittel (Ex. 1020).
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fails to demonstrate the patentability of proposed substitute claim 11 over
the prior art.
Proposed Substitute Claim 10
Proposed substitute claim 10 would replace challenged claim 5 and
depends from proposed substitute claim 7. As explained previously, Patent
Owner has not met its burden to show sufficient written description support
for the added limitation of “said first computer system forwarding said third
incoming e-mail message to said recipient member without replacing said
third existing e-mail address of said second sender.” See supra Section II.
D. 3. Consequently, while Patent Owner asserts that “the added
limitations of claim 10 are not disclosed in any of the prior art,”11 we need
not and, therefore, do not address in detail whether Patent Owner’s Motion
to Amend demonstrates the patentability of proposed substitute claim 10
over the prior art.
5. Patent Eligible Subject Matter
Petitioner also argued in its Opposition that the proposed substitute
claims fail to recite patent eligible subject matter under 35 U.S.C. § 101,
citing Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014). Opp. 14–15. In its Reply, Patent Owner argues the merits of why
its proposed substitute claims comprise patentable subject matter. PO Reply
5; see Tr. 15:10–17:9. Because Patent Owner has not met its burden of
demonstrating sufficient written description support for proposed substitute
claim 10, or its burden of proving by a preponderance of the evidence that

11 PO Reply 4; cf. Opp. 11–14 (explaining why Patent Owner’s Motion to
Amend fails to demonstrate the patentability of proposed substitute claim 10
over the prior art).
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proposed substitute claims 7–9 and 11 are patentable over the prior art of
record, we need not and, therefore, do not reach the merits of Petitioner’s
§ 101 argument.
III. CONCLUSION
Patent Owner has not demonstrated by a preponderance of the
evidence that proposed substitute claims 7–11 are patentable. Therefore, we
grant Patent Owner’s Motion to Amend solely as to its non-contingent
request to cancel challenged claims 1–3, 5, and 6 of the ’047 patent, and
deny the Motion to Amend as to the proposed substitution of claims 7–11.
IV. ORDER
Accordingly, it is
ORDERED that Patent Owner’s Motion to Amend is granted as to its
request to cancel claims 1–3, 5, and 6 of the ’047 patent; and
FURTHER ORDERED that Patent Owner’s Motion to Amend is
denied as to its request to add proposed substitute claims 7–11.
Because this is a final decision, the parties to the proceeding seeking
judicial review of the decision must comply with the notice and service
requirements of 37 C.F.R. § 90.2.

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PETITIONER:
Heidi L. Keefe
Mark R. Weinstein
COOLEY LLP
hkeefe@cooley.com
mweinstein@cooley.com
zpatdcdocketing@cooley.com

PATENT OWNER:
Frank Michael Weyer
TECHCOASTLAW
fweyer@techcoastlaw.com