Google Inc. and Twitter, Inc.v.Everymd.com Llc.Download PDFPatent Trial and Appeal BoardMay 22, 201413234823 (P.T.A.B. May. 22, 2014) Copy Citation Trials@uspto.gov Paper 9 571-272-7822 Entered: May 22, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ GOOGLE INC. and TWITTER, INC., Petitioners, v. EVERYMD.COM LLC., Patent Owner. ____________ Case IPR2014-00347 Patent 8,504,631 B2 Before KRISTEN L. DROESCH, MICHAEL R. ZECHER, and PETER P. CHEN, Administrative Patent Judges. DROESCH, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 37 C.F.R. § 42.108 Case IPR2014-00347 Patent 8,504,631 B2 2 I. INTRODUCTION Google Inc. and Twitter, Inc., (collectively “Petitioners”) filed a Petition (Paper 4, “Pet.”) to institute an inter partes review of claims 1–10 (“the challenged claims”) of U.S. Patent No. 8,504,631 B2 (“the ’631 Patent”). See 35 U.S.C. § 311. EveryMD.com LLC (“Patent Owner”) timely filed a Preliminary Response (Paper 7, “Prelim. Resp.”) to the Petition. We conclude that, under 35 U.S.C. § 314(a), the information presented in the Petition does not demonstrate that there is a reasonable likelihood that Petitioners will prevail with respect to at least one of the challenged claims. A. Related Proceedings Petitioners indicate the ’631 Patent is at issue in the following actions (Pet. 5–6): 1) EveryMD.com LLC v. Google Inc., No. 2:13-cv-06490-MRP-FFM (C.D. Ca., Sept. 5, 2013) (Ex. 1009); and 2) EveryMD.com LLC v. Twitter, Inc., No. 2:13-cv-06680-MRP-FFM, (C.D. Ca., Sept. 12, 2013) (Ex. 1010). B. The ’631 Patent (Ex. 1001) The ’631 Patent relates to a method, apparatus, and business system for conducting online communications with online and offline recipients. Ex. 1001, col. 3, ll. 12–14. The ’631 Patent discloses that a user/sender communicates via the internet with a recipient who is a member of a group (e.g., medical doctors). Id. at col. 3, ll. 21–27. The sender does not need to know the e-mail address or website of the intended recipient, and the intended recipient may or may not have an existing e-mail address or web site. Id. at col. 3, ll. 27–30. Case IPR2014-00347 Patent 8,504,631 B2 3 Figure 1 of the ’631 Patent, reproduced below, depicts a schematic diagram of functional components of the system. Id. at col. 2, ll. 56–57; col. 3, ll. 38–39. Figure 1 illustrates user’s computer 100, internet connection 105, interface server 110, contact database 115, internet connection 120, recipient’s internet access device 125, telecommunications network 130, and recipient’s fax machine 135, and telephone 140. Id. at col. 3, ll. 39–42, 56–58; col. 4, ll. 6–26. Figure 5 of the ’631 Patent, reproduced below, depicts a flow chart of the method steps used for sending a communication from a user to a recipient. Id. at col. 2, ll. 64–65; col. 4, ll. 27–29. Case IPR2014-00347 Patent 8,504,631 B2 4 Figure 5 illustrates that, at step 500, when a sender wishes to communicate with a member of a group (e.g., doctors), the sender accesses the website of interface server 110. Id. at col. 4, ll. 29–33. Interface server 110 provides a user interface (e.g., webpage) to the sender at step 505, and the sender enters identifying information for the sender and intended recipient at steps 506 and 507. Id. at col. 4, ll. 47–57. At step 509, the user selects a desired action, such as visiting the recipient’s website or sending the recipient an e- mail message. Id. at col. 5, ll. 1–7. If the sender desires to send an e-mail message, the selection at step 509 includes the sender entering e-mail message text. Id. at col. 5, ll. 7–9. Case IPR2014-00347 Patent 8,504,631 B2 5 Figure 3 of the ’631 Patent, reproduced below, depicts user interface 200 with information entered by the sender. Id. at col. 2, ll. 60–61. Figure 3 illustrates user interface 200 including sender information entry area 210, recipient information entry area 205, e-mail message entry area 215, and control buttons 220, 225, and 230. Id. at col. 5, ll. 16–19. At step 511 (illustrated in Figure 5), interface server 110 queries contact database 115 to find the intended recipient, and, at step 515, provides a list of possible recipients retrieved from database 115. Id. at col. 5, ll. 38– 46. At step 516, the sender determines whether the intended recipient is listed, and, if listed, selects the intended recipient from the list at step 517. Id. at col. 5, ll. 48–49, 59–63. At step 520, interface server 110 retrieves the recipient contact information from contact database 115, which may include an indication of whether or not the recipient has an existing website or e- mail address. Id. at col. 5, ll. 63–67. Next, a determination is made at step 525 as to whether the sender desires to visit the recipient’s website or send an e-mail message to the recipient. Id. at col. 6, ll. 8–11. If the sender wants to send an e-mail message to the recipient, interface server 110 determines Case IPR2014-00347 Patent 8,504,631 B2 6 whether the recipient has an active e-mail address at step 540. Id. at col. 6, ll. 37–65. If the recipient does not have an active e-mail address, a determination is made at step 545 as to whether the recipient has a known fax number. Id. at col. 8, ll. 35–39. If the recipient has a known fax number, the e-mail message is converted to a fax message and transmitted to the recipient’s fax machine at step 547, and, in turn, a copy of the e-mail message is sent to the recipient’s created e-mail box at step 548. Id. at col. 8, ll. 39–46; see id. at col. 6, ll. 46–50. If the recipient does not have a fax number, the e-mail message is converted to a voice message at step 550 and delivered as a voice message to the recipient’s telephone number at step 554. Id. at col. 8, l. 66–col. 9, l. 3. A copy of the e-mail message is delivered to the recipient’s created e-mail box at step 556. Id. at col. 9, ll. 5–6; see id. at col. 6, ll. 46–50. C. Illustrative Claim Claim 1 is an independent claim. Claims 2–10 depend directly or indirectly from claim 1. Claim 1, reproduced below, is illustrative of the claims at issue: 1. A method for providing for communications by a server computer system among a first member of a group of members for whom said server computer system has created a first server created email box and a second member of said group of members for whom said server computer system has created a second server created email box, said method comprising the steps of: said server computer system transmitting a first server created web page to a first internet access device of said second member, said first server created web page comprising a message interface for receiving by said server computer system input data comprising a first message to said first member; Case IPR2014-00347 Patent 8,504,631 B2 7 said server computer system receiving first input data entered into said message interface from said first internet access device of said second member said server computer system sending a second message to a telephone number associated with said first member notifying said first member of said first input data; said server computer system sending a third message to said first server created email box of said first member said third message comprising said first input data. Ex. 1001, col. 14, ll. 14-35 (emphases added). II. ANALYSIS A. Claim Construction Consistent with the statute and legislative history of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, 329 (2011), we interpret claims using the broadest reasonable construction in light of the specification. See 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)(citation omitted). 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. 1. “Message Interface” Claim 1 recites “said first server created web page comprising a message interface for receiving by said server computer system input data comprising a first message to said first member.” Ex. 1001, col. 14, ll. 23– 26. Petitioners contend that the term “message interface” is not used in the Case IPR2014-00347 Patent 8,504,631 B2 8 ’631 Patent Specification. Pet. 8 (citing Ex. 1002 ¶¶ 36–37). Petitioners assert the ’631 Patent Specification uses the term “user interface,” with the following purpose: “‘[i]nterface server 110 provides an interface to user computer 100 (for example in the form of one or more web pages) that allows the user to select the intended recipient and specify the form of communication the user would like to use (e.g., sending an e-mail message or visiting the recipient’s website[)].’” Id. at 8–9 (citing Ex. 1001 col. 2, ll. 15–16; col. 4, ll. 47–51; citing Ex. 1002 ¶ 38; and quoting Ex. 1001, col. 3, ll. 50–55). Petitioners further contend that “[b]ased on the ’631 patent specification, one of ordinary skill in the art would [have understood] that the ‘message interface’ is a user interface or portion of a user interface relating to sending a message such as an email.” Id. at 9 (citing Ex. 1002 ¶ 39). Petitioners further assert that this understanding is consistent with the Board’s findings regarding the term “message entry interface” in the Decision on Appeal of Reexamination No. 95/001,411 of related U.S. Patent No. 7,644,122 B2 1 . Id. at 9 (citing Ex. 1004 at 37–38). Based on the foregoing, Petitioners contend the broadest reasonable construction of “message interface” is “an interface providing messaging functionality.” Id. at 9 (citing Ex. 1002 ¶ 40). 1 The ’631 Patent is a continuation of Application No. 12/621,407, which is a continuation of Application No. 11/623,132, which issued as U.S. Patent No. 7,644,122 B2. Case IPR2014-00347 Patent 8,504,631 B2 9 Patent Owner disagrees with Petitioners’ construction and makes the following assertion: [a]s one of skill in the art would [have understood], to be an interface that can receive “input data comprising a message to said first member,” the message interface must include a mechanism, such as, for example, a text entry area, into which input data comprising a message can be entered by a user, and the interface must be configured such that the entered input data is received by the server computer system. Prelim. Resp. 23–24. Patent Owner further asserts that the plain meaning of claim 1 is confirmed by the Specification, which discloses that user interface 200 in Figures 2 and 3 includes e-mail message text entry area 215 into which email message text can be entered. Id. at 24–25 (citing Ex. 1001, col. 5, ll. 10–37; figs. 2–3). On this basis, Patent Owner asserts that one with ordinary skill in the art, reading both the plain language of claim 1 and the Specification, would have understood that the e-mail message entry area 215 of Figures 2 and 3 corresponds to the “message interface.” Id. at 25–26. Patent Owner further asserts that, based on the plain language of claim 1, a “message interface” is a portion of a server-created web page and provides the functionality for ‘receiving by said server computer system input data comprising a first message to said first member’… and that the input data comprising the message must be received by the server system.” Id. at 23, see id. at 26. Contrary to Petitioners’ contention, the term “message interface” is included in the Specification as originally filed, because originally filed claim 1 includes the term “message interface.” Ex. 1011 at 0151. We agree with Patent Owner that “e-mail message entry area 215” disclosed in the ’631 Patent Specification corresponds to the “message interface” recited in Case IPR2014-00347 Patent 8,504,631 B2 10 claim 1. We do not adopt Petitioners’ construction of “message interface” as “an interface providing messaging functionality,” because it is unreasonably broad in light of the ’631 Patent Specification’s disclosure of e-mail message entry area 215. In light of the ‘631 Patent Specification, we agree with Patent Owner’s assertion that the “message interface” must include a mechanism into which a message can be entered, such as, for example, a text entry area. However, we do not agree with Patent Owner’s construction of “message interface” as a portion of a server-created web page that provides the functionality of receiving input data comprising a first message to the first member. This construction by Patent Owner renders superfluous the limitations already recited in claim 1, i.e., a “first server created web page comprising a message interface for receiving . . . input data comprising a first message to said first member.” Because we agree with Patent Owner that e-mail message entry area 215 corresponds to the claimed “message interface,” and because the ’631 Patent discloses e-mail message entry area 215 as an area on user interface 200 provided for entering a message (see Ex. 1001, col. 5, ll. 10–37; figs. 2, 3), the broadest reasonable interpretation in light of the Specification of “message interface” is “a mechanism into which a message can be entered, such as, for example, a text entry area.” 2. Remaining Claim Terms or Phrases Petitioners also provide claim constructions for “server computer system,” and “email box,” recited in claim 1, “instructions for replying to said first user,” recited in claim 6, “instructions for obtaining said input data,” recited in claim 7, and “wherein said third message comprises said second server created email box,” recited in claim 10. Pet. 7–12. For Case IPR2014-00347 Patent 8,504,631 B2 11 purposes of this Decision, no explicit constructions are necessary for the aforementioned claim terms and phrases beyond their ordinary and customary meanings. Patent Owner asserts that the preamble of claim 1 should be construed as a claim limitation. Prelim. Resp. 3–8. The current situation does not require us to assess whether the preamble of independent claim 1 is entitled to patentable weight because, as we explain below, the numerous quotes, citations, and figures from the cited prior art references that are presented to support the asserted grounds of unpatentability in the Petition do not, by themselves, demonstrate a reasonable likelihood that the challenged claims are unpatentable. All other terms or phrases in the challenged claims need not be construed explicitly for purposes of this Decision. B. Asserted Grounds of Unpatentability Petitioners contend the challenged claims are unpatentable under 35 U.S.C. §§ 102 and 103 based on the following specific grounds (Pet. 6): Reference[s] 2 Basis Claims Challenged Shah § 102 1–10 Shah in view of Belanger § 103 1–10 de Hond in view of O’Neal § 103 1–10 2 The Petition relies on the following references: U.S. Patent No. 6,606,647 B2 (Ex. 1007) (“Shah”); U.S. Patent No. 5,796,395 A (Ex. 1005) (“de Hond”); U.S. Patent No. 6,711,154 B1 (Ex. 1006) (“O’Neal”); and Publication WO 98/21672 (Ex. 1008) (“Belanger”). The Petition also relies on the Declaration of Dr. William H. Beckmann (Ex. 1002). Case IPR2014-00347 Patent 8,504,631 B2 12 1. 35 U.S.C. § 102 Anticipation by Shah Petitioners contend that claims 1–10 are unpatentable under 35 U.S.C. § 102 as anticipated by Shah. Pet. 6, 13–25. a. Shah (Ex. 1007) Shah describes a communication network and methods for providing communication between senders and receivers utilizing several types of communication mechanisms. See Ex. 1007, col. 4, l. 36–col. 5, l. 3; col. 5, ll. 14–21; col. 5, l. 44–col. 6, l. 8; col. 6, l. 38–col. 7, l. 12; col. 8, l. 10– col. 12, l. 10. Figure 2 of Shah, reproduced below, depicts a block diagram of communication network 40. Id. at col. 3, ll. 37–38; col. 4, ll. 36–37. Case IPR2014-00347 Patent 8,504,631 B2 13 Figure 2 illustrates communication network 40, including routing server 42, communication path 18 (e.g., Internet), sender’s computer 12s, recipient’s computer 12r, wireless pagers 28s, 28r, voice mail servers 30s, 30r, and email servers 26s, 26r. Id. at col. 4, ll. 36–41, see id. at col. 1, ll. 23–28, 30– 34, 41–44, 48–50. Sender’s computer 12s runs routing client 48s, and recipient’s computer 12r runs routing client 48r. Id. at col. 4, ll. 44–50. Sender’s computer 12s and recipient’s computer 12r also run desktop pagers 20s, 20r, web browsers 22s, 22r, and e-mail clients 24s, 24r. Id. at col. 1, ll. 34–38, 44–48. Recipient’s routing client 48r works with server 42 to route the recipient’s messages according to the recipient’s routing preferences. Id. at col. 4, ll. 44–47. Server 42 routes the recipient’s incoming messages to the recipient’s message device specified by the recipient’s routing preferences (e.g., specifying that server 42 routes all messages directed to desktop pager 20r to email server 26r). Id. at col. 4, ll. 59–64. To allow server 42 to perform routing according to the recipient’s routing preferences, the recipient gives the sender access to one or more of the recipient’s message devices via server 42. Id. at col. 4, ll. 65–67. Access is given to the recipient’s message devices through the sender’s routing client 48s (see id. at fig. 5; col. 8, l. 26–col. 9, l. 6), the recipient’s web page set up on server 42 (see id. at figs. 6, 7; col. 9, ll. 7–47), or the recipient’s address with respect to server 42 (see id. at fig. 8; col. 9, ll. 48–55). Id. at col. 4, l. 67– col. 5, l. 3. Case IPR2014-00347 Patent 8,504,631 B2 14 Figure 5, reproduced below, depicts screen 90 generated on sender’s computer 12s. Id. at col. 8, ll. 36–38. Figure 5 illustrates screen 90 including image field 98, greeting field 100, log-in status field 102, and list field 92, which lists the messaging devices that a recipient has made available to receive messages from the sender. Id. at col. 8, ll. 39–41; col. 8, l. 66–col. 9, l. 6. The recipient also can add or delete messaging devices that are available to senders utilizing another screen generated by recipient’s routing client 48r. Id. at col. 12, ll. 1–10; fig. 13. Screen 90 allows a sender who is a registered user of routing server 42 to send messages to a recipient who is also a registered user of routing server 42. Id. at col. 8, ll. 26–28. Using routing client 48s, the sender creates one or more groups of recipients, in turn, routing client 48r, for each designated recipient, makes this information available to the sender via server 42. Id. at col. 8, ll. 29–36. Sender’s routing client 48s generates screen 90 on sender’s computer 12s, based on this information. Id. at col. 8, ll. 36–38. For example, field 92 allows the sender to send messages to the recipient’s email Case IPR2014-00347 Patent 8,504,631 B2 15 server 26r, fax, or telephone, wireless pager, or personal digital assistant. Id. at col. 8, ll. 55–57, 61–65. Figure 7, reproduced below, depicts screen 120 generated from the recipient’s home page on server 42. Id. at col. 9, ll. 39–41; see id. at col. 9, ll. 11–13. Figure 7 illustrates screen 120 that allows a sender who is not a registered user of routing server 42 to send messages via sender’s web browser 22s to a recipient who is a registered user of server 42, by prompting the sender for the sender’s information, and to include a text message and/or voice message. Id. at col. 9, ll. 7–10, 41–43. Figure 8, reproduced below, depicts screen 122 generated from the sender’s home page on server 42. Id. at col. 9, ll. 48–50. Case IPR2014-00347 Patent 8,504,631 B2 16 Figure 8 illustrates screen 122 that allows a registered user of server 42 to send messages from the user’s website (i.e., homepage) on server 42 to a registered or unregistered recipient by prompting the sender for the recipient’s information, such as user name or e-mail address, and to include a text message and/or voice message. Id. at col. 9, ll. 48–52. Messages can be routed to the recipient’s specified messaging device(s) according to the recipient’s on-line routing preferences or off-line routing preferences. Id. at col. 9, l. 56–col. 10, l. 59; fig. 9. The recipient can enter his or her off-line routing preferences and online routing preferences, and re-routing conditions through a screen generated by recipient’s routing client 48r. Id. at col. 10, l. 60–col. 11, l. 31; figs. 10, 11. Server 42 automatically determines the best network topology for routing a message from a sending device to a receiving device specified by the recipient’s routing rules, based on the sender’s identity, the recipient’s messaging device, the message priority, the receiver’s availability, and the Case IPR2014-00347 Patent 8,504,631 B2 17 message format (e.g., size, protocol). Id. at col. 5, ll. 4–21; col. 6, ll. 9–12; fig. 4. Based on the message initiation header, the network environment, and recipient’s routing rules, router 42 determines the appropriate receiving device and whether or not point-to-point (PTP) communication between the sending and receiving devices is possible. Id. at col. 6, ll. 32–37; fig. 4, steps 72–73. If the format or size of the message is incompatible with the receiving device, server 42 determines that a star topology is appropriate, notifies the receiving device specified by the recipient’s routing rules of the incoming data stream that forms the message, reformats the message, and sends the message. Id. at col. 6, ll. 45–60; col. 7, ll. 49–col. 8, l. 2; fig. 4, steps 73, 79, 83. b. Claims 1–10 Petitioners assert that Shah discloses each and every feature of claims 1–10. Pet. 13. To support its assertion, Petitioners provide a brief summary of Shah’s description, and then provide a claim chart that allegedly explains how Shah discloses the claimed subject matter recited in claims 1– 10. Id. at 13–25. In the claim chart, for each limitation of independent claim 1, Petitioners provide quotations and citations of various sections of Shah and reproduce Figures 5, 7, 8, and 10. Id. at 15–20. For example, a portion of Petitioners’ claim chart, reproduced below, addresses the limitation “said server computer system sending a second message to a telephone number associated with said first member notifying said first member of said first input data.” Case IPR2014-00347 Patent 8,504,631 B2 18 Id. at 18–19. According to 37 C.F.R. § 42.104(b)(4), a petition for inter partes review must identify how the construed claim is unpatentable under the statutory grounds on which the petitioner challenges the claims, and must specify where each element of the claim is found in the prior art patents or printed publications relied upon. Similarly, 37 C.F.R. § 42.22(a)(2) states that each petition must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the Case IPR2014-00347 Patent 8,504,631 B2 19 evidence including material facts, and the governing law, rules, and precedent.” The Office Patent Trial Practice Guide suggests that parties requesting inter partes review should “avoid submitting a repository of all the information that a judge could possibly consider, and instead focus on concise, well organized, easy-to-follow arguments supported by readily identifiable evidence of record.” 77 Fed. Reg. at 48,763 (Aug. 14, 2012). To the extent that Petitioners assert that the brief summary, and quotations, citations, and reproduced figures from Shah qualify as argument, they do not: (1) specify sufficiently where each element of independent claim 1 is found in Shah, and (2) constitute a detailed explanation of the significance of the quotations, citations, and figures from Shah. For example, the quotations from Shah relied upon in the portion of the claim chart, reproduced above, disclose the following: (1) a server that will reformat a message thereby allowing one type of message device to send a message to another incompatible type of messaging device; (2) screen 90 in Figure 5 includes field 92 that allows a sender to send messages to a recipient’s fax or telephone; and (3) in response to selecting a device from field 92, the sender can send a message to the selected receiving device(s). Ex. 1007, col. 5, ll. 14–21; col. 8, ll. 50–61. The citations to Shah in Petitioners’ claim chart further disclose an example of re-routing messages to a specific receiving device (e.g., e-mail server) from an originally specified receiving device (e.g., desktop pager) according to re-routing conditions. Id. at col. 10, ll. 35–53; col. 11, ll. 7–15. Petitioners do not offer an explanation as to how Shah discloses the “server computer system sending a second message to a telephone number associated with said first member notifying said first member of said first input data.” Notably, the Case IPR2014-00347 Patent 8,504,631 B2 20 quoted and cited portions of Shah are silent regarding notifying a user of the input data by way of a message sent to the user’s telephone number. Thus, on the record before us, Petitioners have not demonstrated a reasonable likelihood of prevailing on their assertion that Shah anticipates independent claim 1, and claims 2–10, dependent therefrom. Therefore, we need not address Patent Owner’s arguments (Prelim. Resp. 3–14) directed to the asserted deficiencies of Shah regarding the preamble of claim 1. 2. 35 U.S.C. § 103 Obviousness Over Shah and Belanger Petitioners contend that claims 1–10 are unpatentable under 35 U.S.C. § 103 over Shah in view of Belanger. Pet. 6, 43–57. a. Belanger (Ex. 1008) Belanger describes systems and methods that reside entirely on an Internet Web Server for providing different types of Web authoring, Web site management, and communication software technology, including e- mail, facsimile, voice-mail, pager, telephone, text-to voice, and voice-to-text conversion, all accessed and run via the Internet. Ex. 1008 at p. 4, ll. 9–16; p. 14, l. 14–p. 15, l. 16; fig. 1. The only software needed by a user is a Web browser and a communications connection. Id. at p. 4, ll. 17–18; p. 15, ll. 11–16. A user may author, create, maintain, edit, send, copy, receive, save, delete, and respond to message from any platform using any conventional operating system. Id. at p. 4, ll. 18–21; p. 15, l. 17–p. 16, l. 4. The signals received at the server may represent an electronic mail message. Id. at p. 7, ll. 1–2; p. 9, ll. 17–18. The server may include a messaging device for generating markup language page signals for composing a message from the client device, and directing the server to send the message Case IPR2014-00347 Patent 8,504,631 B2 21 to the communications network. Id. at p. 8, ll. 16–19; p. 10, ll. 1–4; see id. at p. 14, ll. 3–5; figs. 7, 9, 11. Client devices may include desktop and laptop computers, telephones, pagers, hand-held personal information managers, and televisions, etc. Id. at p. 5, l. 19–p. 6, l. 7; p. 8, ll. 3–7. The server computer receives signals representing a message from a communications network, converts the signals into a data file, stores the data file, provides a client device for transmitting and receiving signals from the communications network, connects the server and the client device via the communications connections, receives signals from the client device, and sends signals from the server to the client device for generating markup language page signals representative of the data file. Id. at p. 9, ll. 4–15. Other features of the system include the ability to interface e-mail communications with facsimile, voice, and multimedia communications. Id. at p. 18, ll. 1–2. The system also may have notification via telephone, facsimile, pager or other device, when e-mail has been received. Id. at p. 18, ll. 10–11. b. Claims 1–10 Petitioners contend that “[i]t would have been obvious to one of ordinary skill to combine the teachings of Belanger with those of Shah . . . so as to teach each and every feature of claims 1–10.” Pet. 43 (citing Ex. 1002 ¶ 76). To support its contentions, Petitioners provide a brief summary of Belanger’s teachings, and then provide a claim chart that allegedly explains how the cited prior art references teach the claimed subject matter recited in claims 1–10. Pet. 43–57. In the claim chart, for each limitation of independent claim 1, Petitioners rely on both Shah and Belanger, provide quotations, and citations from both Shah and Belanger, Case IPR2014-00347 Patent 8,504,631 B2 22 and reproduce Figures 1, 9, and 11 from Belanger. Id. at 45–51. Based on Petitioner’s reliance on both references for each limitation of claim 1 (id. at 45–51), and Petitioners’ assertion that Belanger could anticipate a number of the ’631 Patent claims (id. at 43), Petitioners are relying on both Shah’s disclosure and Belanger’s disclosure to teach or suggest each of the limitations of claim 1. For example, a portion of Petitioners’ claim chart, reproduced below, addresses the same limitation “said server computer system sending a second message to a telephone number associated with said first member notifying said first member of said first input data.” Case IPR2014-00347 Patent 8,504,631 B2 23 Id. at 48–49. To the extent that Petitioners assert that the summaries of Shah (id. at 13–15), and Belanger (id. at 43–44), and quotations and citations from both Shah and Belanger, with Belanger’s figures, qualify as argument, they do Case IPR2014-00347 Patent 8,504,631 B2 24 not: (1) specify sufficiently where each element of the claim is found in Shah and Belanger (see 37 C.F.R. § 42.104(b)(4)); and (2) constitute a detailed explanation of the significance of the quotations, and citations of Shah, and the quotations, citations and figures of Belanger (see 37 C.F.R. § 42.22). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Against this background, the obviousness of the claimed subject matter is determined. Id. In determining obviousness, it is often necessary to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (parenthetically quoting In re Khan, 441 F.3d 977, 998 (Fed. Cir. 2006) “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). Petitioners’ summaries of Shah (Pet. 13–15), and Belanger (id. at 43– 44), and quotations and citations from both Shah and Belanger, with Belanger’s figures, for each limitation of claim 1 in the claim chart (id. at 46–51) do not address meaningfully the scope and content of the prior art, Case IPR2014-00347 Patent 8,504,631 B2 25 and any differences between the claimed subject matter and the prior art. Rather, Petitioners’ summaries, quotations, and citations from both references, with Belanger’s figures, place the burden on us to sift through the information presented by Petitioners, determine where each element of claim 1 is found in Shah and Belanger, and identify any differences between the claimed subject matter and the teachings of Shah and Belanger. In addition to the claim chart quotations from Shah discussed previously in section II.A.2, the quotations from Shah relied upon in the portion of the claim chart, reproduced immediately above, disclose the following: (1) a server notifying a receiving device that a message is forthcoming when the server determines that it cannot implement a point-to- point routing topology, but must use a star routing topology (Ex. 1007, fig. 4; col. 7, ll. 49–59); and (2) a receiving client determining whether the receiving device has a re-routing condition, and when the condition is met, the client causes the server to re-route the message to another device specified in the re-routing preferences (id. at fig. 9; col. 10, ll. 35–53). Petitioners’ quotations and citations from Shah do not explain how Shah teaches or suggests the “server computer system sending a second message to a telephone number associated with said first member notifying said first member of said first input data.” Similar to our discussion in Section II.A.2, these quotations and citations from Shah are silent regarding notifying the first user of the input data by way of a message sent to the first user’s telephone number. Petitioners’ claim chart also relies on a stand-alone sentence from Belanger disclosing that the system may have notification via telephone when an e-mail has been received. Pet. 49–50 (citing Ex. 1008, col. 18, ll. Case IPR2014-00347 Patent 8,504,631 B2 26 10–11). To the extent that Petitioners rely on Belanger’s notification via telephone when an e-mail is sent, to remedy the deficiencies of Shah, Petitioners’ reasoning why one with ordinary skill in the art would have combined the teachings of the references is also deficient. In this regard, Petitioners provide the following conclusory reason: One of ordinary skill in the art would have recognized that Belanger discloses methods directed to server-based network communications integrating numerous communication methods such as email, voice-mail, and facsimile, and would have viewed combining the known aspects of server-based network communications integrating the numerous communication methods of Shah as common sense application of known systems in a known manner with an expected outcome. See Ex. 1002 at ¶ 79. Id. at 44. Petitioners’ assertion does not provide an articulated reasoning with rational underpinning to support the conclusion that the claimed invention would have been obvious. Petitioners’ “common sense” argument does not address which elements of Shah’s system and Belanger’s system are to be combined. Rather, Petitioners’ statement covers all of the elements of Shah’s system, and all of the elements of Belanger’s system––essentially a grab bag of communication methods. Absent a meaningful explanation of the elements of Belanger’s system that are to be combined with the elements of Shah’s system, we are not persuaded that one with ordinary skill in the art would have combined the teachings of the references to arrive at the claimed subject matter based on Petitioners’ asserted “common sense application of known systems in a known manner with an expected outcome.” Petitioners further provide the following additional reason to combine Shah and Belanger: Case IPR2014-00347 Patent 8,504,631 B2 27 One of ordinary skill at the time would have recognized the message routing system and functionality described in Shah to be applicable to a variety of communication network systems, including a system that resides entirely on an Internet Web Server site such as described in Belanger. Indeed, since Shah describes an essentially software based routing system, such routing functionality as described by Shah would be recognized by one of ordinary skill as readily transferrable to a variety of different network communication systems, including the system of Belanger. See Ex. 1002 at ¶ 80. Id. at 44. Based on Petitioners’ combination of Shah’s message routing system and functionality with Belanger’s communication network residing on an Internet Web Server, it remains unclear which elements of Shah’s message routing system and Belanger’s Internet Web Server site are relied upon to teach the claimed subject matter recited in claim 1. For example, claim 1 does not recite a message routing system or an Internet Web Server site. To the extent that Petitioners rely on Belanger’s system to remedy the deficiencies of Shah previously identified, Petitioners do not articulate sufficiently a reasoning with rational underpinning to explain why one with ordinary skill in the art at the time of the invention would have combined the teachings of Shah and Belanger to arrive at a system that would notify the first user of the input data by sending a message to the first user’s telephone number. Therefore, on the record before us, Petitioners have not demonstrated a reasonable likelihood of prevailing on their assertion that claim 1, and claims 2–10, dependent therefrom, would have been obvious over Shah and Belanger. Accordingly, we need not address Patent Owner’s arguments (Prelim. Resp. 34–38) directed to the asserted deficiencies of Shah and Belanger regarding the preamble of claim 1. Case IPR2014-00347 Patent 8,504,631 B2 28 3. 35 U.S.C. § 103 Ground of Unpatentability Over de Hond and O’Neal Petitioners contend that claims 1–10 are unpatentable under 35 U.S.C. § 103 over de Hond and O’Neal. Pet. 6, 25–43. a. de Hond (Ex. 1005) de Hond describes a method for publishing and searching interests of individuals utilizing a system comprising a plurality of clients connected to a server via communication links. Ex. 1005, Abs., col. 1, l. 64–col. 2, l. 4; col. 2, ll. 12–19, 23–31, 37–43, 57–63; col. 3, ll. 1–12; fig. 1. The clients include web browsers loaded in memory. Id. at col. 2, ll. 44–46. The server includes a database in memory. Id. at col. 3, ll. 13–28. An individual, using a client, connects to the server and goes through a registration procedure, in which information about the individual is recorded in a database, and the individual is allocated a visual “house” or “home” displaying the individual’s participation and information. Id. at col. 3, ll. 33–60; col. 4, ll. 2–27; col. 9, ll. 8–17, 35–53; fig. 3, steps S1–S8; figs. 7, 8. The individual or house resident also is sent a HyperText Markup Language (HTML) question and answer form on which to record information about himself/herself (e.g., basic information, demographics, interests). Id. at col. 3, l. 61–col. 4, l. 2; col. 4, l. 29–col. 5, l. 24; col. 8, l. 65–col. 9, l. 7; col. 9, ll. 18–34; col. 9, l. 54–col. 10, l. 6; figs. 6, 9. Residents can attempt to make contact with other residents by using match and find procedures that query the database to match or find other residents based on specific characteristics or requirements. Id. at col. 5, l. 25–col. 7, l. 40; col. 10, l. 43– col. 11, l. 36; col. 11, l. 66–col. 12, l. 20; figs. 4, 5, 11–14. Based on the generated results, a resident can select a house of interest and, thereby, visit another resident’s house. Id. at col. 10, ll. 7–42; col. 11, ll. 37–42; fig. 10. Case IPR2014-00347 Patent 8,504,631 B2 29 Figure 10 of de Hond, reproduced below, depicts a screen sent from the server to a client when a user selects and visits a house. Id. at col. 10, ll. 7–10. Figure 10 illustrates house owner profile area 118, area 120 indicating the length of time on the “street,” area 122 depicting the picture of the house, area 124 providing the house slogan, doorbell icon 126, which the visitor can use to contact the house owner, friend indicator icon (not numbered), mailbox icon 128, which the visitor can use to send an e-mail to the owner of the house, and area 130 that lists friends of the house owner. Id. at col. 10, ll. 10–42. If doorbell icon 126 is selected and the house owner is on- line, a chat box/chat screen opens enabling the visitor to communicate with the house owner. Id. at col. 10, ll. 27–31; col. 11, ll. 42–46; see id. at fig. 16; col. 12, ll. 36–61. If the house owner is not on-line, the visitor can send Case IPR2014-00347 Patent 8,504,631 B2 30 an e-mail to the house owner’s mailbox by selecting (e.g., clicking on) mailbox icon 128. Id. at col. 10, ll. 32–37; col. 11, ll. 46–48. b. O’Neal (Ex. 1006) O’Neal describes a message notification system coupled to a data network, which includes both a message notification and web server coupled to a plurality of message sending devices, and a plurality of receiving devices coupled to the message notification system. Ex. 1006, col. 4, ll. 1– 14; col. 6, l. 35–col. 9, l. 32; figs. 2–4. Message generating devices include telephony devices (e.g., telephone, fax, etc.) or data devices (e.g., computer, personal digital assistant). Id. at Abs. All messages are converted into a format compatible with the data network for delivery to the server. Id. at Abs.; col. 6, ll. 48–59; col. 8, ll. 7–25, 44–67; col. 9, l. 21–col. 10, l. 11. Message notification system provides for storage, retrieval, message filtering, and alert notification of received messages, according to user defined criteria. Id. at col. 9, ll. 16–20; see id. at col. 4, ll. 14–42; col. 10, ll. 27–32; col. 11, ll. 9–52; col. 11, l. 62–col. 12, l. 19; figs. 7, 9. Figure 6 of O’Neal, reproduced below, depicts screen shot 600 of the ThinkLink web interface. Id. at col. 10, ll. 34–37. Case IPR2014-00347 Patent 8,504,631 B2 31 Figure 6 illustrates screen shot 600, including greeting 602, message control 604, communications dashboard 608, and menu commands 606, which includes commands titled “Compose,” “Folders,” “Addresses,” “Options,” “My Account,” and “Help Desk.” Id. at col. 10, ll. 34–37; col. 10, l. 60– col. 11, l. 2. Using any device capable of connecting to the Internet, an established ThinkLink account user logs on to the server, and, in turn, the server returns to the user an HTML page that indicates the type (voicemail, fax, email) and the number of unviewed messages the user has in the system. Id. at col. 10, ll. 37–43, 50–53. If the user wishes to examine new messages, he/she simply clicks on the corresponding hyperlink text and is taken to a message area applicable to the message type. Id. at col. 10, ll. 53–56. Menu commands 606 allow a user to configure ThinkLink to manage his/her account according to predefined criteria. Id. at col. 10, ll. 63–65. c. Claims 1–10 Petitioners contend that “[i]t would have been obvious to one of ordinary skill during the relevant time to combine the teachings of O’Neal with those of de Hond so as to teach each and every feature of claims 1–10 Case IPR2014-00347 Patent 8,504,631 B2 32 of the ’631 patent.” Pet. 27. To support its contentions, Petitioners present summaries of de Hond and O’Neal, and then provide a claim chart that allegedly explains how the cited prior art references teach the claimed subject matter recited in claims 1–10. Id. at 25–43. Petitioners rely on both de Hond and O’Neal to teach or suggest the limitations of claim 1, because in the claim chart, for each limitation of claim 1, Petitioners provide quotations and citations from both de Hond and O’Neal, along with a reproduction of Figure 15 from de Hond. Id. at 29–34. For example, a portion of Petitioners’ claim chart, reproduced below, addresses the limitation “said server computer system transmitting a first server created webpage to a first internet access device of said second member; said first server created web page comprising a message interface for receiving by said server computer system input data comprising a first message to said first member.” Case IPR2014-00347 Patent 8,504,631 B2 33 Id. at 31–32. To the extent that Petitioners assert that the summaries of de Hond and O’Neal (id. at 25–27), and quotations and citations from both de Hond and O’Neal for each limitation of claim 1, with de Hond’s Figure 15, qualify Case IPR2014-00347 Patent 8,504,631 B2 34 as argument, they do not: (1) specify where each element of the claim is found in de Hond and O’Neal (see 37 C.F.R. § 42.104(b)(4)); (2) constitute a detailed explanation of the significance of the quotations, citations, and figure from de Hond, and quotations and citations of O’Neal (see 37 C.F.R. § 42.22); and (3) address the scope and content of the prior art and any differences between the claimed subject matter and the prior art (see Graham v. John Deere). Rather, Petitioners’ summaries, quotations, and citations of both references, and de Hond’s Figure 15, unduly burden us with the task of sifting through the information presented by Petitioners to determine where each element of claim 1 is found in de Hond and O’Neal, and to identify any differences between the claimed subject matter and the teachings of de Hond and O’Neal. The quotations from de Hond relied upon in this portion of the claim chart, reproduced above, disclose the following: (1) a server that generates a screen and is connected to client computers that have a web browser (Ex. 1005, col. 2, ll. 44–46; col. 8, ll. 58–60); (2) users of the system provide answers to questions which may be sent using one or more HTML forms; (3) users of the system are allocated a home or house (id. at col. 3, ll. 61–66); and (4) when the owner of the house is not online, a user can send an e-mail to the owner of the house by clicking on mailbox icon 128 illustrated in Figure 10 (id. at col. 10, ll. 32–35; col. 11, ll. 46–48). The quotations from O’Neal relied upon in this portion of the claim chart, disclose the following: (1) a web server that enables a user with an account to log into the web server, and, in turn, returns to the user an HTML page that indicates the type and number of unviewed messages that the user has in the system (Ex. 1006, col. 10, ll. 36–65); and (2) a screen shot of an HTML page that includes Case IPR2014-00347 Patent 8,504,631 B2 35 menu commands 606, including the “Compose” command as illustrated in Figure 6. Although Petitioners’ quotations and citations from de Hond and O’Neal teach transmitting a server created webpage to a user’s Internet access device (i.e., any device capable of accessing the internet, such as a client computer), Petitioners’ quotations and citations to the cited prior art references do not offer an explanation as to how de Hond and O’Neal teach or suggest the “server created web page comprising a message interface for receiving by said server computer system input data comprising a first message to said first member,” as recited in claim 1. In this regard, Patent Owner asserts that Petitioners rely on de Hond’s icon 128 and O’Neal’s menu command labeled “Compose” in Figure 6 to teach the claimed “message interface.” Prelim. Resp. 26–31. Patent Owner asserts de Hond’s icon 128 does not teach or suggest a message interface because the only action disclosed by de Hond that can be performed on icon 128 is that it can be clicked. Id. at 28. Patent Owner further asserts that input data comprising a message cannot be entered into icon 128. Id. Patent Owner also contends that O’Neal’s “Compose” command illustrated in Figure 6 does not teach or suggest a message interface because, like de Hond’s icon 128, it can be clicked. Id. at 30–31 (citing Ex. 1006, col. 10, ll. 53–55). Patent Owner further contends that, although de Hond discloses the control menu commands allow a user to configure his or her account, input data comprising a message cannot be entered into the “Compose” clickable menu command. Id. 30–31(citing Ex. 1006, col. 10, ll. 63–65). Case IPR2014-00347 Patent 8,504,631 B2 36 We agree with Patent Owner that neither de Hond’s clickable mailbox icon 128, nor O’Neal’s clickable “Compose” menu command illustrated in Figure 6 teach or suggest the claimed “message interface.” As discussed previously in section II.A.1., the broadest reasonable interpretation of “message interface” in light of the ’631 Patent Specification is “a mechanism into which a message can be entered, such as, for example, a text entry area.” Moreover, Petitioners do not assert that de Hond’s mailbox icon 128, or O’Neal’s “Compose” command illustrated in Figure 6 is a mechanism into which a message can be entered. Accordingly, on the record before us, Petitioners have not demonstrated a reasonable likelihood of prevailing on their assertion that claim 1, and claims 2–10, dependent therefrom, would have been obvious over de Hond and O’Neal. III. CONCLUSION We conclude, based on the record before us, the information presented in the Petition does not demonstrate that there is a reasonable likelihood that Petitioners will prevail in showing that claims 1–10 are unpatentable. IV. ORDER Accordingly, it is ORDERED that the Petition for inter partes review is DENIED. Case IPR2014-00347 Patent 8,504,631 B2 37 PETITIONER: Michael T. Rosato Matthew A. Argenti WILSON SONSINI GOODRICH & ROSATI mrosato@wsgr.com margenti@wsgr.com WILSON SONSINI GOODRICH & ROSATI PATENT OWNER: Frank Michael Weyer TECHCOASTLAW fweyer@techcoastlaw.com Copy with citationCopy as parenthetical citation