Google Inc. and Twitter, Inc.v.Everymd.com Llc.

Patent Trial and Appeal Board

May 22, 2014

13234823 (P.T.A.B. May. 22, 2014)

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
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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.
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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.
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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.
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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
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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;
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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
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’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.
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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
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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
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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).
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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.

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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.

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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
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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.
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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
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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.”
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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
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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
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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
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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,
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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.”

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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
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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,
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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.
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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:
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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.
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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.
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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
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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.
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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
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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.”
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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
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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
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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).
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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.

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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