IntraLinks Inc v. Lone Star Document Management LLC

1. Case Identification

• Case #: CBM2016-00005
• Patent #: 6,918,082
• Filed: October 13, 2015
• Petitioner(s): Intralinks, Inc.
• Patent Owner(s): Lone Star Document Management, LLC
• Challenged Claims: 1-21

2. Patent Overview

• Title: Electronic Document Proofing System
• Brief Description: The ’082 patent discloses a system for distributing electronic documents for proofreading. The system uses computer networks to allow multiple users to collaboratively proof, annotate, edit, and manage different versions of documents between a document creator and designated proofers.

3. Grounds for Unpatentability

Ground 1: Patent Ineligibility under §101 - Claims 1-21 are invalid under 35 U.S.C. §101 as being directed to an abstract idea.

• Prior Art Relied Upon: This ground was based on the two-step framework for patent eligibility established in Alice Corp. v. CLS Bank and Mayo v. Prometheus. Petitioner did not rely on specific prior art documents for invalidity but referenced the ’082 patent’s own background disclosure to argue that the underlying computer components were conventional and well-known at the time of the invention.
• Core Argument for this Ground:
  • Argument Mapping to Alice/Mayo Framework: Petitioner applied the Supreme Court's two-step test for patent eligibility to argue that all challenged claims are invalid.
    • Step 1 (Abstract Idea): Petitioner argued that the claims, as represented by independent claim 10, are directed to the abstract idea of "providing a document for proofing and collecting comments." This concept was characterized as a fundamental and long-standing human activity involving the basic steps of data collection, organization, storage, and distribution. Petitioner asserted that this is an organizational process that humans have always performed, with or without computers.
    • Step 2 (No Inventive Concept): Petitioner contended that the claims lack an "inventive concept" sufficient to transform the abstract idea into a patent-eligible application. It was argued that the claim elements, when considered individually and as an ordered combination, add nothing more than the generic application of conventional computer technology. Petitioner performed an element-by-element analysis of claim 10, arguing that each component—a "database," a "computer connectable to the network," and a "program executing on said computer"—was a generic, off-the-shelf element used for its well-understood, routine function. The claimed steps of storing documents, receiving comments, associating comments with documents, and formatting them for display were described as simple applications of generic computing to a known business practice.
  • Key Aspects:
    • CBM Eligibility: A significant portion of the petition was dedicated to establishing that the ’082 patent was eligible for Covered Business Method (CBM) review. Petitioner argued that the claimed system was incidental or complementary to a financial activity, citing the patent's own example of a company hiring a graphics firm to design a CD cover. It was also argued that the patent did not claim a "technological invention" because it merely used generic computer components to solve a purely organizational problem—managing document workflow—rather than a technical problem in the computer itself.
    • Scope of Invalidity Argument: The invalidity argument was extended to all claims. Petitioner contended that independent claims 1, 17, and 21 were of similar scope to claim 10 and were likewise directed to the same abstract idea without adding an inventive concept. Dependent claims 2-9, 11-16, and 18-20 were alleged to be invalid for merely adding further generic implementations of the abstract idea, such as using the internet, notifying users via email, or using conventional webserver technology.

4. Relief Requested

• Petitioner requested institution of a Covered Business Method (CBM) patent review and cancellation of claims 1-21 of the ’082 patent as unpatentable under 35 U.S.C. §101.