PTAB

IPR2014-00242

Facebook Inc v. EveryMD LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method Apparatus and Business System for Online Communications With Online and Offline Recipients
  • Brief Description: The ’047 patent discloses a system for facilitating online communication with individuals in a defined group (e.g., doctors), regardless of whether the recipient has a pre-existing internet presence. The system creates a database of members, generates a new "internet presence" (e.g., an email address and webpage) for each member, and provides a user interface for senders to contact members. Communications to members with existing online accounts are forwarded, while communications to offline members are converted to offline formats like fax or voice messages.

3. Grounds for Unpatentability

Ground 1: Claims 1-7 are obvious over Resnick in view of Stefik.

  • Prior Art Relied Upon: Resnick (Patent 5,675,746) and Stefik (Patent 6,167,428).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Resnick disclosed the foundational elements of an intermediary communication system. Resnick taught a system that receives a message from a sender, identifies the recipient, and forwards the message to the recipient's known address, thereby acting as a proxy. This, Petitioner asserted, met the limitations of receiving a message addressed to a system-generated address. Stefik was presented as disclosing the creation of proxy or "forwarding" email addresses that map to a user's real email address. Petitioner contended that claim 1's steps of "creating a first created e-mail address for a recipient," "receiving a first e-mail message...addressed to said first created e-mail address," and delivering the message were all disclosed or rendered obvious by the combination. The dependent claims merely added conventional email functionality.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the message-forwarding architecture of Resnick with the specific proxy email address creation of Stefik to enhance Resnick's system. The combination would allow Resnick's system to provide users with stable, system-specific contact addresses, making the service more robust and user-friendly, a well-known goal in the art.
    • Expectation of Success: A POSITA would have a high expectation of success in combining these systems, as it involved applying established email forwarding and aliasing techniques (Stefik) to a known messaging architecture (Resnick), which would be a straightforward integration of software components.

Ground 2: Claims 1-7 are obvious over Resnick and Stefik in view of Davis.

  • Prior Art Relied Upon: Resnick (Patent 5,675,746), Stefik (Patent 6,167,428), and Davis (Patent 6,208,995).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Resnick and Stefik from Ground 1. Petitioner argued that the ’047 patent's contribution was extending such a system to recipients without an "internet presence" by converting online messages to offline formats. Davis was introduced to supply this missing element, as it explicitly disclosed a system for converting an email message into a fax message for delivery to a recipient's fax machine. Petitioner asserted that Davis taught the conversion of an online communication into an offline one, directly mapping onto the functionality required to support "offline recipients" as described in the ’047 patent specification.
    • Motivation to Combine: A POSITA, having already combined Resnick and Stefik to create an online communication platform, would be motivated to integrate the email-to-fax technology of Davis to expand the platform's reach. At the time of the invention, many professionals and businesses (the target demographic) relied on fax machines. Adding this capability would significantly increase the system's user base and utility by bridging the gap between online users and offline recipients, representing a predictable market-driven improvement.
    • Expectation of Success: The integration of an email-to-fax gateway (Davis) into a messaging system (Resnick/Stefik) was a known and technically feasible task. A POSITA would expect success in adding this feature, as it involved routing certain messages to a known type of conversion service based on recipient data stored in a database.

4. Key Claim Construction Positions

  • "creating a first created e-mail address for a recipient": Petitioner argued this term should be construed to mean associating a new email alias with a recipient's record in a database, where the alias is controlled by the system. It does not necessarily require the creation of a new, separate email inbox or account that the recipient can directly access. This construction is critical because prior art like Stefik taught creating forwarding aliases, not necessarily full-fledged mailboxes. If the term were construed more narrowly to require a new, distinct mailbox, the prior art might not directly apply. Petitioner asserted its broader construction was consistent with the specification, which described the "created" address as a "point of contact" that could be linked to a pre-existing email box for automatic forwarding.

5. Relief Requested

  • Petitioner requests institution of inter partes review and cancellation of claims 1-7 of the ’047 patent as unpatentable.