PTAB

IPR2014-00353

Symantec Corp v. RPost Communications Ltd

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System and Method for Verifying Delivery and Integrity of Electronic Messages
  • Brief Description: The ’628 patent discloses a method for processing electronic messages where a server determines if a message contains a "particular indication" requiring special handling. If the indication is present, the server performs a special process; otherwise, the message is transmitted to the recipient via a normal route.

3. Grounds for Unpatentability

Ground 1: Claims 1-30 are anticipated under 35 U.S.C. § 102 by S89.

  • Prior Art Relied Upon: S89 ("Sendmail 8.9.0," a widely used open-source email routing program and documentation published in 1998).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that S89, a foundational internet email routing facility, discloses every element of the challenged claims. S89 teaches using various message indications—such as fields for "from," "size," "class," and "priority"—to trigger special processing. Its core function involves determining whether such indications are present and, based on that determination, either transmitting the message normally (a first route) or performing special processing, such as recursive alias processing (a second route). Petitioner contended that S89's features also met numerous dependent claim limitations, including automatic encryption for external links, logging events for posterity, filtering content based on header fields, and applying special rules for messages marked as expensive via a "HoldExpensive" flag.

Ground 2: Claims 1-30 are anticipated under 35 U.S.C. § 102 by CEM.

  • Prior Art Relied Upon: CEM ("Certified Electronic Mail," an academic paper on security extensions for email systems published in 1994).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the CEM academic paper, which describes protocols for securely exchanging email receipts, also anticipates all challenged claims. In the CEM system, a central "postmaster" acts as the claimed server. The "particular indication" is the sender's act of using the CEM protocol, evidenced by signing the email. The postmaster determines if this indication is present by verifying the signature. If verified, it performs special processing by enciphering the message and generating a receipt before sending it to the recipient. If a message is not part of the CEM protocol, it is handled normally. Petitioner argued that CEM explicitly teaches creating and storing a record of the transaction as proof of content and delivery, directly mapping to the verification-related limitations of several dependent claims.

Ground 3: Claims 1-30 are obvious over S89 in view of CEEM and Kent.

  • Prior Art Relied Upon: S89 ("Sendmail 8.9.0"), CEEM ("Certified Exchange of Electronic Mail," a 1999 article), and Kent ("Internet Privacy Enhanced Mail," a 1993 article).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that S89 provides the fundamental framework of a general-purpose email facility that processes messages based on their content, as required by the independent claims. CEEM and Kent, both focused on security extensions for email, provide the specific features recited in the dependent claims that may not be explicit in S89. CEEM teaches creating message digests for proof of delivery and using forms for recipient signature. Kent describes using Privacy Enhanced Mail (PEM) for message integrity and encryption to support electronic commerce. The combination of S89's rule-based routing with the known security techniques from CEEM and Kent allegedly renders all claims obvious.
    • Motivation to Combine: A POSITA would combine the teachings of CEEM and Kent with a standard email system like S89 as a simple substitution of known elements to achieve predictable results. The motivation was to apply known and desired security and verification techniques (e.g., proof of delivery, encryption) to a widely used, general-purpose email platform to improve its functionality.
    • Expectation of Success: A POSITA would have had a high expectation of success because the combination involved applying well-understood security protocols to a standard, well-documented email system.

4. Key Claim Construction Positions

  • "particular indication identifying the message as requiring special processing": Petitioner argued, based in part on the Patent Owner's own prior statements, that this term should be construed broadly to include any pre-existing criteria within a message—such as specific content, headers, sender/recipient information, or flags. This interpretation does not require any new information to be added to the message for the purpose of triggering special processing, but rather relies on filtering the existing message content.
  • "register" / "registration": Citing the patent's specification, Petitioner contended these terms should be interpreted broadly to encompass any processing according to the invention's method. This would include simple actions like addressing a message to an archive or logging processor (e.g., via a 'cc:' field), not just a formal process of creating a verifiable receipt.
  • "processing the message in a special manner": For several dependent claims that Petitioner argued were otherwise unintelligible, this phrase was equated to the independent claim language "processing the message by the server." This construction was proposed to give the claims their broadest reasonable scope for the purpose of the IPR.

5. Relief Requested

  • Petitioner requests the institution of an inter partes review and the cancellation of claims 1-30 of Patent 8,504,628 as unpatentable.