PTAB

IPR2015-00258

Microsoft Corp v. MesSage NotifiCatION Technologies LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Automatic Notification of Receipt of Electronic Mail (E-Mail) Via Telephone System without Requiring Log-On to E-Mail Server
  • Brief Description: The ’786 patent describes a system for automatically notifying a user of new e-mail messages via a telephone system. The system generates a notification signal, such as illuminating a light on the user's telephone equipment, upon receipt of an e-mail, thereby allowing the user to know a message is waiting without logging into an e-mail server.

3. Grounds for Unpatentability

Ground 1: Anticipation by Cohen - Claims 1-3 and 6-10 are anticipated by Cohen under 35 U.S.C. §102.

  • Prior Art Relied Upon: Cohen (Patent 4,837,798).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Cohen, which discloses a "Unified Messaging System," teaches every element of the challenged claims. Cohen’s system integrates various messaging services, including e-mail and voicemail, and provides a unified notification mechanism. Specifically, Cohen taught that upon receiving a message (including e-mail), a "lighted lamp" or other indicator on a user's voice terminal would be activated to indicate a message is waiting. This notification was described as automatic and independent of any user request, directly corresponding to the "passive" notification system that the patent owner described as the "heart of the invention" during prosecution. Cohen further disclosed correlating recipient identifiers to subscriber identifiers (e.g., telephone numbers) and generating activation/deactivation signals for the waiting indicator, mapping to the limitations of both independent and dependent claims.

Ground 2: Obviousness over Cohen, Penzias, and Garcia - Claims 1-10 are obvious over Cohen in view of Penzias and Garcia under §103.

  • Prior Art Relied Upon: Cohen (Patent 4,837,798), Penzias (Patent 5,475,738), and Garcia (Patent 5,802,166).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted this ground as a contingency in case Cohen was found not to anticipate all limitations. Cohen provided the base unified messaging system with e-mail notification via a telephone light. Penzias was argued to supply any missing detail regarding the "recipient-subscriber correlator," as it explicitly teaches a network-accessible database for mapping e-mail addresses to subscriber telephone numbers for a text-to-speech service. Garcia was argued to teach providing finer-grained notifications, such as using separate and distinct message waiting lamps for different message types (e.g., one for e-mail, one for voicemail), which would have been an obvious improvement to Cohen's single indicator.
    • Motivation to Combine: A POSITA would combine Cohen with Penzias to enhance the system's configuration flexibility by making the correlator a network service accessible to all systems, rather than being tied to a specific interface. The petition noted that both Cohen and Penzias were assigned to AT&T, making their combination natural for an artisan working in the field. A POSITA would combine the resulting system with Garcia's teachings to improve the user interface by providing distinct visual notifications for each message type, a known method for enhancing usability.
    • Expectation of Success: Success was reasonably expected because the combination involved integrating known and compatible components of messaging and telephone systems to achieve predictable improvements in flexibility and user experience.

Ground 3: Obviousness over Cohen and Schull - Claim 6 is obvious over Cohen in view of Schull under §103.

  • Prior Art Relied Upon: Cohen (Patent 4,837,798) and Schull (Patent 5,521,964).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground specifically addressed claim 6, which requires that the data signals for activating and deactivating the notification include a "subscriber identifier." Petitioner argued that if the Board found Cohen did not inherently or expressly teach this, Schull explicitly did. Schull, which describes a visual message waiting indication system, expressly taught that the data signal used to activate and deactivate the indicator (e.g., a light) includes the subscriber's telephone number.
    • Motivation to Combine: A POSITA would combine Schull's teaching with Cohen's system as a trivial modification to improve system reliability. Including the subscriber identifier in the protocol would allow the recipient's equipment to confirm that notification messages were sent to the correct device, preventing errors.
    • Expectation of Success: Adding a known data field (a subscriber ID) to a known signaling protocol to improve accuracy was a simple, predictable modification with a high expectation of success.

4. Key Claim Construction Positions

  • "Recipient-Subscriber Correlator": Petitioner argued this term, added during prosecution, should be construed broadly to include any search algorithm or database lookup used to map a recipient identifier (like an e-mail address) to a subscriber identifier (like a telephone number). This broad construction was central to arguing that the functionality was taught by the prior art, particularly Cohen and Penzias.
  • "Notification means...for notifying the recipient": As a means-plus-function term, Petitioner argued the corresponding structure in the ’786 patent was an electronic circuit with a passive indicator, specifically a "passive LED or lamp." This construction was critical for mapping the "lighted lamp" and "message waiting lamp" of Cohen and other references directly onto this limitation, and for distinguishing it from "active" notifications like pagers or audible alerts, which the patentee disclaimed.
  • "Means for sending and receiving email": Petitioner argued this term should be understood to include any software/hardware component of a computer used to send and receive e-mail, as the ’786 patent provided no specific algorithm. This interpretation allowed conventional e-mail systems disclosed in the prior art to satisfy the limitation.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-10 of the ’786 patent as unpatentable.