PTAB

IPR2015-00691

Facebook Inc v. Mobile Plan It LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Methods and Systems for Organizing Meetings
  • Brief Description: The 8,312,091 patent discloses methods for organizing meetings where attendees communicate using personal "proxy" mailboxes. This system allows attendees to exchange messages without divulging their primary, personal electronic addresses.

3. Grounds for Unpatentability

Ground 1: Obviousness over Neibauer, Courter, Matheisen, and Ausems - Claims 1-2, 11-12 are obvious over the combination.

  • Prior Art Relied Upon: Neibauer (Running Microsoft Outlook 98 (1998)), Courter (Mastering Microsoft Outlook 98 (1998)), Matheisen (a 1999 Usenet post), and Ausems (Patent 6,434,403).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the core features of Microsoft Outlook 98, as described in the Neibauer and Courter textbooks, disclose the majority of the limitations in independent claim 1. These features included organizing meetings at physical locations, storing meeting information (attendees, location) in a database-like structure (.PST file), and sending messages between attendees. Matheisen, a Usenet post, was cited to teach the key "proxy" functionality. It described using Outlook 98's "Rules Wizard" to automatically forward emails from a public-facing "work" email address to a private "home" email address, thereby concealing the primary address from the original sender. Finally, Ausems was introduced to teach the use of wireless devices (PDAs running Windows CE with "Pocket Outlook") for email and calendar functions, mapping to the claim limitation of communicating updated meeting information to wireless devices.
    • Motivation to Combine: A POSITA would combine Neibauer and Courter because they are analogous references describing the same software product, Outlook 98. A POSITA would incorporate the teachings of Matheisen as it provided a specific, practical application of Outlook 98’s existing "Rules Wizard" feature to solve the known problem of maintaining email privacy. The motivation to add Ausems was driven by the strong market trend in the late 1990s to extend desktop application functionality to increasingly popular wireless devices, allowing users to access information on the go.
    • Expectation of Success: A POSITA would have had a high expectation of success. Combining the references involved applying known software features (email forwarding rules) and integrating a known, compatible mobile platform (Windows CE devices as taught by Ausems and Courter) with an established desktop application (Outlook 98). The result—mobile access to a meeting system with privacy features—was predictable.

Ground 2: Obviousness over Neibauer, Courter, Matheisen, Ausems, and Godin - Claims 3-7 and 13 are obvious over the combination.

  • Prior Art Relied Upon: Neibauer (Running Microsoft Outlook 98 (1998)), Courter (Mastering Microsoft Outlook 98 (1998)), Matheisen (a 1999 Usenet post), Ausems (Patent 6,434,403), and Godin (You've Got Pictures! AOL's Guide to Digital Imaging (1998)).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination in Ground 1 and added Godin to address dependent claims requiring "a picture of the first attendee." Petitioner asserted that Neibauer and Courter already taught that Outlook 98 messages could include file attachments, including pictures. The addition of Godin was to show the widespread, common-sense practice of people sending pictures of themselves to others via email. Godin explicitly discussed sending a photo of oneself to an "online buddy" to show what one looks like. This directly addressed the limitation of associating sharing information with a picture of an attendee.
    • Motivation to Combine: The motivation to add Godin's teaching to the base combination was straightforward and practical. In the context of a meeting with potentially unfamiliar participants, a POSITA would be motivated to include a picture of an attendee to facilitate recognition at the physical meeting location. Godin provided an express motivation for sharing a personal picture: to satisfy curiosity about what someone looks like.
    • Expectation of Success: Success would have been virtually certain, as this combination required only using Outlook 98's existing file attachment capability for a common and obvious purpose: attaching a picture of the sender to a message. No technical modification or innovation was required.

4. Key Claim Construction Positions

  • "personal proxy": Petitioner proposed this term be construed as "a personal proxy mailbox and storage space on a computer," based on explicit language in the ’091 patent specification and claims.
  • "personal proxy mailbox": Proposed as "a mailbox associated with a personal proxy," consistent with its role as a component of the "personal proxy."
  • "primary electronic address": Proposed as "an electronic address associated with an attendee that is different from the electronic address of the attendee's personal proxy mailbox." This construction was crucial to distinguishing the private, forwarded-to address from the public-facing proxy address.
  • "database": Petitioner argued for a broad construction of "a collection of data arranged for ease and speed of retrieval, as by a computer," asserting that Outlook's .PST file structure met this definition even if not explicitly named a "database" in the prior art.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that its grounds were not cumulative of the prior art considered during the original prosecution. During prosecution, the Examiner rejected claims over a reference (Thurlow) that disclosed email forwarding via a "Rules Wizard." The rejection was overcome by arguing Thurlow failed to teach that the forwarded-to (primary) address was not divulged to the original sender. Petitioner contended that its new combination, specifically the Matheisen reference, explicitly disclosed this missing element, presenting the art in a new light and curing the deficiency of the art previously before the USPTO.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-7 and 11-13 of the ’091 patent as unpatentable.