PTAB

IPR2015-00692

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 ’091 patent describes a computer-implemented method for organizing meetings. The system purports to use "personal proxy" mailboxes that allow attendees to communicate and receive meeting updates on wireless devices without revealing their private, "primary" email addresses.

3. Grounds for Unpatentability

Ground 1: Obviousness over Neibauer, Courter, Matheisen, and Ausems - Claims 8, 14, 19-22, 25, 26, and 30 are obvious over the combination of these references under 35 U.S.C. §103.

  • Prior Art Relied Upon: Neibauer ("Running Microsoft Outlook 98," a 1998 textbook), Courter ("Mastering Microsoft Outlook 98," a 1998 textbook), Matheisen (a 1999 Usenet post), and Ausems (Patent 6,434,403).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of references taught every limitation of the challenged claims, which all depend from independent claim 1.
      • Meeting Organization and Database: Neibauer and Courter, both of which describe the features of Microsoft Outlook 98, allegedly taught organizing a meeting at a physical location, inviting multiple attendees, and storing the meeting information (location, attendee list) in a personal folder file (.PST). Petitioner contended this .PST file, which organizes data for retrieval, functioned as the claimed "database."
      • Proxy and Primary Addresses: Petitioner asserted that a standard Outlook 98 "work" email account, as described in Neibauer and Courter, satisfied the limitations of a "personal proxy mailbox." The key limitation of communicating "without divulging" the primary electronic address was taught by Matheisen. Matheisen described using Outlook 98's "Rules Wizard" feature (also detailed in Courter) to automatically forward emails received at a user's "work" address to their private "home" email address. This process served the function of the claimed invention by using the work mailbox as a proxy, shielding the user's primary "home" address from the original sender.
      • Wireless Communication: Ausems taught a portable wireless device (a PDA combined with a wireless telephone) that could run "Pocket Outlook," a mobile version of the Outlook software. Petitioner argued Ausems made it obvious to convey updated meeting information, such as an attendee list, to the wireless devices of attendees, as the device was designed to synchronize calendar and email data. Dependent claim 8, which specifies the wireless devices are telephones, was expressly disclosed by the PDA/telephone combination in Ausems.
    • Motivation to Combine: Petitioner asserted several motivations for a person of ordinary skill in the art (POSITA) to combine the references.
      • A POSITA would combine Neibauer and Courter because they are analogous references describing the features of the exact same software product, Outlook 98.
      • A POSITA would have been motivated to implement the forwarding technique from Matheisen within the Outlook 98 system described by Neibauer and Courter. The motivation was to achieve the clear benefit of enhanced privacy for users (hiding a personal email address), using the software's own widely documented "Rules Wizard" functionality.
      • A POSITA would further combine this system with the wireless technology in Ausems to meet the strong and growing market demand for mobile access to email and calendar information. The fact that Ausems's device ran a compatible version of Outlook ("Pocket Outlook") would have made this integration a straightforward and predictable design choice.
    • Expectation of Success: Petitioner argued a POSITA would have had a high expectation of success. The combination involved using known features of a single, well-established software ecosystem (Microsoft Outlook) on conventional hardware (desktops and PDAs). The simplicity of the method was evidenced by Matheisen's post, which responded to an original post by a self-described "novice IT person" who had implemented the same forwarding technique.
    • Key Aspects: Petitioner argued this ground was not cumulative of the art considered during original prosecution. The Examiner had previously allowed the claims over a reference (Thurlow) that taught email forwarding but failed to teach the crucial element of hiding the forwarded-to address from the original sender. Petitioner contended that Matheisen explicitly supplied this missing teaching.

4. Key Claim Construction Positions

Petitioner argued for the broadest reasonable construction for several key terms, which it contended were essential to mapping the prior art to the claims.

  • "personal proxy": Proposed construction was "a personal proxy mailbox and storage space on a computer." This aligns the claim term with a standard user profile in Outlook 98, which includes both a mailbox and storage (.PST file).
  • "primary electronic address": Proposed construction was "an electronic address associated with an attendee that is different from the electronic address of the attendee's personal proxy mailbox." This construction is critical for applying Matheisen, which distinguishes between a "work" (proxy) address and a "home" (primary) address.
  • "database": Proposed construction was "a collection of data arranged for ease and speed of retrieval, as by a computer." This broad, dictionary-based definition allowed Petitioner to argue that Outlook 98's organized .PST file structure met the "database" limitation, even though the prior art did not explicitly use that term.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review (IPR) and the cancellation of claims 8, 14, 19-22, 25, 26, and 30 of the ’091 patent as unpatentable.