DoCSCorp LLC v. Litéra Technologies LLC

1. Case Identification

• Case #: IPR2016-00541
• Patent #: 7,895,276
• Filed: January 29, 2016
• Petitioner(s): DocsCorp LLC
• Patent Owner(s): Litera Technologies LLC
• Challenged Claims: 1-21

2. Patent Overview

• Title: Method for Transmitting an Electronic Document
• Brief Description: The ’276 patent describes a server-based method for automatically removing metadata from e-mail attachments. The system intercepts an email at an intermediate server, detects and cleans metadata from any attachments, replaces the original attachment with the cleansed version, and then forwards the email to the intended recipient to enable secure document transmission, particularly from mobile devices.

3. Grounds for Unpatentability

Ground 1: Anticipation over the ezClean Website - Claims 1-12 and 14-21 are anticipated under 35 U.S.C. §102 by the ezClean Website.

• Prior Art Relied Upon: ezClean Website (a collection of 2004-2005 webpages, product manuals, and technical documents for the ezClean software system by Kraft, Kennedy & Lesser, Inc.).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the ezClean Website, which described a commercial server-based metadata cleaning system, disclosed every limitation of the challenged claims. The website explicitly stated that a user can "put ezClean to work on a server" and that it "works with server-based software including Clearswift's MAILsweeper™." This combination, Petitioner asserted, functions as the claimed "intermediate computer system" (e.g., a gateway or mail server) that receives emails. The ezClean software was described as automatically detecting and removing metadata from Microsoft Office attachments, creating a "cleansed version," replacing the original, and sending the email to the recipient. Petitioner contended this server-based architecture would inherently process emails from any source, including the mobile devices and webmail recited in dependent claims.

Ground 2: Obviousness over the ezClean Website in view of Maes - Claims 1-21 are obvious over the ezClean Website in view of Maes.

• Prior Art Relied Upon: ezClean Website, Maes (Patent 7,570,964).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that, to the extent the ezClean Website did not inherently teach processing emails from mobile devices, Maes explicitly supplied this element. The ezClean Website taught the core server-based metadata removal process. Maes was directed to providing server-based services for mobile devices that lacked the capability to perform such services locally. Critically, Maes explicitly identified "metadata removal services" for documents like Microsoft Word files as a service that could be performed on a server after intercepting an email from a mobile device.
  • Motivation to Combine: A POSITA would combine these references as both addressed the same problem: providing document security by removing metadata from email attachments. Maes provided an explicit rationale—the limited computing power of mobile devices—for moving services like metadata removal to a server. This provided a clear motivation to implement the detailed, commercially-available server-side functionality of ezClean within the server-based architecture for mobile devices described by Maes.
  • Expectation of Success: A POSITA would have a high expectation of success, as both references involved conventional email processing on a server. Integrating a metadata removal module (ezClean) into a server architecture designed to process mobile emails (Maes) was a predictable combination of known elements.

Ground 3: Obviousness over Antonoff - Claims 1-8, 10-12, and 15-21 are obvious over Antonoff.

• Prior Art Relied Upon: Antonoff (Patent 7,640,308).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended that Antonoff, by itself, rendered the claims obvious by disclosing all the required elements across its described embodiments. Antonoff taught a system for removing metadata from files, including email attachments sent from devices such as a "hand-held computer." While one embodiment operated on a user's desktop, Antonoff also disclosed a client-server architecture (Fig. 4) where a client device could upload a file to a server, and the "server 420 is configured to scrub the file automatically." This server, Petitioner argued, constituted the claimed "intermediate computer system."
  • Motivation to Combine (within the reference): A POSITA would have been motivated to combine Antonoff’s teachings—applying its server-based scrubbing functionality to the email attachments sent from handheld devices that it also disclosed. The motivation was to solve the well-known problem of providing robust processing for resource-constrained mobile devices, a problem Antonoff directly addressed. This was presented not as combining separate references, but as a simple and obvious combination of embodiments within a single reference.
  • Expectation of Success: Success was expected because it involved applying one disclosed feature of Antonoff (server-side scrubbing) to another disclosed feature (email attachments from handhelds) to achieve a predictable result.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including the ezClean Website with Lotus (a 1995 press release on webmail) and Antonoff with Maes or Lotus, relying on similar arguments for adding explicit teachings for mobile or webmail processing.

4. Key Claim Construction Positions

• Petitioner argued for a specific construction of the term "intermediate computer system" (recited in claims 1, 5, 10, 17, and 21).
  • Proposed Construction: "a computer system, such as an e-mail server, or program that is located between an e-mail sender's system and an e-mail recipient's system."
  • Importance: This construction was critical to Petitioner's invalidity arguments. It allowed prior art disclosing server-based or gateway-based processing (like ezClean's integration with the MAILsweeper SMTP gateway or Antonoff's server embodiment) to be mapped directly onto this key claim limitation.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-21 of Patent 7,895,276 as unpatentable.