DoCSCorp LLC v. Litera Technology LLC

1. Case Identification

• Case #: IPR2016-00542
• Patent #: 8,060,575
• Filed: January 29, 2016
• Petitioner(s): DocsCorp LLC
• Patent Owner(s): Litera Technologies LLC
• Challenged Claims: 1-62

2. Patent Overview

• Title: Systems and Methods for Removing Metadata from Electronic Documents
• Brief Description: The ’575 patent discloses systems for removing metadata (e.g., tracked changes, author information) from electronic document attachments. The purported invention involves locating the metadata removal process on an intermediate server or gateway, which allows for the cleaning of attachments sent from devices with limited processing power, such as mobile phones.

3. Grounds for Unpatentability

Ground 1: Anticipation over the ezClean Website - Claims 1-12, 14-32, 34-51, and 53-62 are anticipated by the ezClean Website under 35 U.S.C. §102.

• Prior Art Relied Upon: The 2004 ezClean Website by Kraft Kennedy & Lesser, Inc. (“ezClean”), including associated product manuals and webpages.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that ezClean was a commercially available, server-based metadata cleaning system that existed more than one year before the patent’s priority date. The ezClean software could be installed "on a server" and was designed to integrate with other server-based software like Clearswift's MAILsweeper to scan and clean email attachments. Petitioner asserted this server-based implementation of ezClean is the "intermediate computer" recited in the independent claims. The system was described as automatically detecting attachments, removing metadata according to a configurable policy ("ezClean.ini" file), replacing the original attachment with the cleansed version, and sending the email to its destination. Petitioner contended that a server-based system like ezClean would inherently receive and process emails from all sources, including mobile devices, thus meeting that limitation as well.
  • Key Aspects: This ground asserted that the core inventive concept of the ’575 patent—moving metadata cleaning from the desktop to a server—was not new but was instead explicitly taught and enabled by a single prior art publication.

Ground 2: Obviousness over the ezClean Website in view of Maes - Claims 1-62 are obvious over ezClean in view of Maes under 35 U.S.C. §103.

• Prior Art Relied Upon: ezClean Website, and Maes (Patent 7,570,964).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that ezClean taught a robust, server-based system for automatically removing metadata from email attachments based on a cleansing policy. To the extent ezClean’s inherent capability to handle mobile device emails was not sufficient for anticipation, Maes explicitly disclosed a server-based architecture for providing services to mobile devices that lack the capability to perform them locally. Maes specifically identified "metadata removal services" as one such service that could be performed on an email server after intercepting a message from a mobile device (e.g., a PDA).
  • Motivation to Combine: A POSITA would combine the teachings of ezClean and Maes to improve the functionality of mobile email systems. Maes identified the problem of limited processing power on mobile devices and proposed a server-based solution, including metadata removal. A POSITA would have looked to known server-based metadata removal systems like ezClean to implement the specific functionality described in Maes. Furthermore, Maes noted that its server services often required user confirmation, a difficulty which ezClean’s functionality for fully automatic, policy-based cleaning would have solved.
  • Expectation of Success: A POSITA would have had a high expectation of success in combining these references, as both relate to server-based email processing and were designed to operate in a standard client-server network architecture.

Ground 3: Obviousness over Antonoff - Claims 1-5, 7-8, 10-12, 15-22, 25, 27-32, 35-37, 40-43, 45, 47-51, 54, 56-58, and 61 are obvious over Antonoff under 35 U.S.C. §103.

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

• Core Argument for this Ground:

  • Prior Art Mapping: Antonoff disclosed systems for removing metadata from a "file attached to an electronic mail." While one embodiment operated at the desktop level, Antonoff also explicitly described a networked environment where a sending device (client) communicates with one or more remote computers, such as a server. A separate embodiment in Antonoff taught that a client computer (which could be a hand-held computer) could upload a file to a server, and the server was configured to "scrub the file automatically." Petitioner argued that all claim limitations were met by combining these disclosed embodiments within Antonoff.
  • Motivation to Combine: A POSITA would have been motivated to combine the embodiments within Antonoff to solve a known problem. Antonoff taught that emails could be sent from hand-held computers and also taught that a server could automatically scrub files. A POSITA would have found it obvious to apply the server-based scrubbing to email attachments, particularly those from mobile devices, to offload the processing from the less powerful device. This modification represented a simple combination of two compatible embodiments described in the same reference to achieve a predictable result.
  • Expectation of Success: The combination was of compatible features within a single reference, leading to a high expectation of success.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 13, 33, and 52 were obvious over the ezClean Website with minor modifications; that Claim 7 was obvious over ezClean in view of Lotus (a 1995 press release on webmail); that numerous claims were obvious over Antonoff in view of Maes; and that Claim 7 was obvious over Antonoff in view of Lotus.

4. Key Claim Construction Positions

• Petitioner proposed constructions for two key terms that appear in the independent claims, arguing they should be interpreted in view of the specification’s description of a network topology:
  • "intermediate computer" and "computer that is remote": Proposed construction is "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." This construction was central to mapping prior art email servers and gateways to the claim language.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-62 of the ’575 patent as unpatentable.