PTAB

IPR2016-00644

RPX Corp v. A Pty Ltd

Log In

1. Case Identification

2. Patent Overview

  • Title: Method and System for Conveying an Email Message
  • Brief Description: The ’572 patent discloses methods and systems for routing an email message to its intended recipient when the destination address is initially invalid. The system uses "descriptors" (e.g., a person's name or phone number) within the address field to query a database that maps these descriptors to the recipient's correct, formal email address.

3. Grounds for Unpatentability

Ground 1: Anticipation over Email for Everyone - Claims 1, 2, 12, 13, 34, and 35 are anticipated under 35 U.S.C. §102 by the Email for Everyone paper.

  • Prior Art Relied Upon: Email for Everyone paper (Stephen Campbell, *Campus Email for Everyone: Making it Work in Real Life*, Dartmouth College (Feb. 1994)).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the Email for Everyone paper, describing Dartmouth College’s BlitzMail® system, disclosed every limitation of the challenged independent claims. The paper described an "addressing-by-name" feature where a user could send an email using the recipient's actual name rather than an arbitrary account name. The BlitzMail server would then query the Dartmouth Name Directory (DND), a database containing user information (name, nickname, phone, etc.) and their preferred email addresses. This process maps directly to the claims’ method of using a "descriptor" (the recipient's name) different from the formal email account name to query a database and find the correct address for message delivery. Petitioner contended this system inherently handled "undeliverable" mail (claim 12) by resolving addresses that would otherwise fail.
    • Key Aspects: The core of this ground was that a publicly accessible paper describing a university's fully functional email system from 1994 taught the exact inventive concept of the ’572 patent.

Ground 2: Obviousness over Email for Everyone and Getting Started guide - Claims 5, 6, 7, 16-18, 38-40, and 44 are obvious over the Email for Everyone paper in view of the Getting Started guide.

  • Prior Art Relied Upon: Email for Everyone paper and the Getting Started guide (Dartmouth Computing Services, *Getting Started with BlitzMail®* (Aug. 1996)).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the BlitzMail system disclosed in Email for Everyone. The challenged dependent claims add limitations related to generating and conveying a return email notification to the sender about the message status (e.g., if it was received or opened). While Email for Everyone did not explicitly mention return receipts, the Getting Started guide—a user manual for the same BlitzMail system—expressly taught this feature. The guide disclosed that a user could request a "return receipt" to be notified when a message was opened by the recipient.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine these references because they both described the same BlitzMail system. A POSITA seeking to understand the full functionality of the system described in the primary Email for Everyone paper would have been motivated to consult the official user manual, the Getting Started guide. Adding a notification feature to confirm message delivery was a well-known, desirable function in email systems.
    • Expectation of Success: The combination involved adding a documented feature (return receipts) to the system it was designed for. A POSITA would have had a high expectation of success because the Getting Started guide confirmed that this feature was already integrated into the BlitzMail system.

Ground 3: Obviousness over Email for Everyone, Getting Started guide, and Waskiewicz - Claims 8, 9, 19, 20, 41, and 42 are obvious over the Email for Everyone paper and the Getting Started guide and further in view of Waskiewicz.

  • Prior Art Relied Upon: Email for Everyone paper, the Getting Started guide, and Waskiewicz (Patent 5,822,526).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addressed claims requiring a "notification of a failure to match" the descriptor with an email address in the database. While the primary combination disclosed notifications for successful delivery, it did not explicitly teach notifications for lookup failures. Waskiewicz disclosed an email system using "proxy addresses" where, if a query for a proxy address resulted in "no match," the system issued a "non-delivery report" to the sender. This directly taught the claimed failure notification.
    • Motivation to Combine: A POSITA would combine Waskiewicz with the BlitzMail system to improve its functionality. The BlitzMail system, as described in Email for Everyone, already rejected messages if a name lookup was ambiguous ("more than one match") or failed. A POSITA would have found it obvious to add a non-delivery report, as taught by Waskiewicz, to inform the sender why their message was rejected. This was a predictable solution to the known problem of silent email delivery failures.
    • Expectation of Success: Implementing non-delivery reports was a standard, well-understood feature in email systems at the time. A POSITA would have reasonably expected to succeed in adding this conventional error-handling functionality to the BlitzMail system.

  • Additional Grounds: Petitioner asserted that claims 11 and 22 were anticipated by the Email for Everyone paper. Petitioner also asserted an additional obviousness challenge against claims 10, 21, and 43 based on the Email for Everyone paper in view of Sadler (Special Edition: Using Internet Email, 1995), which taught using specially formatted emails as database queries.

4. Key Claim Construction Positions

  • "wherein said descriptor includes one or more identifying elements selected from a list including..." (claims 2, 13, 35): Petitioner argued this phrase should be interpreted as a Markush group claim. This construction means the claim covers the use of any one of the listed identifying elements (e.g., telephone number, personal name) as a descriptor, which aligns with the alternative ways the prior art BlitzMail system could be queried.
  • "separate fields for each of given name, surname, telephone number..." (claims 11, 22, 44): Petitioner argued this language should be construed to cover a database having any one of the listed fields, any combination of them, or all of them, as long as they appear in "separate fields." This interpretation was important for mapping the database structure disclosed in the Email for Everyone paper, which showed a DND with separate fields for various user data points.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1, 2, 5-13, 16-22, 34-35, and 38-44 of the ’572 patent as unpatentable.