PTAB

IPR2016-00645

RPX Corp v. A Pty Ltd

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1. Case Identification

2. Patent Overview

  • Title: Method and System for Conveying an Email Message
  • Brief Description: The ’572 patent discloses methods for routing emails sent to an invalid or unknown destination address. The invalid address contains "descriptors," such as a person's name or other identifying information, which are used to query a database to find the recipient's correct email address and enable message delivery.

3. Grounds for Unpatentability

Ground 1: Anticipation/Obviousness over Waskiewicz - Claims 23-24, 27, 31, and 33 are anticipated under 35 U.S.C. § 102 or, alternatively, obvious under 35 U.S.C. § 103 over Waskiewicz.

  • Prior Art Relied Upon: Waskiewicz (Patent 5,822,526).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued Waskiewicz discloses every element of independent claim 23. Waskiewicz teaches a system that receives an email, extracts an address, and uses a directory service agent (DSA) to query a directory (database) to find a corresponding mailbox. Petitioner contended that Waskiewicz’s "proxy address" system, which allows users to be reached via aliases like "MikeJones" instead of a formal account name, directly corresponds to the ’572 patent's concept of an "invalid destination address" containing a "descriptor." Waskiewicz’s DSA and directory perform the claimed database query and search.
    • Prior Art Mapping (Dependent Claims): Petitioner asserted Waskiewicz’s use of personal names (e.g., "MikeJones," "JimThompson") as proxy addresses anticipates claim 24. Waskiewicz’s disclosure of issuing and returning a "non-delivery report" when no match is found was argued to anticipate the notification limitations of claims 27 and 31. The database structure in Waskiewicz, showing separate fields for user names and various proxy addresses including X.400 attributes for given name and surname, was argued to meet the limitations of claim 33.
    • Motivation to Combine (for §103 alternative): For the alternative obviousness argument, Petitioner contended that a person of ordinary skill in the art (POSITA) would have found it obvious to apply Waskiewicz’s disclosed system to handle common misaddressed emails containing descriptors, as this was a known problem.

Ground 2: Obviousness over Email for Everyone and Edelstein - Claims 45, 48, and 49 are obvious over the Email for Everyone paper in view of Edelstein.

  • Prior Art Relied Upon: Email for Everyone (a 1994 paper by Stephen Campbell on Dartmouth's BlitzMail system) and Edelstein (Patent 5,764,906).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Email for Everyone teaches most elements of independent claim 45. It describes Dartmouth’s Name Directory (DND), a 17,500-entry database linking identifying elements (e.g., user's full name, nickname) to a preferred email address ("mailaddr"). The system allowed addressing by name (e.g., name@Dartmouth.EDU), where a mail hub server would look up the name in the DND to find the real address. This mapped to the limitations of maintaining a database and searching it to determine a relevant email address based on identifying elements like a given name or surname.
    • Motivation to Combine: Petitioner contended a POSITA would combine Edelstein to supply the limitation of recognizing when address information is "insufficient or not in the correct form for delivery" before conducting a full database search. Edelstein teaches a tiered search for resolving resource aliases, first checking a local client, then a local server, then a central registry. A POSITA would have been motivated to apply this principle to the Email for Everyone system to create a more efficient mail hub that first checks if an address part is a known, valid alias before querying the main DND, thereby reducing network traffic and server load.
    • Expectation of Success: Combining Edelstein's efficient, local-first search logic with the directory system of Email for Everyone was a predictable application of a known database optimization technique to solve a known performance problem.

Ground 3: Obviousness over Waskiewicz and Getting Started - Claims 28 and 30 are obvious over Waskiewicz in view of the Getting Started guide.

  • Prior Art Relied Upon: Waskiewicz (Patent 5,822,526) and the Getting Started guide (a 1996 Dartmouth BlitzMail® user manual).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued Waskiewicz’s "non-delivery report" teaches a notification that "reports the status of said database search" (claim 28) by indicating failure. However, Waskiewicz did not explicitly disclose a positive notification upon successful delivery.
    • Motivation to Combine: The Getting Started guide teaches the use of "return receipts," a well-known feature that allows a sender to receive a notification when a message has been successfully delivered or opened. A POSITA would have been motivated to add this common feature to the system in Waskiewicz to satisfy the known user need for positive delivery confirmation, not just failure notifications.
    • Expectation of Success: A POSITA would have had a high expectation of success, as adding a return receipt function was a routine and predictable modification for email systems at the time and would have yielded the expected result of providing comprehensive delivery status.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including invalidity of claim 32 over Waskiewicz in view of Sadler (Patent 5,764,906) and invalidity of claims 46 and 47 over the Email for Everyone paper alone based on simple design choices.

4. Key Claim Construction Positions

  • "wherein said descriptor is selected from a list including . . ." (claim 24): Petitioner argued this should be construed as a Markush group claim. This construction means the listed elements (e.g., telephone number, personal name) are alternative species that can be used to identify the intended recipient, which supported Petitioner's mapping of prior art that disclosed using one such element.
  • "the plurality of identifying elements including at least one of a given name, surname . . . and/or telephone number" (claim 45): Petitioner contended that the phrases "at least one of" and "and/or" mean that the presence of only one of the listed identifying elements is required. This construction allowed Petitioner to rely on prior art that disclosed using, for example, only a person's name as an identifier.
  • "separate fields for each of given name, surname . . ." (claims 33 and 49): Petitioner argued this term requires distinct data fields for any listed elements present in the database. This interpretation supported mapping to prior art databases, like the X.400 directory structure in Waskiewicz, that used discrete fields for attributes like given name ("g=") and surname ("s=").

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 23-24, 27-33, and 45-49 of Patent 7,010,572 as unpatentable.