Facebook Inc v. EveryMDcom LLC

1. Case Identification

• Case #: IPR2017-02027
• Patent #: 9,137,192
• Filed: August 30, 2017
• Petitioner(s): Facebook, Inc.
• Patent Owner(s): Everymdcom LLC
• Challenged Claims: 1-3, 8, 9, 12, and 16

2. Patent Overview

• Title: Method and Apparatus for Generating Web Pages for Members
• Brief Description: The ’192 patent describes a method for generating individual online presences, such as web pages, for members of a group (e.g., a physician directory). The system uses an interface server computer to maintain a database of member information, which is used to create and serve individual home pages, each with a unique URL and controls for user communication.

3. Grounds for Unpatentability

Ground 1: Obviousness over GeoCities, Sutcliffe, and Khurana - Claims 1-3, 8, 9, and 12 are obvious over GeoCities in view of Sutcliffe and Khurana.

• Prior Art Relied Upon: GeoCities (a 1998 textbook), Sutcliffe (Patent 5,913,212), and Khurana (a 1996 textbook).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the primary reference, GeoCities, discloses a web service that provided individual home pages for its members from a central web server. GeoCities taught allotting each member a unique URL, populating their page with personal information, and providing communication controls, including a "My Guestbook" for comments (the "first control") and an "E-mail Me" button for messages (the "second control"). To address claim limitations requiring that an "interface server computer" maintain a database, Petitioner cited Sutcliffe, which explicitly taught a web-based system where an HTTP server maintains a connected database system to store member profile information. To address dependent claims requiring the server to provide message and comment entry interfaces, Petitioner cited Khurana, which taught the fundamental and well-known practice of using standard HTML (e.g., <TEXTAREA> tags) sent from a web server to create web-based forms for user input.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine GeoCities with Sutcliffe's database architecture for the predictable benefit of reliably managing a large and growing amount of member data, a common challenge for popular web services. Khurana confirmed that integrating databases with websites was the "most utilized technology" at the time. A POSITA would have been motivated to implement the communication features of GeoCities using the standard HTML form techniques from Khurana because it was an exceedingly simple, well-known, and universally compatible method for enabling user input on a webpage.
  • Expectation of Success: The combination involved applying mature, industry-standard technologies (server-side databases, HTML forms) to a known type of web service (personal homepage hosting). Each component would perform its known function, leading to the predictable result of a more robust and interactive version of the GeoCities system.

Ground 2: Obviousness over GeoCities, Sutcliffe, Khurana, and Bosco - Claim 16 is obvious over GeoCities in view of Sutcliffe and Khurana, in further view of Bosco.

• Prior Art Relied Upon: GeoCities (a 1998 textbook), Sutcliffe (Patent 5,913,212), Khurana (a 1996 textbook), and Bosco (Patent 6,335,963).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the combination asserted in Ground 1 and adds Bosco to address the additional limitation of claim 16: "sending by said interface server computer a message to a telephone of said individual member." Petitioner argued that Bosco explicitly disclosed a system to solve the problem of users lacking continuous internet access by providing notification of a received email message via telephone, pager, or voicemail. Bosco taught that the notification could include the text of the message itself, displayed on the telephone.
  • Motivation to Combine: A POSITA would have been motivated to add the telephone notification feature of Bosco to the combined GeoCities/Sutcliffe/Khurana system for the express purpose stated in Bosco: to provide immediate notification of new messages to members who were not constantly online. This would have been a significant and desirable enhancement in the 1990s, when many users had dial-up connections, increasing the utility of the messaging feature by ensuring timely alerts.
  • Expectation of Success: Integrating a known notification method (Bosco) with a web-based messaging system would have been a straightforward technical task for a POSITA. The combination would have predictably resulted in a system that could send message alerts to a user's telephone, a known and desirable feature.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. § 325(d) was unwarranted, despite the GeoCities reference having been cited during prosecution of the ’192 patent. Petitioner asserted three main reasons:
  • The Patent Owner buried the GeoCities reference in a voluminous (1,800+ page) Information Disclosure Statement (IDS) without explaining its relevance, meaning the Examiner never gave it the "specific and careful consideration" required to trigger denial.
  • The Examiner's allowance was irreconcilable with a prior PTAB decision in a reexamination of the parent ’122 patent, which found nearly identical claims invalid over GeoCities.
  • The petition presented new arguments and combinations by relying on two previously uncited references (Sutcliffe and Khurana) to specifically address the "interface server computer" limitations that were the primary distinction between the ’192 patent and its invalidated parent.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-3, 8, 9, 12, and 16 of the ’192 patent as unpatentable.