Facebook Inc v. EveryMDcom LLC

1. Case Identification

• Patent #: 8,504,631
• Filed: October 10, 2017
• Petitioner(s): Facebook, Inc.
• Patent Owner(s): Everymdcom LLC
• Challenged Claims: 1, 3, 5, and 7-9

2. Patent Overview

• Title: Method and Apparatus and Business System for Online Communications With Online and Offline Recipients
• Brief Description: The ’631 patent discloses a method and system for facilitating communication between users and members of a group, such as patients and doctors in a web-based directory. The system provides members with a server-created email box and notifies members of incoming messages, including by sending a notification to an associated telephone number for members who may be offline.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1, 5, and 8 over Hill in view of Bosco

• Prior Art Relied Upon: Hill (a 1999 textbook, YAHOO! FOR DUMMIES) and Bosco (Patent 6,335,963).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Hill, which describes the Yahoo! Mail web-based email service, discloses the majority of limitations in independent claim 1. Hill teaches a server computer system that creates email boxes for a group of members (Yahoo! users) and provides a web page with a message interface (the "Compose Mail" page) for a user to send a message to a member's email box. Petitioner contended the only key limitation not taught by Hill is sending a notification message to a recipient's telephone number. This limitation, Petitioner asserted, is taught by Bosco, which discloses a system that sends a notification to a user's telephone, pager, or voice mail upon receipt of an email, solving the problem of users lacking continuous internet access. Dependent claim 5 (notification includes message data) and claim 8 (reply functionality) were also argued to be disclosed or rendered obvious by the combination.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Hill and Bosco to enhance the webmail system of Hill with the telephone notification feature of Bosco. This would provide the benefit of immediate notification of new emails for users who were not constantly logged in to the internet, a common scenario in the late 1990s. Bosco explicitly provides this motivation, stating its system provides notification "without requiring the end user to call into the e-mail service provider."
  • Expectation of Success: A POSITA would have had a reasonable expectation of success, as Hill already contemplated other forms of notification (e.g., audible alerts in Yahoo! Messenger). Incorporating Bosco's well-understood telephone notification technique into a standard webmail system like Hill's was a predictable and straightforward integration.

Ground 2: Obviousness of Claim 3 over Hill in view of Bosco and O'Neal

• Prior Art Relied Upon: Hill (a 1999 textbook), Bosco (Patent 6,335,963), and O'Neal (Patent 6,711,154).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the Hill and Bosco combination from Ground 1 to address dependent claim 3, which requires the telephonic notification message to comprise "image data." While Bosco teaches the notification, O'Neal was introduced to teach the specific content of that notification. O'Neal discloses a device-independent messaging system that can convert text-based messages (like emails) into an image-based format, such as a fax (TIFF/GIF), for transmission over a telephone network to a fax machine.
  • Motivation to Combine: A POSITA would be motivated to incorporate O'Neal's teaching to provide greater flexibility in the notification system of Hill and Bosco. Given the widespread use of fax machines in the 1990s, modifying the system to send notifications as fax images would leverage a large, existing installed base of devices, thereby increasing the utility and reach of the notification feature.
  • Expectation of Success: Success would be expected, as converting text to fax images was a commonplace and well-documented technology at the time.

Ground 3: Obviousness of Claim 7 over Hill in view of Bosco and Donath

• Prior Art Relied Upon: Hill (a 1999 textbook), Bosco (Patent 6,335,963), and Donath (a 1995 article, "Sociable Information Spaces").
• Core Argument for this Ground:
  • Prior Art Mapping: This ground modifies the Hill and Bosco combination to address dependent claim 7, which requires the notification message to comprise "instructions for obtaining said input data." Petitioner argued this feature is taught by Donath, which describes an "Electric Postcard" system. In Donath, a recipient is notified of a new virtual postcard via an email that contains explicit instructions for retrieval, including a URL and a "claim number."
  • Motivation to Combine: A POSITA would be motivated to add Donath's teachings to the notification message of Bosco to improve usability. For users who were not "Web-savvy" or were unfamiliar with the Yahoo! Mail service, providing explicit instructions on how to log in and retrieve their message would be a useful and intuitive enhancement, analogous to a physical "Sorry We Missed You!" delivery notice.
  • Expectation of Success: This combination would have been a simple and predictable implementation, as it involves adding textual instructions to the notification message taught by Bosco.

Ground 4: Obviousness of Claim 9 over Hill in view of Bosco and Khurana

• Prior Art Relied Upon: Hill (a 1999 textbook), Bosco (Patent 6,335,963), and Khurana (a 1996 textbook, WEB DATABASE CONSTRUCTION KIT).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses dependent claim 9, which requires the web page with the message interface to be a "home page for said first member." Petitioner asserted that while Hill teaches both personal home pages with email links and separate "Compose Mail" pages, it would have been obvious to combine these concepts. Khurana was cited to show that creating web-based forms with message interfaces using standard HTML (specifically the <TEXTAREA> tag) was a well-known and trivial task for a POSITA.
  • Motivation to Combine: The motivation would be to enhance user convenience. Placing the message composition interface directly on a member's personal home page, as taught by Khurana, would allow a visitor to send a message more quickly, without needing to click a link and navigate to a separate page. This would make the communication process more seamless and encourage use.
  • Expectation of Success: A POSITA would have had a high expectation of success, as implementing an HTML form on a web page was an exceedingly simple, standard, and predictable technique.

4. Key Claim Construction Positions

• "server computer system": Petitioner argued this term, which appears in the claims but not the specification, should be construed to correspond to the term "interface server" used in the specification. Accordingly, under its broadest reasonable construction, the term should mean "a dedicated server computer, a virtual server hosted by an internet service provider (‘ISP’), or a system of multiple interconnected computers." This construction is central to applying the prior art, which describes online services running on such systems.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. The ’631 patent was previously the subject of an IPR petition filed by Google (IPR2014-00347), which the Board denied. Petitioner asserted that denial is not warranted because:
  • It was not a party to the Google petition.
  • The current petition relies on new prior art (Hill, Donath, Khurana) and different arguments not previously presented to the Office.
  • While Google cited O'Neal, it was for a different purpose related to the independent claim, whereas the present petition relies on O'Neal only for a limitation in dependent claim 3. The Board's prior decision did not substantively address the dependent claims at issue here.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 3, 5, and 7-9 of the ’631 patent as unpatentable.