Microsoft Corp v. Sterling Computers Corp

1. Case Identification

• Case #: IPR2025-00270
• Patent #: 8,073,911
• Filed: January 17, 2025
• Petitioner(s): Microsoft Corporation
• Patent Owner(s): Sterling Computers Corporation
• Challenged Claims: 1-13, 15, 18, 20-21, and 27

2. Patent Overview

• Title: System and Method for Enforcing Compliance on Electronic Messages
• Brief Description: The ’911 patent relates to a system and method for enforcing compliance policies on electronic messages. The system treats related messages as a "message container" with relational references to individual messages ("submessages") and uses a governance module to apply rules to these messages.

3. Grounds for Unpatentability

Ground 1: Obviousness over Rohall and Schiavone - Claims 1-8, 10-13, 15, 18, and 20-21 are obvious over Rohall in view of Schiavone.

• Prior Art Relied Upon: Rohall (Application # 2003/0163537) and Schiavone (Application # 2002/0120600).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Rohall taught the core electronic messaging system, including a "messaging module" (Mail Agent) that controls a message database. Rohall’s system used "shadow documents" to represent message threads, creating a parent/child hierarchy with pointers between messages. Petitioner contended this structure met the limitations of a "message container" with "relational references" pointing to a "plurality of sent submessages." Petitioner asserted that Schiavone taught the missing compliance and governance features. Schiavone disclosed a rule-based processing system for emails, including a "recipient compliance engine" and a "rule base" that applied rules based on sender, recipient, and content. Petitioner mapped this to the claimed "governance module" controlling a "governance policy database" that stores and applies a "compliance policy."
  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine these references to improve Rohall’s messaging system with the advanced, rule-based compliance and filtering capabilities of Schiavone. Both references were in the analogous art of email management and addressed the known problem of managing and filtering large volumes of email. Adding Schiavone’s compliance engine to Rohall’s architecture was presented as a predictable way to enhance functionality.
  • Expectation of Success: Petitioner asserted a POSITA would have a reasonable expectation of success because the combination involved implementing Schiavone's known rule-based processing features on Rohall's server-side architecture. The petition noted that both systems were designed to run on general-purpose computers without specialized hardware, making their integration straightforward and predictable.

Ground 2: Obviousness over Rohall, Schiavone, and Gomes - Claims 9 and 27 are obvious over Rohall, Schiavone, and Gomes.

• Prior Art Relied Upon: Rohall (Application # 2003/0163537), Schiavone (Application # 2002/0120600), and Gomes (Patent 8,375,008).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Rohall/Schiavone combination from Ground 1 and added Gomes to teach the specific limitations of claims 9 and 27.
    • For claim 27, which required that "each of the sent submessages is stored exactly once within the email database," Petitioner argued Gomes expressly taught a de-duplication engine for email files. Gomes disclosed that its system ensures "only one copy of the content is in the database regardless of the location of the file," directly mapping to the "stored exactly once" limitation.
    • For claim 9, which added a requirement for "search rules," Petitioner argued Gomes taught defining criteria for searching files and messages in a legal repository. Gomes disclosed rules that "allow authorized users access" to repository data, which Petitioner mapped to the claimed search rules describing which users can view which submessages.
  • Motivation to Combine: Petitioner argued a POSITA would be motivated to add Gomes’s teachings to the Rohall/Schiavone combination for two primary reasons. First, incorporating Gomes's de-duplication technology would directly address the goals of reducing memory and storage requirements, a concern mentioned in both Rohall and Schiavone. Second, adding Gomes’s teachings on search rules would further enhance the filtering and compliance capabilities of the combined system.
  • Expectation of Success: Petitioner contended that a POSITA would expect success in this combination because Gomes described an embodiment using "Lotus Notes files," the same email file system disclosed in Rohall. This compatibility suggested a simple and predictable integration of Gomes’s de-duplication and search rule functionalities into the base system.

4. Arguments Regarding Discretionary Denial

• Arguments against §325(d) Denial: Petitioner argued denial is unwarranted because the asserted prior art (Rohall, Schiavone, and Gomes) is not cumulative to the art considered during prosecution. None of these references were cited or considered by the Examiner, who therefore did not have the benefit of these specific teachings or the specific asserted combinations.
• Arguments against §314(a) Denial (Fintiv): Petitioner contended that the Fintiv factors weighed against discretionary denial. The trial date in the parallel district court litigation was scheduled for more than 18 months after the petition filing date, ensuring a Final Written Decision (FWD) would issue months before trial. Investment in the parallel case was minimal, with discovery not yet open. Crucially, Petitioner offered a Sotera stipulation, agreeing not to pursue in district court any grounds raised or that reasonably could have been raised in the IPR, which Petitioner argued weighed strongly against denial.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and cancellation of claims 1-13, 15, 18, 20-21, and 27 of the ’911 patent as unpatentable under 35 U.S.C. §103.