iTakeaway: The Board will not institute an inter partes review where petitioner presents only summary arguments and quotations from the references. The petition must specifically articulate why the references disclose or render obvious each and every element of the claims.
In its Decision, the Board denied institution of the inter partes review, because the information presented in the Petition did not demonstrate that there is a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. The ’631 Patent relates to a method, apparatus, and business system for conducting online communications with online and offline recipients.
Patent Owner argued against Petitioner’s proposed claim construction in its Preliminary Response. Patent Owner was successful in persuading the Board to adopt its interpretation of at least one term. Petitioner had argued that “message interface” was not used in the specification, and that the broadest reasonable interpretation of the term is “an interface providing messaging functionality.” Patent Owner successfully argued that “e-mail message entry area 215” disclosed in the ’631 Patent Specification corresponds to the “message interface” recited in claim 1. Because the Board agreed that “e-mail message entry area 215” corresponded to the “message interface” in the claims, the Board determined that the broadest reasonable interpretation in light of the specification of “message interface” is “a mechanism into which a message can be entered, such as, for example, a text entry area,” which is how the e-mail message entry area 215 was described.
The Board did not find the brief summary, and quotations, citations, and reproduced figures from the cited references presented in the Petition to meet the requirements of a Petition of (1) specifying sufficiently where each element of independent claim 1 is found in the reference; and (2) constituting a detailed explanation of the significance of the quotations, citations, and figures from the reference. Basically, the Board determined that the Petition did not provide sufficient explanation for how the reference disclosed or rendered obvious each and every element of the claims. Instead, the Board stated that Petitioner has placed the burden on the Board to sift through the information presented by Petitioners, determine where each element of claim 1 is found in the references, and identify any differences between the claimed subject matter and the teachings of the references. Further, with regard to the obviousness grounds, the Board did not believe Petitioners provided adequate reasoning why one with ordinary skill in the art would have combined teachings of the references.
Google Inc. and Twitter, Inc. v. EveryMD.com LLC, IPR2014-00347
Paper 9: Decision Denying Institution of Inter Partes Review
Dated: May 22, 2014
Patent 8,504,631 B2
Before: Kristen L. Droesch, Michael R. Zecher, and Peter P. Chen
Written by: Droesch
Related Proceedings: EveryMD.com LLC v. Google Inc., No. 2:13-cv-06490-MRP-FFM (C.D. Ca., Sept. 5, 2013); and EveryMD.com LLC v. Twitter, Inc., No. 2:13-cv-06680-MRP-FFM (C.D. Ca., Sept. 12, 2013)
