Symantec Corporation v. RPost Communications Limited, Decision Denying Institution IPR2014-00353
Tuesday, July 22, 2014

Takeaway: Citations to prior art references that are in an expert’s declaration but not in a petition may not be considered by the Board in its decision on institution.

In its Decision, the Board denied institution of inter partes review of claims 1-30 of the ‘628 patent because Petitioner did not establish a reasonable likelihood of prevailing on any challenged claim.  The ‘628 patent relates to verifying the delivery and content of e-mail messages, and specifically, “an electronic message system that creates and records a digital signature of each electronic message sent through the system.”

The Petition asserted three grounds of unpatentability: anticipation of claims 1-30 by the S89 reference; anticipation of claims 1-30 based on CEM; and obviousness of claims 1-30 over S89, CEEM, and Kent.

Addressing claim construction, the Board noted that terms are to be given their broadest reasonable construction in light of the specification. The Board only found it necessary to expressly construe one term, “particular indication,” found in each of claims 1, 14, and 30 in various forms.  Petitioner proposed that “particular indication” be construed as “either based on the content of the message itself, sender/recipient information, flags, or other criteria.”  Patent Owner did not propose a construction but reserved the right to contest Petitioner’s construction.  The Board provided a different construction from that proposed by Petitioner, finding Petitioner’s proposal too narrow on the one hand (where the “particular indication” must be found) and too broad on the other (encompassing other criteria that may or may not identify the message as requiring special processing).  The Board construed the term to mean “information that identifies a message as requiring special processing.”

The Board then addressed the ground of unpatentability based on S89. The Board agreed with Patent Owner’s argument in its Preliminary Response that S89 does not disclose “adding a particular indication to a message to be sent to a recipient” because the fields relied upon by Petitioner are added to logs in the email server after a message is sent.  Thus, the Board held that S89 does not disclose adding any particular indication to messages that are sent.  The Board also found that S89 similarly does not disclose “transmitting the message . . . if the message lacks the particular indication” because that “particular indication” was lacking in S89.

With respect to anticipation based on CEM, the Board found that Petitioner had failed to establish that CEM discloses one limitation. As Patent Owner argued, Petitioner did not specify where the limitation was found in CEM.  Instead, Petitioner’s expert referenced a figure in CEM, but that figure was not cited in the Petition.  According to the Board’s rules, “the petition must contain a ‘full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence.’”  The Board declined to consider the information on this basis alone.  Even considering the declaration testimony, the Board agreed with Patent Owner that CEM does not disclose the limitation and found Petitioner’s expert’s testimony to be conclusory.

Finally, with respect to the asserted ground of obviousness based on S89, CEEM, and Kent, the Board first noted that S89 failed to disclose the “transmitting” limitation as previously discussed. The Board then agreed with Patent Owner that Kent similarly failed to teach this limitation.

Therefore, the Board was not persuaded that Petitioner had established a reasonable likelihood that it would prevail in establishing the unpatentability of claims 1-30, and denied institution of trial.

Symantec Corporation v. RPost Communications Limited, IPR2014-00353
Paper 15: Decision Denying Institution of Inter Partes Review
Dated: July 15, 2014
Patent: 8,504,628
Before: Thomas L. Giannetti, Beverly M. Bunting, and Matthew R. Clements Written by: Clements
Related Proceedings: RPost Holdings, Inc. et al v. Sophos, Inc., 2:13-cv-00959 (E.D. Tex.); RPost Holdings, Inc. et al v. Trend Micro Incorporated, 2:13-cv-01065 (E.D. Tex.); Sophos Incorporated v. RPost Holdings, Inc. et al, 1:13-cv-12856 (D. Mass.); Trend Micro Incorporated v. RPost Holdings, Inc. et al, Case No. 3:13-cv-05227 (N.D. Cal.); RPost Holdings, Inc. et al. v. Symantec Corporation, 2:14-cv-00028 (E.D. Tex.); Symantec Corporation v RPost Holdings, Inc. et al., 3:14-cv-238 (N.D. Cal.); IPR2014-00355 (U.S. Patent No. 7,966,372); IPR2014-00357 (U.S. Patent No. 8,468,199); CBM2014-00010 (U.S. Patent No. 8,224,913); CBM2014-00017 (U.S. Patent No. 8,209,389); CBM2014-00064 (U.S. Patent No. 8,161,104); Ex partereexamination of U.S. Patent No. 8,275,845 (Control No. 90/012,771)

 

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