Facebook, Inc.v.Mobile-Plan-It, LLC

Patent Trial and Appeal Board

Jul 8, 2015

13135880 (P.T.A.B. Jul. 8, 2015)

Trials@uspto.gov Paper 10
Tel: 571.272.7822 Entered: July 8, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

FACEBOOK, INC.,
Petitioner,
v.
MOBILE-PLAN-IT, LLC,
Patent Owner.

Case IPR2015-00691 and
Case IPR2015-00692
Patent 8,312,091 B2

Before BART A. GERSTENBLITH, BEVERLY M. BUNTING, and
BARBARA A. PARVIS, Administrative Patent Judges.
PARVIS, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

I. INTRODUCTION
A. Background
Facebook, Inc. (“Petitioner”) filed a first Petition (Paper 1, “Pet.”)1 to
institute an inter partes review of claims 1–7 and 11–13 of U.S. Patent No.

1 Unless otherwise noted, citations herein are to IPR2015-00691.
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Patent 8,312,091 B2
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8,312,091 B2 (Exhibit 1001, “the ’091 Patent”) pursuant to 35 U.S.C. § 311.
Petitioner filed a second Petition (IPR2015-00692, Paper 1) to institute an
inter partes review of claims 8, 14, 19–22, 25, 26, and 30 of the ’091 Patent
pursuant to 35 U.S.C. § 311. Because the reasons for denial are the same for
both IPR2015-00691 and IPR2015-00692, we issue one Decision in both
proceedings.
Petitioner contends that the challenged claims are unpatentable under
35 U.S.C. § 103(a) in both proceedings. Petitioner’s challenges are
summarized below.
Proceeding References Claims
Challenged
IPR2015-00691 Neibauer,2 Courter,3 Matheisen,4 and U.S.
Patent No. 6,434,403 B1 issued Aug. 13, 2002
(“Ausems”) (Ex. 1006)
1, 2, 11, and 12
IPR2015-00691 Neibauer, Courter, Matheisen, Ausems, and
Godin5
3–7 and 13
IPR2015-00692 Neibauer, Courter, Matheisen, and Ausems 8, 14, 19–22,
25, 26, and 30
Mobile-Plan-It, LLC (“Patent Owner”) did not file a Preliminary
Response in either proceeding. We have jurisdiction under 35 U.S.C. § 314,

2 ALAN NEIBAUER, RUNNING MICROSOFT OUTLOOK 98 (1998) (Ex. 1003).
3 GINI COURTER & ANNETTE MARQUIS, MASTERING MICROSOFT OUTLOOK
98 (1998) (Ex. 1004).
4 Rich Matheisen, Re: forwarding email to other addresses, posted to
Usenet group microsoft.public.exchange.admin on July 6, 1999 (retrieved on
Dec. 22, 2014) (Ex. 1005).
5 YOU’VE GOT PICTURES! AOL’S GUIDE TO DIGITAL IMAGING (Seth Godin
ed., 1998) (Ex. 1007).
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which provides that an inter partes review may not be instituted “unless . . .
there is a reasonable likelihood that the petitioner would prevail with respect
to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
For the reasons described below, we decline to institute an inter partes
review of independent claim 1 of the ’091 Patent based on the alleged
ground of unpatentability. Each of claims 2–7 and 11–13, challenged in
IPR2015-00691, and claims 8, 14, 19–22, 25, 26, and 30, challenged in
IPR2015-00692, depend, directly or indirectly, from claim 1. Accordingly,
we decline to institute an inter partes review of any of claims 2–8, 11–14,
19–22, 25, 26, and 30 of the ’091 Patent.
B. Related Proceedings
Petitioner identified, as a related proceeding, the co-pending litigation
in the United States District Court for the Northern District of California
captioned Mobile‐Plan‐It, LLC v. Facebook, Inc., No. 3-14-cv-01709.
Pet. 1.
C. The ’091 Patent
The ’091 Patent is directed to wireless devices and methods therefor
(Ex. 1001, 1:38–39) and, more specifically, to methods and systems for
organizing meetings (id. [54]). Figure 1 of the ’091 Patent is reproduced
below.
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Figure 1 illustrates a diagram of an interactive wireless device
communication system for meetings and conferences. Id. at 2:21–23.
According to the ’091 Patent, a conference organizer uses conference
software to define a conference and store conference information on the
organizer’s computer system. Id. at 1:43–45. Each conference attendee has
a wireless device, such as a personal digital assistance (PDA). Id. at 1:50–
51. The organizer’s computer system includes a wireless communication
station that can communicate wirelessly with the wireless devices of the
conference attendees. Id. at 1:52–56.
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As shown in Figure 1, each attendee has a real identity as well as a
personal proxy. Id. at 4:15–16. The personal proxy for each attendee is
maintained on the organizer’s computer system. Id. at 4:16–17. For
example, personal proxy 119 for attendee #1 is mailbox and storage space
identified as JENS@COMDEX.com. Id. at 4:17–20. The personal proxies
allow the attendees to receive information and communicate without
divulging their real identities. Id. at 4:21–25.
D. Illustrative Claim
Because each of the other challenged claims depends, directly or
indirectly, from independent claim 1, claim 1 is illustrative and is
reproduced below (emphasis added).
1. A method for organizing a meeting, occurring at a
physical meeting location, using software executing on a
computer system, the method comprising:
storing meeting information associated with the meeting,
the meeting information including a database listing the
physical meeting location and attendees of the meeting, the
attendees registered to attend the meeting at the physical
meeting location and including a first attendee and a second
attendee;
associating first and second ones of the attendees with
respective first and second primary electronic addresses;
assigning a first personal proxy to the first one of the
attendees and a second personal proxy to the second one of the
attendees, the first personal proxy having a first personal proxy
mailbox and first personal storage space and the second
personal proxy having a second personal proxy mailbox and
second personal storage space;
wherein the first and second personal proxy mailboxes
allow the first and second ones of the attendees to send
messages to one another and to receive messages from one
another without divulging their respective first and second
primary electronic addresses;
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communicating with a first wireless device of the first
attendee and a second wireless device of the second attendee to
convey updated meeting information, the updated meeting
information including an updated attendee list;
receiving, from the first attendee, a message directed to
the second personal proxy mailbox; and
directing the message to the second attendee using the
second primary electronic address.
E. Claim Interpretation
Petitioner identifies four terms in claim 1 for construction. Pet. 12–
15. For purposes of this decision, we need not provide express constructions
for these terms.
II. ANALYSIS
A. Obviousness of Claim 1 over Neibauer, Courter, Matheisen, and
Ausems
Petitioner contends that independent claim 1 is unpatentable as
obvious over Neibauer, Courter, Matheisen, and Ausems. Pet. 15–43.
1. Neibauer
Neibauer is a multi-volume reference including over 600 pages.
Ex. 1003. Neibauer teaches how to use Microsoft Outlook 98. Id. at xix.6
For example, Neibauer teaches “basics,” including creating a personal
profile. Id. at 3. Neibauer also teaches how to set up calendar items to
schedule appointments, meetings, and events. Id. at 323.
2. Courter
Courter also is a multi-volume reference, which includes over 700
pages. Ex. 1004. Courter is entitled “Mastering Outlook 98,” and provides

6 Exhibit citations are to the pages of the reference rather than to pages of the
exhibit.
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information to implement Microsoft Outlook 98 in a business. Id. at xxvi.
Courter provides an “[o]verview” of a user profile (id. at 13) and how to
create a new profile (id. at 378). Courter provides teachings relating to
responding to a meeting request (id. at 306–08) and using the rules wizard
(id. at 246).
3. Matheisen
Matheisen is a one-page electronic posting, including a question and
response, posted on “Microsoft.public.exchange.admin.” Ex. 1005. The
posting includes a question asked by an Outlook 98 user who configured
Rule Wizard to forward received messages to a sales person’s home address,
so the sales person could retrieve it via a dial-up connection to the Internet.
Id. The user notes a disadvantage and asks if there is a better way. Id. The
response from Mr. Matheisen suggests using a Custom Recipient feature.
Id.
4. Ausems
Ausems teaches integrating a wireless telephone and a PDA.
Ex. 1006, Abstract. According to Ausems, a wireless telephone engine and
a PDA engine are integrated into a single device and share an address book.
Id. at 1:54–57. Ausems teaches coupling a display unit, including a touch
screen, to the PDA. Id. at 1:57–58. Ausems also teaches that the integrated
device performs “conventional PDA applications” and carries out “functions
of a wireless telephone.” Id. at 3:5–14.
5. Petitioner’s Analysis
Petitioner has not shown sufficiently that the combination of
Neibauer, Courter, Matheisen, and Ausems teaches every element of
independent claim 1 (Pet. 15–43). For example, Petitioner does not show
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sufficiently teaching of the following recitation: “communicating with a first
wireless device of the first attendee and a second wireless device of the
second attendee to convey updated meeting information, the updated
meeting information including an updated attendee list.”
As background, in the recitation above, the term “updated meeting
information” refers back to “meeting information” that was stored in the first
step of claim 1. Petitioner points to Neibauer’s teaching of sending a
calendar invitation in Outlook 98 as teaching “meeting information.”
Pet. 20–21 (citing Ex. 1003, 323, 325, 326, Fig. 11-1); see also id. at 22
(citing Ex. 1003, 326) (“Neibauer discloses the ability to organize a
meeting.”).7 For storage of the meeting information, Petitioner points to
teachings in both Neibauer and Courter of a personal folder (.PST file) for
storing a user’s calendar folder. Pet. 23 (citing Ex. 1003, 277, 323, 326,
350; Ex. 1004, 450).
With respect to the “updated meeting information” in the fourth step,
i.e., “communicating with a first wireless device of the first attendee and a
second wireless device of the second attendee to convey updated meeting
information, the updated meeting information including an updated attendee
list,” as recited in claim 1, Petitioner points to Courter’s teaching of “an
‘Attendee Availability’ tab, as depicted in Figure 9.30,” which provides a
list of attendees and their responses to the meeting invitation. Id. at 33, 38

7 We note that this requires performance of the third step of claim 1 prior to
the first step of claim 1 because the attendee is assigned an Outlook 98
personal profile prior to being added to an invitation and storing the
invitation. Petitioner (Pet. 12–15), however, has not provided contentions
regarding whether the steps of claim 1 can be performed in an order other
than that recited. See 37 C.F.R. § 42.104(b)(3).
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(citing Ex. 1004, 306, 308, Fig. 9.30). Regarding attendee availability, our
review of Courter reveals that an attendee may “generate[] an e-mail
message back to you, the meeting request originator . . . . [i]n addition, all of
the responses are automatically tabulated for you . . . . [a]ll you have to do is
open the appointment in your calendar.” Ex. 1004, 306 (emphases added).
In other words, Courter’s teaching provides updated attendee availability
information from the attendees to the meeting organizer. Id. In the portions
of Courter relating to the Attendee Availability tab identified by Petitioner
(Pet. 33, 38 (citing Ex. 1004, 306, 308, Fig. 9.30)), Courter, however, does
not teach providing updated attendee information to attendees of the meeting
and, therefore, does not teach “communicating with a first wireless device of
the first attendee and a second wireless device of the second attendee to
convey updated meeting information, the updated meeting information
including an updated attendee list” (emphases added), as recited in claim 1.
Regarding this same recitation and relying on the testimony of its
Declarant, Dr. Myers, Petitioner contends “Courter does not expressly
disclose that the updated meeting information is conveyed to ‘wireless
devices’ of meeting attendees, but this would have been obvious to one of
ordinary skill in the art in view of Ausems.” Pet. 38 (citing Ex. 1002 ¶ 118).
Dr. Myers testifies that Ausems “discloses a method and system of utilizing
a wireless device to wirelessly exchange data, including messages, calendar,
and contact information.” Ex. 1002 ¶ 118 (citing Ex. 1006, Abstract, 3:5–
21, 5:55–6:7, 6:60–7:20, Fig. 2). Dr. Myers then testifies “[a]ccordingly,
Courter and Ausems together disclose communicating with a first and
second wireless device to convey updated meeting information including an
updated attendee list, as recited in the claim.” Id.
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Ausems teaches integrating a wireless telephone and PDA (Ex. 1006,
Abstract), which is referred to as “PDA telephone 100” (id. at 3:8–11). With
respect to Dr. Myers’s testimony that Ausems teaches exchanging data,
including messages, calendar, and contact information (id. ¶ 118 (citing
Ex. 1006, Abstract, 3:5–21, 5:55–6:7, 6:60–7:20, Fig. 2)), our review of
Ausems indicates that Ausems teaches that PDA telephone 100 may “store
received alphanumeric and text messages” (id. at 3:13), “have Internet
access” (id. at 6:1), and “retrieve an electronic mail (e-mail) address and/or a
world wide web URL from address book 270 in order to initiate a
transaction” (id. at 7:18–20). Petitioner, however, falls short of identifying a
teaching in Ausems of communicating an updated attendee list to attendees
and, therefore, does not show that Ausems teaches “communicating with a
first wireless device of the first attendee and a second wireless device of the
second attendee to convey updated meeting information, the updated
meeting information including an updated attendee list,” as recited in
claim 1. As a result, we are not persuaded that Ausems remedies the
deficiency of Courter.
In the same paragraph of the Declaration of Dr. Myers cited by
Petitioner above, Dr. Myers identifies portions of Courter relating to “Pocket
Outlook,” which he testifies teach “the updated information.” Ex.
1002 ¶ 118 (citing Ex. 1004, 16, 559). Courter teaches that “Pocket
Outlook” is a “scaled down version[].” Ex. 1004, 559. Courter’s teachings
relating to providing a scaled-down version do not suggest expanding on the
Outlook 98 Attendee Availability tab feature discussed above. We,
therefore, are not persuaded that the identified portions in Courter relating to
“Pocket Outlook” teach “communicating with a first wireless device of the
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first attendee and a second wireless device of the second attendee to convey
updated meeting information, the updated meeting information including an
updated attendee list,” as recited in claim 1.
Petitioner additionally contends, with respect to other steps recited in
claim 1, that one of the attendees also could be a meeting organizer. Pet. 33
(citing Ex. 1002 ¶ 109); see also id. at 41 (“As discussed above for
Claim 1[d], Neibauer and Courter both disclose that a first attendee can send
a message to a second attendee in the form of a meeting invitation.”).
However, this does not remedy the deficiency noted above regarding
“communicating with a first wireless device of the first attendee and a
second wireless device of the second attendee to convey updated meeting
information, the updated meeting information including an updated attendee
list,” as recited in claim 1. Even if the first attendee or the second attendee
also is the meeting organizer, claim 1 recites “communicating with . . . the
first attendee and . . . the second attendee.” Petitioner has not pointed to a
prior art teaching of conveying updated meeting information, including an
updated attendee list, to the attendee that did not organize the meeting, i.e.,
either the second attendee or the first attendee, respectively.
Petitioner does not identify teachings in Matheisen with respect to
“communicating with a first wireless device of the first attendee and a
second wireless device of the second attendee to convey updated meeting
information, the updated meeting information including an updated attendee
list.” Pet. 38–39.
Petitioner’s contentions regarding obviousness and rationale to
combine Neibauer, Ausems, Matheisen, and Courter do not remedy the
above-noted deficiency, i.e., Petitioner does not point to a teaching or
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suggestion in the prior art of “communicating with a first wireless device of
the first attendee and a second wireless device of the second attendee to
convey updated meeting information, the updated meeting information
including an updated attendee list,” as recited in claim 1. Pet. 40–41. For
example, Petitioner relies on (id.) Dr. Myers testimony that “it would have
been obvious to one of ordinary skill in the art to substitute a non-wireless
device (such as a desktop computer) with a wireless communications
device” (Ex. 1002 ¶ 119). Because Petitioner does not identify a teaching of
conveying updated meeting information, including an updated attendee list,
to the first attendee and the second attendee, mere substitution is not
sufficient. Petitioner also refers to “[d]esign incentives and market forces
relating to the desire to support wireless devices” (Pet. 40), but Petitioner
does not refer to a design enhancement and, instead, contends that “one of
ordinary skill in the art would have found it obvious to combine the
disclosures of Neibauer, Courter, Matheisen, and Ausems, with no change in
their respective functions” (id. at 41 (citing Ex. 1002 ¶ 75) (emphasis
added)).
Accordingly, we determine that Petitioner has not shown sufficiently
that the combination of Neibauer, Courter, Matheisen, and Ausems teaches
“communicating with a first wireless device of the first attendee and a
second wireless device of the second attendee to convey updated meeting
information, the updated meeting information including an updated attendee
list,” as recited in claim 1.
Furthermore, we note additional flaws with respect to the Petition. In
particular, Petitioner’s contentions regarding a reason for combining the
teachings of Neibauer and Courter (Pet. 24–25) in the manner claimed are
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insufficient. Petitioner, in reliance on Dr. Myers, contends “[a] person of
ordinary skill in the art would have found it natural to consult both
references because they describe a common system — in fact, the very same
Outlook 98 software product.” Pet. 25–26 (citing Ex. 1002 ¶ 71). Petitioner
also contends that Neibauer and Courter are analogous references in the
same field. Id.
Even if one of ordinary skill in the art would have consulted both
references, we disagree that this is sufficient to show that it would have been
obvious to one of ordinary skill in the art to combine the teachings identified
by Petitioner in the manner claimed. Claim 1 comprises six particular
method steps. Petitioner points to different features and functions of
Outlook 98 described in two multi-volume references, Neibauer and Courter,
together comprising over 1000 pages, without providing sufficient reason to
combine the identified features and functions of Outlook 98 described in the
two references in the fashion recited in claim 1.
For example, claim 1 recites “storing meeting information . . .
including a database listing,” “assigning a . . . personal proxy to [each of] the
attendees,” and the “personal proxy having . . . personal storage space.”
(emphasis added). Petitioner points to a personal folder file using the .PST
file name (Pet. 23 (citing Ex. 1003, 277)), a personal profile (Pet. 31 (citing
Ex. 1003, 7)), and a public folder used for sharing documents (Pet. 32 (citing
Ex. 1003, 529–34, Ex. 1004, 524–25)), respectively. These features require
the user to perform functions, i.e., “set up personal folders” using the .PST
filename (Ex. 1003, 277), “create[]” a profile (id. at 7), and “set up public
folders that anyone with the appropriate Exchange Server permissions can
access” (Ex. 1004, 524). That such features exist in Outlook 98 is not
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sufficient, in and of itself, to show that it would have been obvious to one of
ordinary skill in the art to perform the steps in the manner claimed.
Petitioner relies on Dr. Myers, who testifies that an identified teaching
“discloses” the corresponding recitation in claim 1. See, e.g., Pet. 31 (citing
Ex. 1002 ¶ 103). The testimony of Dr. Myers regarding the disclosure of
Neibauer (Ex. 1002 ¶ 103 (discussing Ex. 1003, 7)) is not consistent with the
more limited teaching he references.
Petitioner additionally relies on Dr. Meyer’s testimony (Pet. 33) that a
user “could” create “[her] own ‘public folder’” (Ex. 1002 ¶ 106). Dr. Myers
does not explain adequately what is meant by a user’s “own” public folder.
Nonetheless, that a feature in Outlook 98 could be configured in a particular
manner is not sufficient to show that it would have been obvious to one of
ordinary skill in the art to configure the feature in that matter so as to
perform a step in the method recited in claim 1.
The Supreme Court has explained that an obviousness analysis
involves a determination of “whether there was an apparent reason to
combine the known elements in the fashion claimed by the patent at issue.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Petitioner’s
obviousness analysis should be made explicit. Id. (citing In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)). Petitioner’s contentions that one of
ordinary skill in the art would have consulted both Neibauer and Courter and
found them to be analogous is not sufficient reasoning to demonstrate that it
would have been obvious to one of ordinary skill in the art to combine the
different features and functions identified by Petitioner in the manner recited
in claim 1.
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We note one further flaw in the Petition. Specifically, with respect to
Petitioner’s contentions regarding combining Neibauer, Courter, and
Matheisen, Petitioner relies on benefits articulated in claim 1, “[a]s
explained in the next claim limitation, this would have been beneficial
because meeting participants could send and receive messages without
divulging their primary electronic addresses to other attendees.” Pet. 30
(citing Ex. 1002 ¶¶ 72–73). Petitioner improperly “reli[es] upon ex post
reasoning” and hindsight. See KSR, 550 U.S. at 421.
6. Conclusion
Accordingly, we determine that Petitioner has not established a
reasonable likelihood that claim 1 is unpatentable as obvious over Neibauer,
Courter, Matheisen, and Ausems.
B. Dependent Claims
Each of dependent claims challenged in IPR2015-00691 and
IPR2015-00692, depend, directly or indirectly, from claim 1. Petitioner
relies on the same arguments discussed above for claim 1 in both Petitions.
In its contentions regarding the dependent claims (see, e.g., Pet. 43–56),
Petitioner does not identify additional teachings in Neibauer, Courter,
Matheisen, and Ausems relating to “communicating with a first wireless
device of the first attendee and a second wireless device of the second
attendee to convey updated meeting information, the updated meeting
information including an updated attendee list,” as recited in claim 1.
Additionally, Petitioner does not identify teachings in Godin relating to this
recitation. We, therefore, also determine that Petitioner has not established a
reasonable likelihood that any of claims 2–8, 11–14, 19–22, 25, 26, and 30
of the ’091 Patent is unpatentable.
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III. ORDER
For the reasons given, it is:
ORDERED that the Petition is denied and no inter partes review is
instituted.

PETITIONER:
Heidi L. Keefe
Andrew C. Mace
Mark Weinstein
COOLEY LLP, Patent Group
hkeefe@cooley.com
amace@cooley.com
zpatdcdocketing@cooley.com
mweinstein@cooley.com
PATENT OWNER:
Jason S. Angell
Robert E. Freitas
Freitas Angell & Weinberg LLP
jangell@fawlaw.com
rfreitas@fawlaw.com