PTAB

IPR2014-01467

Veeva Systems Inc v. Prolifiq Software Inc

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1. Case Identification

2. Patent Overview

  • Title: Adaptive Electronic Messaging
  • Brief Description: The ’378 patent discloses systems and methods for constructing electronic messages with digital content. The invention centers on a "message adaptation component" that receives a base electronic message and modifies it by selecting and including digital content elements based on a "message adaptation specification."

3. Grounds for Unpatentability

Ground 1: Anticipation - Claims 1-2, 7-8, 13-14, 16, and 19-21 are anticipated by Burton

  • Prior Art Relied Upon: Burton (Application # 2004/0093429).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Burton discloses every limitation of the challenged independent claims (1, 13, 20) and their asserted dependents. Burton’s system for inserting targeted digital graphic content into emails functions identically to the claimed invention. Burton’s "application server" that intercepts and modifies emails is the claimed "message adaptation component." The "codes" in Burton, which can be promotional materials, images, or text, are the claimed "digital content elements." Burton also discloses a "register of insertable codes" and "selection rules," which together meet the limitations of a "message layer definition" with alternative presentations and "decision logic" for selecting between them. Petitioner asserted that Burton’s system receives a base email, uses selection rules to choose a code from a data store (register) accessible prior to receiving the email, and inserts that code to form an adapted message.
    • Key Aspects: Petitioner contended that dependent claims are also anticipated. For example, Burton’s disclosure of using HTML code and logic to determine recipient registration meets the limitations of claim 7 (markup-language file, binary tree structure). Similarly, Burton’s teaching of providing different content to authorized versus unauthorized recipients anticipates claim 8’s limitations for adapting messages differently for a first and second recipient.

Ground 2: Obviousness - Claims 3-6, 9, 12, 15, and 17-18 are obvious over Burton in view of McMillan

  • Prior Art Relied Upon: Burton (Application # 2004/0093429) and McMillan (Patent 6,789,108).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that while Burton provides the foundational system for adapting electronic messages, McMillan supplies the missing elements for this set of dependent claims, which relate to determining recipient device capabilities. McMillan explicitly addresses the problem that different email clients and devices have varying capabilities for rendering rich media. It teaches detecting a recipient’s device capabilities (e.g., bandwidth, browser, multimedia support) and selectively providing a compatible digital file. Claim 5, for example, requires "determining one or more operational capabilities of a client device... and selecting the first message layer based on said determining." Petitioner contended that McMillan directly teaches this concept.
    • Motivation to Combine: A POSITA would combine Burton and McMillan to solve a known problem. Burton’s system for delivering targeted banner ads would be improved by ensuring the ads are actually viewable on the recipient's device. McMillan provides the solution by teaching how to detect device capabilities and adapt content accordingly. Combining McMillan’s capability-detection with Burton’s targeted advertising system was presented as a predictable solution to a common compatibility issue.
    • Expectation of Success: A POSITA would have a high expectation of success because McMillan’s features could be seamlessly integrated into Burton’s architecture. Both systems operate by modifying an email message before final delivery, making the combination straightforward.

Ground 3: Obviousness - Claims 10-11 are obvious over Burton in view of Marks

  • Prior Art Relied Upon: Burton (Application # 2004/0093429) and Marks (Application # 2001/0054059).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground targets claims related to user opt-in preferences. Claim 10 requires determining if a recipient has "opted to receive a class of electronic messages." While Burton discloses basic "opt-in groups," Marks provides a more detailed system for managing user preferences for targeted advertising. Marks teaches a system where users can opt in or out of specific classes of email solicitations. Petitioner argued Marks explicitly teaches determining a user's opt-in status and, if the user has not opted in, including a solicitation to do so.
    • Motivation to Combine: A POSITA would combine Burton and Marks to enhance the targeting capabilities of Burton’s system. Burton teaches sending targeted content, and Marks teaches a superior method for determining what content is truly relevant and desired by allowing users to manage their preferences. Implementing Marks's opt-in/opt-out functionality into Burton's ad-insertion system would be a logical step to improve user satisfaction and ad effectiveness, which were known goals in the art.
    • Expectation of Success: The combination was argued to be predictable, as both references address the same field of targeted email marketing. Integrating a user preference management system (Marks) into a content delivery system (Burton) would have been a well-understood and achievable task for a POSITA.

  • Additional Grounds: Petitioner asserted numerous alternative grounds. This included anticipating claims 1-2, 7-8, 13-14, 16, and 19-21 over Cottrille (Patent 7,149,964). Additionally, Petitioner argued that the obviousness combinations above could be alternatively based on Cottrille, i.e., Cottrille in view of McMillan and Cottrille in view of Marks, relying on similar motivations to combine.

4. Key Claim Construction Positions

  • message layer / message layer definition: Petitioner argued these terms should be construed as "an alternative presentation" and "a plurality of alternative presentations," respectively. This broad construction was based on specification language describing layers as defining alternative content or formatting for different message versions.
  • differently versioned: Petitioner argued this term, recited in claims 13-19, is indefinite under §112. However, for the purpose of the IPR analysis under §102 and §103, Petitioner proposed construing the term to simply mean "different." This construction was offered to give the term definite meaning and facilitate the invalidity analysis.

5. Relief Requested

  • Petitioner requests institution of inter partes review and cancellation of claims 1-21 of the ’378 patent as unpatentable.