PTAB

IPR2014-01472

Veeva Systems Inc v. Prolifiq Software Inc

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1. Case Identification

2. Patent Overview

  • Title: Adaptive Electronic Messaging
  • Brief Description: The ’317 patent discloses systems and methods for constructing and adapting electronic messages, such as emails, to include rich digital content. The core invention involves a "message adaptation component" that uses a "message adaptation specification" containing decision logic to select among alternative presentations for a message, such as delivering a version with a pre-defined image to one recipient and a version with a pre-defined video to another.

3. Grounds for Unpatentability

Ground 1: Claims 1-2, 7, 12-13, 18, 21, 23, and 28-29 are obvious over Burton in view of Walters.

  • Prior Art Relied Upon: Burton (Application # 2004/0093429) and Walters (Application # 2001/0052019).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Burton teaches the core system of the independent claims: a server-based system ("message adaptation component") that intercepts emails and inserts digital content (e.g., images, text) based on a set of rules and codes ("message adaptation specification"). This system can provide different content to different users. However, Burton does not explicitly detail the delivery of bandwidth-intensive content like video. Walters was argued to supply this missing element by teaching a method to efficiently deliver video in emails. Walters discloses sending an initial message with a placeholder icon and only transmitting the full video after a user clicks the icon, thus managing bandwidth. The combination, therefore, taught a system that could provide alternative presentations (image from Burton, video from Walters) using decision logic.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Burton's targeted advertising system with Walters's efficient video delivery method to enhance the capabilities of Burton's system. Incorporating video advertising was a known commercial goal, and Walters provided a well-understood solution to the known problem of video's high bandwidth requirements, making the combination a predictable improvement.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references, as both operate in the same field of email enhancement and address complementary problems. Integrating Walters's bandwidth management technique into Burton's content-insertion framework was presented as a straightforward application of known principles.

Ground 2: Claims 1-2, 7, 12-13, 18, 21, 23, and 28-29 are obvious over Brown in view of Walters.

  • Prior Art Relied Upon: Brown (Patent 7,584,251) and Walters (Application # 2001/0052019).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented an alternative to Ground 1, with Brown serving as the primary reference. Petitioner asserted that Brown teaches a system for enhancing emails with rich media, including both images and video, using predefined templates and rules. Brown’s "enhancement server process" acts as the "message adaptation component," and its rules for selecting content based on factors like whether a recipient is internal or external to a network constitute the "message adaptation specification" with "decision logic." Like Burton, Brown provides the foundation for selecting alternative presentations. Walters was again combined to teach the specific, efficient method of two-step video delivery (icon first, video on-demand) to address the bandwidth challenges inherent in delivering the video content disclosed by Brown.
    • Motivation to Combine: The motivation was analogous to Ground 1. A POSITA seeking to implement the rich media email system of Brown would recognize the bandwidth challenges associated with video and would be motivated to incorporate the known solution from Walters to ensure efficient and reliable message delivery.

Ground 3: Claims 3-6, 10-11, 14-17, 19-20, 22, and 24-27 are obvious over Burton and Walters (or alternatively Brown and Walters), further in view of McMillan.

  • Prior Art Relied Upon: Burton (Application # 2004/0093429), Walters (Application # 2001/0052019), and McMillan (Patent 6,789,108); or alternatively, Brown (Patent 7,584,251), Walters, and McMillan.

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground built upon the combinations in Grounds 1 and 2 to address various dependent claims. Petitioner argued that McMillan teaches determining the operational capabilities of a recipient's device—such as bandwidth, display format, software, and whether it is a wireless device—and adapting the delivered content accordingly. For example, McMillan teaches sending only compatible content or different quality versions based on sensed capabilities. This disclosure was mapped to dependent claim limitations requiring the system to determine device capabilities (e.g., wireless device, network bandwidth) and select a message layer or content version (e.g., reduced functionality, lower quality) based on that determination.
    • Motivation to Combine: A POSITA would combine McMillan's teachings with the base systems of Burton/Walters or Brown/Walters to improve their reliability and effectiveness. By detecting recipient device capabilities, the system could avoid sending content that the recipient could not view, a known problem in rich media messaging. This would ensure a better user experience and make the advertising or messaging more dependable, providing a strong motivation for the combination.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 8-9 based on the combination of Burton/Walters (or Brown/Walters) with Marks (Application # 2001/0054059), which teaches systems for managing user opt-in and opt-out preferences for receiving targeted email advertising.

4. Key Claim Construction Positions

  • message adaptation component: Petitioner argued for a broad construction of this term as a "system module for modifying a message." This interpretation was based on the specification's description of a "component" as a "module" of hardware or software and was critical for mapping the term onto the server-based architectures described in the prior art.
  • message layer / message layer definition: These terms were construed as "an alternative presentation" and "a plurality of alternative presentations," respectively. This broad construction was central to the Petitioner's argument that prior art systems teaching the selection between different types of content (e.g., an image versus a video) met these claim limitations.
  • differently versioned: Petitioner argued this term was indefinite but, for the purposes of the inter partes review (IPR), proposed it be construed simply as "different." This construction was intended to facilitate the invalidity analysis under 35 U.S.C. §103 by preventing the term from being interpreted narrowly to require a specific type of versioning not disclosed in the prior art.

5. Relief Requested

  • Petitioner requests institution of an IPR and cancellation of claims 1-29 of Patent 7,707,317 as unpatentable.