PTAB

IPR2014-01473

Veeva Systems Inc v. Prolifiq Software Inc

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1. Case Identification

2. Patent Overview

  • Title: Adaptive Media Messaging, Such As For Rich Media Messages Incorporating Digital Content
  • Brief Description: The ’374 patent describes systems and methods for adapting electronic messages based on the digital content capabilities of a recipient's device. The technology addresses the problem that rich media content, such as in marketing emails, may not render correctly on all devices. It purports to solve this by embedding a link in an initial message, which, when dereferenced by the user, executes logic to detect device capabilities and then provide a compatible version of the content.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1, 4-12, and 14-15 over Walters in view of McMillan

  • Prior Art Relied Upon: Walters (Application # 2001/0052019) and McMillan (Patent 6,789,108).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Walters taught a system for sending video e-mails containing an icon that functions as a link to stream video content but noted this system required the recipient device to possess specific multimedia capabilities. McMillan was argued to teach the missing element: a system that determines the operational capabilities of a recipient device (e.g., support for FLASH content) and then selectively provides a compatible digital file. The combination, therefore, allegedly disclosed the claimed invention where an initial message with a link (Walters) is sent, and upon dereferencing the link, logic tests the recipient’s device capabilities to select and display a compatible version of the content (McMillan).
    • Motivation to Combine: A POSITA would combine McMillan’s capability-detection feature with Walters’ video e-mail system to solve the explicit drawback in systems like Walters—recipient device incompatibility. This combination would predictably ensure that rich media e-mails are viewable by all intended recipients.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success, as both references operate in the same field of enhancing electronic messages, and McMillan provides a direct solution to a known problem that Walters’ system suffered from, making the integration straightforward.
    • Key Aspects: Petitioner further argued the combination met various dependent claim limitations. For instance, the content being streamed from Walters' server after a click constitutes separate transfer (claim 4), and the selection of a compatible format taught by McMillan inherently customizes the content for the addressee (claim 5) and would naturally be implemented via scripts (claim 12).

Ground 2: Anticipation of Claims 1, 6-12, and 14-15 by Hegde

  • Prior Art Relied Upon: Hegde (Patent 7,155,436).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Hegde disclosed every element of the challenged independent claims. Hegde describes a system for providing rich media content customized for a user's device. This system teaches sending a message with an initial link or image ("first layer"). Upon a user action like a click ("dereferencing"), logic is executed to detect device attributes, as detailed in Hegde's flowcharts, including language, bandwidth, operating system, and media player. Based on the results of this test, Hegde’s system selects an appropriate version of rich media content from a plurality of versions and displays it, effectively substituting the initial link with the selected content ("second layer").
    • Key Aspects: Petitioner also contended that Hegde's express teachings anticipated dependent claims. For example, Hegde’s system could select between high-quality and low-quality video sequences (claim 7) based on its detected bandwidth capabilities and could utilize different "virtual players" for different content formats (claim 9).

  • Additional Grounds: Petitioner asserted additional obviousness challenges, primarily to address specific dependent claim limitations. Claims 2-3 and 13 were challenged as obvious over Walters, McMillan, and Mintz (Application # 2001/0031454). Similarly, claims 2-5 and 13 were challenged as obvious over Hegde and Mintz. In these grounds, Mintz was cited for its express disclosure of incorporating programming logic into an electronic message either directly or by reference (e.g., via Object Linking and Embedding). Petitioner argued these were well-known design alternatives for implementing the testing logic from the primary references, thereby rendering obvious claims requiring logic to be "directly contained," included "by reference," or "appended."

4. Key Claim Construction Positions

  • "dereferenced": Petitioner proposed this term be construed as "accessing the logic referred to by the link." This construction was based on prosecution history estoppel, where the applicant explicitly defined the term to overcome a rejection. It is central to connecting the user's action (clicking a link) with the initiation of the device capability testing taught by the prior art.
  • "first layer" / "second layer": Proposed construction was "first version" and "second version," respectively. This interpretation is critical for mapping the prior art, as it frames the invention as a process of substitution where an initial message (the link in Walters or Hegde) is replaced by a second, richer version (the selected media).
  • "digital content" / "media content": Petitioner argued these interchangeable terms should be construed as "digital data included in an electronic communication." This broad construction was asserted to align with the specification and is necessary to encompass the various types of media (video, text, images) disclosed in the prior art references under a single, consistent definition.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-15 of the ’374 patent as unpatentable.