PTAB

IPR2017-01070

SalesLoft Inc v. InsideSalesCOm Inc

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Method and System for Monitoring E-mail and Website Behavior of An E-Mail Recipient
  • Brief Description: The ’947 patent relates to methods and systems for monitoring email recipient behavior. The system intercepts an outgoing email and modifies it to include a unique tracking code before delivery, allowing the sender to receive feedback when the email is opened or interacted with by the recipient.

3. Grounds for Unpatentability

Ground 1: Obviousness over Lessa - Claims 1, 2, 5-7, 9, 23, 24, 27-29, and 31 are obvious over Lessa.

  • Prior Art Relied Upon: Lessa (Application # 2002/0040387).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Lessa taught all limitations of the challenged claims. Lessa disclosed a method for tracing an email message by intercepting it at a gateway server, modifying its HTML body to include a unique identification code (UIC) within an <IMG> tag, and then forwarding it. Petitioner contended this gateway server constituted the claimed "control logic." When the recipient's email client opened the message, it would execute the <IMG> tag, which functioned as an "image call" pointing to a remote server script. This action transmitted the UIC to the server, which would then detect that the email had been opened and notify the original sender. Petitioner asserted this process met the limitations of monitoring behavior via a tracking code uniquely associated with the email and sender.
    • Key Aspects: For dependent claims, Petitioner argued Lessa's disclosure of a "web interface" for the sender to check message status met the limitation of a user interface (claim 7). The argument for claim 9, which recites a "hyperlink" instead of an "image call," was that Lessa's <IMG> tag functions as a hyperlink to establish the connection to the remote server.

Ground 2: Obviousness over Lessa in view of Brown - Claims 3, 4, 8, 25, 26, and 30 are obvious over Lessa in view of Brown.

  • Prior Art Relied Upon: Lessa (Application # 2002/0040387) and Brown (Patent 7,584,251).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground supplemented Lessa’s server-side modification with Brown’s teachings to address limitations not explicitly found in Lessa. Specifically, Brown taught modifying emails directly within an email client (e.g., Microsoft Outlook) using a "plug-in" or "add-in," which Petitioner mapped to the limitations of claim 3 (control logic embedded in an email client or plug-in). Brown also disclosed systems for handling emails sent to a "plurality of recipients," which Petitioner argued rendered claim 4 obvious by teaching the examination of an email for multiple recipients and modifying each copy for individual tracking. Furthermore, Brown’s disclosure of using a database to log recipient activities, such as email opens, was argued to teach the limitation of updating a contact database (claim 8).
    • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine Lessa and Brown because both references addressed the same problem (tracking email engagement) with the same fundamental solution (modifying emails to include tracking data). A POSITA would combine Brown’s teaching of a client-side plug-in with Lessa’s tracking system as a simple design choice, since the ’947 patent itself stated that the modification could be performed in various locations, including the client. Applying Brown's multi-recipient tracking and database logging to Lessa's system was presented as a predictable extension to improve functionality for common use cases like sales and marketing campaigns.
    • Expectation of Success: Petitioner asserted a POSITA would have had a clear expectation of success. The combination involved applying known techniques (client-side modification, multi-recipient handling, database logging) to a known email tracking architecture (Lessa) to achieve the predictable result of a more robust and flexible tracking system.

4. Relief Requested

  • Petitioner requests institution of an Inter Partes Review (IPR) and cancellation of claims 1-9 and 23-31 of the ’947 patent as unpatentable.