PTAB

IPR2017-01071

SalesLoft Inc v. InsideSalesCOm Inc

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Petition
petition Intelligence

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 ’533 patent discloses methods and systems for monitoring an email recipient’s behavior. The invention intercepts a standard outgoing email and modifies it to include a unique tracking code, often within a hyperlink, before forwarding it to the recipient. This code allows a remote server to track recipient actions, such as opening the email or clicking the link, and subsequent website activity.

3. Grounds for Unpatentability

Ground 1: Claims 1-17 and 39-55 are obvious over Brown in view of Chen.

  • Prior Art Relied Upon: Brown (Patent 7,584,251) and Chen (International Publication No. WO 01/69462).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Brown taught the core system of claim 1, including control logic that modifies an outgoing email on an "enhancement path" to include rich media content for tracking purposes. Brown disclosed a multi-user system where an email client like Microsoft Outlook could be used to send messages that are then enhanced and tracked. However, Brown described its tracking mechanism in terms of rich media content rather than an explicit "tracking code." Petitioner asserted that Chen supplied this missing element. Chen disclosed distributing advertisements via email with an "actuatable hyperlink" containing an encoded URL with a unique tracking code. This code was used to track recipient responses on an individualized level, including click-throughs and subsequent website behavior, by transmitting recipient and campaign IDs to a web server.
    • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would have been motivated to combine the references because they address the same problem—tracking email recipient engagement—in the same field of endeavor. A POSITA would combine Chen's well-understood technique of using a unique tracking code within a hyperlink with Brown's more robust email enhancement and tracking system to yield the predictable result of improved, individualized tracking. Brown itself acknowledged the existence of prior art systems that remotely insert content and track user activity, analogous to the system taught by Chen.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because combining a known tracking method (hyperlink with a unique identifier) with a known email modification system was a straightforward application of existing technologies to achieve a predictable outcome.

Ground 2: Claims 1-17 and 39-55 are obvious over Brown in view of Blakeley.

  • Prior Art Relied Upon: Brown (Patent 7,584,251) and Blakeley (International Publication No. WO 01/73640).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner relied on Brown for the same core system elements as in Ground 1. As an alternative to Chen, Petitioner argued Blakeley disclosed the specific tracking code limitations. Blakeley taught including a "tracking component" or "identification code" in emails to track recipient responses such as opening the email, forwarding it, or clicking a hyperlink. Blakeley explicitly disclosed that this identification code could be used for tracking hyperlink click-throughs and that tracking information could be stored in cookies. This directly taught editing an email to include a tracking code for monitoring recipient behavior.
    • Motivation to Combine: The motivation to combine was similar to that for Ground 1, as both references sought to track email marketing effectiveness. Petitioner presented a more direct motivation, noting that Brown expressly acknowledged MindArrow (Blakeley's assignee) as a provider of a prior art email tracking application. A POSITA, aware of MindArrow's tracking capabilities as taught by Blakeley, would have been motivated to integrate Blakeley's known tracking component into the more complete email messaging system of Brown, which improved upon the MindArrow art by also handling inbound emails. This combination represented the predictable integration of a known feature into an existing system to improve it.
    • Expectation of Success: A POSITA would expect success in augmenting Brown's system with Blakeley's tracking code, as it involved applying a known tracking technique to a known email modification system to achieve the known goal of monitoring recipient web activity.

4. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-17 and 39-55 of the ’533 patent as unpatentable.