Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper No. 6
`
`
` Entered: September 11, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SALESLOFT, INC.,
`Petitioner,
`
`v.
`
`INSIDESALES.COM, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01070
`Patent 7,072,947 B1
`____________
`
`Before WILLIAM V. SAINDON, ROBERT J. WEINSCHENK, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper No. 6
`
`
` Entered: September 11, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SALESLOFT, INC.,
`Petitioner,
`
`v.
`
`INSIDESALES.COM, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01070
`Patent 7,072,947 B1
`____________
`
`Before WILLIAM V. SAINDON, ROBERT J. WEINSCHENK, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`Case IPR2017-01070
`Patent 7,072,947 B1
`
`
`INTRODUCTION
`I.
`Petitioner, SalesLoft, Inc., filed a Petition (Paper 1, “Pet.”) requesting
`inter partes review of claims 1–9 and 23–31 of U.S. Patent No. 7,072,947
`B1 (Ex. 1001, “the ’947 patent”). Patent Owner, InsideSales.com, Inc., did
`not file a Preliminary Response. Pursuant to 35 U.S.C. § 314 and 37 C.F.R.
`§ 42.4(a), we have authority to determine whether to institute review.
`An inter partes review may not be instituted unless “the information
`presented in the petition . . . and any response . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the
`reasons set forth below, we conclude that there is a reasonable likelihood
`that Petitioner would prevail in establishing the unpatentability of the
`challenged claims. We therefore institute inter partes review of those
`claims.
`Our conclusions at this stage of the proceeding are preliminary and
`are based on the evidentiary record developed thus far. This is not a final
`decision as to the patentability of the claims for which inter partes review is
`instituted. Our final decision will be based on the record as fully developed
`during trial.
`
`A. RELATED MATTERS
`The parties identify the following pending judicial matter as relating
`to the ’947 patent: InsideSales.com, Inc. v. SalesLoft, Inc., Case 2:16-cv-
`00859 (D. Utah, filed Aug. 4, 2016). Pet. 3; Paper 5, 2.
`Additionally, IPR2017-01071 involves a petition for inter partes
`review of U.S. Patent No. 7,076,533, which shares a specification with the
`’947 patent.
`
`2
`
`
`
`Case IPR2017-01070
`Patent 7,072,947 B1
`
`
`B. THE ’947 PATENT
`The ’947 patent is directed to a “system for monitoring email and
`website behavior of an email recipient.” Ex. 1001, 2:34–35. To that end, it
`describes a “mail enhancement server . . . configured to intercept all
`outgoing emails from a mail server” and a “logging server configured to
`capture and store relevant information relating to the outgoing email.” Id. at
`2:37–39, 3:3–5. “The mail enhancement server modifies each outgoing
`email to include a tracking code,” which may be “embedded within an image
`call” or part of a hyperlink in the original email that is “modified to include
`the tracking code.” Id. at 2:42–48. The ’947 patent describes that the
`functionality of the mail enhancement server may be provided at any point
`prior to delivery of the email to the recipient, including at the email client
`used to send the mail. Id. at 6:4–20.
`When a recipient’s computer opens the modified email, the image call
`or hyperlink causes it to contact the logging server, which may then deliver a
`cookie to the requesting computer. Id. at 2:61–66. The logging server uses
`the tracking code and cookie to “monitor the activities of the recipient in
`relation to the email as well as websites visited by the recipient.” Id. at
`3:14–17.
`
`C. CHALLENGED CLAIMS
`Challenged claims 1, 9, 23, and 31 are independent. Claim 1
`(reproduced below) is illustrative of the claimed subject matter:
`1. A system for monitoring email behavior of an email
`recipient, the email recipient being associated with a first
`email domain, comprising:
`control logic configured to modify an outgoing email
`addressed to the email recipient and sent using an email
`
`3
`
`
`
`Case IPR2017-01070
`Patent 7,072,947 B1
`
`
`client configured to allow a sender to send the outgoing
`email and access one or more personal or corporate
`emails belonging to the sender, wherein the control logic
`configured to modify the outgoing email is further
`configured to edit the outgoing email to include a
`tracking code, wherein the tracking code is uniquely
`associated with the outgoing email, the email recipient,
`the sender or the business entity associated with the
`sender or a combination thereof; and
`control logic configured to monitor the email behavior of
`the email recipient With respect to the modified
`outgoing email;
`wherein the monitoring of the email behavior is performed
`within an Internet domain related to the sender or a
`business entity associated with the sender;
`wherein the first email domain and the Internet domain
`related to the sender or the business entity associated
`with the sender are different;
`wherein upon the email recipient opening the modified
`outgoing email, a connection to a remote server is made
`in which the tracking code is transmitted to the remote
`server;
`wherein the connection to the remote server is an image call
`inserted into the modified outgoing email;
`wherein the tracking code is embedded within the image
`call; and
`wherein upon receipt of the tracking code by the remote
`server, the remote server is able to determine whether
`the modified outgoing email has been opened by the
`email recipient.
`Ex. 1001, 13:54–14:21.
`
`4
`
`
`
`Case IPR2017-01070
`Patent 7,072,947 B1
`
`
`D. PROPOSED GROUNDS OF UNPATENTABILITY
`Petitioner asserts the following grounds of unpatentability, each based
`on 35 U.S.C. § 103(a):1
`
`References
`
`Lessa2
`Lessa and Brown3
`
`Challenged
`Claims
`1, 2, 5–7, 9, 23, 24, 27–29, and 31
`3, 4, 8, 25, 26, and 30
`
`
`Pet. 15. Petitioner also relies on the Declaration of Dr. Don Turnbull
`(Ex. 1007).
`
`E. LEGAL PRINCIPLES
`1. Obviousness Overview
`An invention is not patentable “if the differences between the subject
`matter sought to be patented and the prior art are such that the subject matter
`as a whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.”
`35 U.S.C. § 103(a). The question of obviousness is resolved on the basis of
`underlying factual determinations including: (1) the scope and content of the
`prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of skill in the art; and, (4) where in evidence, so-called
`secondary considerations, including commercial success, long-felt but
`
`
`1 The America Invents Act included revisions to, inter alia, 35 U.S.C. § 103
`effective on March 16, 2013. Because the ’947 patent issued from an
`application filed before March 16, 2013, the pre-AIA version of 35 U.S.C.
`§ 103 applies.
`2 U.S. Pat. Pub. No. US 2002/0040387 A1 (pub. Apr. 4, 2002).
`3 U.S. Pat. No. 7,584,251 B2 (iss. Sep. 1, 2009).
`
`5
`
`
`
`Case IPR2017-01070
`Patent 7,072,947 B1
`
`unsolved needs, and failure of others. Graham v. John Deere Co., 383 U.S.
`1, 17−18 (1966). When evaluating a combination of teachings, we must also
`“determine whether there was an apparent reason to combine the known
`elements in the fashion claimed by the patent at issue.” KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441, F.3d 977,
`988 (Fed. Cir. 2006)). Whether a combination of elements produced a
`predictable result weighs in the ultimate determination of obviousness. KSR,
`550 U.S. at 416–17.
`
`2. Anticipation overview
`A patent claim is unpatentable under 35 U.S.C. § 102 if “the four
`corners of a single, prior art document describe every element of the claimed
`invention, either expressly or inherently, such that a person of ordinary skill
`in the art could practice the invention without undue experimentation.” 4
`Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed.
`Cir. 2000).
`
`II. DISCUSSION
`A. LEVEL OF ORDINARY SKILL IN THE ART
`Petitioner proposes that a person of ordinary skill in the art as of
`November 6, 2001, “would have had an Associate or Bachelor’s degree in
`computer science or information systems and/or one to three years of
`software development experience in the field of Internet (Web and email)
`technologies and/or one to three years of experience in the field of digital
`
`
`4 We address the standard for anticipation because, as discussed below,
`Petitioner effectively presents a ground of anticipation by Lessa.
`
`6
`
`
`
`Case IPR2017-01070
`Patent 7,072,947 B1
`
`marketing using software tools.” Pet. 10–11 (citing Ex. 1007 ¶ 23). We
`adopt that definition for purposes of this decision.
`
`B. CLAIM CONSTRUCTION
`Petitioner asserts that “specific construction of any claim terms is not
`required because the prior art relied on meets each of the claim limitations
`under any reasonable construction of the terms.” Pet. 9. We agree that no
`term requires express construction for purposes of this decision.
`
`C. UNPATENTABILITY
`As summarized above, Petitioner asserts that the subject matter of
`claims 1, 2, 5–7, 9, 23, 24, 27–29, and 31 would have been obvious over
`Lessa alone. Pet. 17–29. Petitioner also asserts that the subject matter of
`claims 3, 4, 8, 25, 26, and 30 would have been obvious over Lessa and
`Brown combined. Pet. 29–38. We determine that Petitioner has shown a
`reasonable likelihood of prevailing with respect to unpatentability of claims
`1 and 3, and we institute review of all the challenged claims.
`
`1. Lessa alone
`Petitioner asserts that Lessa teaches all of the limitations of claim 1.
`Pet. 20–25. It asserts that Lessa is prior art to the challenged claims under
`35 U.S.C. § 102(e) because Lessa is entitled to the filing date of its own
`provisional application. Id. at 16. Petitioner supports that assertion by
`pointing to Lessa’s provisional application (see Ex. 1010) as supporting
`Lessa’s claim 1. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
`F.3d 1375, 1380–81 (Fed. Cir. 2015) (holding petitioner bears the ultimate
`burden of showing the prior art’s entitlement to an earlier priority date,
`
`7
`
`
`
`Case IPR2017-01070
`Patent 7,072,947 B1
`
`which may include showing that the prior-art claims find support in an
`earlier provisional application).
`Regarding the limitations of claim 1, Petitioner points primarily to
`Lessa’s paragraphs 9 through 22, in which Lessa teaches modifying an
`outgoing email by passing it through a “gateway” that inspects the address
`of the recipient, and when that address is formatted according to a certain
`rule (Lessa ¶¶ 10–14), modifies the email to include an HTML <IMG> tag
`that contains a “unique identification code (UIC)” that is both specific to the
`message and associated with the sender’s address (id. at ¶¶ 15–20). When
`the recipient opens the modified message in Lessa, the <IMG> tag causes
`the recipient’s email client to request a CGI script from the gateway server
`while passing the UIC to that server. Id. at ¶ 22. Using the UIC, the server
`can notify the sender that the recipient viewed the email. Id.
`We note that Patent Owner has not, at this stage of the proceeding,
`addressed Petitioner’s analysis or supporting evidence. We have evaluated
`Petitioner’s assertions mapping claim 1’s limitations onto Lessa’s teachings
`and, on the present record, we determine that Petitioner has shown
`adequately at this stage of the proceeding a reasonable likelihood of
`succeeding on its obviousness challenge to claim 1 over Lessa. Because the
`present record indicates no substantial difference between Lessa’s teachings
`and claim 1’s limitations, we exercise our discretion and institute review of
`claim 1 as both (1) directed to subject matter that would have been obvious
`to a person of skill in light of Lessa and (2) anticipated by Lessa.
`Having decided that Petitioner’s showing regarding Lessa supports a
`reasonable likelihood that at least one of the challenged claims is
`unpatentable as anticipated and obvious, we exercise our discretion under
`
`8
`
`
`
`Case IPR2017-01070
`Patent 7,072,947 B1
`
`37 C.F.R. § 42.108 to have the review proceed on all challenged claims
`within these grounds—claims 1, 2, 5–7, 9, 23, 24, 27–29, and 31.
`
`2. Lessa combined with Brown
`For claims 3, 4, 8, 25, 26, and 30, Petitioner relies on Lessa in
`combination with teachings from Brown. Pet. 29–38. It asserts that Brown
`is prior art to the challenged claims under 35 U.S.C. § 102(e) because Brown
`is entitled to the filing date of its own provisional application, August 28,
`2000. Id. at 16; see Ex. 1005, [60]. Petitioner supports that assertion by
`pointing to Brown’s provisional application (see Ex. 1011) as supporting
`Brown’s claim 1. See Dynamic Drinkware, 800 F.3d at 1380–81.
`Claim 3 depends from claim 1 and further recites that “the control
`logic configured to modify the outgoing email is embedded within the email
`client, a plug-in to the email client or an email client utility.” Ex. 1001,
`14:26–29. Petitioner asserts that Brown teaches this additional limitation by
`teaching an “e-mail client” that is “configured to provide user selection
`capabilities for rich media content enhancements.” Ex. 1005, 11:1–7;
`accord id. at 18:16–31 (“[S]tandard e-mail user interface client programs
`such as Microsoft Outlook are modifiable to enable the user to apply rich
`media enhancement template identifiers for e-mail messages generated and
`transmitted. As noted above, rich media enhancement templates are
`predefined software code containing formatting instructions and other
`specifications for rich media content for the delivery of rich media content
`into the body of an e-mail message when the message is viewed by a
`recipient.”); see also Pet. 35–36.
`Petitioner assert that a skilled artisan would have understood that an
`email could be modified at any point before delivery to the recipients (see
`
`9
`
`
`
`Case IPR2017-01070
`Patent 7,072,947 B1
`
`Ex. 1001, 6:7–20) and that Brown teaches one option for where to perform
`the modification. Pet. 32–34. Petitioner also asserts that modifying an email
`at the email client would have been a predictable way of accomplishing the
`functionality taught by Lessa (“tracking activities of an email recipient” by
`“modifying an outgoing email to include a tracking code”). Id. We
`understand Petitioner to argue that substituting Brown’s email-modification
`location for that of Lessa would have been a simple substitution yielding a
`predictable result. See KSR, 550 U.S. at 416–17. We conclude that, on the
`present record, Petitioner has presented “articulated reasoning with some
`rational underpinning to support the legal conclusion of obviousness.”
`Kahn, 441 F.3d at 988.
`We have evaluated Petitioner’s assertions mapping claim 3’s
`limitations onto Lessa’s and Brown’s teachings and, on the present record,
`we determine that Petitioner has shown adequately at this stage of the
`proceeding a reasonable likelihood of succeeding on its obviousness
`challenge to claim 3 over Lessa and Brown.
`Regarding other claims for which Petitioner applies other teachings
`from Brown, Petitioner provides additional reasoning that a skilled artisan
`would have looked to those other teachings and used them in combination
`with Lessa. Regarding the requirement in claim 4 that the system generate a
`copy of the email specific to each recipient when addressed to multiple
`recipients (see Ex. 1001, 14:30–39), Petitioner asserts that Brown teaches
`application to emails with a plurality of recipients and that a skilled artisan
`would apply that teaching to Lessa’s tracking method to reach the solution
`of claim 4. Pet. 33. Regarding the requirement of claim 8 that the system
`update a database with information relating to the recipient (see Ex. 1001,
`
`10
`
`
`
`Case IPR2017-01070
`Patent 7,072,947 B1
`
`14:53–54), Petitioner asserts that Brown teaches such a database and that a
`skilled artisan would apply Brown’s teachings to Lessa as “nothing more
`than the application of commonly used technology to store results for later
`accessibility” to get the benefit of “facilitating the evaluation of the
`effectiveness of an email campaign.” Pet. 34. On the present record, we
`conclude that Petitioner has provided an adequate rationale for the asserted
`combinations of teachings.
`Patent Owner has not, at this stage of the proceeding, addressed
`Petitioner’s analysis or supporting evidence. Having decided that
`Petitioner’s showing regarding Lessa and Brown supports a reasonable
`likelihood that at least one of the challenged claims—claim 3—is
`unpatentable as obvious, and having also concluded that Petitioner provides
`an adequate rationale regarding the combinations asserted against claims 4
`and 8, we exercise our discretion under 37 C.F.R. § 42.108 to have the
`review proceed on all challenged claims within this ground—claims 3, 4, 8,
`25, 26, and 30.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the Petition establishes a reasonable likelihood that Petitioner
`would prevail in showing the challenged claims unpatentable.
`
`
`
`11
`
`
`
`Case IPR2017-01070
`Patent 7,072,947 B1
`
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review of the ’947 patent is hereby instituted on the following grounds:
`A. Whether claims 1, 2, 5–7, 9, 23, 24, 27–29, and 31 are
`unpatentable under 35 U.S.C. § 102(e) as anticipated by Lessa; and
`B. Whether claims 1, 2, 5–7, 9, 23, 24, 27–29, and 31 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Lessa; and
`C. Whether claims 3, 4, 8, 25, 26, and 30 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Lessa and Brown;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; and
`FURTHER ORDERED that no other grounds are authorized for inter
`partes review.
`PETITIONER:
`
`Patrick McPherson
`Daniel T. Xue
`Duane Morris LLP
`pdmcpherson@duanemorris.com
`DTXue@duanemorris.com
`
`PATENT OWNER:
`
`Thomas S. Fletcher
`Christopher S. Geyer
`Williams & Connolly LLP
`tfletcher@wc.com
`cgeyer@wc.com
`
`
`12
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
