Trials@uspto.gov
`571-272-7822
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` Paper No. 6
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` Entered: September 11, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SALESLOFT, INC.,
`Petitioner,
`
`v.
`
`INSIDESALES.COM, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01071
`Patent 7,076,533 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
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` 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 IPR2017-01071
`Patent 7,076,533 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 IPR2017-01071
`Patent 7,076,533 B1
`
`
`INTRODUCTION
`I.
`Petitioner, SalesLoft, Inc., filed a Petition (Paper 1, “Pet.”) requesting
`inter partes review of claims 1–17 and 39–55 of U.S. Patent
`No. 7,076,533 B1 (Ex. 1001, “the ’533 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 Petitioner identifies the following pending judicial matter as
`relating to the ’533 patent: InsideSales.com, Inc. v. SalesLoft, Inc., Case
`2:16-cv-00859 (D. Utah, filed Aug. 4, 2016). Pet. 4. Patent Owner indicates
`there is no related judicial matter. Paper 5, 2.
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`Additionally, IPR2017-01070 involves a petition for inter partes
`review of U.S. Patent No. 7,072,947, which shares a specification with the
`’533 patent. See Pet. 4.
`
`B. THE ’533 PATENT
`The ’533 patent is directed to a “system for monitoring email and
`website behavior of an email recipient.” Ex. 1001, 2:24–25. 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
`2:27–29, 2:57–61. “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 2:31–36. The ’533 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 5:41–55.
`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 2:49–53. 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
`2:67–3:3.
`
`C. CHALLENGED CLAIMS
`Challenged claims 1, 14, 39, and 50 are independent. Claim 1
`(reproduced below) is illustrative of the claimed subject matter:
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`1. A system for monitoring website behavior of an email
`recipient, comprising:
`control logic configured to modify an outgoing email
`addressed to the email recipient and sent using an email
`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 wherein the
`tracking code is inserted into a hyperlink in the modified
`outgoing email; and
`control logic configured to monitor the website behavior of
`the email recipient using information contained in the
`modified outgoing email;
`wherein upon the email recipient clicking on the hyperlink,
`a connection to a remote server is made in which the
`tracking code is transmitted to the remote server; the
`remote server being used to manage a website
`referenced by the hyperlink; and
`wherein upon receipt of the tracking code by the remote
`server, the remote server is able to use the tracking code
`to monitor the website behavior of the email recipient.
`Ex. 1001, 12:42–67.
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`D. PROPOSED GROUNDS OF UNPATENTABILITY
`Petitioner asserts the following grounds of unpatentability, each based
`on 35 U.S.C. § 103(a):1
`
`References
`
`Challenged
`Claims
`1–17 and 39–55
`Brown2 and Chen3
`Brown and Blakeley4 1–17 and 39–55
`
`
`Pet. 17. Petitioner also relies on the declaration of Dr. Don Turnbull
`(Ex. 1007).
`
`E. 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
`unsolved needs, and failure of others. Graham v. John Deere Co., 383 U.S.
`
`1 The America Invents Act included revisions to, inter alia, 35 U.S.C. § 103
`effective on March 16, 2013. Because the ’465 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. No. 7,584,251 B2 (iss. Sep. 1, 2009).
`3 Pub. PCT App. No. WO 01/69462 A2.
`4 Pub. PCT App. No. WO 01/73640 A1.
`
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`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.
`
`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 Web technologies and/or
`one to three years of experience in the field of digital marketing using
`software tools.” Pet. 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. 10. 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 1–17 and 39–55 would have been obvious over the combined
`teachings of Brown and Chen. Pet. 19–49. Petitioner also asserts that the
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`subject matter of claims 1–17 and 39–55 would have been obvious over the
`combined teachings of Brown and Blakeley. Pet. 49–57. We determine
`that, for each ground, Petitioner has shown a reasonable likelihood of
`prevailing with respect to unpatentability of claim 1, and we institute review
`of all the challenged claims.
`
`1. Brown combined with Chen
`Petitioner 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 17; see Ex. 1004, [60].
`Petitioner supports that assertion by pointing to Brown’s provisional
`application (see Ex. 1011) as supporting Brown’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 prior art’s
`entitlement to an earlier priority date, which may include showing that the
`prior-art claims find support in an earlier provisional application). It asserts
`that Chen is prior art to the challenged claims under 35 U.S.C. § 102(e)
`because Chen was published based on a PCT application filed January 19,
`2001. Pet. 17; Ex. 1005.
`Petitioner asserts that Brown teaches “modifying an outgoing email
`sent by a sender to include rich media content for the purpose of ‘tracking
`and measuring’ the activities of the recipient of the email” (Pet. 23 (citing
`Ex. 1004, 10:45–52, 28:42–45)) and that Chen “explicitly teaches
`embedding [a] tracking code or hyperlink in the outgoing email to track the
`activities of the email recipient” (id. (citing Ex. 1005, 4:11–13, 9:13–18)).
`Petitioner maps the basic structure of claim 1 to Brown (Pet. 25–27),
`which teaches that an email from a user’s email client is directed to an “e-
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`mail enhancement path” to add additional content to the email. E.g.,
`Ex. 1004, 6:32–24, 9:48–55, 10:45–51, 11:50–65, Figs. 4–8. Brown further
`teaches that inbound email for the user passes through the mail server
`handling outbound email and to the user’s email client, but do not pass
`through the enhancement path. Id. at Figs. 4–8, 11:41–45, 18:17–24, 30:31–
`35.
`
`Regarding the requirements that an email be modified to include a
`tracking code “uniquely associated with the outgoing email, the email
`recipient, the sender or the business entity associated with the sender” and
`“inserted into a hyperlink in the modified outgoing email,” Petitioner
`acknowledges that “Brown does not explicitly disclose editing the outgoing
`email to include a tracking code” and relies on Chen as teaching those
`limitations. Pet. 28–31. Chen teaches that “[a]n actuatable link is
`incorporated in each e-mail so as to enable each . . . recipient to reach the
`destination web site, the link pointing to an intermediate web site and
`including information pertaining to the identities of the recipient and the
`destination web site.” Ex. 1005, 4:11–13. Chen further teaches an
`embodiment where the “encoded URL . . . includes a code that enables the
`system to keep track of various metrics pertaining to advertising
`effectiveness.” Id. at 9:11–15. In Chen’s preferred embodiment, “the code
`contains identifiers or pointers corresponding to: the e-mail address of the
`recipient; the campaign; a mailing associated with the campaign; and the
`destination URL.” Id. at 9:16–18.
`Petitioner asserts that both Brown and Chen teach a number of
`limitations of claim 1. See, e.g., Pet. 30, 32, 33, 35, 36. For example, both
`Brown and Chen teach “control logic configured to monitor the website
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`behavior of the email recipient using information contained in the modified
`outgoing email,” and that “upon the email recipient clicking on the
`hyperlink, a connection to a remote server is made in which the tracking
`code is transmitted to the remote server.” Brown teaches a database on a
`server and that “[w]hen a recipient opens a rich media e-mail an open event
`is logged in this [Rept_tracking] item” thus allowing “the system to report
`on the percent of recipients who can receive HTML e-mail as well as judge
`the efficacy of an e-mail campaign.” Ex. 1004, 28:41–45; see also id. at
`27:57–59. Chen teaches a “[w]eb server . . . dedicated to receiving, routing
`and recording responses from recipients of the advertising campaign.”
`Ex. 1005, 8:4–6. Chen’s web server can “keep track of various metrics
`pertaining to advertising effectiveness.” Id. at 9:13–16; see also id. at
`14:20–22. Petitioner asserts that a skilled artisan would have used Chen’s
`teaching of this limitation because it “provides a way of linking the sent
`outgoing e-mail with the web activities of the recipient in order to obtain the
`tastes and preferences of the recipient.” Pet. 33.
`Petitioner asserts additionally that both Brown and Chen teach “the
`remote server being used to manage a website referenced by the hyperlink.”
`Pet. 35. In Brown, Petitioner points to the teaching that a database is “used
`to . . . store and buffer information related to the status of processing certain
`requests.” Ex. 1004, 27:57–59; accord id. at 28:41–45 (“[A]n open event is
`logged . . .” allowing “. . . the system to report on the percent of recipients
`who can receive HTML e-mail as well as judge the efficacy of an e-mail
`campaign.”). Petitioner points to the teaching in Chen that the web server
`redirects an email recipient’s device so it will “request access to the
`destination URL on client web server 132.” Ex. 1005, 9:23–10:16; see
`
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`Pet 35. Petitioner asserts that a skilled practitioner would have used Chen’s
`teaching in this regard because it “results in the remote server having
`conventional web server functionality.” Pet. 35.
`Petitioner asserts that both Brown and Chen teach that “upon receipt
`of the tracking code by the remote server, the remote server is able to use the
`tracking code to monitor the website behavior of the email recipient.”
`Pet. 36–37. In Brown, Petitioner relies on the teaching that Brown’s
`database “logs each attempt to download the server application from a
`specified website.” Ex. 1004, 28:49–51. In Chen, Petitioner relies on
`teachings that the web server uses the tracking code to record information
`regarding each request, including information about the email message and
`recipient. Ex. 1005, 14:20–22, 15:8–10. Petitioner reasons that a skilled
`artisan would use Chen’s teachings in this regard with the system of Brown
`to provide “the ability to track the web activities of a specific recipient using
`a well-known technique in order to obtain the tastes and preferences of the
`recipient.” Pet. 36–37.
`In general, Petitioner asserts that Brown and Chen teach
`“interchangeable options for tracking the success of email campaigns”
`(Pet. 24), which we understand to mean that using Chen’s tracking method
`in place of Brown’s tracking method would be a simple substitution. 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.” See Kahn,
`441 F.3d at 988.
`We note that Patent Owner has not, at this stage of the proceeding,
`addressed Petitioner’s analysis or supporting evidence. We have evaluated
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`Petitioner’s assertions mapping claim 1’s limitations onto Brown’s and
`Chen’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 Brown and Chen.
`Petitioner relies on teachings from Chen additionally for the
`limitations of claims 3–6, 14, 15, 17, 39, 41–44, 50, 51, and 53. Pet. 37–49.
`Having decided that Petitioner’s showing regarding Brown and Chen
`supports a reasonable likelihood that at least one of the challenged claims is
`unpatentable as obvious, we exercise our discretion under 37 C.F.R.
`§ 42.108 to have the review proceed on all challenged claims within this
`ground—claims 1–17 and 39–55.
`
`2. Brown combined with Blakeley
`As an alternative ground with a secondary reference having a different
`effective filing date from that used in the first ground, Petitioner relies on
`Brown in combination with teachings from Blakeley. Pet. 49–57. It asserts
`that Blakeley is prior art to the challenged claims under 35 U.S.C. § 102(e)
`because it was published based on a PCT application filed March 24, 2000.
`Id. at 18.
`Petitioner relies on Blakeley in place of Chen, using the same
`teachings from Brown as described above. Pet. 52. It relies on Blakeley’s
`teachings regarding a “tracking component” added to an email’s “banner” to
`permit tracking various actions: “opening of the e-mail, forwarding of the e-
`mail, clicking through to a hyperlink, and playing an audio or video portion
`of a banner.” Ex. 1006, 4:4–11; accord id. at 2:16–21. Blakeley’s inserted
`banner may include “active hyperlink graphics” linking to a web site. Id. at
`3:15–18.
`
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`Petitioner asserts that a skilled artisan had reason to use Blakeley’s
`tracking-method teachings in combination with Brown’s teachings. As
`Petitioner explains, the combination would have been applying Blakeley’s
`“technique of tracking activities of an email recipient” by “modifying the
`email to include tracking code/component” to Brown’s method of email
`modification by “modifying an outgoing email to include content items for
`tracking” and would have yielded the predictable results of “tracking the
`website activities of an e-mail recipient that is directed to the website by the
`e-mail in order to obtain the tastes and preferences of the recipient.”
`Pet. 51–52. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to
`improve one device, and a person of ordinary skill in the art would recognize
`that it would improve similar devices in the same way, using the technique is
`obvious unless its actual application is beyond his or her skill.”). We
`conclude that, on the present record, Petitioner has presented “articulated
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness.” See Kahn, 441 F.3d at 988.
`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 Brown’s and
`Blakeley’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 Brown and
`Blakeley.
`Petitioner relies on teachings from Blakeley additionally for the
`limitations of claims 3 and 5. Pet. 56–57. Having decided that Petitioner’s
`showing regarding Brown and Blakeley supports a reasonable likelihood that
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`at least one of the challenged claims—claim 1—is unpatentable as obvious,
`and having also concluded that Petitioner provides an adequate rationale
`regarding the combination asserted against claim 1, we exercise our
`discretion under 37 C.F.R. § 42.108 to have the review proceed on all
`challenged claims within this ground—claims 1–17 and 39–55.
`
`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.
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review of the ’533 patent is hereby instituted on the following grounds:
`A. Whether claims 1–17 and 39–55 are unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Brown and Chen; and
`B. Whether claims 1–17 and 39–55 are unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Brown and Blakeley;
`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.
`
`
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`
`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
`
`14
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