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Claim Order Nixes Part Of Prolifiq Patents As Indefinite


A California federal judge has issued a claim construction order that invalidates several claims of two Prolifiq Software Inc. email patents asserted against defendant Veeva Systems Inc., finding they are indefinite because they do not provide information about what falls outside the claims.

In the process of construing the claims, U.S. District Judge Susan Illston concluded Wednesday that Veeva had proven that the claim term "differently versioned," which is found in seven of the 31 claims asserted by Prolifiq, is indefinite, rendering those claims invalid.

The judge ruled that the meaning of the term exists in a "zone of uncertainty" and thus fails to provide a person skilled in the art with reasonable certainty as to the scope of the invention, as required by the U.S. Supreme Court's June ruling on the standard for indefiniteness.

"Because the boundaries of the claims containing this term often depend on the on the unrestrained, subjective opinion of the person practicing the invention, Veeva has met its burden of proving by clear and convincing evidence that the claims at issue are indefinite," the judge wrote.

According to the ruling, the two patents Prolifiq accused Veeva of infringing relate to email technology, specifically adapting messages depending on the capabilities of the receiving device. For instance, the order notes that some devices may be able to display videos in email, while other may be capable of only showing text.

The invention allows users to send messages to that show text on one device and video on another based on the recipient's capabilities, according to the order. The patents refer to "differently versioned" content elements, which is where the indefiniteness dispute arose.

The judge ruled that the patents do not provide an objective standard for determining what "differently versioned" means, so they are invalid as indefinite.

Prolifiq argued that the term is not indefinite because the patent gives examples of "differently versioned" content, such as video files and flash files, but the judge said that does not provide any information about what falls outside of the claims.

"Stating examples of differently versioned digital content elements only provides information about when something is a differently versioned digital content element, but it does not provide information about when something is not a differently versioned digital content element," she wrote.

Determining whether something is "differently versioned" therefore relies upon the subjective opinion of the person practicing the invention, the judge said. For instance, she said one person looking at an image of a dog and an image of a cat could determine that the images are differently versioned because dogs and cats are different, while another person could conclude that they are not differently versioned because they are both pets.

Because "differently versioned" provides no clarity as to the scope of the claims, they are invalid, the judge ruled.

Prolifiq sued Veeva in August 2013, alleging that the two companies had worked together on a new product and that Prolifiq had given Veeva access to one of its products called Rep Trigger.

Prolifiq claimed that after they worked together, Veeva announced a new product called Approved Email that duplicates the functionality of Rep Trigger and infringes Prolifiq's patents.

The patents at issue in the claim construction order are U.S. Patent Numbers 7,634,556 and 8,296,378.

Prolifiq is represented by Nicholas Brown, Sarah Barrows, Stephen Ullmer and Stephanie Ahmad of Greenberg Traurig LLP.

Veeva is represented by Christa Anderson, Eugene Paige, Khari Tillery and Sophie Hood of Keker & Van Nest LLP.

The case is Prolifiq Software Inc. v. Veeva Systems Inc., case number 3:13-cv-03644, in the U.S. District Court for the Northern District of California.