United States District Court, D. Arizona
A. TEIBORG SENIOR UNITED STATES DISTRICT JUDGE
before the Court are Plaintiff GoDaddy.com LLC
("GoDaddy")’s Motion for Summary Judgment,
(Doc. 257), and Defendants’ Motion for Summary Judgment
on Plaintiff’s Count I (Fraudulent Misrepresentation of
Patent Ownership), (Doc. 284). The Court now rules on the
multiple rounds of motions to dismiss, briefing for a
three-month stay, complete Markman review, a
Daubert motion, and dozens of other motions, the
factual background of this case is well-established. In
short, GoDaddy filed this Declaratory Judgment Action against
RPost, seeking, among other things, damages for fraudulent
misrepresentation and declarations of invalidity and
non-infringement of various patents (the "Asserted
Patents") after RPost attempted to enforce those
patents against GoDaddy. (Doc. 46 at 38). RPost
counterclaimed, alleging that GoDaddy is liable for direct
infringement of the Asserted Patents. (Doc. 108 at 20-27).
judgment is appropriate when "the movant shows that
there is no genuine issue as to any material fact and that
the moving party is entitled to summary judgment as a matter
of law." Fed.R.Civ.P. 56(a). A party asserting that a
fact cannot be or is genuinely disputed must support that
assertion by "citing to particular parts of materials in
the record, " including depositions, affidavits,
interrogatory answers or other materials, or by "showing
that materials cited do not establish the absence or presence
of a genuine dispute, or that an adverse party cannot produce
admissible evidence to support the fact." Id.
at 56(c)(1). Thus, summary judgment is mandated "against
a party who fails to make a showing sufficient to establish
the existence of an element essential to that party’s
case, and on which that party will bear the burden of proof
at trial." Celotex Corp. v. Catrett, 477 U.S.
317, 322 (1986).
the movant bears the burden of pointing out to the Court the
basis for the motion and the elements of the causes of action
upon which the non-movant will be unable to establish a
genuine issue of material fact. Id. at 323. The
burden then shifts to the non-movant to establish the
existence of material fact. Id. The non-movant
"must do more than simply show that there is some
metaphysical doubt as to the material facts" by
"com[ing] forward with ‘specific facts showing
that there is a genuine issue for trial.’"
Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,
475 U.S. 574, 586-87 (1986) (quoting Fed.R.Civ.P. 56(e)
(1963) (amended 2010)). A dispute about a fact is
"genuine" if the evidence is such that a reasonable
jury could return a verdict for the nonmoving party.
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
(1986). The non-movant’s bare assertions, standing
alone, are insufficient to create a material issue of fact
and defeat a motion for summary judgment. Id. at
247-48. Further, because "[c]redibility determinations,
the weighing of the evidence, and the drawing of legitimate
inferences from the facts are jury functions, not those of a
judge, . . . [t]he evidence of the nonmovant is to be
believed, and all justifiable inferences are to be drawn in
his favor" at the summary judgment stage. Id.
at 255 (citing Adickes v. S.H. Kress & Co., 398 U.S.
144, 158-59 (1970)); Harris v. Itzhaki, 183 F.3d
1043, 1051 (9th Cir. 1999) ("Issues of credibility,
including questions of intent, should be left to the
jury." (citations omitted)).
summary judgment stage, the trial judge’s function is
to determine whether there is a genuine issue for trial.
There is no issue for trial unless there is sufficient
evidence favoring the non-moving party for a jury to return a
verdict for that party. Liberty Lobby, Inc., 477
U.S. at 249-50. If the evidence is merely colorable or is not
significantly probative, the judge may grant summary
judgment. Id. Notably, "[i]t is well settled
that only admissible evidence may be considered by the trial
court in ruling on a motion for summary judgment."
Beyene v. Coleman Sec. Servs., Inc., 854 F.2d 1179,
1181 (9th Cir. 1988).
GoDaddy’s Motion for Summary Judgment
moves for summary judgment on seven issues. First, GoDaddy
argues that "the asserted claims of the RPost Patents
claim patent-ineligible abstract ideas and are invalid under
35 U.S.C. § 101." (Doc. 257 at 7). Second, GoDaddy
contends that the ’913 Patent is invalid as
"obvious" under 35 U.S.C. § 103.
(Id.) Third, GoDaddy maintains that the
"earliest priority date claimable for the Tomkow
Patents" is December 17, 1999. (Id.) Fourth,
GoDaddy asserts that it has "intervening rights as to
the Feldbau Patent." (Id.) Fifth, GoDaddy
contends that the Accused Products do not infringe the asserted
claims of the Tomkow Patents that recite a "copy"
or "representation" of "the message."
(Id.) Sixth, GoDaddy insists that the Accused
Products do not infringe the asserted Feldbau Patent claims.
(Id.) Finally, GoDaddy moves for summary judgment on
the issue of damages. (Id.)
Eligibility of the Asserted Patents
contends that the Asserted Patents are invalid under 35
U.S.C. § 101 because they claim patent-ineligible
subject matter. (Doc. 257 at 9-10). Specifically, GoDaddy
argues that the Asserted Patents claim "abstract
ideas" lacking "inventive concepts sufficient to
transform the claimed abstract idea into a patent-eligible
application." (Doc. 257 at 10-15) (citing Alice
Corp. Pty. Ltd. v. CLS Bank Intern., 134 S.Ct. 2347,
2354-55 (2014) ("Alice")). As to the
Feldbau Patent, GoDaddy argues that the claims are drawn to
the "abstract idea of collecting and providing
information for proving a message was sent to a recipient at
a particular time with particular content" without
adding an inventive concept sufficient to confer eligibility.
(Id. at 18). Regarding the Tomkow Patents, GoDaddy
contends that the claims are drawn to the abstract idea of
"collecting and providing information for verifying
transmission and/or delivery of a message" without
including an inventive concept to transform that idea into a
patent-eligible application. (Id. at 14).
response, RPost asserts that an eligibility challenge under
§ 101 is not a statutory defense in patent infringement
litigation and therefore the Court lacks jurisdiction over
GoDaddy’s argument. (Doc. 299 at 8-13). According to
RPost, neither the Supreme Court of the United States nor the
Federal Circuit has expressly held that § 101 is a
statutory defense. (Id.) RPost explains that the
section heading of § 101, "Inventions patentable,
" takes the statute out of the realm of statutory
defenses demarcated in 35 U.S.C § 282(b). (Id.)
In the alternative, RPost argues that the Asserted Patents
are directed to patent-eligible subject matter and recite
inventive concepts. (Id. at 13-22). Specifically,
RPost contends that the Feldbau Claims provide a technical
solution to a technical problem using an
"authenticator." (Id. at 20-21). RPost
further argues that the Feldbau Claims add an "inventive
concept" because the invention requires a physical
"transform[ation]" of the information.
(Id. at 21-22) As to the Tomkow Patents, RPost
asserts that GoDaddy’s characterization of the patents
is a "gross oversimplification." (Id. at
14). Instead, RPost insists that the asserted Tomkow Patent
claims "recite specific ways to verify delivery of an
electronic message using specific information."
reaching the merits of GoDaddy’s eligibility argument,
the Court must first determine whether it has jurisdiction
over patent-eligibility challenges brought pursuant to §
101. According to RPost, § 101 eligibility is not an
authorized statutory defense because § 101 is not listed
or referenced in § 282(b), the statute designating
patent litigation defenses. (Doc. 299 at 8-13). GoDaddy, on
the other hand, believes that its § 101 eligibility
challenge is properly before the Court due to a long litany
of Federal Circuit and Supreme Court cases interpreting
§ 101 in the context of patent litigation. (Doc. 314 at
7-8) (citing cases). Most notably, GoDaddy points to the
recent landmark decision in which the Supreme Court further
refined the standards applicable to § 101 eligibility
challenges in patent litigation, Alice.
282(b) of Title 35 of the United States Code provides an
exhaustive catalogue of defenses available to an alleged
infringer in an action involving the validity or infringement
of a patent:
(1) Noninfringement, absence of liability for infringement or
(2) Invalidity of the patent or any claim in suit on any
ground specified in part II of this title as a condition for
(3) Invalidity of the patent or any claim in suit for failure
to comply with-
(A) any requirement of section 112, except that the failure
to disclose the best mode shall not be a basis on which any
claim of a patent may be canceled or held invalid or
otherwise unenforceable; or
(B) any requirement of section 251. (4) Any other fact or act
made a defense by this title.
§ 282(b). For purposes of this case, the pertinent
provision of § 282(b) is the second section, which
authorizes defenses based on "invalidity of the patent
on or any claim in suit on any ground specified in part II of
this title as a condition for patentability."
of Title 35 encompasses §§ 100-212. Of these
sections, three are relevant here: §§ 101, 102, and
103. Section 101 is entitled "Inventions
patentable" and states as follows: "Whoever invents
or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title." §
101. Section 102 is labeled "Conditions of
patentability; novelty" while Section 103 is designated
"Conditions for patentability; non-obvious subject
matter." See §§ 102, 103.
Fifty years ago, the Supreme Court stated that, The [Patent]
Act sets out the conditions of patentability in three
sections. An analysis of the structure of these three
sections indicates that patentability is dependent upon three
explicit conditions: novelty and utility as articulated and
defined in § 101 and § 102, and nonobviousness, the
new statutory formulation, as set out in § 103.
Graham v. John Deere Co., 383 U.S. 1, 12 (1966).
Fifteen years after Graham, the Supreme Court
observed that "Section 101 sets forth the subject matter
that can be patented, ‘subject to the conditions and
requirements of this title.’ The conditions under which
a patent may be obtained follow [§ 101]."
Diamond v. Diehr, 450 U.S. 175, 190 (1981) (citing
S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952); U.S. Code
Cong. & Admin. News, 1952, p. 2399)). More recently, the
Supreme Court explained that,
The § 101 patent-eligibility inquiry is only a threshold
test. Even if an invention qualifies as a process, machine,
manufacture, or composition of matter, in order to receive
the Patent Act’s protection the claimed invention must
also satisfy "the conditions and requirements of this
title." § 101. Those requirements include that the
invention be novel, see § 102, nonobvious,
see § 103, and fully and particularly
described, see § 112.
Bilski v. Kappos, 561 U.S. 593, 602 (2010). Two
years later, the Supreme Court identified a two-part analysis
for determining § 101 eligibility in patent litigation.
See Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S.Ct. 1289, 1296-97 (2012). Finally, in
Alice, the Supreme Court further developed and
refined the Mayo two-step inquiry. See 134
S.Ct. at 2354-55.
although the Federal Circuit has recognized that only
§§ 102 and 103 are textually
"denominated" as "conditions of patentability,
" MySpace, Inc. v. GraphOn Corp., 672 F.3d
1250, 1259-60 (Fed. Cir. 2012), it has long held that §
282’s defenses "include not only the
‘conditions of patentability’ in §§ 102
and 103, but also those in § 101, "
DealerTrack, Inc. v. Huber, 674 F.3d 1315, 1330 n.3
(Fed. Cir. 2012); see Aristocrat Techs. Austl. Pty Ltd.
v. Int’l Game Tech., 543 F.3d 657, 661, 661 n.3
(Fed. Cir. 2008) (observing that "it is beyond question
that section 101’s other requirement, that the
invention be directed to patentable subject matter, is also a
condition for patentability" but noting that
"sections 102 and 103, " unlike § 101,
"are explicitly entitled conditions for
patentability"). In other words, the Federal Circuit
uniformly holds that § 101 can be raised as a defense in
patent infringement litigation. See, e.g.,
MySpace, 672 F.3d at 1261 (recognizing the benefits
of shifting invalidity challenges towards §§ 102
and 103 but acknowledging that "Does this mean that
§ 101 can never be raised initially in a patent
infringement suit? No.").
the complexity of RPost’s argument, the Court finds
that it has jurisdiction over GoDaddy’s § 101
eligibility challenge. In a slightly different context, the
Federal Circuit recently addressed this precise question. In
Versata Development Group, Inc. v. SAP America,
Inc., the Federal Circuit summarized the
patentee’s argument as follows:
[Covered Business Method ("CBM")] post-grant review
must be limited to a ground that could be raised under
paragraph (2) or (3) of section 282(b). [Patentee] then
reasons that § 282(b)(2) authorizes defenses on any
ground ‘specified in part II as a condition for
patentability, ’ and that the part II reference
includes under the headings in the compiled statutes only
‘conditions for patentability, ’ i.e.,
§§ 102 and 103, but not § 101. Based on the
headings in part II of the statutes, [Patentee] draws a
distinction between the heading under which § 101
appears, ‘inventions patentable, ’ and
‘conditions of patentability’ under which
§§ 102 and 103 are listed.
793 F.3d 1306, 1329-30 (Fed. Cir. 2015). Ultimately, the
Federal Circuit held that jurisdiction over the alleged
infringer’s § 101 eligibility challenge was proper
for the following reasons:
[Patentee] is correct that a strict adherence to the section
titles can support an argument that § 101 is not listed
as a ‘condition of patentability, ’ but rather
has the heading of ‘inventions patentable.’
However, as noted by the [United States Patent and Trademark
Office ("USPTO")], both our opinions and the
Supreme Court’s opinions over the years have
established that § 101 challenges constitute validity
and patentability challenges. See also Standard Oil Co.
v. Am. Cyanamid Co., 774 F.2d 448, 453 (Fed. Cir. 1985);
Aristocrat, 543 F.3d at 661 n.3.
It would require a hyper-technical adherence to form rather
than an understanding of substance to arrive at a conclusion
that § 101 is not a ground available to test patents
under either the [Post Grant Review] or § 18 processes.
Section 101 validity challenges today are a major industry,
and they appear in case after case in our court and in
Supreme Court cases, not to mention now in final written
decisions in reviews under the [America Invents Act
("AIA")]. The numerous cases in our court and in
the Supreme Court need no citation . . . .
It is often said, whether accurate or not, that Congress is
presumed to know the background against which it is
legislating. Excluding § 101 considerations from the
ameliorative processes in the AIA would be a substantial
change in the law as it is understood, and requires something
more than some inconsistent section headings in a
statute’s codification. We agree with the USPTO and SAP
and we so hold that, looking at the entirety of the statutory
framework and considering the basic purpose of CBM reviews,
the [Patent Trial and Appeal Board ("PTAB")] acted
within the scope of its authority delineated by Congress in
permitting a § 101 challenge under AIA § 18.
Id. at 1330. Of course, as RPost emphasizes, the
Versata court decided a slightly different issue,
i.e., the jurisdiction of a court to rule on a § 101
challenge brought under AIA § 18. See Id. To
that end, RPost contends that the statutory history of the
AIA is different than that of the Patent Act, and thus argues
that Congress did not specify § 101 as a "condition
of patentability" for purposes of § 282 in
infringement litigation. See (Doc. 299 at
to the Federal Circuit in Versata, the Court finds
that a "hyper-technical adherence" to the section
heading of § 101 is not enough to overcome decades of
interpreting § 101 as a valid defense in patent
infringement litigation. See Lewis v. Hegstrom, 767
F.2d 1371, 1376 (9th Cir. 1985) (noting that courts must not
hinge "interpretation of a statute upon a single word or
phrase but rather look to the statute as a whole, as well as
its object and policies"); see also Pa. Dep’t
of Corrs. v. Yeskey, 524 U.S. 206, 212 (1998) ("The
title of a statute . . . cannot limit the plain meaning of
the text. For interpretive purposes, it is of use only when
it sheds light on some ambiguous word or phrase."
(quotation omitted)). This is not a case where a mere
sprinkling of district courts has incorrectly interpreted an
infrequently-invoked statute or where a sharp divide exists
in the judicial system. Indeed, the Supreme Court and Federal
Circuit unwaveringly consider § 101 to be a viable and
robust defense in the context of patent infringement
litigation. Whether couched as a "threshold test,
" see Bilski, 561 U.S. at 602, or a
"condition of patentability, " see
Aristocrat, 543 F.3d at 661 n.3, it is firmly decided
that the Court has jurisdiction to determine whether the
Asserted Patents claim eligible subject matter under §
101, and RPost’s reliance on § 101’s section
heading is not enough to create a "substantial change in
the law as it is understood, " Versata, 793
F.3d at 1330.
foregoing reasons, the Court concludes that it has
jurisdiction to consider whether the Asserted Patents claim
patent-eligible subject matter as required by § 101.
Accordingly, the Court now turns to the merits of
GoDaddy’s § 101 argument.
Legal Standard for § 101 Eligibility
quoted above, § 101 of the Patent Act defines the
subject matter eligible for patent protection as follows:
"Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this
title." § 101. "Issues of patent-eligible
subject matter are questions of law" reserved
exclusively to the Court. CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1369 (Fed. Cir. 2011).
Supreme Court, as noted above, has identified a two-part test
for § 101 patent-eligibility in infringement litigation.
See Alice, 134 S.Ct. at 2355 (citing Mayo,
132 S.Ct. at 1296-97). First, the Court must determine
whether the claims at issue are directed to a
patent-ineligible concept, i.e., "Laws of nature,
natural phenomena, and abstract ideas." Id.
(quoting Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 133 S.Ct. 2107, 2116 (2013)). The term
"abstract idea" embodies "the longstanding
rule that an idea of itself is not patentable."
Id. (citing Gottschalk v. Benson, 409 U.S.
63, 67 (1972)). Not surprisingly, "precision has been
elusive in defining an all-purpose boundary between the
abstract and the concrete." Internet Patents Corp.
v. Active Network, Inc., 790 F.3d 1343, 1345 (Fed. Cir.
2015); see Versata, 793 F.3d at 1331 (noting that
the abstract ideas exception "is more of a problem, a
problem inherent in the search for a definition of an
‘abstract idea’ that is not itself
several guiding principles emerge from Supreme Court and
Federal Circuit precedent. For example, if the heart of the
patent is a "fundamental economic practice, "
"conventional business practices, " or a
"method of organizing human activity" that has long
been "prevalent in our system of commerce, " then
the patent is directed to an abstract idea. Alice,
134 S.Ct. at 2356; see DDR Holdings LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (same).
Moreover, concepts involving processes humans can perform
without the aid of a computer, such as processes that can be
done mentally or using pen and paper, are generally directed
to abstract ideas. See, e.g., Content Extraction
& Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d
1343, 1347 (Fed. Cir. 2014) (noting that "humans have
always performed" the functions of collecting,
recognizing, and storing data); CyberSource, 654
F.3d at 1373 ("[A] method that can be performed by human
thought alone is merely an abstract idea and is not
patent-eligible under § 101.");
Gottschalk, 409 U.S. at 67 (observing that the
conversion of binary numerals can be done mentally using a
mathematical table). Notably, method patents, like the ones
at issue in this case, present "special problems in
terms of vagueness and suspect validity."
Bilski, 561 U.S. at 608.
claims at issue are directed to a patent-ineligible concept,
the Court must then consider "what else"
encompasses the claims to determine whether an
"inventive concept, " i.e., "an element or
combination of elements that is ‘sufficient to ensure
that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself,
’" exists. Alice, 134 S.Ct. at 2360
(quoting Mayo, 132 S.Ct. at 1298). The Supreme Court
has recognized that "[a]t some level, all inventions
embody, use, reflect, rest upon, or apply laws of nature,
natural phenomenon, or abstract ideas." Id. at
2354 (citing Diamond, 450 U.S. at 187). Thus, only
if an invention applies a patent-ineligible concept towards a
"new and useful end" will it remain eligible for
patent protection. Id. (citing Gottschalk,
409 U.S. at 67). To perform this analysis, the Court reviews
"the elements of each claim both individually and as an
ordered combination to determine whether the additional
elements transform the nature of the claim into a
patent-eligible application." Id. (internal
quotations omitted). Ultimately, the Court must
"distinguish between patents that claim the building
blocks of human ingenuity and those that integrate the
building blocks into something more, thereby transforming
them into a patent-eligible invention." Id.
(citing Mayo, 132 S.Ct. at 1303).
"[m]erely requiring a generic computer implementation
fails to transform [an] abstract idea into a patent-eligible
invention." Id. at 2352; see, e.g.,
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1354-55 (Fed. Cir. 2014) (noting that Alice
"made clear that a claim directed to an abstract idea
does not move into § 101 eligibility territory by merely
requiring generic computer implementation" (quotation
omitted)); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 717 (Fed. Cir. 2014) ("[A]dding a computer to
otherwise conventional steps does not make an invention
patent-eligible."). If the claim purports to solve a
problem arising only in the Internet context, the claim must
be innovative enough to "override the routine and
conventional" use of the computer. DDR
Holdings, 773 F.3d at 1258-59.
Burden of Proof
statute, issued patents are "presumed valid."
§ 282(a). As the party challenging the validity of the
Asserted Patents, GoDaddy bears the burden of proof. See
Microsoft Corp. v. i4i Ltd. P’ship, 131 S.Ct.
2238, 2242 (2011). RPost argues that GoDaddy must meet this
burden by setting forth "clear and convincing
evidence" of patent ineligibility. (Doc. 299 at 14).
GoDaddy, however, contends that "the usual presumption
of validity does not apply" to issues of
patent-eligibility. (Doc. 257 at 8).
district courts have varied in their approaches when ruling
on a validity challenge based on patent-eligibility, see,
e.g., Broadband iTV, Inc. v. Oceanic Time Warner
Cable, LLC, 135 F.Supp.3d 1175, 1180 (D. Haw. 2015)
(declining to apply the presumption of validity but requiring
clear and convincing evidence to prove underlying questions
of fact); Tranxition, Inc. v. Lenovo (U.S.) Inc.,
2015 WL 4203469, at *5 (D. Or. July 9, 2015) ("[T]he
Court fails to see how the ‘clear and convincing’
standard applies to the validity analysis under Section 101
in this case."), and at least one Federal Circuit judge
believes that "applying a presumption of eligibility is
particularly unwarranted, " Ultramercial, 772
F.3d at 720 (Mayer, J., concurring), neither the Supreme
Court nor the Federal Circuit has issued a controlling
decision designating which standard applies. Nonetheless, the
Court finds it unnecessary to resolve this issue because even
if the clear and convincing standard applied and the Asserted
Patents were presumed eligible, the result of this case would
be no different than if the preponderance of the evidence
standard applied without a presumption of validity.
Feldbau Claims disclose a "method of
authenticating" that a sender of a "dispatch"
"electrically transmitted" it to a particular
destination at a particular time and that it had a particular
content. ‘219 Patent, col. 2 ll. 56-col. 3 ll. 14
(amended version).The Feldbau Claims accomplish this
objective by having the sender of the transmission
"electrically transmit" the contents to a
non-interested third party, i.e., "an
authenticator." Id. at col. 2 ll. 63-67. The
authenticator then "associates" information such as
the time of the successful transmission and the
dispatch’s contents to "generate" data that
"authenticate[s] the dispatch and the contents of the
dispatch, " i.e., "authentication data."
Id. at col. 3 ll. 1-7. The authenticator must also
"secure" the authentication data "against
tampering." Id. at col. 3 ll. 8-10. In full,
the Feldbau Claims recite as follows:
60. A method of authenticating a dispatch and contents of the
dispatch successfully transmitted from a sender to a
recipient, comprising the steps of:
receiving content data representative of the contents of the
dispatch originated from the sender and being electrically
transmitted to said recipient, and a destination of the
providing an indicia [relating to] of a time of
successful transmission of the dispatch to the
recipient, said time related indicia being recorded
by an authenticator and provided in a manner resistant
to or indicative of tampering by either of the sender and the
associating, by [an] the authenticator functioning as a
noninterested third party with respect to the sender and the
recipient, the content data with dispatch record data which
includes at least said time related indicia and an indicia
related to the destination of the dispatch, to generate
authentication data which authenticate the dispatch and the
contents of the dispatch; and
securing by said authenticator at least part of the
authentication data against tampering of the sender and the
recipient; wherein at least one of the steps of associating
and securing utilizes mathematical association methods for a
selected portion of a combination of the content data and the
dispatched record data.
Id. at col. 2 ll. 56-col. 3 ll. 14 (amendments by Ex
Parte Reexamination Certificate are shown in italics;
deletions in bolded square brackets).
62. A method according to claim 60, further including the
step of providing an output of at least part of the
‘219 Patent, col. 24 ll. 32-34.
66. A method according to claim 60, wherein the step of
providing the time [related] indicia includes generating the
time [related] indicia.
Patent, col. 3 ll. 17-19 (amended version) (amendments by Ex
Parte Reexamination Certificate are shown in italics;
deletions in bolded square brackets).
69. A method according to claim 60, wherein the
authentication data further includes a delivery indicia
relating to said dispatch.
Patent, col. 24 ll. 52-54.
begin, the Court must determine whether the Feldbau Claims
are drawn to a patent-ineligible concept, i.e., law of
nature, natural phenomena, or abstract idea. See
Alice, 134 S.Ct. at 2355. If so, the Court will then
consider whether the claims add an "inventive
concept" such that the ineligible concept transforms
into a patent-eligible application. Id.
Step One: Patent-Ineligible Concept
argues that the Feldbau Claims are directed to the abstract
idea of collecting and providing information about a dispatch
and its contents using a third party intermediary. (Doc. 257
at 18). GoDaddy contends that the asserted claims simply
apply "pure math" to accomplish its goals.
(Id.) In response, RPost insists that the Feldbau
Claims "address the specific technical problem of
proving that specific information has been electronically
sent at a specific time to a specific receiving party"
by having an "authenticator  generate authentication
data which authenticate[s] the dispatch and the contents of
the dispatch." (Doc. 299 at 20). RPost explains that the
Feldbau Claims do not use "pure math" but apply
"specific functions" performed by the
RPost’s application of the Feldbau Claims may be
phrased in its narrow, flowery rhetoric, the claim language
is not nearly as particularized. Rather, the Feldbau Claims
are directed to a general method of collecting and providing
information about a dispatch using a third party
intermediary. This is an abstract idea that has an extensive
history dating back decades, if not centuries. For example,
the Fedlbau Patent’s specification posits that
"[p]ost, courier, forwarding and other mail services,
which enable people to exchange documents and data, have been
widely used both in the past and at the present time."
‘219 Patent, col. 1 ll. 23-29. The specification
further describes how third party intermediaries collect and
provide certain information about a message in the modern
Proof of delivery of non-electronic documents is provided,
for example, by Registered Mail and courier services. It is
commonly used to authenticate the delivery of materials at a
certain time to a certain party, and serves as admissible
proof of delivery in a court of law. However, no proof is
provided as to the information contents of the specific
E-mail and other electronic messages forwarding services are
commonly used today. The sender sends a message to the
dispatching service which, in turn, forwards the message to
the destination and provides the sender with a delivery
report which typically includes the date and time of the
dispatch, the recipient’s address, the transmission
completion status, and sometimes even the transmitted data,
the number of pages delivered, the recipient’s
identification information, and so on. The provided delivery
report mainly serves for accounting purposes and for
notifying the sender of the dispatch and/or its contents. . .
Id. at col. 2 ll. 26-44. Thus, the
specification’s own language details how the general
concept at the heart of the Feldbau Claims is one that has
been implemented for years.
despite the possibility for a narrow application, the Court
finds that the claimed idea is comparable to claims that the
Supreme Court and Federal Circuit have determined to be drawn
to abstract ideas. See, e.g., Gottschalk,
409 U.S. at 71 (holding abstract and ineligible patent claims
involving an algorithm for converting binary-coded decimal
numerals into pure binary form); Parker v. Flook,
437 U.S. 584, 594-95 (1978) (holding abstract and ineligible
a mathematical formula for computing "alarm limits"
in a catalytic conversion process); Alice, 134 S.Ct.
at 2360 (holding abstract and ineligible a generalized
computer method of intermediated settlement whereby two
parties using a third-party intermediary exchange financial
obligations); Bilski, 561 U.S. at 609 (finding that
the concept of "hedging or protecting against risk"
was drawn to an abstract idea); buySAFE, 765 F.3d at
1353, 1355 (finding that "transaction performance
guaranty" was an abstract idea because the
"narrowing of such long-familiar commercial transactions
[to particular relationships] does not make the idea
non-abstract for section 101 purposes"); Digitech
Image Techs. LLC v. Elecs. for Imaging, Inc., 758 F.3d
1344, 1348-51 (Fed. Cir. 2014) (holding that claims directed
to digital image processing using math to combine data into a
device profile were too abstract despite narrow application);
Intellectual Ventures I LLC v. Capital One Bank, 792
F.3d 1363, 1367 (Fed. Cir. 2015) (holding that a method
patent aimed at "tracking" and "storing"
information was directed to patent-ineligible abstract idea
of budgeting); Bancorp Servs., L.L.C. v. Sun Life Assur.
Co. of Canada (U.S), 687 F.3d 1266, 1278 (Fed. Cir.
2012) (holding that a method patent to track, reconcile, and
administer life insurance policies was not drawn to patent
eligible subject matter); In re TLI Commc’ns,
2016 WL 2865693, at *3 (concluding that claims directed to
"classifying and storing digital images in an organized
manner" were abstract and ineligible); Content
Extraction, 776 F.3d.at 1347 (finding that claims
directed to collecting, recognizing, and storing data were
abstract and ineligible); Cyberfone Sys., LLC v. CNN
Interactive Grp., Inc., 558 F. App’x. 988, 991-92
(Fed. Cir. 2014) (concluding that concept of "using
categories to organize, store, and transmit information"
is an abstract idea).
the Feldbau Claims are not directed to a specific improvement
in computer functionality but simply recite conventional and
generic technology to perform "generalized steps"
in a well-known computer environment. Enfish, 2016
WL 2756255, at *4-5; see In re TLI Commc’ns,
2016 WL 2865693, at *3 (same). RPost’s argument that
the Feldbau Claims do not solely rely on "pure
math" to "associat[e]" information is belied
by a cursory review of the claim language. Particularly, the
claims designate only one possible "association" or
"securing" method: "mathematical
association." ‘219 Patent, col. 3 ll. 11-14
(amended version). Beyond "mathematical association,
" the claims do not recite any other method for how the
undefined "authenticator" is to associate or secure
the data or detail what "mathematical association"
method is to be applied. Even if the claim language did so,
the claims would still be drawn to an abstract idea. See
Ultramercial, 772 F.3d at 715 ("Although certain
additional limitations, such as consulting an activity log,
add a degree of particularity, the concept embodied by the
majority of the limitations describes only the abstract
the method outlined in the Feldbau Claims is directed to a
patent-ineligible "mental" process. The claimed
"associating" and "securing" functions,
"while ‘primarily useful for computerized
[applications], ’ could still be made [using a] pencil
and paper." Parker, 437 U.S. at 586 (citations
omitted). In fact, the Feldbau Claims are not even limited to
an electronic embodiment. The only language plausibly
requiring electronic implementation is "receiving
content data representative of the contents of the dispatch
originated from the sender and being electrically transmitted
to said recipient, and a destination of the dispatch."
‘219 Patent, col. 2 ll. 59-62. However, whether the
"sender" or "recipient"
"electrically transmit" a dispatch has no bearing
on whether the authenticator’s claimed
functionality is restricted to an electronic
embodiment. To be sure, the specification teaches that
the claimed authenticator-implemented functions of
"associating" and "securing" can be
performed manually. Particularly, Figure 1
illustrates as follows:
Patent, Fig. 1. The specification defines Figure 1 as a
"schematic pictorial illustration of the authentication
method of the present invention implemented in a manual
manner, " id. at col. 4 11. 45-47, and
describes Figure 1 as follows:
Reference is now made to FIG. 1 which illustrates the method
of the present invention as it can be implemented for paper
documents being sent non-electronically. The method of FIG. 1
can be implemented for documents sent via any document
dispatching service, such as a courier service or the
registered mail service of the post office.
The sender 10 provides the documents 12 to be sent and a
destination address 14 to a clerk 20 of the document
dispatching service. The clerk 20 prepares a dispatch sheet
26, which typically has a unique dispatch identifier (not
shown) and has room for dispatch information such as the date
and time of dispatch or delivery 16, the destination address
14, an indication 18 of proof of delivery such as the
recipient's identity and/or signature, and optionally,
additional dispatch information such as the dispatcher's
signature and the identity of the sender.
The clerk 20 fills in the dispatch sheet 26 with the
date/time 16 and the address 14, and then prepares a copy 24
of the documents 12 and a copy 34 of the dispatch sheet 26,
typically by utilizing a copy machine 22 or an electronic
scanner. The clerk 20 then places the original documents 12
into an envelope 28 carrying the address 14, and sends the
envelope 28 to its destination 30. In one embodiment of the
present invention the dispatching service utilizes a
cash-register like device to fill in the dispatch sheet 26.
This provides for reliable time stamping and automated
dispatch record keeping. Furthermore, the electronic
dispatch information produced by such device can be
associated using a special mathematical method as discussed
in greater detail below.
The clerk 20 associates the copy 24 of the documents 12
with the copy 34 of the dispatch sheet 26 by any method,
a few examples of which follow:
a) by inserting the documents copy 24 and the dispatch sheet
copy 34 into an envelope 32; b) by inserting the copy 24 of
the documents into an envelope 32 and marking the dispatch
identifier on the outside of the envelope 32; c) by printing
the dispatch identifier on the documents copy 24; or d)
attaching the copies 24 and 34 and applying the stamp of the
dispatch service in such a manner that part of the stamp is
on the copy 24 of the documents and part of the stamp is on
the copy 34 of the dispatch sheet 26.
Preferably, the clerk 20 secures the copies 24 and 34 in a
manner that makes it difficult to modify or replace the
information contained therein, for example by marking the
pages of the copy 24 with the dispatching service’s
signature, stamp or seal, by spreading each page with
invisible or other ink, by sealing the envelope 32 or by
retaining them in the service’s secure file 36 and so
Id. at col. 4 ll. 66-col. 5 ll. 50 (emphasis added);
see also Id. at col. 5 ll. 51-col. 6 ll. 30. Based
on this language, it is indisputable that the Feldbau Claims
are directed to a concept that can be performed
manually. Regardless, even if an electronic
limitation for the claimed method existed, it would do little
to limit the Feldbau Claims’ expansive scope. The
specification makes clear that the Feldbau Claims are not
restrained to a particular application as they encompass
"all types" of information, "all types"
of dispatch methods, and "all types" of methods and
devices for "associating" and "securing"
the authentication data. Id. at col. 4 ll. 1-7 ll.
16-19. This lack of specificity underscores the abstract
nature of the claims. See Internet Patents, 790 F.3d
at 1348-49 (finding that claims were directed to abstract
idea of maintaining computer state without recitation of
specific activity used to generate that result).
RPost’s argument that the Feldbau Claims "do not
preempt all ways of accomplishing the alleged abstract idea,
" (Doc. 299 at 21), is not dispositive. The Federal
Circuit confirmed that the simple fact that "the claims
do not preempt all [methods of providing information about a
dispatch] or may be limited to [such activity in the
electronic] setting do not make them any less abstract."
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1362-63 (Fed. Cir. 2015) (citing buySAFE, 765 F.3d
these reasons, the Court concludes that the Feldbau Claims,
describing a method of collecting and providing information
about a dispatch and its contents using a third-party
intermediary, falls squarely within the "collection and
organization of data" characterization deemed by the
Federal Circuit to be abstract. CyberSource, 654
F.3d at 1370; see, e.g., YYZ, LLC v.
Hewlett-Packard Co., 2015 WL 5886176, at *3 (D. Del.
Oct. 8, 2015) ("Because computer software comprises a
set of instructions, the first step of Alice is, for
the most part, a given; i.e., computer-implemented patents
generally involve abstract ideas."). Thus, the Feldbau
Claims are directed to an abstract idea.
Step Two: Inventive Concept
the Feldbau Claims are drawn to a patent-ineligible concept,
the Court must next consider whether the claims add an
"inventive concept" that transforms the claims into
a patent-eligible application. See Alice, 134 S.Ct.
at 2355. The Court finds that beyond the abstract idea of
collecting and providing information about a particular
dispatch, the claims merely recite "well-understood,
routine conventional activities, " such as mathematical
association or routine data-gathering and storing steps.
Id. at 2359 (quoting Mayo, 132 S.Ct. at
1294). Considered individually or taken together as an
ordered combination, the claim elements fail to
"‘transform’ the claimed abstract idea into
a patent-eligible application." Id. at 2357
(quoting Mayo, 132 S.Ct. at 1294, 1298).
insists that the Feldbau Claims disclose at least two
inventive concepts: the "authenticator"-implemented
steps of (1) associating content data with dispatch record
data to generate authentication data and (2) securing the
authentication data. (Doc. 299 at 21-22). But beyond
requiring that "at least one of the steps of associating
and securing" be performed by an undefined
"mathematical association method, " the Feldbau
Claims do not specify what type of mathematical association
is performed or explain how the content data is associated
with the dispatch record data in a manner that generates
authentication data. See ‘219 Patent, col. 3
ll. 11-14 (amended version). Similarly, the unremarkable
claim that the authentication data "authenticate[s] the
dispatch and the contents of the dispatch, "
id. at col. 3 ll. 6-7, fails to explain what
material comprises the authentication data.
the Feldbau Claims do not detail what the
"authenticator" actually is or how the device
secures the data against tampering beyond requiring "at
least one of" the associating or securing steps be
performed by an amorphous "mathematical association
method." Id. at col. 3 ll. 11-14. Instead, the
"authenticator" is loosely defined as "all
types of apparatus" capable of performing the
associating and securing functions, see ‘219
Patent, col. 4 ll. 16-19, and therefore is not tied to
"a particular machine or apparatus, "
Bilski, 561 U.S. at 601. In other words, the Feldbau
Claims broadly indicate what the "authenticator"
does, but not what it is; this does not add
"significantly more" to the abstract idea. See
Alice, 134 S.Ct. at 2355 (citing Mayo, 132
S.Ct. at 1294).
the Court finds that the "associating" and
"securing" "computer functions are
‘well-understood, routine, conventional
activit[ies]’ previously known to the industry."
Id. at 2359 (quoting Mayo, 132 S.Ct. at
1294); see buySAFE, 765 F.3d at 1355 ("That a
computer receives and sends the information over a
network-with no further specification-is not even arguably
inventive."); OIP Techs., 788 F.3d at 1363
(holding that "sending a first set of electronic
messages over a network to devices, the devices being
programmed to communicate, storing test results in a
machine-readable medium, and using a computerized system . .
. to automatically determine an estimated outcome and setting
a price" were conventional activities);
CyberSource, 654 F.3d at 1373 ("[C]omputational
methods which can be performed entirely in the human mind are
the types of methods that embody the ‘basic tools of
scientific and technological work’ that are free to all
men and reserved exclusively to none." (quoting
Gottschalk, 409 U.S. at 67)). The Feldbau Claims
merely "add" the generic computer functions of
"associating" and "securing" to the
claimed abstract idea of collecting and providing information
about a particular dispatch. As explained above, these steps
could be performed by humans without a computer as the only
connection to an electrical embodiment concerns the sending
of the message, not the functions of the authenticator.
See Mortg. Grader, Inc. v. First Choice Loan Servs.
Inc., 811 F.3d 1314, 1324 (Fed. Cir. 2016) ("The
series of steps covered by the asserted claims-borrower
applies for a loan, a third party calculates the
borrower’s credit grading, lenders provide loan pricing
information to the third party based on the borrower’s
credit grading, and only thereafter (at the election of the
borrower) the borrower discloses its identity to a
lender-could all be performed by humans without a
computer."). This is not enough to constitute an
inventive concept under Alice. See DDR
Holdings, 773 F.3d at 1256 ("[A]fter
Alice, there can remain no doubt: recitation of
generic computer limitations does not make an otherwise
ineligible claim patent-eligible. The bare fact that a
computer exists in the physical rather than purely conceptual
realm is beside the point." (internal citations and
quotation marks omitted)); Ultramercial, 772 F.3d at
717 ("[A]dding a computer to otherwise conventional
steps does not make an invention
nothing in the Feldbau Claims "purport[s] to improve the
functioning of the computer itself, " Alice,
134 S.Ct. at 2359, "effect an improvement in any other
technology or technical field, " id.; see
Enfish, 2016 WL 2756255, at *4, or solve a problem
unique to the Internet, see DDR Holdings LLC, 773
F.3d at 1257. The Feldbau Claims’ method of converting
input information (i.e., dispatch time, content, and
destination data) to output information (i.e., authentication
data) does not add significantly more to the claimed abstract
idea, see Alice, 134 S.Ct. at 2358, nor is it
innovative enough to "override the routine and
conventional" use of the computer, see DDR
Holdings, 773 F.3d at 1258-59; Enfish, 2016 WL
2756255, at *7-8.
the Feldbau Claims are directed to the abstract idea of
collecting and providing information about a particular
dispatch and its contents using an unspecified
"authenticator" that applies an undefined
"mathematical association method" to
"associate" and "secure" pre-existing
information. These generic conventional activities-even if
carried out by a computer-are not sufficient to pass the
second step of Alice. See, e.g.,
Intellectual Ventures I, 792 F.3d at 1368
("Instructing one to ‘apply’ an abstract
idea and reciting no more than generic computer elements
performing generic computer tasks does not make an abstract
idea patent-eligible." (quoting Alice, 134
S.Ct. at 2359-60)); Digitech, 758 F.3d at 1349-51
(holding ineligible a concept of gathering and combining data
by reciting steps of organizing information through
mathematical relationships where the gathering and combining
merely employed mathematical relationships to manipulate
existing information to generate additional information in
the form of a "device profile" without limit to any
use of the device profile).
foregoing reasons, the Court concludes that the Feldbau
Claims are drawn to the abstract idea of collecting and
providing information about a particular dispatch and fail to
add "significantly more" such that an
"inventive concept" "transforms" that
idea into a patent-eligible application. See Alice,
134 S.Ct. at 2355. Accordingly, the Court will grant
GoDaddy’s motion for summary judgment on this issue and
declare that Feldbau Patent Claim Nos. 60, 62, 66, and 69 are
invalid under § 101.