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GoDaddy.com LLC v. Rpost Communications Ltd.

United States District Court, D. Arizona

June 7, 2016

GoDaddy.com LLC, Plaintiff,
v.
RPost Communications Limited, et al., Defendants.

          ORDER

          JAMES A. TEIBORG SENIOR UNITED STATES DISTRICT JUDGE

         Pending before the Court are Plaintiff GoDaddy.com LLC ("GoDaddy")’s Motion for Summary Judgment, (Doc. 257), and Defendants’[1] Motion for Summary Judgment on Plaintiff’s Count I (Fraudulent Misrepresentation of Patent Ownership), (Doc. 284). The Court now rules on the motions.

         I. Background

         After 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")[2] 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).

         II. Legal Standard

         Summary 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).

         Initially, 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)).

         At the 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).

         III. GoDaddy’s Motion for Summary Judgment

         GoDaddy 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[3] 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.)

         A. Eligibility of the Asserted Patents

         GoDaddy 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).

         In 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." (Id.)

         1. Jurisdiction

         Before 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. (Id.)

         a. Legal Background

         Section 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 unenforceability,
(2) Invalidity of the patent or any claim in suit on any ground specified in part II of this title as a condition for patentability,
(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."

         Part II 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.

         Similarly, 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.").

         b. Analysis

         Notwithstanding 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 8-13).

         Similar 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.[4] 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.

         c. Conclusion

         For the 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.

         2. Legal Standard for § 101 Eligibility

         As 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).

         The 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 abstract").[5]

         Nonetheless, 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.

         If the 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).

         Notably, "[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.

         3. Burden of Proof

         By 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).

         While 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.

         4. Feldbau Patent[6]

         The 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).[7]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 dispatch;
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 recipient;
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 authentication data.
‘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.

         ‘219 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.

         ‘219 Patent, col. 24 ll. 52-54.

         To 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.

         a. Step One: Patent-Ineligible Concept

         GoDaddy 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 authenticator. (Id.)

         Although 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 world,

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 dispatch.
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.

         Moreover, 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).

         Moreover, 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 idea[.] ").

         Furthermore, 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"[8] "electrically transmit" a dispatch has no bearing on whether the authenticator’s claimed functionality is restricted to an electronic embodiment.[9] 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:

         (Image Omitted)

         '219 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 forth.

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.[10] 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).

         Finally, 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 at 1355).

         For 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.

         b. Step Two: Inventive Concept

         Because 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).

         RPost 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.

         Furthermore, 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).

         Ultimately, 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 patent-eligible.").[11]

         Finally, 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.

         In sum, 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).

         c. Conclusion

         For the 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.

         5. ...


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