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Sophos, Inc. v. Rpost Holdings, Inc.

United States District Court, D. Massachusetts

June 3, 2016

SOPHOS INC., Plaintiff,
v.
RPOST HOLDINGS, INC. and RPOST COMMUNICATIONS LIMITED, Defendants. RPOST HOLDINGS, INC. and RPOST COMMUNICATIONS LIMITED, Plaintiffs,
v.
SOPHOS INC., Defendant. Term Sophos’s Proposed Construction RPost’s Proposed Construction

          MEMORANDUM AND ORDER

          Denise J. Casper United States District Judge

         I. Introduction

         Sophos, Inc. (“Sophos”) seeks a declaratory judgment that claims of U.S. Patent Nos. 8, 504, 628 (“’628 patent”), 8, 224, 913 (“’913 patent”), 8, 209, 389 (“’389 patent”) and 8, 468, 199 (“’199 patent”) (collectively, the “patents-in-suit”) are invalid or that Sophos does not infringe them. D. 1.[1] In a separate action, RPost Holdings, Inc. and RPost Communications Limited (collectively, “RPost”) allege that Sophos infringes on the patents-in-suit’s claims. No. 14-cv-13628, D. 1. The parties now seek construction of disputed claim terms and Sophos has filed a motion for judgment on the pleadings in both cases. D. 95; No. 14-cv-13628, D. 71. After extensive briefing and a Markman hearing, the Court’s claim construction follows. For the reasons below, the Court DENIES Sophos’s motion for judgment on the pleadings.

         II. Patents-in-Suit

         This lawsuit concerns patents that verify the delivery and integrity of electronic messages. D. 1-2 (’628 patent), D. 1-3 (’913 patent), D. 1-4 (’389 patent); D. 1-5 (’199 patent). RPost contends that Sophos infringes claims 1-5, 7-19, 21-27 and 30 of the ’628 patent, claims 1, 4, 5, 7 and 10-16 of the ’389 patent, claims 1-3, 6 and 7 of the ’199 patent and claims 1 and 2 of the ’913 patent. D. 98 at 8. The patents-in-suit stem from the same parent application, which issued as U.S. Patent No. 7, 966, 372 (“’372 patent”). The ’628 and ’389 patents are continuations of the ’372 patent, and the ’199 patent is a continuation of the ’389 patent. D. 1-2 at 2, D. 1-4 at 2, D. 1-5 at 2. The ’913 patent is a division of U.S. Patent No. 7, 865, 557 (“’557 patent”), which is in turn a division of the ’372 patent.[2] D. 1-3 at 2. The ’628 patent was filed on June 4, 2010 and issued on August 6, 2013. D. 1-2 at 2. The ’913 patent was filed on November 22, 2010 and issued on July 17, 2012. D. 1-3 at 2. The ’389 patent was filed on December 29, 2010 and issued on June 26, 2012. D. 1-4 at 2. The ’199 patent was filed on June 25, 2012 and issued on June 18, 2013. D. 1-5 at 2.

         III. Procedural History

         On November 12, 2013, Sophos sued RPost in the District of Massachusetts. D. 1. One day later, RPost sued Sophos in the Eastern District of Texas. No. 14-cv-13628, D. 1. The Court denied RPost’s motion to transfer Sophos’s case to the Eastern District of Texas. Sophos, Inc. v. RPost Holdings, Inc., No. 13-cv-12856-DJC, 2014 WL 2434637, at *1 (D. Mass. May 30, 2014). Meanwhile, Judge Gilstrap of the Eastern District of Texas ordered that RPost’s case be transferred to the District of Massachusetts. RPost Holdings, Inc. v. Sophos, Inc., No. 2:13-cv-959, 2014 WL 10209205, at *2 (E.D. Tex. Aug. 20, 2014). Both cases are now before the Court as related cases.

         On December 30, 2014, the Court denied RPost’s motion to dismiss for lack of subject matter jurisdiction or to decline to adjudicate the matter under the Declaratory Judgment Act. Sophos, Inc. v. RPost Holdings, Inc., No. 13-cv-12856-DJC, 2014 WL 7409588, at *1 (D. Mass. Dec. 30, 2014). Sophos has now filed a motion for judgment on the pleadings under Fed.R.Civ.P. 12(c) in both cases. D. 95; No. 14-cv-13628, D. 71. After claim construction briefing, the Court held a Markman hearing, heard argument on Sophos’s Rule 12(c) motion and took both matters under advisement. D. 122.

         IV. Standard of Review

         A. Claim Construction

         The construction of disputed claim terms is a question of law. Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). The Court must construe “the meaning that the term would have to a person of ordinary skill in the art in question at the time of . . . the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). The Court must look to “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Id. at 1314 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)) (internal quotation marks omitted).

         Claim construction begins with the words of the claims themselves where “the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Id. at 1312 (quoting Innova, 381 F.3d at 1115) (internal quotation marks omitted). Claims “are generally given their ordinary and customary meaning” and can “provide substantial guidance as to the meaning of particular claim terms.” Id. at 1312, 1314 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)) (internal quotation marks omitted). “[T]he context in which a term is used in the asserted claim can be highly instructive.” Id. at 1314. A claim itself may provide the means for construing a term where, for instance, the claim term is consistently used throughout the patent. Id. As a result, “the meaning of a term in one claim is likely the meaning of that same term in another.” Abbott GmbH & Co., KG v. Centocor Ortho Biotech, Inc., No. 09-cv-11340-FDS, 2011 WL 948403, at *3 (D. Mass. Mar. 15, 2011) (citing Phillips, 415 F.3d at 1314).

         Claims are not to be read alone, but “are part of a fully integrated written instrument, consisting principally of a specification that concludes with the claims.” Id. (citation omitted). “Usually, [the specification] is dispositive; it is the single best guide to the meaning of a disputed term.” Id. (quoting Vitronics, 90 F.3d at 1582) (internal quotation mark omitted). The specification, as the patentee’s description of the invention, defines “the scope and outer boundary” of the claims and, thus, “claims cannot be of broader scope than the invention that is set forth in the specification.” On Demand Mach. Corp. v. Ingram Indus., Inc., 442 F.3d 1331, 1338-40 (Fed. Cir. 2006). In looking to the specification in interpreting the meaning of a claim, the Court must be careful not to “import[] limitations from the specification into the claim.” Phillips, 415 F.3d at 1323. This standard may “be a difficult one to apply in practice, ” id., but “[t]he construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be, in the end, the correct construction, ” id. at 1316 (quoting Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)).

         After looking to the claims themselves and the specification, “a court should also consider the patent’s prosecution history, if it is in evidence.” Id. at 1317 (citation and internal quotation marks omitted). The prosecution history, as evidence of how the inventor understood the patent, “can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be.” Id. (citing Vitronics, 90 F.3d at 1582-83). Because the prosecution history “often lacks . . . clarity, ” it is “less useful for claim construction purposes” and is given less weight than the claims and the specification. Id.

         Finally, the Court may also consider extrinsic sources which can educate the Court “regarding the field of the invention” and in determining “what a person of ordinary skill in the art would understand claim terms to mean.” Id. at 1319. Dictionaries and treatises often assist courts in understanding the underlying technology and “in determining the meaning of particular terminology to those of skill in the art of the invention.” Id. at 1318. Generally, extrinsic evidence is considered “less reliable than the patent and its prosecution history in determining how to read claim terms, ” id., and thus “is less significant than the intrinsic record in determining the legally operative meaning of claim language, ” id. at 1317 (citations and internal quotation marks omitted).

         B. Indefiniteness

         The Patent Act requires that a patent specification “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant . . . regards as the invention.” 35 U.S.C. § 112(b). Definiteness is measured “from the viewpoint of a person skilled in [the] art at the time the patent was filed.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2128 (2014) (citation, internal quotation marks and emphasis omitted). Additionally, “claims are to be read in light of the patent’s specification and prosecution history.” Id. Section 112 thus requires “that a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.” Id. at 2129. This requirement “mandates clarity, while recognizing that absolute precision is unattainable.” Id. A defendant “bears the burden of proving indefiniteness by clear and convincing evidence.” Veracode, Inc. v. Appthority, Inc., No. 12-cv-10487-DPW, 2015 WL 5749435, at *18 (D. Mass. Sept. 30, 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008)).

         C. Motion for Judgment on the Pleadings

         A motion for judgment on the pleadings under Fed.R.Civ.P. 12(c) “is treated much like a Rule 12(b)(6) motion to dismiss.” Pérez-Acevedo v. Rivero-Cubano, 520 F.3d 26, 29 (1st Cir. 2008) (citing Curran v. Cousins, 509 F.3d 36, 43-44 (1st Cir. 2007)). A court “must view the facts contained in the pleadings in the light most favorable to the nonmovant and draw all reasonable inferences therefrom to the nonmovant’s behoof.” Sandborn v. Avid Tech., Inc., No. 11-cv-11472-FDS, 2013 WL 4784265, at *2 (D. Mass. Sept. 5, 2013) (quoting R.G. Financial Corp. v. Yergara-Nuñez, 446 F.3d 178, 182 (1st Cir. 2006)) (internal quotation mark omitted). In reviewing the motion, the Court may “consider ‘documents the authenticity of which are not disputed by the parties; . . . documents central to plaintiffs’ claim; [and] documents sufficiently referred to in the complaint.’” Curran, 509 F.3d at 44 (quoting Watterson v. Page, 987 F.2d 1, 3 (1st Cir. 1993)). To survive a Rule 12(c) motion, “a complaint must contain factual allegations that raise a right to relief above the speculative level, on the assumption that all the allegations in the complaint” are true” Pérez-Acevedo, 520 F.3d at 29 (citation and internal quotation mark omitted). “Whether a claim is drawn to patent-eligible subject matter under § 101 is an issue of law.”[3] Sandborn, 2013 WL 4784265, at *2 (citing In re Bilski, 545 F.3d 943, 951 (Fed. Cir. 2008)).

         V. Construction of Disputed Claims

         The parties dispute the meaning of the following terms and the Court resolves these disputes below.

         A. ’628 Patent

         1. “special processing” / “special process” / “a normal process used by the server” / “the normal process used by the server”

Term

Sophos’s Proposed Construction

RPost’s Proposed Construction

special processing (’628 patent, Claims 1, 14, 30) special processing (’628 patent, Claims 8, 23)

a normal process used by the server” (’628 patent, Claim 8) “the normal process used by the server” (’628 patent, Claim 23)

Not indefinite; ordinary meaning

a normal process used by the server” (’628 patent, Claim 8) “the normal process used by the server” (’628 patent, Claim 23)

Indefinite under 35 U.S.C. § 112

Not indefinite; ordinary meaning

         Sophos notes that each of the asserted claims of the ’628 patent requires a “particular indication” in a message that identifies it as “requiring special processing.” D. 98 at 11 (citing ’628 patent, claims 1, 14, 30). Sophos contends that because the patent provides no guidance on what “special processing” means, the term is subjective and all asserted claims of the ’628 patent are indefinite. Id. at 10-11. Sophos also notes that although claims 8 and 23 recite that a “special process” is “different than” the “normal process used by the server, ” what normal is according to the patent is “just as ambiguous as what is ‘special.’” Id. at 13.

         RPost argues that Sophos is attempting to remove the term “special processing” from its context, when the term is objectively defined by the claims. D. 105 at 5-7. The ’628 patent “does not seek to define the boundary between what is special processing and what is not special processing, ” but “distinguishes between messages that have a particular indication . . . and those that do not.” Id. at 6. Because the method in claim 1 includes “processing the message by the server in accordance with the particular indication, ” RPost contends that special processing means “processing the message according to what the particular indication tells the server to do.” Id. (internal quotation marks omitted).

         The Court agrees with RPost. The intrinsic record provides objective guidance that “special processing” refers to processing dictated by particular indications on the message, while the normal processing occurs when no particular indications exist. As RPost points out, claims 4-7 and 18-21 provide examples of what special processing may entail. D. 105 at 7; see, e.g., D. 1-2 at 33, claim 5 (stating “[t]he method of claim 1, wherein processing the message in a special manner includes encrypting the message to transmit the message in a more private manner”); D. 1-2 at 33, claim 6 (stating “[t]he method of claim 1, wherein processing the message in a special manner includes preparing for recipient electronic signature on the message or attachments to the message”). Sophos claims that those examples are not dispositive because they fail to limit the term. D. 98 at 13. But for a patent specification to be invalid for indefiniteness, “it must be insolubly ambiguous, ” where “reasonable efforts at claim construction prove futile.” Trustees of Boston Univ. v. Everlight Elecs. Co., 109 F.Supp. 3d 344, 350-51 (D. Mass. 2015) (citations and internal quotation marks omitted). Sophos has not shown by “clear and convincing evidence that ‘a skilled artisan could not discern the boundaries of the claim.’” Accentra, Inc. v. Staples, Inc., 500 F. App’x 922, 930 (Fed. Cir. 2013) (quoting Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008)).

         2. “first route” / “second route different from the first route”

Term

Sophos’s Proposed Construction

RPost’s Proposed Construction

first route (’628 patent, Claims 1, 2, 8, 14, 23, 30)

second route different from

the first route

(’628 patent, Claims 2, 15)

A path taken by a message from a sender’s mail transfer agent to a recipient’s mail transfer agent via a network that does not include an intermediate relay through a mail transfer agent at a different network address

A path taken by a message from a sender’s mail transfer agent to a recipient’s mail transfer agent via a network that includes an intermediate relay through a mail transfer agent at a different network location

Route: A path taken by a message from a sender to a recipient via a network

         Claim 1 requires transmission of a message through a “first route if the message lacks the particular indication.” D. 1-2 at 33. On the other hand, claim 2 requires transmission of a message through a “second route different from the first route” “in accordance with the particular indication.” Id. Both parties agree that the first and second routes refer to different network paths. D. 98 at 26, D. 105 at 15.

         The parties, however, disagree whether these routes should be limited to Figure 3 of the ’628 patent:

         (Image Omitted)

         In Figure 3, if a message does not have the “(R)” indication, the message is transmitted without an intermediate relay to the recipient’s mail transport agent. D. 1-2 at 11, Fig. 3. Sophos contends that this route defines the “first route.” D. 103 at 15-16. If a message does have the “(R)” indication, the message is transmitted to a separate registering mail transport agent-an intermediate relay through a mail transfer agent-before transmission to the recipient’s mail transport agent. D. 1-2 at 11, Fig. 3. Sophos contends that this route defines the “second route.” D. 103 at 16-17. In response, RPost argues that Sophos’s proposed construction seeks to limit these terms to the embodiment disclosed in Figure 3. D. 105 at 15.

         The Court agrees with RPost. As RPost argued at the hearing, “[t]he use of the terms ‘first’ and ‘second’ is a common patent-law convention to distinguish between repeated instances of an element or limitation.” 3M Innovative Properties Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371 (Fed. Cir. 2003). Moreover, Sophos’s attempt to define these terms by whether an intermediate relay occurs is problematic, because as Sophos acknowledged at the hearing, even if the term “first route” was confined to Figure 3, intermediate servers could exist between the sender’s mail transport agent and the recipient’s mail transport agent. Accordingly, the Court adopts RPost’s construction of the term “route” because claims 1 and 2, for example, already show (and the parties agree) that the first route and second route are different paths.

         3. “message”

Term

Sophos’s Proposed Construction

RPost’s Proposed Construction

message

(’389 patent, All asserted claims)

(’913 patent, All asserted claims)

(’199 patent, All asserted claims)

(’628 patent, All asserted claims)

No construction necessary An electronic message

         RPost argues that the Court should construe the term “message” in all four patents to mean “electronic message.” D. 101 at 8. For support, RPost points out that in RMail Ltd. v. Amazon.com, Inc., No. 2:10-cv-258-JRG, 2013 WL 968246, at *51 (E.D. Tex. Mar. 12, 2013), Judge Gilstrap construed the term “message” in the ’372 patent and the ’557 patent to mean “electronic message.” By contrast, Sophos argues that no construction is necessary. D. 103 at 10. That Judge Gilstrap construed the term in a different case with different parties and different argument does not overcome the heavy presumption in favor of a claim term’s ordinary meaning. Id.

         The Court agrees with Sophos that no construction is necessary. In the case before Judge Gilstrap, both parties agreed that the term “message” referred to electronic messages, but disputed whether the term was limited to email. Amazon.com, 2013 WL 968246, at *51. There is also no reason to deviate from the term’s plain meaning because RPost has not shown that the inventor acted as his own lexicographer for this term. Phillips, 415 F.3d at 1316.

         B. ...


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