Intellectual Ventures I LLC v. Symantec Corporation et al.

Filing 726

MEMORANDUM OPINION re pending motions. Signed by Judge Leonard P. Stark on 4/22/15. Associated Cases: 1:10-cv-01067-LPS, 1:12-cv-01581-LPS (ntl)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
INTELLECTUAL VENTURES I LLC,
Plaintiff,

v.

C.A. No. 10-1067-LPS

SYMANTEC CORPORATION,
Defendant.

INTELLECTUAL VENTURES I LLC,
Plaintiff,
v.
C.A. No. 12-1581-LPS
TREND MICRO INCORPORATED and
TREND MICRO, INC. (USA),
Defendants.

Joseph J. Farnan, III, Brian E. Farnan, FARNAN LLP, Wilmington, DE
Parker C. Folse III, Brooke A.M. Taylor, SUSMAN GODFREY L.L.P., Seattle, WA
Richard W. Hess, Weston O'Black, John P. Lahad, SUSMAN GODFREY L.L.P., Houston, TX
Attorneys for Plaintiff Intellectual Ventures I LLC.

Karen Jacobs, Michael J. Flynn, MORRIS, NICHOLS, ARSHT & TUNNELL LLP, Wilmington,
DE
Attorneys for Defendants.

Yar R. Chaikovsky, D. Stuart Bartow, PAUL HASTINGS LLP, Palo Alto, CA
David L. Larson, McDERMOTT, WILL & EMERY LLP, Menlo Park, CA
Christopher D. Bright, McDERMOTT, WILL & EMERY LLP, Irvine, CA
Attorneys for Defendants Trend Micro Incorporated and Trend Micro, Inc. (USA).

Jack B. Blumenfeld, Thomas C. Grimm, MORRIS, NICHOLS, ARSHT & TUNNELL LLP,
Wilmington, DE
Dean G. Dunlavey, Joseph H. Lee, LATHAM & WATKINS LLP, Costa Mesa, CA
Neil A. Rubin, Kathy Yu, LATHAM & WATKINS LLP, Los Angeles, CA
Douglas E. Lumish, Jeffrey G. Homrig, Michelle P. Woodhouse, Brett Sandford, LATHAM &
WATKINS LLP, Menlo Park, CA
Robert J. Gajarsa, Michael J. Gerardi, LATHAM & WATKINS LLP, Washington, DC
Attorneys for Defendant Symantec Corporation.

MEMORANDUM OPINION

April22,2015
Wilmington, Delaware

STARK, U.S. District Judge:

Pending before the Court are Defendant Symantec Corporation's ("Symantec") motion
for patent invalidity under 35 U.S.C. § 101 (C.A. No. 10-1067 ("Symantec case") D.I. 698) and
Defendants Trend Micro Incorporated and Trend Micro, Inc. (USA)'s ("Trend Micro") motion
for judgment of invalidity under 35 U.S.C. § 101 (C.A. No. 12-1581 ("Trend Micro case") D.I.
175) of certain claims of U.S. Patent Nos. 6,460,050 (the "'050 patent"), 6,073,142 (the '"142
patent"), and 5,987,610 (the '"610 patent") (collectively, "patents-in-suit") asserted by
Intellectual Ventures I LLC ("IV").
For the reasons discussed below, the Court will grant in part and deny in part Symantec's
and Trend Micro's motions. Specifically, the Court concludes that Symantec and Trend Micro
("Defendants") have proven that IV's '050 and '142 patents are not patent eligible but have
failed to prove that IV's '610 patent is not patent eligible.

BACKGROUND
Nature and Stai:e of the Proceedini:s

IV sued Symantec, Trend Micro, Check Point Software Technologies Inc., Check Point
Software Technologies Ltd., and McAfee, Inc. on December 8, 2010 alleging infringement of the
'050, '142, and '610 patents, as well as U.S. Patent No. 7,506,155 (the "'155 patent"). (D.1. 1) 1
Check Point and McAfee settled and are no longer parties. (D.I. 382-83, 491) Symantec, Trend
Micro, and IV stipulated to dismissal of all claims related to the '155 patent. (D.1. 616-17)
Symantec filed an answer and counterclaims against IV on January 31, 2011. (D.I. 23)

'Unless otherwise specified, all docket citations in the remainder ofthis Opinion are to
the Symantec case.
1

Trend Micro filed an answer and counterclaims against IV on February 14, 2011. (D.I. 28)
On November 21, 2012, the Court severed the Trend Micro case from the Symantec case.
(D.I. 412) The Court construed disputed claim terms on December 12, 2012. (D.I. 425, 426)
IV asserted the following claims against Symantec in a jury trial that commenced on
January 26, 2015:
•

claims 9, 16, and 22 of the '050 patent;

•

claims 1, 7, 21, and 22 of the '142 patent; and

•

claim 7 of the '610 patent.

On February 6, 2015, the jury returned a verdict finding IV had failed to prove that Symantec
infringes the asserted claims of the '050 patent and had proven that Symantec infringes the
asserted claims of the '142 and '610 patents. (D.I. 676) The jury found that Symantec had failed
to prove that any of the asserted claims were invalid due to anticipation or obviousness. (Id.)
The jury awarded IV $17 million in damages. (Id.)
IV has asserted the following claims against Trend Micro:
•

claims 9, 13, 16, 22, and 24 of the '050 patent;

•

claims 1, 7, 17, 21, 22, 24, and 26 of the '142 patent; and

•

claim 7 of the '610 patent.

(C.A. 12-1581 D.I. 176 at 4, 17, 23)2 A jury trial in the Trend Micro case is scheduled to begin
on May 11, 2015. (C.A. No. 12-1581 D.I. 172) Recently, IV advised Trend Micro and the Court
it is no longer asserting the '610 patent against Trend Micro. (See, e.g., C.A. No. 12-1581 D.I.

2

As used hereinafter in this Opinion, and unless otherwise stated, "asserted claims" refers
to this list of claims that have been asserted by IV against Trend Micro, which also includes all of
the claims asserted against Symantec.
2

191 ("On March 19, 2015, N informed Trend that it will limit the upcoming trial to the '050 and
'142 patents, and will not try the '610 patent."); transcript of Apr. 10, 2015 hearing ("Tr.") at
181, 184-85)
On January 6, 2015, the Court issued a pretrial order in the Symantec case stating that it
would "resolve any§ 101 issues in connection with post-trial motions and briefing, including
hearing any testimony that must be presented[,] only after the conclusion of the forthcoming
trial." (D.I. 615 at 3)
On March 4, 2015, the Court issued a schedule for briefing and oral argument on the
§ 101 issues in both cases. (D.I. 692) The parties completed briefing on April 2, 2015. The
Court heard oral argument on April 10, 2015. (See Tr.)
Patents-in-Suit
The '050 patent, entitled "Distributed content identification system," generally discloses a
method for classifying content of received files by creating a content identifier and then
comparing that content identifier to a database of other identifiers. It was filed on December 22,
1999 and issued on October 1, 2002. The patent is directed to filtering e-mail messages, and
particularly spam and viruses, by generating a digital identifier for a message, forwarding that
identifier to a processing system, determining whether the forwarded identifier matches a
characteristic of other identifiers, and then processing the message based on the results of that
determination. (See '050 patent at 2:37-43)
The '142 patent, entitled "Automated post office based rule analysis of e-mail messages
and other data objects for controlled distribution in network environments," was filed on June 23,
1997 and issued on June 6, 2000. It relates generally to providing an efficient way for business

3

organizations to control the handling of emails and other data objects. Pursuant to business rules,
messages are gated, then reviewed by an administrator, and eventually (if safe) directed to their
intended recipients. (See '142 patent at 3:3-20, 4:40-54)
The '610 patent, entitled "Computer virus screening methods and systems," was filed on
February 12, 1998 and issued on November 16, 1999. The patent is directed to "screen[ing]
computer data for viruses within a telephone network before communicating the computer data to
an end user." ('610 patent at 1:59-61) The patent recites "inhibiting communication of at least a
portion of the computer data" being transmitted ifthe data contains a virus. ('610 patent at
14:42-47)
LEGAL STAND ARDS

Symantec's Rule 52(c) Motion 3

"Under Fed. R. Civ. P. 52(c), the court has discretion to enter judgment on any
issue after hearing the evidence." In re Brimonidine Patent Litig., 666 F. Supp. 2d 429, 453 (D.
Del. 2009) (internal citations omitted), aff'd in part, rev 'din part, 643 F.3d 1366 (Fed. Cir.
2011). Rule 52(c) provides that "[i]f a party has been fully heard on an issue during a nonjury
trial and the court finds against the party on that issue, the court may enter judgment against the
party on a claim or defense that, under the controlling law, can be maintained or defeated only
with a favorable finding on that issue." "[T]he court weighs the evidence and assesses the
credibility of witnesses to determine whether or not the [movant] has demonstrated a factual and
legal right to relief by a preponderance of the evidence." In re Brimonidine, 666 F. Supp. 2d at

3

Symantec brings its motion under Federal Rule of Civil Procedure 52(c). In the
alternative, Symantec requests judgment as a matter of law under Rule 50(b).
4

453.

Trend Micro's Motion
Trend Micro filed its motion pursuant to the Court's oral order of March 4, 2015. (C.A.
No. 12-1581 D.I. 171)4 Pursuant to Rule 56(a), "[t]he court shall grant summary judgment ifthe
movant shows that there is no genuine dispute as to any material fact and the movant is entitled
to judgment as a matter of law." The moving party bears the burden of demonstrating the
absence of a genuine issue of material fact. See Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio

Corp., 475 U.S. 574, 585-86 (1986). An assertion that a fact cannot be- or, alternatively, is genuinely disputed must be supported either by citing to "particular parts of materials in the
record, including depositions, documents, electronically stored information, affidavits or
declarations, stipulations (including those made for purposes of the motion only), admissions,
interrogatory answers, or other materials," or by "showing that the 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." Fed. R. Civ. P. 56(c)(l)(A) & (B). If the moving party
has carried its burden, the nonmovant must then "come forward with specific facts showing that
there is a genuine issue for trial." Matsushita, 475 U.S. at 587 (internal quotation marks and
emphasis omitted). The Court will "draw all reasonable inferences in favor of the nonmoving
party, and it may not make credibility determinations or weigh the evidence." Reeves v.

Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000).

4Trend Micro did not state in its briefs the rule under which it was moving, but at the
hearing said it did not oppose application of a summary judgment standard. (See Tr. at 20) IV
does not object to application of this standard either. (See id. at 71) The Court agrees it is
appropriate to apply the Rule 56 summary judgment standard to Trend Micro's motion.
5

To defeat a motion for summary judgment, the nonmoving party must "do more than
simply show that there is some metaphysical doubt as to the material facts." Matsushita, 475
U.S. at 586; see also Podobnikv. U.S. Postal Serv., 409 F.3d 584, 594 (3d Cir. 2005) (stating
party opposing summary judgment "must present more than just bare assertions, conclusory
allegations or suspicions to show the existence of a genuine issue") (internal quotation marks
omitted). However, the "mere existence of some alleged factual dispute between the parties will
not defeat an otherwise properly supported motion for summary judgment;" a factual dispute is
genuine only where "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, 247-48 (1986). "If the
evidence is merely colorable, or is not significantly probative, summary judgment may be
granted." Id. at 249-50 (internal citations omitted); see also Celotex Corp. v. Catrett, 477 U.S.
317, 322 (1986) (stating entry of 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"). Thus, the "mere existence of a
scintilla of evidence" in support of the nonmoving party's position is insufficient to defeat a
motion for summary judgment; there must be "evidence on which the jury could reasonably find"
for the nonmoving party. Anderson, 477 U.S. at 252.
Lack of Patentable Subject Matter

Under 35 U.S.C. § 101, "[w]hoever 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." There are
three exceptions to § 101 's broad patent-eligibility principles: "laws of nature, physical

6

phenomena, and abstract ideas." Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980). Pertinent
here is the third category, "abstract ideas," which "embodies the longstanding rule that an idea of
itself is not patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2355 (2014)
(internal quotation marks omitted). "As early as Le Roy v. Tatham, 55 U.S. 156, 175 (1852), the
Supreme Court explained that ' [a] principle, in the abstract, is a fundamental truth; an original
cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive
right.' Since then, the unpatentable nature of abstract ideas has repeatedly been confirmed." In

re Comiskey, 554 F.3d 967, 977-78 (Fed. Cir. 2009).
In Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012), the
Supreme Court set out a two-step "framework for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications
of those concepts." Alice, 134 S. Ct. at 2355. First, courts must determine if the claims at issue
are directed at a patent-ineligible concept. See id. If so, the next step is to look for 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." Id.
"Simply appending conventional steps, specified at a high level of generality, [is] not

enough to supply an inventive concept." Id. at 2357 (internal quotation marks omitted; emphasis
in original). In Bilski v. Kappas, 130 S. Ct. 3218, 3231 (2010), for example, the Supreme Court
held that the claims involved were drawn to the patent-ineligible abstract idea of "hedging, or
protecting against risk," which was a "fundamental economic practice." Similarly, in Alice, 134
S. Ct. at 2356, the Supreme Court found that the claims were drawn to the patent-ineligible

7

abstract idea of "intermediated settlement," which was also a "fundamental economic practice."

l

In both cases, the Supreme Court found that the additional steps delineated in the claims did not

embody an "inventive concept" sufficient to ensure that the patents amounted to more than
patents upon the ineligible fundamental concepts themselves.
In determining, at the second step, if a patent embodies an inventive concept, courts may

consider whether the process "is tied to a particular machine or apparatus" or "transforms a
particular article into a different state or thing." Bilski, 130 S. Ct. at 3225. "[T]o impart
patent-eligibility to an otherwise unpatentable process under the theory that the process is linked
to a machine, the use of the machine must impose meaningful limits on the claim's scope."
CyberSource Corp. v. Retail Decision, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (internal

quotation marks omitted). To be "a meaningful limit on the scope of the claims," the addition of
a machine "must play a significant part in permitting the claimed method to be performed, rather
than function solely as an obvious mechanism for permitting a solution to be achieved more
quickly." SiRF Tech., Inc. v. Int'! Trade Comm 'n, 601F.3d1319, 1332-33 (Fed. Cir. 2010).
Hence, the "mere recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention." Alice, 134 S. Ct. at 2358. "Given the ubiquity of
computers, wholly generic computer implementation is not generally the sort of additional
feature that provides any practical assurance that the process is more than a drafting effort
designed to monopolize the abstract idea itself." Id.
"[T]he machine-or-transformation test is a useful and important clue, an investigative
tool, for determining whether some claimed inventions are processes under§ 101." Bilski, 130
S. Ct. at 3227. However, it is "not the sole test for deciding whether an invention is a patent8

eligible 'process."' Id. "[I]n applying the § 101 exception, [courts] 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." Alice,
134 S. Ct. at 2354 (internal citation and quotation marks omitted). The "concern that drives the
exclusionary principle [i]s one of pre-emption." Id. That is, where a patent would pre-empt use
of basic tools of scientific and technological work, i.e., laws of nature, natural phenomena, and
abstract ideas, the patent would "impede innovation more than it would tend to promote it,
thereby thwarting the primary object of the patent laws." Id. (internal quotation marks omitted).
Standard of Proof for Lack of Patentable Subject Matter

"Whether a claim is drawn to patent-eligible subject matter under§ 101 is an issue oflaw
.... " In re Bilski, 545 F.3d 943, 951 (Fed. Cir. 2008), aff'd 561 U.S. 593 (2010). Beyond this
principle, however, there is no clarity at this time as to the standard of proof that must be applied
to factual disputes that may be intertwined with the issue of eligibility of a particular patent or
claim.
Symantec and Trend Micro contend that because patent eligibility is a question oflaw,
they are not obligated to persuade the Court by clear and convincing evidence of the ineligibility
of the patents-in-suit. (See D.I. 724 at 2; C.A. No. 12-1581 D.I. 190 at 2; see also Microsoft
Corp. v. i4i Ltd. Partnership, 131 S. Ct 2238, 2253 (2011) ("Where the ultimate question of
patent validity turns on the correct answer to legal questions ... [the clear and convincing
standard] has no application.") (Breyer, J., concurring)) IV disagrees, arguing that the clear and
convincing burden of proof applies to both Defendants' motions. (See D.I. 722 at 2; C.A. No.
12-1581 D.I. 183 at 2)
9

The Supreme Court, in its recent § 101 opinions -Alice, Bilski, Mayo, and Ass 'n for

Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013)- did not cite any standard
of proof to be applied. Nor is there any binding precedent from the Federal Circuit deciding
whether patent ineligibility must be proven by clear and convincing evidence. In the en

bane opinion in CLS Bank International v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1284 (Fed. Cir.
2013) (en bane), the per curiam plurality opinion for five judges mentioned that the presumption
of validity applied to a section 101 ineligibility challenge, but did not address the evidentiary
standard. Judge Rader, in a dissenting opinion for five judges, explained that the clear and
convincing evidence standard applied, along with the presumption of validity. See id. at 1304-05
(Rader, J., dissenting). The Supreme Court did not address this issue in its opinion in Alice and,
plainly, the dissenting opinion from the Federal Circuit is not controlling. 5
In Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1338-39 (Fed. Cir. 2013)

("Ultramercial I"), vacated sub nom. WildTangent, Inc. v. Ultramercial, LLC, 134 S. Ct. 2870
(2014), the Federal Circuit held that the presumption of validity applied and, therefore, the clear
and convincing evidentiary burden also applied to challenges to patent eligibility under§ 101.
This opinion was later vacated. See 134 S. Ct. at 2870. Thereafter, on remand, the majority did

5

The Supreme Court, in its opinion in Alice, referred to "invalidity" once - in describing
the declaratory judgment plaintiffs request for relief in its complaint, 134 S. Ct. at 2353 - while
throughout the remainder of the opinion it referred to patent "eligibility." Section 282, which the
Supreme Court construed in i4i and found requires application of the clear and convincing
evidentiary burden to challenges to patent validity, does not expressly refer to issues of patent
eligibility or§ 101. See 35 U.S.C. § 282 ("Presumption of validity; defenses"); compare also§
282(b )(2) (referring to "[i]nvalidity of the patent or any claim in suit on any ground specified in
part II as a condition for patentability") with 35 U.S.C. [Part II, Chapter 10] §§ 102-03
(referring, respectively, to "Conditions for patentability; novelty" and "Conditions for
patentability; non-obvious subject matter") (emphasis added).
10

not address either the presumption or standard of proof issues, although Judge Mayer, in a
concurring opinion, stated his view that ''while a presumption of validity attaches in many
contexts, ... no equivalent presumption of eligibility applies in the section 101 calculus."

Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 720-21 (Fed. Cir. 2014) ("Ultramercial II")
(Mayer, J., concurring). The concurring opinion from the Federal Circuit is not controlling.
In these circumstances, District Courts, including this District, have taken varying

approaches. See, e.g., In re TL! Communications LLC Patent Litigation, 2015 WL 627858, at
*19 n.48 (E.D. Va. Feb. 6, 2015) (citing sample of District Court views); see also Cal. Inst. of

Tech. v. Hughes Commc 'ns Inc., 2014 WL 5661290, at *2 n.6 (C.D. Cal. Nov. 3, 2014)
(explaining that "[ e]ligibility questions mostly involve general historical observations, the sorts
of findings routinely made by courts deciding legal questions"). Frequently, decisions from this
District have assessed § 101 challenges by applying a burden of clear and convincing evidence.

See, e.g., Tenon & Groove, LLC v. Plusgrade S.E.C., 2015 WL 1133213, at *3 (D. Del. Mar. 11,
2015) ("[T]he court is convinced- by clear and convincing evidence - that the patents-in-suit
nonetheless claim an abstraction - an idea, having no particular concrete or tangible form.")
(internal quotation marks omitted); Tuxis Techs., LLC v. Amazon.com, Inc., 2014 WL 4382446,
at *6 (D. Del. Sept. 3, 2014) ("Because the evidence is clear and convincing that claim 1 of the
'513 patent is directed towards an unpatentable abstract idea, it is invalid under 35 U.S.C.
§ 101."). In other cases, this District may have treated the issue solely as a question of law
without applying a clear and convincing evidentiaryburden. See, e.g., Intellectual Ventures L

LLC v. Motorola Mobility LLC, 2015 WL 846532, at *3 (after citing clear and convincing
standard for proof of "invalidity," stating that "[ w ]hether a claim is drawn to patent-eligible

11

subject matter under 35 U.S.C. § 101 is a threshold inquiry to be determined as a matter oflaw in
establishing the validity of the patent."). In at least one very recent case, a Judge from this
District expressly stated that the standard of proof on § 101 is an unsettled question and need not
be resolved in the context of the particular motion then before the Court. See, e.g., Messaging

Gateway Solutions, LLC v. Amdocs, Inc., C.A. No. 14-732-RGA, slip op. at 5 (D. Del. Apr. 15,
2015) (describing parties' dispute as to standard of proof and concluding that Court "need not
decide the issue today'' as the challenged claims were "patent-eligible under either standard").
Given the Court's conclusions on the merits of the pending motions, it is unnecessary to
resolve the parties' dispute over the standard of proof. For the reasons explained below, the
Court would find the '050 and '142 patents are patent ineligible even assuming it must impose
on Defendants a burden of clear and convincing evidence. Similarly, the Court would conclude
that the '610 patent is not patent ineligible even if this issue must be resolved as a question of
law on which Defendants confront, at most, a burden of a preponderance of the evidence.

DISCUSSION
Symantec and Trend Micro argue that the asserted claims are patent-ineligible under the
analytical framework set forth in Mayo and Alice. (See D.l. 699 at 2; C.A. No. 12-1581D.I.176
at 2) Symantec contends that "[e]ach ofIV's asserted claims [in the Symantec case] covers
generic computer implementation of abstract ideas" and "do[ es] not provide an 'inventive
concept'" that would satisfy the Mayo test for subject-matter eligibility. (D.I. 699 at 2, 5) Trend
Micro similarly argues that "[b ]ecause the asserted claims of the patents-in-suit are directed to
abstract ideas, and because the added computer-related limitations are merely generic and do not
add inventive concepts beyond the abstract ideas themselves, none of the asserted claims of the

12

three patents-in-suit are eligible for patent protection." (C.A. No. 12-1581 D.I. 176 at 29)
IV responds that "[t]he Court should reject Symantec's sweeping indictment of software
patentability, especially when it comes to the Patents-in-Suit, which pass every test the Supreme
Court and the Federal Circuit have articulated for patent eligibility." (D.I. 722 at 1 (emphasis in
original)) IV focuses on the Federal Circuit's post-Alice opinion in DDR Holdings, LLC v.

Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014), which IV contends gives the most "relevant
guidance." (D.I. 722 at 6) Specifically, IV argues that "DDR Holdings shows that patent
eligibility extends at least to ( 1) claims providing a solution 'necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm of computer
networks,' (2) claims that specify interactions yielding results that 'override[] the routine and
conventional sequence' of Internet or computer events, and (3) claims that resolve a 'particular
Internet-centric problem."' (D.I. 722 at 6, 8) (citingDDR Holdings, 773 F.3d at 1258-59) IV
further contends that Defendants' analysis, if accepted, would improperly result in all software
patents being patent-ineligible. 6 (See id. at 25) Among other things, IV cites recent guidance
from the U.S. Patent and Trademark Office ("PTO") on patent eligibility7 and an amicus brief

6

As is obvious from the Court's resolution of the pending motions, the Court does not
agree with IV' s contention.
7

See "2014 Interim Guidance on Patent Subject Matter Eligibility (Interim Eligibility
Guidance) for USPTO personnel to use when determining subject matter eligibility under 35
U.S.C. 101 in view ofrecent decisions by the U.S. Supreme Court, including Alice Corp.,
Myriad, and Mayo" (available at www.uspto.gov/patent/laws-and-regulations/examination-policy
(last visited April 13, 2015) at "Abstract Idea Examples," part 1, example 1, claim 1 (and
accompanying analysis); see also D.I. 723-2 at 1-3.
13

filed in the Federal Circuit by a software association to which Defendants belong, 8 all of which
(in IV's view) further undermine the strength of Defendants' position. (See id. at 1, 10-12)
With this general description of the parties' positions, the Court will now address the
specific challenges to the eligibility of each of the three patents-in-suit.
'050 Patent

Tue asserted claims (9, 13, 16, 22, and 24) of the '050 patent are method claims. Claims
9, 16, and 22 are independent. Claim 13 depends from claim 9. Claim 24 depends from claim
23, which depends from claim 22.
Independent claim 9 recites as follows:

A method for identifying characteristics of
data files, comprising:
receiving, on a processing system, file content
identifiers for data files from a plurality of file
content identifier generator agents, each agent
provided on a source system and creating file
content IDs using a mathematical algorithm, via a
network;
determining, on the processing system, whether
each received content identifier matches a
characteristic of other identifiers; and
outputting, to at least one of the source systems
responsive to a request from said source system, an
indication of the characteristic of the data file based
on said step of determining.

8

See McRO, Inc. v. Bandai Namco Games Am., Inc., No. 15-1080 (Fed. Cir. Mar. 6,
2015), amicus brief of BSA I Tue Software Alliance (D .I. 723-1 ). Tue Court does not find IV' s
references to the amicus brief to be persuasive.

14

Dependent claim 13 recites:
The method of claim 9 wherein each said
data file is an email message and said step of
determining comprises determining whether said
email is SPAM.
Independent claim 16 recites:
A method of filtering an email message,
compnsmg:
receiving, on a second computer, a digital content
identifier created using a mathematical algorithm
unique to the message content from at least two of a
plurality of first computers having digital content ID
generator agents;
comparing, on the second computer, the digital
content identifier to a characteristic database of
digital content identifiers received from said
plurality of first computers to determine whether the
message has a characteristic; and
responding to a query from at least one of said
plurality of computers to identify the existence or
absence of said characteristic of the message based
on said comparing.
Independent claim 22 recites:
A method for providing a service on the
Internet, comprising:
collecting data on a processing system from a
plurality of systems having a client agent generating
digital content identifiers created using a
mathematical algorithm for each of a plurality of
files on the Internet to a server having a database;
characterizing the files on the server system based
on said digital content identifiers received relative
to other digital content identifiers collected in the

15

database; and
transmitting a substance identifier from the server to
the client agent indicating the presence or absence
of a characteristic in the file.
Dependent claim 23 (referenced in claim 24) recites:

The method of claim 22 wherein said step of
collecting comprises collecting a digital identifier
for a data file.
Dependent claim 24 recites:

The method of claim 23 wherein said file
content is an e-mail.
Mayo Step 1: Are the asserted claims directed to a patent-ineli1:ible "abstract idea"?

"First, given the nature of the invention in this case, we determine whether the claims at
issue are directed to a patent-ineligible abstract idea." DDR Holdings, 773 F.3d at 1255 (citing
Alice, 134 S. Ct. at 2355). Independent claims 9, 16, and 22 cover the following concepts:

•

receiving one or more file/digital content identifiers
generated using a mathematical algorithm (which is unique
to "message content" in claim 16);

•

comparing the received identifer(s) to other identifer(s)
(and "classifying the files" based on this comparison in
claim 22); and

•

outputting either (a) a descriptor of the content (claim 9),
(b) an identification of whether or not the message is of a
certain type/classification (claim 16), or (c) an indication of
the presence or absence of a characteristic (claim 22).

(See generally D.I. 425 (construing relevant claim terms))

Symantec argues that the '050 patent is a "classic example" of solving a problem "by
using a computer to perform a general-purpose method in the same manner 'as a person would
16

do it by head and hand' or 'by using a pen and paper."' (D.I. 699 at 15 (citing CyberSource, 654
F.3d at 1372)) "[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." CyberSource, 654 F.3d at 1373 (quoting
Gottschalkv. Benson, 93 S. Ct. 253, 255 (1972)). Trend Micro argues that the asserted claims
are similar to those found to be patent-ineligible in Cybersource and other cases. (C.A. No. 121581 D.I. 176 at 5-10 (citing, e.g., Content Extraction & Transmission LLC v. Wells Fargo Bank,
Nat. Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (finding claims directed to collecting data,
recognizing data, and storing data to be abstract)))
The Court agrees with Defendants that the asserted claims of the '050 patent are
strikingly similar to the claims in Cybersource that were directed to "obtaining credit card
information relating to [consumer] transactions," ''utilizing [a] map of credit card numbers to
determine if the credit card transaction is valid," and "verifying the credit card information ...
based upon parameters ... that may provide an indication whether the transaction is fraudulent."
654 F.3d at 1373. The claims of the '050 patent are directed to receiving information related to a
file (an identifier) from a querying computer, characterizing the file based on the identifier and
other stored identifiers, and communicating a result of the characterization back to a querying
computer.
The asserted claims of the '050 patent are also similar to the claims found to be abstract
in Content Extraction. (See C.A. No. 12-1581D.I.176 at 6-10) The '050 patent covers the steps
of collecting, recognizing, and storing data, like the claims at issue in Content Extraction. The
only additional step in the '050 patent is communicating a result of the "recognizing" step back
17

to a querying computer, but this step, too, is abstract. See buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1355 (Fed. Cir. 2014) (holding that "receiving a request" and ''transmitting an offer in
return" were abstract concepts).
IV relies on DDR Holdings as the most analogous precedent, asserting, "As in DDR

Holdings, the '050 Patent does not 'generically claim 'use of the Internet' to perform an abstract
business practice' and does provide solutions necessarily rooted in computer technology to
problems specifically arising in the realm of computer networks. DDR Holdings, 773 F.3d at
1258-59. No analog to the '050 claims exists absent computers." (D.I. 722 at 15) (emphasis in
original) Even accepting, arguendo, IV's proposition that DDR Holdings stands for the premise
that "claims providing a solution 'necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks"' are always patent
eligible (D.I. 722 at 8 (citing DDR Holdings, 773 F.3d at 1258-59)), the underlying ideas in the
asserted claims of the '050 patent are not "necessarily rooted in computer technology." Instead,
in the Court's view, the '050 patent is directed to a generic computer implementation of abstract
ideas: receiving identity information, comparing it to other information, and communicating
results based on the identifying information.
Another helpful way of assessing whether the claims of the patent are directed to an
abstract idea is to consider if all of the steps of the claim could be performed by human beings in
a non-computerized "brick and mortar" context. See, e.g., buySAFE, 765 F.3d at 1353 ("[§ 101]
also excludes the subject matter of certain claims that by their terms read on ... a humancontrolled series of physical acts .... "). With respect to the '050 patent, Defendants
persuasively analogize the steps of the asserted claims to two such hypothetical scenarios: police

18

officers looking for stolen cars or parking enforcement officers determining how many unpaid
tickets belong to owners of illegally parked cars. These analogies are depicted in the table below:
Limitations of '050 Patent Routine Steps Performed
Routine Steps Performed to
Claim9
when Looking for Stolen Cars Determine Number of Unpaid
Tickets Associated with Car

"receiving, on a processing
system, file content
identifiers for data files
from a plurality of file
content identifier generator
agents, each agent provided
on a source system and
creating file content IDs
using a mathematical
algorithm, via a network"

Jones, a dispatch officer,
receives a call from Smith,
one of several officers
patrolling for stolen cars,
asking whether a car with
license plate number "24680"
has been reported stolen.

A parking enforcement
dispatcher in Wilmington
receives a radio call from one
of several parking
enforcement officers, asking
about an illegally-parked car
with license plate number
"12345."

"determining, on the
processing system, whether
each received content
identifier matches a
characteristic of other
identifiers"

Jones looks at a list of cars
reported stolen to the police,
generated by all patrol
officers, and finds that a car
with license plate number
"24680" has been reported as
stolen.

The dispatcher looks down a
list of license plate numbers
having unpaid tickets,
generated from all the city
enforcement officers, and
finds that four unpaid tickets
show up for the entry
"12345."

"outputting, to at least one
of the source systems
responsive to a request
from said source system, an
indication of the
characteristic of the data
file based on said step of
determining."

Jones tells Smith that the
license plate number "24680"
indicates that car has been
reported stolen.

The dispatcher replies, "That
vehicle has four outstanding
tickets."

(D.I. 699 at 18-19; C.A. No. 12-1581 D.I. 176 at 6-7) The above examples illustrate that the
concepts of the '050 patent are directed to an abstract idea and are not necessarily rooted in
computer technology.

19

The analysis above is based solely on the claims, specification, and file history of the '050
patent; what is referred to in the context of claim construction as intrinsic evidence. See Teva
Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015). Thus, the Court determines that
the asserted claims of the '050 patent are directed to an abstract idea as a matter oflaw.
The parties have also put extrinsic evidence before the Court. When this additional
evidence is considered, it bolsters the conclusions the Court has already reached based solely on
the intrinsic evidence: that the asserted claims of the '050 patent are directed to an abstract idea.
The inventors of the '050 patent admitted in deposition testimony that the invention of
the '050 patent could be implemented by humans, albeit more slowly and less accurately than it
is performed by a conventional computer:
Q.

Okay. So if we were to consider people to be a
form of computer, then it could be performed by
people, you could put people - another way to say it
is you could put people in place of the computers
here and the invention would work the same, just
more slowly and less accurately....

A.

Yes, because people are essentially general purpose
computers, so yes.

(D.I. 700 Ex.Eat 47)
Q.

So other than breaking the emails down into smaller
parts, how could one have compared like to like in
the way that you wanted to?

A.

You would have used a human, who are very good
at comparing things.

Q.

You could have used a person?

A.

Yes.

20

(D.I. 700 Ex. F at 131-32) IV has not identified any contradictory evidence from the patent's
inventors.
Instead, as part of its effort to counter the conclusion that the asserted claims of the '050
patent are directed to an abstract idea, IV analogizes its claims to those discussed in recent
guidance from the PTO. Specifically, IV cites a hypothetical claim the PTO indicated would be
deemed patent eligible by an examiner. See Interim Eligibility Guidance, supra note 6. The
PTO's hypothetical claim is directed to creating "sanitized" versions of computer files by
"extracting, via file parsing, the malicious code" from computer files. Id. The PTO's example is
necessarily rooted in computer technology because malicious code or "viruses" have no
significance outside the realm of computer technology. The '050 patent, by contrast, is directed
to abstract steps that could generally be performed outside of a computing context.
Thus, the Court disagrees with IV's contention that the asserted claims of the '050 patent
are "inextricably tied to computer technology and distinct from the types of concepts found by
the courts to be abstract." (D.I. 723-2 at 2) Instead, the Court concludes that- regardless of the
standard of proof - the asserted claims of the '050 patent are directed to an abstract idea of
receiving identifying information, comparing it to other information, and outputting an indication
based on the identifying information. Thus, it is necessary to proceed to the second step of the
analysis.

Mavo Step 2: Do the asserted claims include an "inventive concept" sufficient to "ensure
that the patent in practice amounts to sienificantly more" than a patent upon an ineligible
concept?

The asserted claims of the '050 patent may still be patent-eligible if they include an
"inventive concept" sufficient to "ensure that the patent in practice amounts to significantly
21

more" than a patent upon an ineligible concept. Alice, 134 S. Ct. at 2355. A "generic computer
implementation" recited in the asserted claims, however, will "fail to transform [an] abstract idea
into a patent-eligible invention." Id. at 2357. Thus, something other than a generic computer
implementation must be identified in order for there to be an inventive concept.
The non-computer limitations common to all of the independent, asserted claims cover
the abstract idea of "receiving an identifier for a data file, matching it against previously-received
identifiers to ascertain a characteristic of the data file, and outputting a result." (See C.A. No. 121581 D.I. 176 at 4-7) "Simply appending conventional steps, specified at a high level of
generality, [is] not enough to supply an inventive concept." Alice, 134 S. Ct. at 2357 (internal
quotation marks omitted; emphasis in original). At bottom, however, that is all that the
limitations of the '050 patent claims do. Thus, the claim limitations common to all independent
claims of the '050 patent, including all limitations of independent claim 9, do not include an
"inventive concept" under Mayo.

N points to other limitations found just in certain asserted claims as demonstrating the
patent eligibility of at least those certain claims. The Court disagrees.
With respect to claim 16, N contends that the word ''unique" (the ''uniqueness
limitation") relates to the "hashing" functionality covered by the '050 patent. (C.A. No. 12-1581
D.I. 183 at 22) N touts the uniqueness limitation as part of an "innovative combination" of
limitations that comprise an inventive concept. Id. at 22. But hashing is just one of many
mathematical algorithms that could be used to implement the uniqueness limitation of claim 16.
According to DDR Holdings, the very case on which N places such heavy reliance, "[w]e know
that mathematical algorithms, including those executed on a generic computer, are abstract
22

ideas." 773 F.3d at 1256; see also '050 patent at 4:2-3; U.S. Pat. No. 5,884,033 (cited in file
history of '050 patent and describing use of hashing as early as 1996). The uniqueness limitation
does not add an "inventive concept" that would make claim 16 patent-eligible under Mayo.
Similarly, the "characterizing" limitation in claim 22 does not add an inventive concept
necessary to save claim 22 from ineligibility. The Court construed the characterizing limitation
in claim 22 to mean "classifying the files on the server system by comparing their digital content
identifiers to other digital identifiers collected in the database." (D.I. 425 at 13) This is similar
to a limitation at issue in Cybersource - reciting "utilizing the map of credit card numbers to
determine if the credit card transaction is valid" - which was part of a claim found to be patentineligible. See 654 F.3d at 1373. Thus, the characterizing limitation does not qualify as an
inventive concept.
Likewise, none of the asserted claims are made patent eligible by the set of alternative
steps for outputting either (a) a descriptor of the content (claim 9), (b) an identification of
whether or not the message is of a certain type/classification (claim 16), or (c) an indication of
the presence or absence of a characteristic (claim 22). Each of these limitations is essentially the
same for purposes of the § 101 analysis as each covers communicating descriptive information
about content or a message using a generic computer implementation. These limitations are part
of the same abstract idea, and none add any inventive concept to the asserted claims.
Nor do the limitations in dependent claims 13, 23, or 24, which limit the independent
claims on which they depend to the particular technological environment of SP AM email
detection, render these three claims patent eligible. In Alice, the Supreme Court noted that
"limiting the use of an abstract idea 'to a particular technological environment'" is "not enough

23

for patent eligibility." 134 S. Ct. at 2358. As discussed above, all of the independent claims are
directed to an abstract idea. The limitations added in dependent claims 13, 23, and 24 do nothing
other than limit the use of the abstract idea to the field of SP AM email detection. These
limitations, then, do not add any "inventive concept" and claims 13, 23, and 24 are not patent
eligible.
IV argues, "Taken as a whole, these claimed steps [in the asserted claims of the '050

patent] narrowly define a set of actions tied to a specific way of describing file content and
classifying computer files." (D.1. 722 at 22 (emphasis added)) However, the combination of
limitations pointed to by IV is nothing more than a generic computer implementation of the
human-executable abstract idea discussed above. The Court broadly construed key phrases in the
'050 patent - including, for example, construing "file content identifier" as anything "reflecting
at least a portion of the content of a data file, but not constituting merely an excised portion of
that data file." (D.1. 426 at 1-2) The Court's broad constructions do not narrow the claims in any
meaningful way for purposes of§ 101. Receiving and sending information - including a "file
content identifier" or a "response describing ... content or identifying a characteristic" - over a
network "is not even arguably inventive." buySAFE, 765 F.3d at 1355; see also Alice, 134 S. Ct.
at 2359; Walker Digital, LLC v. Google, Inc., 2014 WL 4365245, at *6 (D. Del. Sept. 3, 2014)
(noting that "storing" information in a database "add[s] no inventive element").
IV argues that the asserted claims satisfy the machine-or-transformation test because they

use a generic computer for implementation, the "computer (the machine) is critical for
implementing the claims of the Patents-in-Suit," and '"none of these limitations could be
performed by a human alone.'" (D.1. 183 at 30 (citing Helios Software, LLC v. SpectorSoft
24

Corp., 2014 WL 4796111, at *17 (D. Del. Sept. 25, 2014)) 9 IV also argues that "[c]reation of the

file content identifiers requires specialized software or programming." (D.I. 722 at 22) But the
specification belies IV' s assertions and discloses no specialized machine or programming that
would play a significant part in permitting the claimed method to be performed. (See '050 patent
at 4:2-3 ("It should be recognized however that any hashing algorithm can be utilized."), 4:30-34
("It should be understood that the executable may be written in, for example, perl script and can

be designed to interact with any number of commercial or free e-mail systems, or other data
transfer systems in applications other than e-mail.") (emphasis added)) The asserted claims do

not require any particular machine for implementation. Moreover, IV does not argue, and the
Court does not find, that any of the asserted claims of the patents-in-suit transform an article.
Regarding exclusion of certain patents from eligibility under§ 101, the Supreme Court
stated in Alice, 134 S. Ct. at 2354, "We have described the concern that drives this exclusionary
principle as one of pre-emption." Here, "limiting the abstract concept [of the '050 patent] to a
computer implementation and to a specific industry ... do[ es] not provide additional substantive
limitations to avoid preempting the abstract idea." Accenture Global Servs., GmbH v. Guidewire
Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013), cert. denied, 134 S. Ct. 2871 (2014). IV

has pointed to nothing in the claims or specification of the '050 patent that would adequately
alleviate the preemption concerns that arise if the '050 patent claims are deemed patent eligible.

9

Helios is distinguishable for a number ofreasons. The Court's statement in Helios that
"none of these limitations could be performed by a human alone" is not applicable to any of the
asserted claims of the '050 (or '142) patents, which consist entirely oflimitatons that could be
performed by humans or limitations directed to generic computer implementation. In addition,
the patents at issue in Helios, unlike the '050(or'142) patents, were "necessarily rooted in
computer technology in order to overcome a problem specifically arising in the realm of
computer networks." DDR Holdings, 773 F.3d at 1258-59.

25

The Court's conclusion that the claims of the '050 patent lack an inventive concept is
based solely on the intrinsic evidence, as described above. The extrinsic evidence provides
further support for this conclusion. Specifically, the inventors of the '050 patent admitted that
hashing was well known at the time of invention of the '050 patent. (See D.I. 700, Ex. E,
deposition of Brooks Talley, at 34-37 ("Q .... Do you agree that it's fair to say that prior to the
conception of the '050 patent it was well known to use hashing as a way to reduce a large amount
of data to a small amount of data to confirm that two data objects were the same? ... A. Yes.");
D.I. 700, Ex. F, deposition of Mark Pace, at 123-24 ("Q. What was the algorithm you were using
to change the email into something else? A. At the time I believe we used the MD5 hash. Q.
The MD5 hash was something that existed at the time? A. That's correct. Q. And it had existed
for a while? A. That's correct."))
In light of the foregoing, the Court determines that the asserted claims of the '050 patent
are ineligible under§ 101. 10 Accordingly, the Court will grant Defendants' motions with respect
to IV's '050 patent.

'142 Patent
Asserted claims 1, 17, 21, 22, 24, and 26 are independent; asserted claim 7 depends from
claim 1. Claims 1, 7, and 24 are directed to "post office" apparatuses. Claims 17, 21, 22, and 26
are process claims directed to the same basic functionality performed by the components of the
asserted apparatus claims.

10

For purposes of Trend Micro's motion, the Court finds that there is no genuine issue of
material fact as to the patent ineligibility of the asserted claims of the '050 patent.
26

Independent claim I recites as follows:

A post office for receiving and redistributing
e-mail messages on a computer network, the post
office comprising:
a receipt mechanism that receives an e-mail
message from a sender, the e-mail message having
at least one specified recipient;
a database of business rules, each business rule
specifying an action for controlling the delivery of
an e-mail message as a function of an attribute of
the e-mail message;
a rule engine coupled to receive an e-mail message
from the receipt mechanism and coupled to the
database to selectively apply the business rules to
the e-mail message to determine from selected ones
of the business rules a set of actions to be applied to
the e-mail message; and
a distribution mechanism coupled to receive the set
of actions from the rule engine and apply at least
one action thereof to the e-mail message to control
delivery of the e-mail message and which in
response to the rule engine applying an action of
deferring delivery of the e-mail message, the
distribution engine automatically combines the
e-mail message with a new distribution list
specifying at least one destination post office for
receiving the e-mail message for review by an
administrator associated with the destination post
office, and a rule history specifying the business
rules that were determined to be applicable to the
e-mail message by at least one rule engine, and
automatically delivers the e-mail message to a first
destination post office on the distribution list
instead of a specified recipient of the e-mail
message.

27

Dependent claim 7 recites:

The post office of claim 1, further
compnsmg:
a primary message store, coupled to the receipt
engine, for receiving and non-persistently storing
e-mail messages; and
a secondary message store, coupled to the
distribution engine, for receiving therefrom, and
persistently storing an e-mail message in response
to the rule engine specifying the action that the
e-mail message be reviewed by an administrator
recipient prior to delivery to a specified recipient.
Independent claims 17 recites:

A process for controlling the delivery of
e-mail message in a business, comprising:
providing to a post office a set of business rules
derived from business communication policies, each
business rule defining an action applied to an e-mail
message based on the attribute of the message;
receiving messages at the post office;
to at least one message received at the post office,
applying the business rules to the attributes of the
message to determine at least one action of
deferring delivery to be applied to the message;
automatically combining the e-mail message with a
new distribution list specifying at least one
destination post office for receiving the e-mail
message for review by an administrator associated
with the destination post office and a rule history
specifying at least one business rule determined to
be applicable to the e-mail message; and
automatically delivering the e-mail message to a
destination post office on the distribution list
28

instead of a specified recipient of the e-mail
message.
Independent claim 21 recites:
A process for deferring the delivery of
selected e-mail messages, comprising:
storing a database of business rules, each business
rule specifying an action for controlling the delivery
of an e-mail message as a function of an attribute of
the e-mail message;
receiving a plurality of e-mail messages at a first
post office, each e-mail message having at least one
specified recipient;
selecting at least one e-mail message from the
plurality of e-mail messages by applying at least one
business rule to the e-mail message;
delivering each non-selected e-mail message to its
specified recipients; and
deferring the selected e-mail message by:
automatically combining the selected e-mail
message with a new distribution list specifying at
least one new destination post office for receiving
the e-mail message for review by an administrator
associated with the destination post office and a rule
history specifying at least one business rule
determined to be applicable to the e-mail message;
automatically delivering the selected e-mail
message to a destination post office on the
distribution list instead of a specified recipient of
the e-mail message;
persistently storing the selected e-mail message in a
storage area of the destination post office until the
selected e-mail message is reviewed prior to any
further delivery of the e-mail message to its

29

specified recipients or to another destination post
office on the distribution list.
Independent claim 22 recites:
A computer implemented process for
reviewing an e-mail message, comprising:
receiving the e-mail message at a first post office,
the e-mail message having at least one specified
recipient;
deferring the e-mail message by:
automatically combining the selected e-mail
message with a new distribution list specifying at
least one second post office for receiving the e-mail
message for review by an administrator associated
with the second post office and a rule history
specifying at least one business rule determined to
be applicable to the e-mail message; and
automatically delivering the selected e-mail
message to an administrator at the second post
office on the distribution list instead of a specified
recipient of the e-mail message;
persistently storing the e-mail message at the second
post office until the e-mail message is reviewed;
automatically reviewing the e-mail message after a
specified time interval to determine an action to be
applied to the e-mail message; and
automatically applying the action to the e-mail
message.
Independent claim 24 recites:
A post office for receiving and redistributing
data objects on a computer network, the post office
compnsmg:

30

a receipt mechanism that receives a data object from
a sender, the data object having at least one
specified recipient;
a database of business rules, each business rule
specifying an action for controlling the delivery of a
data object as a function of an attribute of the data
object;
a rule engine coupled to receive a data object from
the receipt mechanism and coupled to the database
to selectively apply the business rules to the data
object to determine from selected ones of the
business rules a set of actions to be applied to the
data object; and
a distribution mechanism coupled to receive the set
of actions from the rule engine and apply at least
one action thereof to the data object to control
delivery of the data object and which in response to
the rule engine applying an action of deferring
delivery of the data object, the distribution engine
automatically combines the data object with a new
distribution list specifying at least one new
destination post office for receiving the data object
for review by an administrator associated with the
destination post office and a rule history specifying
at least one business rule determined to be
applicable to the data object by at least one rule
engine, and automatically delivers the data object to
a first destination post office on the distribution list
instead of a specified recipient of the data object.

Independent claim 26 recites:
A process for deferring the delivery of
selected data objects, comprising:
storing a database of business rules, each business
rule specifying an action for controlling the delivery
of a data object as a function of an attribute of the
data object;

31

receiving a plurality of data objects at a first post
office, each data object having at least one specified
recipient;
selecting at least one data object from the plurality
of data objects by applying at least one business rule
to the data object;
delivering each non-selected data object to its
specified recipients;
deferring the selected data object by:
automatically combining the selected data object
with a new distribution list specifying at least one
new destination post office for receiving the data
object for review by an administrator associated
with the destination post office; and a rule history
specifying at least one business rule determined to
be applicable to the data object;
automatically delivering the selected data object to a
destination post office on the distribution list
instead of a specified recipient of the data object;
and
persistently storing the data object in a storage area
until the data object is reviewed prior to any further
delivery of the data object to its specified recipients.
Mavo Step 1

The asserted claims of the '142 patent cover the following concepts:
•

receiving one or more emails or data objects ("messages")
addressed to at least one recipient (all claims);

•

providing at least one business rule applicable to the
message(s) (all claims);

•

each business rule specifying an action based on an
attribute of the message(s) (claims 1, 7, 17, 21, 24, and 26);

32

•

selectively applying one or more business rules to
determine at least one action to be applied to the message( s)
(claims 1, 17, 21, 24, and 26);

•

applying at least one of the action(s) (claims 1, 22, and 24);

•

deferring delivery of at least one message by attaching a
new distribution list to the message( s) and sending them to
an administrator with a rule history list specifying at least
one rule applicable to the message(s) (all claims);

•

delivering non-selected message(s) to their original
recipient(s) (claims 21 and 26);

•

persistently storing selected messages(s) until they may be
reviewed by the administrator (claims 7, 21, 22, and 26);
and

•

automatically reviewing persistently stored message(s) that
have not been reviewed by the administrator after a
specified time interval to determine and apply an action to
the message(s) (claim 22).

Symantec contends that "[t]he asserted claims of the '142 patent represent a classic case
of merely '[s]tating an abstract idea while adding the words 'apply it with a computer."' (D.I.
699 at 6 (citing Alice, 134 S. Ct. at 2358)) According to Symantec, "[t]he specification itself
discloses that the 'invention' consists of applying known methods of reviewing and routing paper
documents within a company to email communications." (Id. (citing '142 patent at 1:15-34,
65-67)) The Court concludes that the asserted claims of the '142 patent are directed to humanpracticable concepts, which could be implemented in, for example, a brick-and-mortar post
office. See generally Walker Digital, 2014 WL 4365245, at *9 (D. Del. Sept. 3, 2014) (finding
claims directed to concepts that have "long been practiced by human headhunters and
matchmakers" as patent-ineligible under§ 101).

33

IV argues that the '142 patent addresses a problem "specifically arising in the realm of
computer networks." (D.I. 722 at 13 (citing DDR Holdings, 773 F.3d at 1257)) Specifically, IV
argues that the '142 patent overrides the "fundamental operating paradigm" - of expeditious
delivery of messages to their intended recipients - by gating and deferring delivery of email
messages based on business rules. (Id.) IV argues that email is meaningfully distinguishable
from "snail mail" for purposes of§ 101 because email is "done on a computer." (Id.) (emphasis
omitted) IV adds that the claim limitations are "necessarily rooted in computer technology,"
particularly calling out the claim limitations that require "automatically" performing certain
actions as purportedly showing that the claims are patent eligible under DDR Holdings. (Id.)
The Court disagrees. Instead, the claims of the '142 patent are in essence directed to
generic computer implementation of an abstract idea, which does not make the abstract idea
patent eligible.
Addressing each of the asserted claims of the '142 patent individually is unnecessary
since "all the claims are 'substantially similar and linked to the same abstract idea.'" Content

Extraction, 776 F.3d at 1348 (quoting and approving district court's analysis of representative
claim limitations). Each of the limitations summarized above is directed to an abstract idea
previously implemented in brick-and-mortar post offices. Moreover, each of the collections of
human-executable concepts in the asserted claims is directed to the same abstract idea of
implementing post office functionality via a computer.
As with the '050 patent, Symantec and Trend Micro provide persuasive analogies
between the '142 patent claims and the "brick-and-mortar" world. These examples are
reproduced below for representative claims 17 and 22, demonstrating that the '142 patent covers
34

an abstract idea. (Claims 17 and 22 include each of the concepts in all of the asserted claims
except for claim 21 's limitation of delivering non-selected message(s) to their original
recipient(s), which in the tables below the Court adds to Defendants' hypotheticals.)
Limitations of '142 Patent Claim 17
[language from claim 21 inserted in
brackets]

Routine Steps Performed in a Corporate
Mailroom

"providing to a post office a set of business
rules derived from business communication
policies, each business rule defining an action
applied to an email message based on the
attribute of the message"

The central corporate mailroom at Acme
Corporation has a set of business rules for
handling correspondence addressed to people
in the company. The rules are posted on the
mailroom wall for mailroom employees to
consult.

"receiving messages at the post office"

The mailroom receives correspondence
addressed to the corporation or its employees.

''to at least one message received at the post
office, applying the business rules to the
attributes of the message to determine at least
one action of deferring delivery to be applied
to the message"

One of the business rules of the corporation is
that correspondence addressed to the CEO is
always sent to an administrator for review
unless it has been marked as "Personal" on
the front of the envelope. In one instance, the
mailroom receives an incoming letter without
such a marking.

"automatically combining the e-mail message
with a new distribution list specifying at least
one destination post office for receiving the
email message for review by an administrator
associated with the destination post office and
a rule history specifying at least one business
rule determined to be applicable to the e-mail
message; and"

A mailroom employee tasked with stamping
incoming mail stamps the envelope, "Deliver
to Administrator: CEO, Not Personal"

"automatically delivering the [] message to a
destination post office on the distribution list
instead of a specified recipient of the []
message."

In the next round of hourly deliveries,

mailroom staff delivers the letter to the
administrator's mail drop instead of the CEO
suite.

35

["delivering each non-selected e-mail
message to its specified recipients"] (claim
21)

The mailroom staff delivers messages
directly, without any deferral, to other Acme
employees.

(C.A. No. 12-1581 D.I. 176 at 19-20)

Limitations of '142 Patent Claim 22
[language from claim 21 inserted in
brackets]

Routine Steps Performed in a Corporate
Mailroom

''receiving the e-mail message at a first post
office, the email message having at least one
specified recipient"

All letters addressed to ABC Manufacturing
are directed to company's mail room. The
mailroom receives a letter addressed to ABC
Mfg.'s CEO.

"deferring the e-mail message by:
automatically combining the selected e-mail
message with a new distribution list
specifying at least one second post office for
receiving the email message for review by
an administrator associated with the second
post office and a rule history specifying
at least one business rule determined to be
applicable to the e-mail message; and"

ABC Mfg. has a rule that any letters
addressed to the CEO should be opened and
scanned for content. If the letter is from a
potential customer requesting a price quote, it
is to be delivered to the shop foreperson.
Other letters are to be delivered to the CEO's
assistant. The clerk in the mail room opens a
letter and determines it is a request for a price
quote. He attaches a routing slip to the letter
that specifies (1) it should be directed to the
shop foreperson and (2) it requests a price
quote.

"automatically delivering the selected e-mail
message to an administrator at the second
post office on the distribution list instead of a
specified recipient of the e-mail message"

The letter is delivered to the shop
foreperson, not to the CEO.

''persistently storing the e-mail message at the
second post office until the e-mail message is
reviewed"

The foreperson places the letter in a file that
will remind him to review the letter in two
days.

36

"automatically reviewing the e-mail message
after a specified time interval to determine an
action to be applied to the e-mail message;
and"

Two days later, the shop foreperson reviews
the request for a price quote to determine
whether the proposal is one that ABC wants
to respond to. He determines that it is.

"automatically applying the action to the email message."

ABC prepares a price quote and sends to the
prospective customer.

["delivering each non-selected e-mail
message to its specified recipients"] (claim
21)

Letters addressed to other ABC employees
are delivered directly, without any deferral, to
addressees.

(D.I. 699 at 10-11)
IV argues that these analogies are inaccurate, as the analogies - unlike the asserted patent
claims - are not limited to "email" messages. But the suggestion that this makes the claims
patent eligible is unavailing. As Defendants observe, in Alice the Supreme Court found
ineligible patent claims that were purely computer oriented, as did the Federal Circuit in

Ultramercial and Content Extraction. (See, e.g., Tr. at 56) Aside from the limitations that
include or require a generic computer implementation, the limitations of the asserted claims are
human-executable and directed to fundamental (mailroom) business practices similar to those
found patent ineligible in Bilski and Alice.
As with the '050 patent, the Court's conclusion that the asserted claims of the '142 patent
fail Mayo's step 1 is derived solely from the claims, specification, and file history. Additionally,
as with the '050 patent, the parties have provided extrinsic evidence. Again, this extrinsic
evidence confirms the Court's conclusion that the asserted claims are directed to an abstract idea.
In particular, Trend Micro quotes from IV's technology tutorial, submitted June 5, 2012

(C.A. No. 12-1581 D.I. 177, Ex.Eat 49), to show that even IV believes that, conceptually, the
"post office" components, which are central to implementing the asserted claims, are "not much

37

different" from brick-and-mortar U.S. Post Offices. In the tutorial, JV told the Court:
In a business email environment business rules are applied at the
''post office." In the typical environment, the post office resides on
a mail server, where the company's emails are received, processed,
and routed to recipients. Conceptually, this post office is not
much different than a United States Postal Service office that
processes letters and packages, except that the process is all
computer-implemented and done electronically in a matter of
seconds. The business rules are automatically applied to each
incoming message, and the post office takes action on messages
that trigger the business rules. Other messages are simply routed
normally to their designated recipients.
(Id.) (emphasis added) IV has no convincing response to Defendants' argument, nor does it

supply any persuasive countervailing extrinsic evidence.
Thus, the Court concludes that the asserted claims of the '142 patent are directed to an
abstract idea of implementing well-known post office functionality using a computer. The Court
will turn its attention to step 2.

Mavo Step 2
Symantec argues that "[ t]he asserted claims of the ' 142 patent do not clear the § 101
hurdle by including an 'inventive concept' that transforms them into something significantly
more than the abstract concept itself." (D.I. 699 at 12) "To the contrary," Symantec continues,
"the specification emphasizes that the asserted claims can be implemented on a conventional
network, using conventional computers that run conventional operating systems and conventional
e-mail clients." (Id. at 12 (citing '142 patent at 3:25-26, 5:46-47, 5:49, 9:51-58)) Echoing these
contentions, Trend Micro argues that "the asserted claims add no more than well-understood,
conventional computer processing to practice the claimed abstract ideas in an automated setting."
(C.A. No. 12-1581 D.I. 176 at 22) IV responds by focusing on the fact that the '142 patent "does
38

not preempt every application of filtering email" (D.I. 722 at 19) and asserting that the '142
patent's limitations are quite detailed.
"A patent need not ... preempt an entire field to run afoul of§ 101." Gametek LLC v.
Zynga, Inc., 2014 WL 1665090, at *5 (N.D. Cal. Apr. 25, 2014). "[A]lthough courts have
framed the 'second-step' analysis in terms of preemption, there is no rule that ideas that do not
preempt an entire field are per se patent eligible. Rather, the test as articulated by Alice is that
there must be an inventive contribution on top of the underlying abstract idea." Money Suite Co.
v. 21st Century Ins. & Fin. Servs., Inc., 2015 WL 436160, at *5 (D. Del. Jan. 27, 2015). As the
Supreme Court articulated in Alice, the focus of the second step of the Mayo test is whether the
claims "'disproportionately t[ie] up the use of the underlying' ideas." 134 S. Ct. at 2354
(quoting Mayo, 132 S. Ct. at 1294) (emphasis added).
Applying these legal principles here, the Court agrees with Symantec and Trend Micro
that the asserted claims of the' 142 patent disproportionately tie up use of the patent's underlying
ideas. The fact that the '142 patent does not preempt the entire field of email filtering does not
render the claims per se patent eligible.
Alluding to DDR Holdings, IV argues that the specificity of the "ordered combination of
elements ... overrides email's conventional 'unabated delivery' paradigm." (D.I. 722 at 19) But
DDR Holdings is distinguishable at least because the claims at issue in that case were
"necessarily rooted in computer technology ... to overcome a problem specifically arising in the
realm of computer networks." 773 F.3d at 1257. The asserted claims of the '142 patent are not
"necessarily rooted" in computer networks. Instead, as explained above, the steps of the asserted
claims may be performed by humans, with the exception of generic computer-implemented steps
39

that cannot serve as an inventive concept. Stating an abstract idea while adding the limitation
"apply it with a computer," which is what is essentially done in the asserted claims, is
insufficient.

IV cites DDR Holdings also to argue that the claims "do not merely recite the
performance of some business practice known from the pre-Internet world along with a
requirement to perform it on the Internet." Id. at 1257. But the core problem addressed by the
'142 patent is the need to intercept and defer delivery of messages. This problem existed long
before the Internet or the '142 patent. "[T]he basic character of a process claim drawn to an
abstract idea is not changed by claiming only its performance by computers .... " CyberSource,
654 F.3d at 1375.

IV points to the ''rule engine" in some of the asserted claims as evidence that the '142
patent cannot be implemented on a "conventional" computer. (D.I. 722 at 20-21) But the rule
engine and all other components listed in the claims may be implemented purely in software and
executed on any generic computer. (See, e.g., '142 patent at 5:43-62, 6:51-55 (reciting
"conventional" computer implementation)) Unlike with the sample PTO claims on which IV
relies (see D.I. 723-2 at 2), the '142 patent's implementation is not "inextricably tied to computer
technology and distinct from the types of concepts found by the courts to be abstract." Nor does
the '142 patent's implementation supply an inventive concept under part two of the Mayo test.
IV also argues that the claims satisfy the machine-or-transformation test. But IV does
not, and cannot, point to any specific machine used to implement any of the asserted claims. The
claims are drawn only to a generic computer implementation of an abstract idea. Thus, again, the
Court concludes that the asserted claims of the '142 patent lack an inventive concept.

40

In light of the foregoing analysis, the Court finds that the asserted claims of the '142

patent are ineligible under § 101. 11 The Court will grant Defendants' motions with respect to
IV's '142 patent.
'610 Patent

Asserted claim 7 of the '610 patent is a method claim that depends from claim 1.
Independent claim 1 recites as follows:

A virus screening method comprising the steps of:
routing a call between a calling party and a called party of a
telephone network;
receiving, within the telephone network, computer data from a first
party selected from the group consisting of the calling party and the
called party;
detecting, within the telephone network, a virus in the computer
data; and
in response to detecting the virus, inhibiting communication of at
least a portion of the computer data from the telephone network to
a second party selected from the group consisting of the calling
party and the called party.
Dependent claim 7 recites as follows:

The virus screening method of claim 1 further comprising
the step of determining that virus screening is to be applied to the
call based upon at least one of an identification code of the calling
party and an identification code of the called party.
Mavo Step 1

Symantec and Trend Micro argue that the '610 patent is directed to "screening data" and

11

For purposes of Trend Micro's motion, the Court finds that there is no genuine issue of
material fact as to the patent ineligibility of the asserted claims of the '142 patent.
41

"screening information." (D.I. 699 at 25; C.A. No. 12-1581 D.I. 176 at 24) Symantec states that
the "key idea of the '610 patent is the business concept of providing conventional virus screening
as a subscription service to customers." (D.I. 699 at 23) IV counters Defendants' arguments by
again alluding to DDR Holdings, stating that Symantec and Trend Micro "cannot legitimately
dispute that computer viruses are 'a problem specifically arising in the realm of computer
networks' and computers." (C.A. No. 12-1581 D.I. 183 at 19) IV insists, "The human mind

cannot screen for computer viruses within the telephone network or elsewhere." (Id. at 20)
(emphasis added)
The Court agrees with IV. The '610 patent is not directed to screening generic "data" or
"information." Instead, the asserted claim specifically recites a computer virus, which has
computer-centric implications that cannot be abstracted away so broadly. Furthermore, the
human mind cannot perform the steps described in the specification for implementing virus
screening functionality in a telephone network. For these and other reasons, as explained below,
the Court is unpersuaded by Defendants' analysis.
The specification of the '610 patent describes how implementing claim 7 requires at least
three computers configured in a specific manner, as depicted (for example) in the flowcharts (and
accompanying text) shown as Figures 3, 4, and 5 (excerpted below). ('610 patent at 5:12-9:22)

42

START

SCREEN COMPUTER DATA
FOR LEAST ONE vtRUS

RECEIVE A
TELECOMMUNICATION CODE
FROM A CALLING PARTY

NO

112

DETERMINE IF VIRUS
SCREENING IS TO BE
APPLIED TO CALL

ROUTE THE CALL BETWEEN
THE CALLING PARTY AND

INHIBIT COMMUNICATION
OF THE COMPUTER
DATA TO THE SECOND

102

PARTY

THE CALLED PARTY

COMMUNICATE A

114

MESSAGE TO THE
SECOND PARTY

RECEIVE COMPUTER DATA
FROM A FIRST PARTY

COMMUNICATE A
MESSAGE TO THE
FIRST PARTY

106

116

YES
VVRITE DATA TO
A DATABASE

REMOVE VIRUS FROM
THE COMPUTER DATA

COMMUNICATE THE

120

122

COMPUTER DATA

TO A SECOND PARTY

110
TERMfNATE CALL

124

Fig. 3

Figure 3 is "an embodiment of a virus screening method in accordance with the present

43

invention." (Id. at 5:12-13) Figure 3 shows that "computer data" is received from a "first party"
("calling" or "sending" party). The computer data is destined for a "second party'' ("called,"
"client," or "receiving" party). It is inherent that this disclosure includes a computer for both the
first and second parties. In block 102, the method of the patent determines whether or not virus
screening should be applied to the computer data based on, for example, whether or not "the
called party is a subscriber to a virus screening service." (Id. at 5:20-21) At block 112, the
method screens computer data for at least one virus. An implementation of block 112 is
illustrated in Figure 4 (below).

START

200
REMOVE TRANSMISSIONSPECIFIC DATA FROM THE
COMPUTER DATA

DECOMPRESS THE DATA

-202
DECRYPT THE DATA

204
CREATE A MODEL OF
A COMPUTER

SCREEN THE MODEL FOR
AT LEAST ONE VIRUS

RETURN

Fig. 4
44

206

220

Figure 4 is a "preferred embodiment of a method of screening the computer data" that
performs some initial processing of the data (i.e., removing transmission-specific data from the
computer data, decompressing, and decrypting the data). (Id. at 6:15-17, Fig. 4) The method in
Figure 4 then "create[s] a model of a· computer," as indicated in block 206. (Id. at Fig. 4) "The
model is provided by a virus screening computer other than the client computer." (Id. at 7:66-67)
This virus screening computer is a third computer; it could not be the sending computer (since
virus detection takes place "within the telephone network" but the sending computer is not within
the telephone network. (Id. at 3:14-16; see also D.I. 425 at 24-25 (construing "within the
telephone network" to mean "in the voice or data network connecting the calling party and called
START

210
DETERMINE PARAMETERS
OF THE COMPUTER

EXECUTE THE PROGRAM
USING THE MODEL

212

INTERCEPT READ REQUESTS

214
PROVIDE A REPLY FOR
EACH READ REQUEST

INTERCEPT WRITE
REQUESTS

MODIFY THE MODEL
BASED UPON THE
WRITE REQUESTS

RETURN

Fig. 5
45

216

218

219

party, exclusive of the networks and gateway nodes of the called party and calling party"))
"An embodiment of a method of creating the model is described with reference to FIG. 5"

(shown above). (Id. at 8:9-10) As shown in Figure 5, block 210 determines certain parameters
of the receiving computer, including "operating system, a hardware type, registry information,
configuration information, and information from initialization files," in order to create an
accurate model of the receiving computer in the virus screening computer's memory. (Id. at
8:14-17) If the computer data includes "an executable program such as an installation program
or a plug-in program for a Web browser, the executable program is installed" on the virus
screening computer. (Id. at 8:5-7) During installation, "a step of intercepting read requests
generated by the installation program is performed." (Id. at 8 :29-30) The virus screening
computer analyzes the model computer in order to reply to these read requests appropriately.
"The reply message is generated by gathering information from the model of the client
computer[] and passing the information to the installation program." (Id. at 8:35-38) Similarly,
the virus screening computer intercepts write requests from the executable program and modifies
the model computer according to the write request instructions. (Id. at 8:51-59)
The result of the steps described above is a model of the client computer stored in the
virus screening computer's memory. The model reflects the general state that the client
computer would have been in had it executed the potentially virus-laden code. Virus screening
techniques can then be applied to the model computer, as shown in block 220 in Figure 4, in
order to determine whether the model computer has been infected.
Although the embodiment described in the specification with respect to Figures 3, 4, and
5 is not the only way to implement claim 7, it is necessary in practicing the claim to in some way

46

imitate the receiving computer's configuration in order to properly detect whether a harmful
virus in an executable file may infect the receiving computer. The coordination between a virus
detecting computer, a sending computer, and a receiving computer is something "necessarily
rooted in computer technology in order to overcome a problem specifically arising in the realm of
computer networks." DDR Holdings, 773 F.3d at 1258-59. 12
Further, the specification confirms that the '610 patent is directed to solving the problem
of individual computer users having periodically to update their virus detection software locally
on their computers in order to ensure adequate protection from computer viruses. (See '610
patent at 1: 10-23) The patent is also directed to problems of users having to be concerned about
viruses getting downloaded onto their computers via the Internet. As the specification of the
'610 patent describes:
Embodiments of the present invention advantageously screen
computer data for viruses within a telephone network before
communicating the computer data to an end user. As a result, end
users can download computer data via the telephone network
without concern of receiving various predetermined computer
viruses.
(Id. at 1:59-67)

The Federal Circuit in DDR Holdings, 773 F.3d at 1259, held that the "Internet-centric"
claims at issue there were patent eligible. Claim 7 of the '610 patent is "Internet-centric." In

12

Defendants argue unpersuasively that the '610 patent is all and only about "where" virus
detection is done-i.e., in the telephone network (see, e.g., Tr. at 51-54)- but this
characterization fails to account for the fact that the asserted claim also contains limitations
addressing the "what," including the excision of virus-infected portions of computer data (see
'610 patent at 11 :54-64) and the use of three computers. While it is correct that the asserted
claim does not delineate the entirety of the ''what" - for example, it is not limited to a specific
type of virus detection- that fact does not alter the Court's conclusion that Defendants' depiction
of the asserted claim is inaccurately broad.
47

fact, the key idea of the patent is that virus detection can take place remotely between two entities

in a telephone network. This is advantageous because it saves resources on the local caller and
calling machines and more efficiently executes virus detection at a centralized location in the
telephone network. Claims that "purport to improve the functioning of the computer itself' or
"effect an improvement in any other technology or technical field" may be patentable under §
101. Alice, 134 S. Ct. at 2359.
As with the other patents, Defendants provide hypotheticals showing why they believe the
asserted claim of the '610 patent is patent-ineligible. Unlike with respect to the '050 and '142
patents, however, the analogies are not persuasive. Nonetheless, the Court reproduces them
below:

Limitations of '610 Patent Claim 1
[language from claim 7 inserted in
brackets]

Routine Steps Performed by a World War
II Post Office

"routing a call between a calling party and a
called party of a telephone network"

The Postal Service determines the best path for
delivering a letter sent by Adam, a U.S. Army
soldier stationed in Great Britain during 1944,
to Beth, who lives in Wilmington.

"receiving, within the telephone network,
computer data from a first party selected
from the group consisting of the calling party
and the called party"

The Postal Service receives a letter from Adam
addressed to Beth.

"[determining that virus screening is to be
applied to the call based upon at least one of
an identification code of the calling party and
an identification code of the called party]"

The Postal Service determines that because
Adam's letter is not "diplomatic mail," the
letter is to be screened to ensure that it does
not disclose military secrets.

"detecting, within the telephone network, a
virus in the computer data; and"

The postal inspector opens the letter and
concludes that a reference to "a trip to Paris in
June" must be censored.

48

"in response to detecting the virus, inhibiting
communication of at least a portion of the
computer data from the telephone network
to a second party selected from the group
consisting of the calling party and the called
party."

The post office redacts the reference and
forwards the rest of the letter to Beth.

(D.I. 699 at 25-26)
Limitations of '610 Patent Claim 1
[language from claim 7 inserted in
brackets]

Routine Steps Performed by Phone
Answering Service

"routing a call between a calling party and a
called party of a telephone network"

Bob is a subscriber to Acme Answering
Service ("Acme"), which connects telephone
calls through to Bob's various phone lines or
takes messages pursuant to his instructions.

"receiving, within the telephone network,
computer data from a first party selected
from the group consisting of the calling party
and the called party"

Bob's patient Mary places a call to Bob; Acme
receives the call.

"[determining that virus screening is to be
applied to the call based upon at least one of
an identification code of the calling party and
an identification code of the called party]"

Acme confirms that the called party is Bob
prior to screening the call.

"detecting, within the telephone network, a
virus in the computer data; and"

The operator on duty at Acme asks Mary if she
has an emergency; she says no.

"in response to detecting the virus, inhibiting
communication of at least a portion of the
computer data from the telephone network to
a second party selected from the group
consisting of the calling party and the called
party."

Acme does not forward the call to Bob, but
instead takes down Mary's number and
indicates that her call will be returned.

(C.A. No. 12-1581 D.I. 176 at 26-27)

Trend Micro further analogizes the asserted claims to the claims at issue in Vehicle
Intelligence and Safety LLC v. Mercedes-Benz USA, LLC, 2015 WL 394273, *8 (N.D. Ill. Jan.

49

29, 2015). In Vehicle Intelligence, the claims were directed to "methods for screening equipment
operators for impairment (e.g., intoxication, physical impairment, medical impairment, or
emotional impairment) to prevent their operation of moving equipment" and were found to be
directed to an abstract idea. (C.A. No. 12-1581 D.I. 176 at 27)
The Court finds all of Defendants' hypotheticals unpersuasive. The Court did not
construe the phrase "detecting ... a virus in the computer data" from claim 7, as no party asked
the Court to do so. (See D.I. 425) Nevertheless, it is evident from the specification that the steps
for detecting a computer virus in a telephone network are not as straightforward as observing
individuals for signs of intoxication, reading wartime correspondence, or asking someone if she
is having an emergency. For example, the specification of the '610 patent describes, in one
embodiment, "installing downloaded data using the virus-screening processor" such that "viruses
can be detected in installed data (which may differ from the downloaded data)." ('610 patent at
14: 18-21) This is, of course, merely one possible implementation of claim 7 and does not limit
the plain and ordinary meaning of the claim language, but it is also the type of functionality that
is "necessarily rooted in computer technology in order to overcome a problem specifically arising
in the realm of computer networks." DDR Holdings, 773 F.3d at 1257. The concept of detecting
a computer virus in installed data (and doing so in a telephone network) does not make sense
outside of a computer context.
For the reasons stated above, and particularly in light of DDR Holdings, Defendants have
failed to prove that claim 7 is directed to an abstract idea. 13
13

In addition, the Court considered the extrinsic evidence, primarily inventor testimony
(see D.I. 699 at 23-25), in confirming its conclusion that Defendants have failed to prove by even
a preponderance of the evidence that claim 7 is patent ineligible. Basically, Defendants cite
50

Mayo Step 2
It is not necessary for the Court to consider step two of the Mayo test, since the asserted

claim of the '610 patent is not directed to an abstract idea. However, the Court notes that the
specification of the '610 patent recites a specific machine configured in a specific way to
implement claim 7, as discussed above with regard to Figure 3, 4, and 5 of the '610 patent and
accompanying sections of the specification. Thus, the '610 patent satisfies the machine-ortransformation test, which is an important clue that the claim includes an inventive concept and
is not directed to patent-ineligible subject matter.
IV states that "virus detection 'within the telephone network' would not be preempted if a
call were not routed between the calling party and the called party or if computer data were not
received within the telephone network, as required by the claim language." (C.A. No. 12-1581
D.I. 183 at 27) IV continues: "[T]he '610 Patent captures only one form of virus detection, and
its continued eligibility will not preclude the use of other virus detection techniques - even if
they occur 'within the telephone network.'" (Id.) The Court agrees with IV that the asserted
claim of the '610 patent does not disproportionately preempt virus detection.
Additionally, claim 7 recites "inhibiting communication of at least a portion of the
computer data," which indicates that the claim covers situations where the virus detecting
computer is excising virus-infected code. This is similar to the PTO's patent eligible sample
claim directed to excising malignant software code, which the PTO described as "inextricably

inventor testimony to support the persuasiveness of their "brick and mortar" analogies and to
suggest that virus screening in general was well known. (See id.) However, the novelty- or lack
thereof - of virus screening before the priority date of the '610 patent is not ~ispositive of the
patent-eligibility of virus screening in a telephone network with the additional limitations of
claim 7.
51

tied to computer technology and distinct from the types of concepts found by the courts to be
abstract." (See D.I. 723-2 at 2) Excising virus-infected code is something that requires a
machine that "play[ s] a significant part in permitting the claimed method to be performed, rather
than function[ing] solely as an obvious mechanism for permitting a solution to be achieved more
quickly." SiRF Tech., 601 F.3d at 1333.
Hence, again, the Court concludes that Defendants have failed to prove by even a
preponderance of the evidence that the asserted claim of the '610 patent is patent-ineligible under

§ 101. The Court will deny Defendants' motions with respect to IV's '610 patent.
CONCLUSION
For the reasons given above, the asserted claims of the '050 and '142 patents are directed
to patent-ineligible subject matter under 35 U.S.C. § 101. The Court will grant Symantec and
Trend Micro's motions to the extent that it will order that the '050 and '142 patents are not
patent eligible. However, Defendants have failed to prove that the asserted claim of the '610
patent is patent-ineligible. Thus, the Court will deny Defendants' motions to the extent they are
directed to the '610 patent.
Appropriate orders follow.

52