Sophos Inc v. RPost Holdings, Inc. et al

Filing 282

Judge Denise J. Casper: ORDER entered. MEMORANDUM AND ORDER - The Court DENIES Sophos' motion for summary judgment with respect to standing, D. 207, ALLOWS Sophos' motion for summary judgment on patent validity, D. 201, finding the '628 patent invalid, and DENIES as moot the remaining summary judgment motions, D. 207 (as to lost profits), D. 221, D. 251. Associated Cases: 1:13-cv-12856-DJC, 1:14-cv-13628-DJC(Hourihan, Lisa)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
__________________________________________
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SOPHOS INC.,
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Plaintiff,
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v.
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Civil Action No. 13-12856-DJC
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RPOST HOLDINGS, INC. and RPOST
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COMMUNICATIONS LIMITED,
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Defendants.
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__________________________________________)
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RPOST HOLDINGS, INC. and RPOST
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COMMUNICATIONS LIMITED,
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Plaintiffs,
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v.
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Civil Action No. 14-13628-DJC
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SOPHOS INC.,
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Defendant.
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__________________________________________)
MEMORANDUM AND ORDER
CASPER, J.
I.

December 8, 2017

Introduction
Sophos, Inc. (“Sophos”) seeks summary judgment on two separate grounds of the ongoing

dispute between Sophos and RPost Holdings, Inc. (“RPost”) and RPost Communications Limited

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(“RComm”) (collectively, “the Defendants”). Specifically, Sophos seeks summary judgment on
the issues of the validity of the patent, D. 201, RPost’s standing to sue and the ability of RComm
to recover damages, D. 207, and infringement, D. 251. The Defendants seek summary judgment
on the issue of infringement. D. 221. For the following reasons, the Court DENIES Sophos’
motion for summary judgment with respect to standing, D. 207, ALLOWS Sophos’ motion for
summary judgment on patent validity, D. 201, finding the ‘628 patent invalid, and DENIES as
moot the remaining motions, D. 207 (as to lost profits), D. 221, D. 251.
II.

Procedural History
The procedural history of this case is accounted in more detail in this Court’s prior order,

D. 128 at 3. On November 12, 2013, Sophos sued the Defendants seeking a declaratory judgment
that Sophos does not infringe certain patents owned by the Defendants and that those patents were
invalid. D. 1. The Defendants then sued Sophos bringing a claim of infringement in a separate
suit. No. 14-cv-13628-DJC, D. 1. Both cases are before the Court as related cases. On June 3,
2016, this Court issued a decision regarding the construction of certain claims in the patents at
issue. D. 128. On January 11, 2017, the parties jointly stipulated to the dismissal of claims related
to three of the four patents initially involved in the dispute, leaving only the claims related to U.S.
Patent No. 8,504,628 (“the ‘628 patent”). D. 138. The Defendants contend that Sophos infringes
claims 14, 19, 24, 26, 27 and 30 of the ’628 patent. D. 221 at 4. On December 6, 2017, the Court
heard argument and took the matter under advisement. D. 280.
III. Standard of Review
“A motion for summary judgment is properly granted if there is no genuine issue as to any
material fact and the moving party is entitled to judgment as a matter of law.” IMS Tech., Inc. v.
Haas Automation, Inc., 206 F.3d 1422, 1429 (Fed. Cir. 2000). The Court views “the evidence in

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a light most favorable to the non-movant, and draw[s] all reasonable inferences in its favor.” Id.
“Essentially, Rule 56[ ] mandates the entry of summary judgment ‘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.’” Coll v. PB Diagnostic Sys., 50
F.3d 1115, 1121 (1st Cir. 1995) (quoting Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986)). This
standard is not altered when there are cross-motions for summary judgment. Wightman v.
Springfield Terminal Ry. Co., 100 F.3d 228, 230 (1st Cir. 1996).
IV. Factual Background
A.

The ‘628 Patent

The patent is entitled “System and Method for Verifying Delivery and Integrity of
Electronic Messages.” D. 1-2 at 2. The abstract describes the ‘628 patent as “[t]hird party
verification of the content and delivery of an electronic message such as an email,” which provides
for using a server that receives an email sent to an addressee and “tags” the email to indicate that
it is “registered” with the service provider. D. 1-2 at 2. The server establishes a direct connection
with the addressee’s Mail User Agent (“MUA”), transmits the tagged email, receives a response
from the MUA that the message was received, and creates and forwards a receipt to the message
originator. D. 1-2 at 2.
Claim 14 is described in the ‘628 patent as:
[a] method of transmitting a message from a sender to a recipient, comprising:
transmitting the message to a server remote from the recipient; determining by the
server if there is a particular indication present in the message that identifies the
message as requiring special processing before the message is transmitted to the
recipient; transmitting the message from the server to the recipient through a first
route if the message lacks the particular indication; and processing the message by
the server in accordance with the particular indication.
D. 1-2 at 34. Claim 19 claims “[t]he method of claim 14, wherein processing the message
in a special manner includes encrypting the message to transmit the message in a more private
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manner.” D. 1-2 at 34. Claim 24 claims “[t]he method of claim 14, wherein determining if the
particular indication is present in the message includes filtering the content of the message to
determine whether a selected term is present in the message.” Id. Claim 26 claims “[t]he method
of claim 24, wherein the selected term is a flag.” Id. Claim 27 claims “[t]he method of claim 26,
wherein the flag is use selectable.” Id. Finally, Claim 30 claims:
[a] system for transmitting a message from a sender to a recipient, comprising: a
server configured to receive a message from a sender, the server being remote from
a recipient of the message, the server also being programmable using software
commands to determine if there is a particular indication present in the message
that identifies the message as requiring special processing before the message is
transmitted to the recipient, to transmit the message from the server to the recipient
through a first route if the message lacks the particular indication, and to process
the message in accordance with the particular indication if the particular indication
is present.
Id. The ’628 patent was filed on June 4, 2010 and issued on August 6, 2013. D. 1-2 at 2.
The ’628 patent is a continuation of U.S. Patent No. 7,966,372 (“the ’372 patent”). D. 1-2 at 2.1
The ‘628 patent also relates to two other provisional patents, Provisional Application Number
60/172,479, filed on December 17, 1999, and Provisional Application Number 60/146,074, filed
on July 28, 1998. D. 1-2 at 2. A personal of ordinary skill in the art regarding this patent, at the
relevant time, would be a person with at least an undergraduate degree in computer science or
electrical engineer, or the equivalent, and had at least one or two years of work experience
implementing or maintaining email programs or computer networks. D. 203 ¶ 3.

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A continuation application is “a second application for the same invention claimed in a prior
nonprovisional application and filed before the original prior application becomes abandoned or
patented.” Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354, 1358 (Fed. Cir. 2014)
(citations and internal quotation marks omitted).
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B.

Other Relevant Patents

Sophos directs the Court’s attention to two other patents: U.S. Patent No. 6,609,196, to
Robert Dickinson and Sathvik Krishnamurth (“Dickinson”) and U.S. Patent No. 7,233,992, to John
M. Muldoon et al. (“Muldoon”). D. 203 ¶¶ 4, 29. Dickinson has a relevant priority date of
November 3, 1998. D. 203 ¶ 4. Muldoon was filed on January 14, 2000. D. 203 ¶ 29.
Dickinson discloses an “email firewall with stored key encryption/decryption.” D. 204-2
at 2. Per the description in the abstract, the firewall “applies policies to email messages.” D. 2042 at 2. The firewall comprises a simple mail transfer protocol (“SMTP”) that delivers emails from
a first site and a select subset of second sites. Id. “Policy managers” enforce policies, such as
encryption and decryption policies, such as a “first source/destination policy,” a “first content
policy,” and a “first virus policy,” based on administrator-selectable criteria. Id. The policy
managers comprise an access manager for restricting transmission of emails in accordance with
the source/destination policy; a content manager for restricting transmission of emails in
accordance with the content policy; and a virus manager for restricting transmission of emails in
accordance with the virus policy. Id.
In certain contexts, the email firewall in Dickinson is a server that receives emails and is
remote from external recipients of the email. D. 203 ¶ 6; D. 259 ¶ 6; D. 204-2 at 15. Dickinson
discloses, as examples of policy manager features, that the policy managers could support
detecting the presence of specific words in the body, subject, or attachment of an email; a particular
email destination; a particular size of the email; the priority of the message; the presence of a virus;
the need to encrypt a message; and the presence or absence of certain user-selected flags. D. 203
¶¶ 7-12, 27; D. 259 ¶ 9, 27; D. 204-2 at 14. Depending on whether the message contains those
characteristics, the firewall may transmit the message, return the message to the sender, quarantine
the message, block the message, defer the delivery of the message, annotate the message, or
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encrypt the message. D. 203 ¶¶ 18-22, D. 259 ¶¶ 18-22. The Dickinson patent contains figures
that indicate that, in a “preferred embodiment of an e-mail firewall,” D. 204-2 at 13, the operation
of the firewall in response to a received message would apply the policy managers before
transmission to a recipient. D. 203 ¶ 13, D. 259 ¶ 13, D. 204-2 at 16, D. 204-6 at 14.
Muldoon is entitled “computerized method and system for managing the exchange and
distribution of confidential documents.” D. 204-3 at 2. Muldoon is directed to a “method of and
system for transmitting a message from a sender to a recipient,” wherein emails are received at an
email server and an internet server remote from the recipient. D. 203 ¶¶ 30-32, D. 259 at 22.
Muldoon also discloses a method wherein “messages to be sent via secure server may be
designated as secure by adding a designator, such as @secure, to the Internet address or URL” and
“[f]rom an external source such as users, secure messages can be transmitted to intranet via secure
server using a similar type of addressing.” D. 204-3 at 37, D. 203 ¶ 33, D. 259 ¶ 33. An email
lacking the designator will be processed to route the email normally. D. 203 ¶ 35, D. 259 ¶ 35, D.
204-4 at 19. Muldoon also discloses alternate approaches to configure the mail template such that
“you might have a confidential check box or you might have a check box that says secure . . . and
by hitting that button or checking off that check box, it will tell that mail environment to route this
particular mail message through the interlink service.” D. 204-3 at 39, D. 203 ¶ 34, D. 259 ¶ 34.
C.

The Parties

The ‘628 patent is assigned to RComm. D. 230-1 ¶ 1. RPost is a wholly owned subsidiary
of RComm. D. 230-1 ¶ 3. RPost offers, among other services, an email service called “Registered
Mail” or “RMail,” which “provides email senders with evidence of delivery, time of delivery, and
exact message content in the form of a Registered Receipt™ email record.” D. 230-1 ¶ 13, D. 261
¶ 13. RComm, the parent company, does not sell any products or services in the United States,
but rather conducts research and development concerning secure messaging technologies and
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electronic messaging. D. 230-1 ¶¶ 14-15. RPost sells RMail to customers in the United States.
D. 230-1 ¶ 16.
No written license agreement between RComm and RPost regarding the ‘628 patent has
been produced, despite Sophos’ request for the Defendants to produce such an agreement if it
exists. D. 230-1 ¶ 6. Zafar Khan, the CEO of both RComm and RPost, however, stated at his
deposition that RPost is the “exclusive licensee” of the ‘628 patent. D. 231 at 7. Khan could not
recall when the license was granted. D. 231 at 8. Khan could not recall details about the terms of
the license, specifically, whether RPost paid any consideration for the exclusive license to RComm
and what specific rights RPost received under the exclusive license. D. 231 at 14-15. Khan stated
that he believed that the exclusive license agreement was in writing. D. 231 at 7. When asked
whether RComm offered any software services in the United States by means other than RPost,
Khan replied that it may. D. 231 at 10.
Sophos develops “a number of security products for communication endpoint, encryption,
network security, email security, mobile security, unified threat management (“UTM”), and other
products.” D. 221 ¶ 15; D. 252 ¶ 15. Included within Sophos’ product line are the “SG UTM”
product, with a “Fullguard” option; the “XG Firewall” product, also with a “Fullguard option;”
Sophos Email Appliance; Sophos PureMessage; and Reflexion. D. 221 ¶¶ 17-20, 38 D. 252 ¶¶
17-20, 38. Certain of these products contain features that may be enabled by the consumer
including: filtering emails that contain viruses or spam, D. 221 ¶ 21, D. 252 ¶ 21; data leakage
protection, D. 221 ¶ 22, D. 252 ¶ 22; and email encryption, D. 221 ¶ 23, D. 252 ¶ 23. The RPost
email product, unlike the Sophos email product, does not support anti-spam protection, anti-virus
protection, data loss protection, or virtual private networks. D. 230-1 ¶¶ 25-30, D. 261 at 2.
Sophos’ accused products, unlike RPost’s product, does not offer registered email functionality.

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D. 230-1 ¶¶ 34-36, D. 261 at 2. Sophos sells hardware products that are sold with software,
whereas RPost does not sell hardware. D. 230-1 ¶¶ 32, 33, D. 261 at 2. According to the
Defendants, RPost defines its target market as “secure and verifiable email,” which it defines to
mean the market for “email services that provide content and delivery proof, timestamps, tracking,
electronic signatures on email contracts, or encryption for privacy.” D. 230-1 ¶¶ 35-36, D. 261 at
2. In one analysis of the competitive landscape that the Defendants performed, the Defendants
identified four companies as competitors, none of which were Sophos. D. 231-5 at 13; D. 230-1
¶ 37; D. 261 ¶ 37.

According to expert analysis submitted by Sophos, Sophos competes in a

number of different markets, none of which RPost competes in, and Sophos does not compete in
the market that RPost competes in. D. 230-1 ¶¶ 38-40, D. 261 at 2. The Defendants have not
identified a single customer or sale that RPost has lost to Sophos. D. 230-1 ¶¶ 41-42, D. 261 at 2.
There are several other secure email gateways that compete with Sophos’ accused infringing
products and offer similar services, such as anti-virus, anti-spam, data loss prevention, and email
encryption. D. 230-1 ¶ 44, D. 261 at 2.
The Defendants allege that Sophos has infringed on Claims 14, 19, 24, 26, 27 and 30 of
the ‘628 patent. D. 203 ¶ 2; D. 259 at 2.
V.

Analysis
A.

Standing

A party has standing to sue for infringement of a patent if it is the owner of the patent, the
assignee of the owner, or a licensee with “all substantial rights” in the patent. Sicom Sys., Ltd. v.
Agilent Tech. Inc., 427 F.3d 971, 976 (Fed Cir. 2005). It is the burden of the party bringing the
infringement action to prove that it is standing to sue. Id.

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Sophos challenges the standing of RPost to pursue its claims concerning the ‘628 patent
against it and seeks summary judgment in its favor. D. 230 at 6-7. In support of this argument, it
points out first, that the Defendants have never produced a written license agreement, and second,
that Khan stated that RComm “may” offer software services in the United States by means other
than RPost. D. 230 at 7. This, however, is not sufficient at the summary judgment stage to show,
as a matter of undisputed fact, that RPost has no standing to bring its claim. Khan testified at his
deposition that RPost has an exclusive license agreement to the ‘628 patent. Even if Sophos
considers that testimony not credible in light of Khan’s inability to provide details regarding that
written agreement and the Defendants’ failure to produce the license agreement, at summary
judgment the Court is required to credit Khan’s statement. Khan’s lack of knowledge regarding
whether RComm offered software services by means other than RPost is similarly unavailing, as
there is no direct support in the record for Sophos’ argument that RComm does in fact license
software services that utilize the ‘628 patent to other entities. The cases cited by Sophos, D. 230
at 6-7, are not to the contrary, as those cases involve the undisputed absence of an exclusive license
agreement, which is not the case here.
Sophos also contends that there is nothing in the record regarding any terms of the license
agreement beyond Khan’s characterization of the agreement as an exclusive license, which Sophos
argues is insufficient for RPost to prove that it has all substantial rights in the patent. D. 230 at 7.
But RPost is a co-plaintiff with the patentee, and “an exclusive licensee that does not have all
substantial rights has standing to sue third parties [] as a co-plaintiff with the patentee.” Textile
Prods., Inc. v. Mead Corp., 134 F.3d 1481, 1484 (Fed. Cir. 1998). Sophos also argues that, if the
license agreement is oral, it would be void under the California statute of frauds because it is a
contract to be performed over a term greater than a year or it is a contract that is too uncertain and

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indefinite. D. 273 at 12 n.8. The Court, however, may not at this stage infer from the Defendants’
failure to product a written license agreement that any license agreement is not written and only
oral, and thus unenforceable. Additionally, under California law (assuming it applies here), a nonparty, such as Sophos here, to a contract may not raise the statute of frauds to void that contract.
O’Banion v. Paradiso, 61 Cal. 2d 559, 562-63 (1964).
Accordingly, this Court DENIES Sophos’ motion for summary judgment, D. 207, to the
extent that it challenges RPost’s standing to bring infringement claims related to the ‘628 patent.
B.

Invalidity

A patent is “presumed valid,” and the “burden of establishing invalidity of a patent . . .
shall rest on the party asserting such invalidity.” Microsoft Corp. v. I4I Ltd. P’ship, 564 U.S. 91,
95 (2011) (quoting 35 U.S.C. § 282). “A patent is invalid for anticipation if a single prior art
reference discloses each and every limitation of the claimed invention.” Schering Corp. v. Geneva
Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003). “Moreover, a prior art reference may anticipate
without disclosing a feature of the claimed invention if that missing characteristic is necessarily
present, or inherent, in the single anticipating reference.” Id. “Anticipation is a question of fact,
including whether or not an element is inherent in the prior art.” Atlas Powder Co. v. Ireco, Inc.,
190 F.3d 1342, 1346 (Fed. Cir. 1999). Here, Sophos contends that the ‘628 patent is invalid for
anticipation where prior art, namely two other patents, disclosed the elements claimed as to the
‘628 patent. The Court must first address the parties’ dispute about the priority date for the ‘628
patent.
1. Priority Date for the ‘628 Patent
Sophos contends that the relevant priority date for the ‘628 patent is July 27, 2000. D. 203
¶ 1. The Defendants, for their part, contend that the relevant priority date is either July 28, 1999,
or December 17, 1999, based on the provisional patents referenced in the ‘628 patent. D. 259 ¶ 1.
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Sophos responds that the Defendants, in filing an interrogatory, stated that they were “not claiming
a conception and reduction to practice date earlier than” the “filing date of the parent application
of the ‘628 patent – July 27, 2000,” and on that basis defended certain positions they took during
discovery. D. 273 at 5. Additionally, the expert, Dr. Rajeev Surati (“Surati”), upon which the
Defendants rely, stated that “I understand that RPost alleges that all of the claims of the ‘628 patent
were reduced to practice at least as of July 27, 2000.” D. 204-6 at 11. He went on to state that “I
also understand that RPost has not alleged a date of invention earlier than July 27, 2000 though it
reserve its right to do so. Accordingly, I will assume . . . that the priority date . . . is July 27, 2000.”
D. 204-6 at 11-12. Thus, Sophos contends, the Defendants are estopped from asserting a priority
date earlier than July 27, 2000, because it seems inequitable to do otherwise.
However, putting aside whether the Defendants are estopped from asserting a priority date
earlier than July 27, 2000, the Defendants have not succeeded in pointing to a genuine dispute of
material fact regarding the potential for an earlier priority date. Because Sophos has "introduced
sufficient evidence to put at issue whether there is prior art alleged to anticipate the claims being
asserted, prior art that is dated earlier than the apparent effective date of the asserted patent claim,"
the Defendants have "the burden of going forward with evidence and argument to the contrary,"
Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1329 (Fed. Cir. 2008), such as evidence
"either that the prior art does not actually anticipate, or . . . that it is not prior art because the
asserted claim is entitled to the benefit of a filing date prior to the alleged prior art," id. at 1327.
To meet that burden, they must show that “the specification of the provisional [application] must
contain a written description of the invention . . . in such full, clear, concise, and exact terms, to
enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional
application.” Amgen Inc. v. Sanofi, 872 F.3d 1367, 1380 (Fed Cir. 2017) (emphasis in original)

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(citing Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed Cir. 2015)).
Because Surati assumed that the Defendants would not be relying on the provisional patents for a
priority date, his opinion does not contain any support for their contention now that the provisional
patent applications referenced in the ‘628 patent meet that standard. Nor is there anything else in
the record that would support a finding of a genuine dispute of material fact regarding this issue,
as the only citations to the record made by the Defendants in this regard are citations to the text of
the provisional patent. Thus, the Court accepts that the priority date for the ‘628 patent is July 27,
2000. Consequently, both Dickinson and Muldoon are properly considered prior art.
2. Dickinson
Sophos argues, based on the fully developed record with expert reports from both parties,
that Dickinson discloses every limitation of Claim 14 of the ‘628 patent. D. 202 at 9. It contends
that Dickinson is a means of transmitting a message from a sender to a recipient; that the email
firewall referenced in Dickinson is a server that is remote from the recipient; that the policy
managers referenced in Dickinson perform the task of determination by the server of whether there
is a particular indication present in the message designating the message for special processing
before transmission; and that the email firewall performs the special processing if the indication is
present and do not if the indication is not present. D. 203 at 2-6. In doing so, Sophos cites to the
text of the ‘628 patent, its expert report by Dr. Justin Tygar (“Tygar”), and Surati’s expert report
and deposition. Id.
The Defendants first respond that Dickinson is not “a method of transmitting a message
from a sender to a recipient,” D. 204-1 at 34, but rather a method of selectively preventing
transmission of message. D. 259 ¶ 5, D. 204-6 ¶ 108. The only citation to the record that the
Defendants make in support of this argument is a citation to the text of Dickinson, which states
that a significant advantage of the innovation is the ability to filter selectively or encrypt certain
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emails, and thus does not support their contention. D. 259 ¶ 5; D. 204-2 at 12 (C: 2 L: 21-33).
The flowchart of Dickinson has a step that states “transmit to specified destination” after the
message moves through prior steps. D. 204-2 at 10. Tygar’s expert report relies upon this figure
as evidence that Dickinson does disclose transmission. D. 205 at 57. To the extent that the
Defendants contend that Dickinson is not a means of transmission because, under some particular
indications, Dickinson would fail to transmit a message and thus would not be “processing the
message by the server in accordance with the special indication,” D. 1-2 at 34, D. 1-2 at 34, that
argument fails because Dickinson discloses some mechanisms of processing the message in
accordance with the special indication that do involve transmission, such as deferring the delivery
of the message, annotating the message, or encrypting the message. D. 203 ¶¶ 20-22, D. 259 ¶¶
20-22.
Second, the Defendants contend that the “particular indications” in Dickinson are not
indications set by senders to instruct the server what actions to take, but are rather rules set by an
administrator applied to messages sent by senders. D. 258 at 14, D. 259 ¶ 14. The Defendants
elaborate that whereas the Dickinson patent imposes rules on users, the ‘628 patent “trusts the
sender to do the right thing.” D. 259 ¶ 14, D. 258 at 14. Surati’s opinion elaborates that Dickinson
“teaches away from” the approach in the ‘628 patent because in Dickinson, “everything is
controlled by the administrator,” and “the user doesn’t get the option to determine how the message
is managed,” whereas the ‘628 patent is “designed to allow the sender to notify the server about
treatment of the outgoing message.” D. 204-6 at 15-16. The Defendants, however, point to no
support for their contention that Claim 14 requires that the user be able to select whether the
message has the particular indication that flags it for special processing or that Claim 14 requires
the user to be able to set the rules regarding which particular indications correspond to which

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special processing instructions. The language of Claim 14 only speaks to “determining by the
server if there is a particular indication present in the message that identifies the message as
requiring special processing before the message is transmitted to the recipient.” D. 1-2 at 34. To
the extent that the Defendants contend that Figure 3 in the ‘628 patent, D. 204-1 at 11, limits the
scope of Claim 14 in this way, D. 259 at 7, this Court rejected the argument in claim construction
that Figure 3 limited the scope of Claim 14. D. 128 at 11-12. Moreover, the undisputed record
shows that in Dickinson, messages may be subject to a particular action on the basis of the presence
or absence of certain user-selected flags. D. 203 ¶¶ 27-28; D. 259 ¶¶ 27-28; D. 204-2 at 14.
Surati’s opinion does not address the claims in Dickinson related to user-selected flags. D. 204-6
at 14-16. Additionally, “the question whether a reference ‘teaches away’ from the invention is
inapplicable to an anticipation analysis.” Celeritas Techs., Ltd. v. Rockwell Int'l Corp., 150 F.3d
1354, 1361 (Fed. Cir. 1998). Thus, this argument also fails.
Finally, the Defendants argue that in Dickinson, “every email undergoes extra processing
and the only distinction (based on sender address, recipient address, content) is what type of extra
processing (decrypt, encrypt . . . , annotate, queue, block),” whereas in the ‘628 patent, only the
messages with the particular indication go through special processing. D. 259 ¶ 15. In support of
this contention, the Defendants point to two portions of Dickinson: first, figures 6A and 6B, which
indicate that all messages go through the stage called “Decryption required?” and “Encryption
required?” D. 204-2 at 9-10, and second, a portion of the text explaining that “[t]he steps shown
in FIG. 6(b) are performed for each destination specified for a message.” D. 204-2 at 16 (C: 9 L:
46-47). But, even if it is true that every email in Dickinson undergoes some level of extra
processing, that claim would not support the Defendants’ argument that Dickinson fails to
anticipate the element of Claim 14 of “transmitting the message from the server to the recipient

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through a first route if the message lacks the particular indication.” D. 1-2 at 34. In this Court’s
claim construction decision, the Court clarified that the “first route” need not be any particular
route. D. 128 at 11-12. If every email in Dickinson undergoes some processing, and only some
emails undergo additional processing, then Dickinson still practices this element of Claim 14
because the “first route” as specified in Dickinson may just contain more process than the “first
route” as specified in some particular embodiment of the ‘628 patent. This argument thus fails.
There is no dispute of material fact that Dickinson anticipates Claim 14 of the ‘628 patent.
Sophos similarly contends that Dickinson anticipates the remaining claims of the ‘628
patent. D. 202 at 5-6, 9; D. 203 ¶¶ 24-28. The Defendants make no arguments with respect to
these claims that they did not make with respect to Claim 14, D. 258 at 17, and the arguments they
do make fail for the same reasons explained above. Thus, there is no dispute of material fact that
Dickinson anticipates all the relevant claims of the ‘628 patent.
3. Muldoon
Sophos also contends that Muldoon anticipates every element of Claim 14 of the ‘628
patent. D. 202 at 11. Sophos contends that Muldoon is a method of transmitting a message from
a sender to a recipient via a remote server; that Muldoon discloses determining if there is a
particular indication present that identifies the message as requiring special processing, such as by
using the “@secure” designator; that Muldoon discloses transmitting the message from the server
to the recipient by a first route if the message lacks the @secure or other designator; and that
Muldoon discloses processing the message in accordance with the particular indication of the
@secure or other designator by sending the mail along the secure server route. D. 202 at 11.
The Defendants contend that Muldoon does not disclose a method of “special processing,”
but rather the secure mail feature of Muldoon is simply re-addressing an email to a different
recipient via a change in the address of an email – which is an inherent feature in how email works
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and thus nothing “special.” D. 258 at 18-21; D. 204-6 at 17-18; D. 259 ¶¶ 33-36. That argument,
however, does not account for the undisputed fact that Muldoon also disclosed another means of
designating which emails are to be sent along the secure server route, beyond re-addressing the
email to a different recipient: the use of a “confidential check box” or a “check box that says
secure.” D. 204-3 at 39, D. 203 ¶ 35, D. 259 ¶ 35. Surati does not address the check box approach
disclosed in Muldoon and thus makes no argument as to why the server readdressing an email
based on a check box (rather than on a different email address) would not constitute special
processing. D. 204-6 at 17-19. Thus, the Defendants’ contention fails. There is no genuine dispute
of fact that Muldoon anticipates Claim 14 of the ‘628 patent.
Sophos similarly argues that Muldoon anticipates Claim 30 and the dependent claims of
Claim 14. D. 202 at 5, 11-12. The Defendants respond that Muldoon does not anticipate Claim
24, Claim 26 and Claim 27 of the ‘628 patent. D. 258 at 21-22. Claim 24 is “[t]he method of
Claim 14, wherein determining if the particular indication is present includes filtering the content
of the message to determine whether a selected term is present in the message.” D. 204-1 at 34.
Claim 26 is “[t]he method of Claim 24, wherein the selected term is a flag.” D. 204-1 at 34. Claim
27 is “[t]he method of Claim 26, wherein the flag is user selectable.” D. 204-1 at 34. The
Defendants argue that Muldoon does not disclose any method for filtering the content of the
message, because “in Muldoon, messages are sent directly to a server, and no further processing
occurs at that server other than the normal actions of the server.” D. 258 at 21. This argument
fails for the same reasons explained above – with respect to the check box embodiment rather than
the @secure in the address line embodiment, sending the email to a different address may be
special processing. The Defendants also contend that Muldoon does not disclose any limitation
wherein the selected term is a “flag,” or the flag is user-selectable. D. 258 at 22. But the

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Defendants point to no support in the record for the argument that the check box itself is not a flag
and Surati, in his deposition, explained that a flag could be an indication in the header of a message
or a button selected by a user. D. 204-4 at 14. Thus, there is no genuine dispute of fact that
Muldoon anticipates the remaining relevant claims of the ‘628 patent.
For all of the aforementioned reasons, the Court concludes that the ‘628 patent is invalid.
VI. Conclusion
For the foregoing reasons, the Court DENIES Sophos’ motion for summary judgment with
respect to standing, D. 207, ALLOWS Sophos’ motion for summary judgment on patent validity,
D. 201, finding the ‘628 patent invalid, and DENIES as moot the remaining summary judgment
motions, D. 207 (as to lost profits), D. 221, D. 251.2
So Ordered.
/s/ Denise J. Casper
United States District Judge

2

The Court DENIES Sophos’ motion to strike, D. 182, as moot.
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