FOSTER v. PITNEY BOWES CORPORATION et al

Filing 61

ADDENDUM TO OPINION DATED FEBRUARY 7, 2013. SIGNED BY HONORABLE JOEL H. SLOMSKY ON 4/12/2013. 4/12/2013 ENTERED AND COPIES E-MAILED. (ems)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF PENNSYLVANIA
FREDERICK FOSTER,
Plaintiff,
CIVIL ACTION
NO. 11-7303

v.
PITNEY BOWES CORPORATION, et al.,
Defendants.

ADDENDUM TO OPINION DATED FEBRUARY 7, 2013
Slomsky, J.

April 12, 2013

Defendant Pitney Bowes, Inc. (“Pitney Bowes”) in its Answer to the Complaint made two
counterclaims against Plaintiff. The first was for non-infringement of U.S. Patent No. 7,707,119
(Count I), and the second was for invalidity of U.S. Patent No. 7,707,119 (Count II). (Doc. No. 9
at 38–40.) Pitney Bowes moved for judgment on the pleadings (Doc. No. 35) on its two
counterclaims, which the Court has not yet addressed in this case. In a letter dated March 4,
2013 (Doc. No. 56), sent in light of the Court’s February 7, 2013 Opinion, Pitney Bowes
requested the following relief on its pending counterclaims.1 On Count I, Pitney Bowes requests
the Court to enter judgment and find Pitney Bowes did not infringe on U.S. Patent No.
7,707,119, which is held by Plaintiff. On Count II, Pitney Bowes requests that this Count be
dismissed if the Court denies Plaintiff’s Motion for Reconsideration. Since Plaintiff’s Motion
for Reconsideration will be denied in an Order issued this day, Count II of Pitney Bowes’
Counterclaim will be dismissed.

1

Pitney Bowes’ letter was docketed on March 4, 2013. Plaintiff has not responded to the letter
as of the date of this Addendum.

Regarding Count I, the Court noted in the February 7, 2013 Opinion that U.S. Patent No.
7,707,119, a patent owned by Plaintiff, did not appear to be relevant to this lawsuit. (Doc. No.
50 at n.9.) Plaintiff’s lawsuit instead centers on U.S. Patent Application No. 12/129,755, which
describes a “Virtual Post Office Box/Internet Passport powered by Global Registration and
Verification” (“VPOBIP”). (Doc. No. 35-8 at 1.) VPOBIP would charge a fee for individuals
and businesses to present identification documents to a local post office and assign the individual
or business a virtual Post Office Box. (Doc. No. 1, Ex. B at 2.) In contrast, U.S. Patent No.
7,707,119 is a “[s]ystem and method for identity protected secured purchasing.” (Doc. Nos. 352; 35-3; 35-4.) U.S. Patent No. 7,707,119 has nothing to do with VPOBIP, Pitney Bowes, or the
U.S. Postal Service. Plaintiff seemed to allege in his Complaint that Pitney Bowes infringed on
U.S. Patent No. 7,707,119, but offered no facts to support this claim. Instead, he focused on the
VPOBIP virtual Post Office Box system in his lawsuit.2 Accordingly, when the facts alleged in
the pleadings are viewed in the light most favorable to Plaintiff, it is apparent that Pitney Bowes
did not infringe on U.S. Patent No. 7,707,119. Thus, Pitney Bowes’ Motion for Judgment on the
Pleadings on Count I of Pitney Bowes’ Counterclaims will be granted, and Judgment will be
entered in favor of Pitney Bowes on this Count.
An appropriate Order follows.

2

As stated above and discussed in the Court’s Opinion dated February 7, 2013 (Doc. No. 50),
Plaintiff was not issued a patent for the VPOBIP system, and the invention did not advance
beyond the application stage.
2