Sophos Inc v. RPost Holdings, Inc.
1:13-cv-12856
D. Mass.Dec 8, 2017Background
- Sophos sued RPost and RPost Communications (RComm) seeking a declaratory judgment of noninfringement and invalidity; RPost/RComm counterclaimed for infringement of U.S. Patent No. 8,504,628 (the ’628 patent). Related suits were consolidated before Judge Casper.
- The parties stipulated to dismiss claims as to three other patents, so only the ’628 patent claims (claims 14, 19, 24, 26, 27, 30) remained at issue.
- The ’628 patent claims a server-based method of routing/processing email when a message contains a particular indication (e.g., flag or designator) that triggers special processing (encryption, routing, receipt generation, etc.). The patent claims priority to earlier applications; the court treated July 27, 2000 as the effective priority date.
- Sophos moved for summary judgment on invalidity and on standing/ability to recover lost profits; RPost/RComm and Sophos filed cross-motions on infringement. The court heard argument and ruled on summary judgment motions.
- The court found prior art patents (Dickinson and Muldoon) anticipate the asserted claims and therefore granted Sophos summary judgment that the ’628 patent is invalid. The court denied Sophos’s standing challenge to RPost (as co-plaintiff/exclusive licensee) and denied as moot remaining motions.
Issues
| Issue | Plaintiff's Argument (Sophos) | Defendant's Argument (RPost/RComm) | Held |
|---|---|---|---|
| Standing to sue | RPost lacks proof of an exclusive written license; no produced license document | RPost (via CEO deposition) is an exclusive licensee; as co-plaintiff even a licensee lacking "all substantial rights" can sue with patentee | Denied Sophos summary judgment on standing; disputed factual record favors crediting deposition testimony |
| Priority date | Relevant priority date is July 27, 2000 (parent filing) | RPost contends earlier provisional dates (1998/1999) support earlier priority | Court accepted July 27, 2000 as effective date (no genuine dispute that would support earlier date) |
| Anticipation / Invalidity of ’628 patent | Dickinson and Muldoon disclose every limitation of asserted claims, so claims are anticipated and invalid | Prior art allegedly differs (administrator-controlled vs. sender-controlled flags; mere readdressing is not "special processing") | Granted Sophos summary judgment: Dickinson and Muldoon anticipate the asserted claims; ’628 patent invalid |
| Lost profits / damages ability | (Sophos sought summary judgment on RComm’s ability to recover lost profits) | RPost/RComm argue entitlement to damages; RPost claims market harm | Denied as moot following ruling of invalidity |
Key Cases Cited
- IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422 (Fed. Cir.) (summary judgment standard in patent cases)
- Coll v. PB Diagnostic Sys., 50 F.3d 1115 (1st Cir.) (summary judgment burden allocation)
- Celotex Corp. v. Catrett, 477 U.S. 317 (Supreme Court) (summary judgment standards)
- Wightman v. Springfield Terminal Ry. Co., 100 F.3d 228 (1st Cir.) (cross-motions for summary judgment framework)
- Sicom Sys., Ltd. v. Agilent Tech. Inc., 427 F.3d 971 (Fed. Cir.) (standing: owner, assignee, or licensee with substantial rights may sue)
- Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91 (Supreme Court) (patent validity presumption and burden)
- Schering Corp. v. Geneva Pharm., 339 F.3d 1373 (Fed. Cir.) (anticipation requires single prior art reference disclosing every limitation)
- Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342 (Fed. Cir.) (anticipation is a factual inquiry; inherency doctrine)
- Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316 (Fed. Cir.) (burden to present evidence when prior art challenges effective filing date)
- Amgen Inc. v. Sanofi, 872 F.3d 1367 (Fed. Cir.) (written-description requirement for priority benefit)
- Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir.) (written-description standard)
- Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354 (Fed. Cir.) ("teaching away" inapplicable to anticipation analysis)
- Textile Prods., Inc. v. Mead Corp., 134 F.3d 1481 (Fed. Cir.) (exclusive licensee without all substantial rights can still sue with patentee)