RODNEY GILSTRAP, UNITED STATES DISTRICT JUDGE.
Before the Court is Defendant Epsilon Data Management, LLC's ("Epsilon") Motion to Dismiss for Failure to State a Claim (Dkt. No. 26), arguing that the asserted patents are invalid under 35 U.S.C. § 101, and Plaintiff Umbanet, Inc.'s ("Umbanet") Motion for Summary Judgment (Dkt. No. 38) seeking to foreclose and dispose of Epsilon's § 101 defenses. Having considered the motions and for the reasons set forth below, Epsilon's Motion is
Umbanet asserts that Epsilon infringes the '730 Patent and the '374 Patent (collectively, the "Patents-in-Suit"). (Dkt. No. 1.) These patents both generally relate to sending and receiving email messages. The '730 Patent was filed in 1998 and the '374 Patent was filed in 2000.
The '730 Patent purports to improve on existing email technology by making it easier to send non-text portions of a message, such as a picture or spreadsheet file, along with an email. As the '730 Patent acknowledges, email programs at the time the '730 Patent was filed already allowed users to send non-text portions of a message along with the message itself as an "attachment." '730 Patent, 1:45-48. This process, however, required the recipient to "have a program capable of reading (opening) the file." Id. at 2:19-20. "For example, if one attaches a spreadsheet file to an email message, the receiver of the file must have a spreadsheet program in order to open the file." Id. at 2:20-23. In addition, the recipient also needed a compatible operating system. Id. at 2:32-37.
Rather than including non-text portions of a message as an attachment, the '730 Patent provides for "a single seamless environment for authoring, reading, and emailing a variety of different types of documents." Id. at 4:25-30. This environment includes various "authoring components." Id. at 3:27-52. Using these authoring components, a user can create non-text portions of a message within the email environment itself. Id. For example, the '730 Patent discloses an authoring component for creating a "spreadsheet ... display[ing] a grid and include[ing] formula creation tools as well as formatting tools." Id. at 3:40-44. The advantage of this approach is that the recipient can open the spreadsheet file even if they do not have an otherwise compatible program or operating system. Id. at 12:22-31 ("When the message is received ... [t]he receiver of the message does not have to download any file, find any attachment, execute any decoders, or launch any spreadsheet program to view/edit the spreadsheet....").
Both parties agree that Claim 1 and Claim 19 are representative of the '730 Patent. Claim 1 recites:
The '374 Patent, which is a continuation of the '730 Patent, describes technology generally similar to the '730 patent with the addition of controlling the access to certain messages based on the "role" of the user receiving the message. '374 Patent, 3:63-4:7.
Both parties agree that Claim 11 and Claim 16 are representative of the '374 Patent. Claim 11 recites:
A motion to dismiss is appropriate when a complaint fails to state a plausible claim for relief even where all well-pleaded facts are accepted as true and viewed in the light most favorable to the plaintiff. Bustos v. Martini Club, Inc., 599 F.3d 458, 461 (5th Cir. 2010); see also Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007). Such a motion may dispose of claims for patent infringement if the patent is invalid under 35 U.S.C. § 101. See, e.g., Voxathon LLC v. Alpine Elecs. of Am., Inc., No. 2:15-CV-562-JRG, 2016 WL 260350, at *5 (E.D. Tex. 2016).
A motion for summary judgment is appropriate "only if there is no genuine issue of material fact and the movant is entitled to judgment as a matter of law." O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1369 (Fed. Cir. 2006) (citing Fed. R. Civ. P. 56(c); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)). As with a motion to dismiss, "the § 101 inquiry may appropriately be resolved on a motion for summary judgment." Id.
"Where it is clear that claim construction would not affect the issue of patent eligibility, there is no requirement that the court go through that exercise before addressing the eligibility issue." Pres. Wellness Techs. LLC v. Allscripts Healthcare Sols., No. 2:15-CV-1559-WCB, 2016 WL 2742379, at *6 (E.D. Tex. 2016) (Bryson, J.) (citing Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1274 (Fed. Cir. 2012)); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714-15, 717 (Fed. Cir. 2014) (concluding,
"Laws of nature, natural phenomena, and abstract ideas are not patentable." Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70, 132 S.Ct. 1289, 182 L.Ed.2d 321 (internal quotation marks and brackets omitted). The Supreme Court has articulated a two-step test for "distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent eligible applications of those concepts." Alice Corp. Pty. v. CLS Bank Int'l, ___ U.S. ___, 134 S.Ct. 2347, 2355, 189 L.Ed.2d 296 (2014) (citing Mayo, 566 U.S. at 75-78, 132 S.Ct. 1289).
The first step of the Mayo/Alice framework requires a court to determine if the claims, "considered in light of the specification... [and] as a whole," are "directed to excluded subject matter." Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016). There is no bright line rule that guides this analysis. Instead, the Federal Circuit and the Supreme Court have "found it sufficient to compare claims at issue to those claims already found to be directed to an abstract idea in previous cases." Id. at 1335. For software patents, the critical question is "whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea." Id.
If the claims are directed to ineligible subject matter, then the court "search[es] for an `inventive concept,' or some element or combination of elements sufficient to ensure that the claim in practice amounts to `significantly more' than a patent on an ineligible concept." DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1255 (Fed. Cir. 2014) (quoting Alice, 134 S.Ct. at 2353); see also Bascom Glob. Internet Servs., Inc. v. AT & T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016) ("[A]n inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.").
In approaching the first step of the Mayo/Alice framework, the Court begins by "compar[ing] claims at issue [here] to those claims already found to be directed to an abstract idea in previous cases." Enfish, 822 F.3d at 1335.
In light of Enfish and Intellectual Ventures, the Court has determined that it is premature to resolve whether the claims of the '730 Patent are directed to ineligible subject matter. For example, claim construction may limit the claims of the '730 Patent to a sufficiently "specific implementation" so as to survive § 101.
Once again, the Court begins by "compar[ing] claims at issue to those claims already found to be directed to an abstract idea in previous cases." Enfish, 822 F.3d at 1335.
The asserted claims of the '374 Patent are essentially directed to providing selective or particularized access to an email.
Courts have consistently declared similar claims to be abstract. Preservation Wellness is an instructive example. There, Judge Bryson concluded that claims directed to "computerized systems for maintaining patient medical records so that the records are remotely accessible by physicians and patients for reading and editing, with certain records accessible only to the physician" were abstract. Pres. Wellness, No. 2:15-CV-1559-WCB, 2016 WL 2742379, at *7 (collecting cases). This type of selective access to information based on an individual's role — as a patient or a doctor — is indistinguishable from the concept underlying the '374 Patent.
Having concluded that the asserted claims of the '374 Patent are directed to an abstract idea, the Court next considers whether they recite an "inventive concept" that "`transform[s] the nature of the claim[s]' into a patent-eligible application." Alice, 134 S.Ct. at 2355. The only arguably inventive concept in the asserted claims of the '374 Patent, which forms the core of Plaintiff's argument here, involves the step of conditioning access to parts of an email message according to the "role" of the recipient. (See Dkt. No. 38 at 9 ("[T]he claimed solution ... eliminated the need for drafting multiple emails [and is] ... inventive and novel.")).
However, the general idea of providing access to information according to a characteristic about the recipient or viewer of that information was well-known before the '374 Patent was filed. For example, as Epsilon argues, a bank may "release[ ] confidential financial information to the correct account holder and den[y] access... to [others]." (Dkt. No. 26 at 18.) The bank may also release different parts of that record to different individuals based on their role as the account holder, who would get full access, an employer, who may get information about the associated account number, or a stranger, who would likely get no access. Such a process is necessary in any context where multiple individuals have varied levels of access to information. See, e.g., Pres. Wellness, No. 2:15-CV-1559-WCB, 2016 WL 2742379 at *3-4 (describing a system for accessing a record by a patient or a doctor); Exec. Order No. 12,958, 60 Fed. Reg. 19,825 (Apr. 17, 1995) (defining "a uniform system for classifying ... national security information").
For the reasons set forth above, Epsilon's Motion to Dismiss (Dkt. No. 26) is