Claims are Invalid (not Patents)

Sophos, Inc. v. RPost Holdings (Fed. Cir. 2019) (RmailSophos)

The two paragraph decision in this case is designed to serve as a reminder that patent validity/infringement is considered on a claim-by-claim basis.

RPost sued Sophos alleging infringement its U.S. Patent No. 8,504,628.  However, during the litigation RPost filed infringement contentions that focused only on claims 14, 19, 24, 26, 27 and 30.  In its invalidity argument, Sophos directed its attention only to these asserted claims.  However, the district court wrote more broadly “that the ‘628 patent is invalid.”

On appeal, the Federal Circuit has affirmed the summary judgment of invalidity with the caveat that the district court’s opinion should be limited only to the asserted claims.

We agree that the asserted claims are anticipated by Dickinson and affirm the invalidity of the asserted claims on that basis. However, the district court’s Memorandum and Order granting summary judgment contained language suggesting that all claims of the ’628 patent are invalid. See J.A. 42 (“[T]he Court concludes that the ’628 patent is invalid.”) The parties agree that the district court’s judgment of invalidity must be limited to the asserted claims. Accordingly,


1. The judgment of invalidity of claims 14, 19, 24, 26, 27 and 30 of the ’628 patent is affirmed.

2. The case is remanded for the district court to revise its judgment to clarify that the declaration of invalidity is limited to claims 14, 19, 24, 26, 27, and 30 of the ’628 patent.

In this particular case, the patent challenger Sophos agreed that they had only challenged the asserted claims. Thus, this decision cannot be seen as creating any strict limit on challenging claims not pursued in the infringement contentions.

5 thoughts on “Claims are Invalid (not Patents)

  1. 2

    “This application is a continuation of U.S. application Ser. No. 09/626,577, filed Jul. 27, 2000, now U.S. Pat. No. 7,966,372, which claims benefit to provisional application No. 60/172,479, filed Dec. 17, 1999, and provisional application No. 60/146,074, filed Jul. 28, 1998, the contents of which are hereby incorporated by reference in their entity. Applicants claim priority to all of the applications in the chain.”

    Neat trick; how’d they do that?

  2. 1

    The Fed. Cir. sustaining a District Court SJ (summary judgment) of invalidity is not all that common. If the anticipation was that indisputable, would not an IPR have been cheaper?

    1. 1.1

      So the real news here is an unusual affirmance of summary judgment of invalidity, and not the slight misstatement by the judge?

    2. 1.2

      Not really. IPR is only cheaper if you assume significant discovery and trial in the district court. For any kind of “one-motion-and-you’re-out” situation, briefing a motion before the district court is much cheaper than the PTAB. No filing fee, it’s much faster, etc. But only works if there’s no disputed facts which is obviously rare. The district court might also agree to stay discovery and other proceedings to hear the motion (as courts commonly do with 101 motions).
      The PTAB has also been on a terror in making up pretty dumb discretionary reasons to reduce workload by refusing to hear meritorious IPR petitions. So IPR is not the best avenue in all situations.

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