E.D. Texas Splits Patent-Eligibility of E-Mail Patents

Considering two e-mail patents, Judge Gilstrap of the Eastern District of Texas deferred a patent-eligibility determination of one of the patents as premature prior to claim construction, but held that claim construction was not required for claims of the second patent to be deemed patent-ineligible under the Mayo/Alice patent-eligibility test. Umbanet, Inc. v. Epsilon Data Management, LLC, No. 2:16-CV-682-JRG (E.D. Texas April 18, 2017.)  The court thus granted summary judgment of invalidity of U.S. Patent No. 7,444,374 under 35 U.S.C. § 101, but denied motions concerning U.S. Patent No. 7,076,730.

Each of the patents-in-suit were directed to “electronic mail software with modular integrated authoring/reading software components.” Claims of the ’730 patent recited “encoding means” and “decoding means” for encoding and decoding representations created with “authoring components” used to create representations of “a text document” and “of a document including other than text.” After citing cases discussing when claim construction is or is not needed prior to a patent-eligibility determination, the court simply stated that claim construction was not needed to determine whether the claims of the ’730 patent were more like those of Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016), or the claims in Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. March 7, 2017).

The ’374 patent was a different story. The court found that the asserted claims of that patent “are essentially directed to providing selective or particularized access to an email.” Other courts had found similar claims to selectively providing access to information based on a user’s role to be directed to an abstract idea and thus patent-ineligible. Further, turning to Mayo/Alice step two, there was no inventive concept to make the abstract idea patent-eligible. Instead, the claims simply recited applying the concept of role-restricted data in the context of emails.

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Functional Claiming After Williamson v. Citrix
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