An Arizona federal court judge's favorable ruling in GoDaddy.com LLC’s patent dispute involving Los Angeles-based patent holding company RPost Communications/RMail Ltd. (RPost) could have a widespread effect on other cases across the country involving email marketing technology companies accused of infringing the same RPost patents.
Ballard Spahr represented GoDaddy in pursuing summary judgment on issues concerning the Section 101 invalidity of patent claims asserted by RPost. After receiving several threatening demand letters from RPost in 2013 accusing GoDaddy of infringing the RPost patents, GoDaddy in January 2014 took a proactive approach—suing RPost in Arizona federal court seeking a court order that each of the six RPost patents in question was invalid and that, therefore, RPost could not enforce the patents against GoDaddy.
The Ballard Spahr Intellectual Property team representing GoDaddy in this case was led by Brian LaCorte and included Jonathon Talcott and Jessica Wilson.
The lengthy legal dispute was resolved in June 2016 when U.S. District Judge James A. Teilborg sided with GoDaddy, ruling that RPost’s patents covered abstract ideas—making each of the claims invalid under Section 101 of the Patent Act and applying the patent eligibility test from the U.S. Supreme Court’s landmark 2014 Alice decision. In that case, the Supreme Court ruled that abstract ideas involving basic escrow services implemented using a computer were not patent eligible.
In his 60-page ruling, Judge Teilborg granted GoDaddy’s request for summary judgment on the same invalidity issue, ruling the RPost patents covered ineligible abstract ideas concerning collection and reporting of information regarding the transmission status and or delivery of messages. By invalidating the RPost patents (at least the numerous patent claims asserted in the case), the Court vacated a trial that had been set to begin in Phoenix in August 2016.
"This is not a case where the claims are directed to 'a problem specifically arising in the realm of computer technology,'" Judge Teilborg said in his decision. "Rather, the problem of verifying the receipt of a message existed in the pre-internet, analog world, and [some of the disputed] claims simply disclose a process ‘for which computers are invoked merely as a tool.'"
The case is the first decision in the U.S. District Court for the District of Arizona on the Section 101 patent eligibility issue following the U.S. Supreme Court ruling in Alice, and marks the first time an Arizona federal judge has applied the Supreme Court’s Alice test and guidelines for patent eligibility.
The ruling was a significant win for our client, and enables GoDaddy to operate unfettered by the threat of patent infringement claims by RPost. The high-profile decision could also have far-reaching implications for RPost's numerous cases throughout the country against other email marketing technology companies accused of infringing the same patents.