Secure Mail Solutions LLC v. Universal Wilde, Inc., Case No. CV 15-7562-DOC (GJSx)

• Decision Date: 16 February 2016
• Docket Number: Case No. CV 15-7562-DOC (GJSx)
• Parties: Secure Mail Solutions LLC v. Universal Wilde, Inc.
• Court: U.S. District Court — Central District of California

169 F.Supp.3d 1039

Secure Mail Solutions LLC

v.Universal Wilde, Inc.

Case No. CV 15-7562-DOC (GJSx)

United States District Court, C.D. California.

Signed February 16, 2016

Joseph K. Liu, One LLP, Newport Beach, CA, William J O'Brien, One LLP, Beverly Hills, CA, for Secure Mail Solutions LLC.

Gregory Peter Boden, Wilmerhale, Los Angeles, CA, Gregory H. Lantier, Wilmer Cutler Pickering Hale and Dorr LLP, Washington, DC, for Universal Wilde, Inc.

PROCEEDINGS (IN CHAMBERS): ORDER GRANTING DEFENDANT'S MOTION TO DISMISS [16]

THE HONORABLE DAVID O. CARTER

, JUDGE

Before the Court is Defendant Universal Wilde, Inc.'s (“Defendant” or “UW”) Motion to Dismiss (“Motion”) (Dkt. 16). The Court finds this matter appropriate for resolution without oral argument. Fed. R. Civ. P. 78

; L.R. 7-15. Having reviewed the moving papers and considered the parties' arguments, the Court hereby GRANTS Defendant's Motion.

I. Background

In its Complaint (“Compl.”) (Dkt. 1), Plaintiff Secure Mail Solutions LLC (“Plaintiff” or “SMS”) asserts claims of patent infringement of seven related patents: U.S. Patent No. 7,814,032 (“the '032 patent”)

, issued on October 12, 2010; U.S. Patent No. 7,818,268 (“the '268 patent”), issued on October 19, 2010; U.S. Patent No. 8,073,787 (“the '787 patent”), issued on December 6, 2011; U.S. Patent No. 8,260,629 (“the '629 patent”), issued on September 4, 2012; U.S. Patent No. 8,429,093 (“the '093 patent”), issued on April 23, 2013; U.S. Patent No. 8,910,860 (“the '860 patent”), issued on December 16, 2014; and U.S. Patent No. 9,105,002 (“the '002 patent”), issued on August 11, 2015. Collectively, the Court will refer to these patents as the “SMS patents.” In total, there are 234 claims in the SMS patents, and Plaintiff asserts 143 of them against UW. Opp'n at 1. Plaintiff highlights four of the claims in its Complaint. Mot. at 6; See generally Compl.

The inventor and president of SMS, Todd Fitzsimmons (“Fitzsimmons”), developed the idea for these seven patents after the events of September 11, 2011. Declaration of Todd Fitzsimmons (“Fitzsimmons Decl.”) (Dkt. 21-1) ¶ ¶ 2–3. Mr. Fitzsimmons imagined that the patented system could protect mail recipients from possible anthrax or explosive attacks by mail because the system would permit recipients to verify the source of the package before opening it. Id. ¶¶ 3–4. SMS asserts that these inventions have greatly improved the “safety and security of mail.” See Compl. ¶ 8.

A. The IMb Patents

SMS refers to the '032 patent

, '268 patent, and '787 patent as the “IMb Patents.” Opp'n at 5. These three patents “claim subject matter that includes a novel barcode, which has since been adopted by the United States Postal Service, and is referred to as the Intelligent Mail barcode.” Fitzsimmons Decl ¶ 7.

Claim 1 of the '268 patent

, which is featured in the Complaint, reads as follows:

1. A method of verifying mail identification data, comprising:

Affixing mail identification data to at least one mail object, said mail identification data comprising a single set of encoded data that includes at least a unique identifier, sender data, recipient data and shipping method data, wherein said unique identifier consists of a numeric value assigned by a sender of said at least one mail object.

Storing at least a verifying portion of said mail identification data;

Receiving by a computer at least an authenticating portion of said mail identification data from at least one reception device via a network, wherein said authenticating portion of said mail identification data comprises at least said sender data and said shipping method data; and

Providing by said computer mail verification data via said network when said authenticating portion of said mail identification data corresponds with said verifying portion of said mail identification data.

Compl. ¶ 10; See '268 Patent

at Col. 6:18–37.

The abstract of the '268 patent

states in full:

A system and method is provided for transmitting mail verification data over a wide area network, such as the Internet, in response to receiving and authenticating at least a portion of mail identification (ID) data. In one embodiment of the present invention, a mail verification application is adapted to store at least a verifying portion (e.g., an identifiable code portion, a shipping portion, a recipient portion, etc.) of mail ID data in memory. The mail ID data is then affixed to a mail object. The mail object is then manually delivered to a recipient. At least an authenticating portion of the mail ID data is then provided to a reception device. The reception device, which communicates with the mail ID device over a wide area network, transmits at least the authenticating portion of the mail ID data to the mail verification application operating on the mail ID device. The mail verification application then compares the authenticating portion of the mail ID data with the verifying portion stored in memory. If the authenticating portion of the mail ID data is authenticated, mail verification data is sent to the reception device. In one embodiment of the present invention, at least a portion of the mail verification data includes authenticating data, securing data, sender data, recipient data, mail-content data, downloadable-product data, sender-web-page data, and/or third-party-web-page data.

'268 Patent

Abstract.

B. The Personalized QR Code Patents

SMS refers to the '629

and '093 patents as the “Personalized QR Code patents.” Opp'n at 5. SMS states that these two patents “claim a barcode that has been personalized for the recipient of the mail piece.” Id.

Claim 1 of the '093 patent

, which Plaintiff cites to in the Complaint, provides:

A method for providing electronic data to a recipient of a mail object, comprising:

Generating, by a processor, a barcode for a mail object, said barcode including at least a first set of mail data including data corresponding to said recipient of said mail object;

affixing said barcode to said mail object;

submitting said mail object to a mail carrier for delivery to said recipient of said mail object;

receiving said first set of mail data, including data corresponding to said recipient of said mail object, from a reception device of said recipient via a network;

wherein said reception device displays said electronic data to a recipient of said mail object by displaying said electronic data on a screen of said reception device.

Compl. ¶ 18; '093 Patent

at Col. 6:22–40. The abstract of the '093 patent is substantially similar to the abstract of the '268 patent. See '093 Patent Abstract.

C. The pURL Patents

Plaintiff contends that the two remaining patents-in-suit—the '860 patent

and the '002 patent —“claim mail identification data that has been personalized for the recipient of the mail piece (using, for example, a personalized network address) and thus cover (among other things) a ‘personalized uniform resource locator, or pURL’ ” Opp'n at 5.

In its Complaint, SMS highlights Claim 1 of the '002 patent

, which states:

A method for providing electronic data to a recipient of a mail object, comprising;

using an output device to affix a single set of mail ID data to said mail object, said single set of mail including at least recipient data, said recipient data comprising a personalized network address associated with said recipient of said mail object;

submitting said mail object to a mail carrier for delivery to said recipient of said mail object;

receiving said recipient data from a reception device of said recipient via a network; and

providing by at least one processor said electronic data to said reception device via said network in response to receiving said recipient data, said electronic data comprising a sender's web page that identifies said recipient of said mail object and includes data corresponding to a content of said mail object;

wherein said electronic data is configured to be displayed to said recipient via a web browser on a display of said reception device.

Compl. ¶ 26; '002 Patent

at Col. 6:35–54. The abstract for the '002 patent is substantially similar to the abstract of the '268 abstract quoted above.

D. Procedural History

On April 8, 2014, in a separate litigation, this Court issued a Claim Construction Order in which it construed four terms of the '268 patent

and the '787 patent. See Final Order on Claim Construction (“Claim Construction Order”) (Dkt. 195), Secured Mail Solutions LLC v. Advanced Image Direct LLC et al. , Case No. SA CV 12-1090-DOC (RNBx). In the Claim Construction Order, the Court construed four terms in the '268 and '787 patents : (1) “sender” and related terms; (2) “recipient” and related terms; (3) “mail verification data” and “verifying data”; and (4) “mail verification device.”

Plaintiff filed the instant suit on September 25, 2015 (Dkt. 1). The case was transferred to this Court on September 30, 2015 (Dkt. 11).

Defendant filed the instant Motion on November 23, 2015. Plaintiff opposed on December 7, 2015 (Dkt. 21), and Defendant replied on December 14, 2015 (Dkt. 22)

II. Legal Standard

A. Standard Under 12(b)(6)

Under Federal Rule of Civil Procedure 12(b)(6)

, a complaint must be dismissed when a plaintiff's allegations fail to set forth a set of facts which, if true, would entitle the complainant to relief. Bell Atl. Corp. v. Twombly , 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) ; Ashcroft v. Iqbal , 556 U.S. 662, 679, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) (holding that a claim must be facially plausible in order to survive a motion to dismiss). The pleadings must raise the right to relief beyond the speculative level; a plaintiff must provide “more than labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do.” Twombly , 550 U.S. at 555, 127 S.Ct. 1955 (citing Papasan v. Allain , 478 U.S. 265, 286, 106 S.Ct. 2932, 92 L.Ed.2d 209 (1986)

). On a motion to dismiss, this court accepts as true a plaintiff's well-pleaded factual allegations and construes all factual...