Zeta Global Corp. v. Maropost Marketing Cloud, Inc.
| Decision Date | 06 July 2021 |
| Docket Number | 20 Civ. 3951 (LGS) |
| Parties | ZETA GLOBAL CORP., Plaintiff, v. MAROPOST MARKETING CLOUD, INC., Defendant. |
| Court | U.S. District Court — Southern District of New York |
Plaintiff Zeta Global Corporation (“Zeta Global”) alleges that Defendant Maropost Marketing Cloud, Inc. (“Maropost”) infringes U.S. Patent Nos. 7, 536 439 () (the “'439 Patent”) and 8, 108, 475 (“Methods and apparatus for categorizing failure messages that result from email messages”) (the “'475 Patent”). The parties have presented their proposed constructions of two claim terms -- “deliver” and “failure type” -- pursuant to Markman v. Westview Instruments, Inc. 517 U.S. 370 (1996). For the reasons set forth below (1) “deliver†is construed as “change of control†and (2) “failure type†is construed as “a classification of a failure message.†Neither disputed term is indefinite as Defendant claims. The parties' submissions also put the meaning of the term “failure message†into controversy. That term is indefinite in the '439 Patent because the plain language of the claims assigns it contradictory meanings.
Plaintiff and Defendant are online marketing companies that send promotional emails. The '439 and '475 Patents (the “Patents”) claim methods by which a sender of emails can classify failure messages received in response to failures in the process by which an email is delivered to a recipient. For example, if an Internet Service Provider (“ISP”) refuses to deliver an email because it identifies the sender as a spammer, it may send a failure message to the sender. The sender may then apply a set of rules to the failure message to categorize it as a particular failure type. For instance, the sender might classify the error message as “Spam, ” which might determine further action such as removing the email address from a recipient list.
The '475 Patent is a continuation of the '439 Patent, meaning that the two patents share the same specification but make different claims. The parties agree that claim 1 of each patent is representative. Claim 1 of the '439 Patent reads:
Claim 1 of the '475 Patent reads:
“A district court's duty at the claim construction stage is . . . to resolve a dispute about claim scope that has been raised by the parties.” Eon Corp. IP Holdings v. Silver Spring Networks, 815 F.3d 1314, 1319 (Fed. Cir. 2016). “This means that, as to claim coverage, the district court must instruct the jury on the meanings to be attributed to all disputed terms used in the claims in suit so that the jury will be able to ‘intelligently determine the questions presented.'” Sulzer Textil A.G. v. Picanol N .V., 358 F.3d 1356, 1366 (Fed. Cir. 2004) (citation omitted); accord Eon Corp. IP holdings, 815 F.3d at 1319. While “district courts are not . . . required to construe every limitation present in patent's asserted claims . . . [w]hen the parties present a fundamental dispute regarding the scope of a claim term, it is the court's duty to resolve it.” O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008); accord Green Pet Shop Enterprises, LLC v. Eur. Home Design, LLC, No. 17 Civ. 6238, 2019 WL 1172069, at *4 (S.D.N.Y. Mar. 13, 2019) . In the event “the parties [choose] to treat [certain] terms across [separate] patents as rising and falling together” the Court need not “separately address [every] Patent.” X2Y Attenuators, LLC v. Int'l. Trade Comm'n, 757 F.3d 1358, 1363 n.2 (Fed. Cir. 2014); accord Kewazinga Corp. v. Microsoft Corp., No. 18 C i v. 4500, 2019 WL 3423352, at *2 (S.D.N.Y. July 29, 2019).
During claim construction, the court looks “first to intrinsic evidence, and then, if necessary, to the extrinsic evidence.” TEK Glob., S.R.L. v. Sealant Sys. Int'l, Inc., 920 F.3d 777, 785 (Fed. Cir. 2019) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1317-19 (Fed. Cir. 2005)). The intrinsic record comprises the claims, the specification and the prosecution history. Id. Claim terms are presumed to be given their ordinary and customary meaning, as understood by a person of ordinary skill in the art (“POSITA”) as of the patent's priority date, considering the entirety of the patent. Network-1 Techs., Inc. v. Hewlett-Packard Co., 981 F.3d 1015, 1022 (Fed. Cir. 2020). “When the ordinary meaning of the claim language is ‘readily apparent even to lay judges,' claim construction ‘involves little more than the application of the widely accepted meaning of commonly understood words.'” Green Pet Shop Enter., 2019 WL 1172069, at *4 (quoting O2 Micro, 521 F.3d at 1360)).
If a claim term does not have an ordinary meaning, it must “be read in view of the specification.” Cont'l Circuits LLC v. Intel Corp., 915 F.3d 788, 796 (Fed. Cir. 2019). “[T]he specification is the single best guide to the meaning of a disputed term.” Network-1, 981 F.3d at 1022. In addition to the specification, “a court should [] consider the patent's prosecution history, if it is in evidence.” Cont'l Circuits LLC, 915 F.3d at 796 (internal quotation marks omitted). “Like the specification, the prosecution history provides evidence of how the [United States Patent and Trademark Office (‘PTO')] and the inventor understood the patent.” Id. (alteration in original). Id. (internal quotation marks omitted).
Secondary to the intrinsic evidence is the extrinsic evidence, which “consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.” Phillips, 415 F.3d at 1317. “[W]hile extrinsic evidence can shed useful light on the relevant art . . . it is less significant than the intrinsic record in determining the legally operative meaning of disputed claim language.” Cont'l Circuits LLC, 915 F.3d at 799 (internal quotation marks omitted).
Patent claims must “particularly point[] out and distinctly claim[] the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112. If a term is indefinite, then the claims in which it appears are invalid. See Synchronoss Techs., Inc. v. Dropbox, Inc., 987 F.3d 1358, 1368 (Fed. Cir. 2021). Definiteness is determined from the point of view of a POSITA at the time of filing and is resolved with reference to the patent's specification and prosecution history. Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 908 (2014); accord Focus Prod. Grp. Int'l, LLC v. Kartri Sales Co., Inc., 454 F.Supp.3d 229, 245 (S.D.N.Y. 2020), reconsideration denied, No. 15 Civ. 10154, 2020 WL 2115344 . To meet the definiteness requirement, “a patent's claims, viewed in light of the specification and prosecution history, [must] inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, 572 U.S. at 908; accord Synchronoss, 987 F.3d at 1366 (Fed. Cir. 2021). “The definiteness requirement, so understood, mandates clarity, while recognizing that absolute precision is unattainable.” Nautilus, 572 U.S. at 910. “Indefiniteness must be proven by clear and convincing evidence.” VR Optics, LLC v. Peloton Interactive, Inc., 345 F.Supp.3d 394, 398 (S.D.N.Y. 2018) (citing BASF Corp. v. Johnson Matthey Inc., 875 F.3d 1360, 1365 (Fed. Cir. 2017)).
The parties do not dispute that for purposes of the Patents, a POSITA is (1) an individual familiar with software, mechanisms and processes for sending commercial emails, (2) who has a reasonable understanding of, and experience with, computer databases and (3) can determine mechanisms for managing failure messages.
The parties agree that, at minimum, “deliver” means “change of control.” The claims reference an ISP that fails to deliver an email message to an email address (1) Claim 1 of the '439 Patent describes “receiving a failure message from an Internet service provider (ISP) when the ISP is unable to deliver an email message to an email address associated with the ISP” and (2) Claim 1 of the '475 Patent describes “receiving, in a computer, a failure message from an Internet service provider (ISP) as a...
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