NOTE: This disposition is nonprecedential 

United States Court of Appeals 

for the Federal Circuit 

__________________________ 

STAMPS.COM INC., 

Plaintiff-Appellant, 

v. 

ENDICIA, INC. AND PSI SYSTEMS, INC., 

Defendants-Appellees. 

__________________________ 

2010-1328 

__________________________ 

Appeal from the United States District Court for the 

Central District of California in case no. 06-CV-7499, 

Judge Otis D. Wright II. 

___________________________ 

Decided: June 15, 2011 

___________________________ 

PHILIP J. GRAVES, Graves & Walton LLP, of Los Angeles, California, argued for plaintiff-appellant. With him 

on the brief was MARJORIE A. WITTER. On the brief was 

FLAVIO M. ROSE, Irell & Manella LLP, of Los Angeles, 

California. Of counsel on the brief was SETH D.

WEISBERG, Stamps.com, Inc., of Los Angeles, California. 

GREGORY A. LONG, Sheppard Mullin Richter & Hampton LLP, of Los Angeles, California, argued for defen-
STAMPS.COM v. ENDICIA 2

dants-appellees. With him on the brief were GARY A.

CLARK and DENNIS J. SMITH. 

__________________________ 

Before BRYSON, DYK, and Prost, Circuit Judges. 

Opinion for the court filed by Circuit Judge DYK. Circuit 

Judge BRYSON concurs-in-part and dissents in part. 

DYK, Circuit Judge. 

Stamps.com, Inc. (“Stamps.com”) appeals a decision of 

the United States District Court for the Central District 

of California granting summary judgment of invalidity 

with respect to fifteen claims of eight patents. 

Stamps.com, Inc. v. Endicia, Inc., No. CV 06-7499 (C.D. 

Cal. Nov. 9, 2009). We affirm. 

BACKGROUND

Stamps.com and Endicia, Inc. (“Endicia”) are competing providers of Internet postage. On November 22, 2006, 

Stamps.com filed suit against Endicia, alleging infringement of 629 claims of eleven patents owned by 

Stamps.com. Endicia filed a counterclaim for a declaratory judgment of non-infringement and invalidity. On 

March 17, 2008, the district court granted Endicia’s 

motion to limit the number of asserted claims. The district court ordered the parties to “limit[ ] the number of 

asserted claims to fifteen,” but stated that it “w[ould] 

remain flexible if plaintiffs [sic] show[ed] good cause for 

additional claims.” Order Granting Mot. To Limit the 

Number of Asserted Claims of the Patents-in-Suit, 

Stamps.com, Inc. v. Endicia, Inc., No. CV 06-7499 (C.D. 

Cal. Mar. 17, 2008). After some dispute about the number 

of claims that should be considered for expert discovery, 

the parties eventually filed Markman briefs limited to the 

fifteen claims selected by Stamps.com. The district court 
3 STAMPS.COM v. ENDICIA

eventually construed ten claim terms in fifteen claims 

from seven patents. Three of these claim terms were part 

of means-plus-function claims. 

The eight patents-in-suit generally comprise four 

groups of technologies: 

a. U.S. Patent Nos. 5,812,991 (“’991 patent”), 

6,249,777 (“’777 patent”), and 6,889,214 (“’214 patent”) pertain to systems and methods for purchasing, transferring, and storing postage value over a 

secure computer network. 

b. U.S. Patent No. 6,233,568 (“’568 patent”) discloses 

a system that allows users to compare the postage 

rates of multiple services, such as the United 

States Postal Service (“USPS”) and FedEx. 

c. U.S. Patent Nos. 5,717,597 (“’597 patent) and 

6,208,980 (“’980 patent”) teach the printing of postage value and graphics, such as company logos or 

birthday messages, on envelopes and labels. 

d. U.S. Patent Nos. 6,965,451 (“’451 patent”) and 

6,982,808 (“’808 patent”) describe algorithms that 

help standard printers reliably print stamps and 

other graphics near the edge of an envelope. 

After the parties filed cross-motions for summary 

judgment, the district court granted summary judgment 

for Endicia, holding claims 13, 50, and 89 of the ’214 

patent anticipated; claim 23 of the ’568 patent indefinite; 

and the remaining eleven claims obvious over a combination of various items of prior art. The district court’s 

conclusions are summarized in the table below: 

Patent Filing Date Asserted 

Claims 

Relevant Prior 

Art 
STAMPS.COM v. ENDICIA 4

’991 

patent 

October 2, 

1996 7, 42, 76 

Obvious: 

Whitehouse ’562 

patent; 

Tygar-Yee article 

’777 

patent July 15, 1998 3, 50, 63 

Obvious: 

Lewis ’565 patent; 

Tygar-Yee article 

’214 

patent 

August 23, 

2000 13, 50, 89 

Anticipated: 

Ogg-Chow ’406 

patent 

’568 

patent June 29, 1998 23 Indefinite 

’597 

patent 

October 11, 

1995 7 

Obvious: 

Whitehouse ’562 

patent; 

DAZzle 

’980 

patent 

November 5, 

1997 35 

Obvious: 

DAZzle 

’451 

patent 

August 30, 

1999 

(provisional 

application) 

17 

Obvious: 

Microsoft Word 

for Windows 95; 

DAZzle; 
5 STAMPS.COM v. ENDICIA

AddressMate for 

Windows v2.15 

’808 

patent 

August 30, 

1999 

(provisional 

application) 

32, 39 

Obvious: 

Microsoft Word 

for Windows 95; 

DAZzle; 

AddressMate for 

Windows v2.15 

A brief description of each prior art reference follows: 

a. Whitehouse ’562 Patent: Endicia’s U.S. Patent 

No. 5,319,562 (“Whitehouse ’562 patent”) is titled “System 

and Method for Purchase and Application of Postage 

Using Personal Computer.” The patent was filed on 

August 22, 1991, by Harry Whitehouse. The Whitehouse 

’562 patent teaches a system in which users can use their 

personal computers (“PCs”) to communicate with a computer at the postal authority over a modem. The Whitehouse ’562 patent was asserted prior art against the ’991 

and ’597 patents. 

b. DAZzle Software: Endicia’s DAZzle software 

program (“DAZzle”) is a software program that has been 

offered for sale, sold, and distributed by Endicia since 

1991, including the DAZzle Designer (1997) and the 

DAZzle User’s Guide version 2.5 (1992-1995). The earliest version of DAZzle was copyrighted no later than 1992. 

The software enabled users to create and print addresses, 

graphics, and bar codes on envelopes from their com-
STAMPS.COM v. ENDICIA 6

puters. The DAZzle software and user guide were asserted as prior art against the ’597, ’980, ’451, and ’808 

patents. 

c. Tygar-Yee Article: On March 1, 1993, J.D. Tygar 

and Bennet Yee coauthored a paper entitled “Cryptography: It’s Not Just for Electronic Mail Anymore,” CMU-CS93-107 (“Tygar-Yee” article). J.A. 9584. This paper 

described a PC-based network to enable remote users to 

access and print postage from an account. This account 

could be replenished via a secure online transaction with 

the USPS. The Tygar-Yee article was asserted as prior 

art against the ’991 and ’777 patents. 

d. Lewis ’565 Patent: Defendant’s U.S. Patent No. 

6,233,565 (“Lewis ’565 patent”) was filed on February 13, 

1998. The patent teaches “[a] system and methods for 

conducting Internet based financial transactions between a 

client and a server” wherein “the client issues a transaction request to the server and the transaction server, in 

response to a client transaction request, executes an 

electronic payment transaction at the server.” Lewis ’565 

patent, at [57]. The Lewis ’565 patent was asserted as 

prior art against the ’777 patent. 

e. Ogg-Chow ’406 Patent: U.S. Patent No. 6,868,406 

(“Ogg-Chow ’406 patent”) was filed on October 16, 2000, 

and is assigned to Stamps.com. The patent is titled, 

“Auditing Method and System for an On-Line ValueBearing Item Printing System.” The Ogg-Chow ’406 

patent was asserted as prior art against the ’214 patent. 

f. Microsoft Word for Windows 95 (“Word 95”): 

Word 95 is a word processing program that allows users to 

print and preview envelopes and labels. Word 95 was 

asserted as prior art against the ’451 and ’808 patents. 
7 STAMPS.COM v. ENDICIA

g. AddressMate for Windows v2.12 (“AddressMate”): AddressMate is a software program that attaches 

to word processing programs. This program helps users 

manage their address books, merge addresses into documents, and print addresses and barcodes onto envelopes 

and labels. AddressMate was asserted as prior art 

against the ’451 and ’808 patents. 

Following summary judgment, Stamps.com moved to 

pursue additional claims beyond the fifteen claims that 

were the subject of the summary judgment motion. The 

district court implicitly denied this motion when it entered judgment for Endicia.

Stamps.com timely appealed, and we have jurisdiction 

pursuant to 28 U.S.C. § 1295(a)(1). Anticipation is a 

question of fact, Atlas Powder Co. v. Ireco, Inc., 190 F.3d 

1342, 1346 (Fed. Cir. 1999), and obviousness is a question 

of law based on underlying facts, In re Kubin, 561 F.3d 

1351, 1355 (Fed. Cir. 2009). A grant of summary judgment of invalidity on grounds of indefiniteness is also a 

question of law, which we review de novo. Hoffer v. 

Microsoft Corp., 405 F.3d 1326, 1328 (Fed. Cir. 2005). 

Summary judgment is appropriate when there is no 

genuine issue of material fact and the moving party is 

entitled to judgment as a matter of law. Immunocept, 

LLC v. Fulbright & Jaworski LLP, 504 F.3d 1281, 1286 

(Fed. Cir. 2007). 

DISCUSSION

The district court in large part did a careful and thorough job reviewing the patents-in-suit, and it correctly 

concluded that the asserted claims were indefinite, anticipated, or rendered obvious over a combination of prior 

art. In light of the district court’s thorough opinion, we 

need not explicitly address every one of the many issues 

raised by the patentee on appeal. 
STAMPS.COM v. ENDICIA 8

I 

Stamps.com argues that the district court abused its 

discretion in refusing to grant its motion to pursue additional claims beyond the litigated fifteen claims. Even 

though Stamps.com conceded the court’s authority to 

impose a limit on the number of claims, it contends that 

the district court’s denial of its motion to pursue additional claims violates its due process rights because a 

subsequent suit against Endicia on the remaining claims 

could be barred by res judicata. Recently, in In re Katz 

Interactive Call Processing Litigation, --- F.3d ---, 2011 

WL 607381, at *2–3 (Fed. Cir. Feb. 18, 2011), we held that 

limiting a plaintiff patentee to sixty-four claims from a 

large number of asserted claims was permissible if the 

district court left open the door for the assertion of additional claims on a showing of need. Where the patentee 

“did not file a motion to add claims with the requisite 

showing of need,” it “cannot legitimately complain that it 

did not have a meaningful opportunity to be heard.” Id.

at *4 (internal quotation marks omitted). Here, as in 

Katz, the district court’s order to limit the claims was not 

immutable. The district court clearly stated that it would 

“remain flexible if plaintiffs [sic] show[ed] good cause for 

additional claims.” Order Granting Mot. To Limit the 

Number of Asserted Claims of the Patents-in-Suit, 

Stamps.com, Inc. v. Endicia, Inc., No. CV 06-7499 (C.D. 

Cal. Mar. 17, 2008). The district court also stated that, 

“[i]f it can be demonstrated . . . that [fifteen claims] is 

absolutely unworkable, then we will discuss [number 

sixteen]. If necessary, we will discuss [number seventeen].” J.A. 14609. Nonetheless, when Stamps.com 

requested to add additional claims, it did not even attempt to make a good cause showing. The district court 

did not abuse its discretion in refusing to allow the additional claims. 
9 STAMPS.COM v. ENDICIA

II 

We next consider the district court’s ruling as to the 

invalidity of the fifteen asserted claims. The district court 

held that the asserted claims of the ’991 and ’777 patents 

were obvious over a combination of prior art, including 

the Tygar-Yee article. That article was asserted as § 

102(b) prior art. Section § 102(b) provides, in relevant 

part, that an invention is not patentable if it was “described in a printed publication” more than one year prior 

to the filing date of the application from which the patent 

issued. 35 U.S.C. § 102(b). A prior art reference cannot 

constitute a “printed publication” under §102(b) if it has 

not been made “publicly accessible.” In re Klopfenstein, 

380 F.3d 1345, 1348 (Fed. Cir. 2004). That inquiry focuses on the reference’s accessibility to the “public interested in the art.” Id. Stamps.com contends that the 

Tygar-Yee article should not have been treated as § 102(b) 

prior art because it was not publicly accessible. 

We hold that the Tygar-Yee article was publicly accessible. The Tygar-Yee article, dated March 1, 1993, was 

written by Tygar and Yee and is entitled “Cryptography: 

It’s Not Just for Electronic Mail Anymore.” J.A. 6416–39 

(emphasis in original). This article was sponsored by the 

United States Air Force, a Presidential Young Investigator Award, and Motorola, Inc. In an expert declaration 

submitted by Tygar in this case, he listed the Tygar-Yee 

article as prior art, J.A. 7951, and stated that he understood that “prior art consist[s] of publications . . . dated 

before the invention or more than one year before the 

filing of the patent application,” J.A. 7961. Other evidence confirmed the public availability of the article. For 

example, the article was catalogued by Carnegie Mellon 

University and listed as available on its indexed website 

in 1993 as “CMU-CS-93-107.ps.Z.” This document was 

listed as “last modified” on May 8, 1993. J.A. 10964. 
STAMPS.COM v. ENDICIA 10

Significantly, that date is several weeks after the date 

appearing in the article itself, suggesting that the website 

was not simply parroting the date appearing in the article. Moreover, Carnegie Mellon's website is a public 

forum where leaders in the field of computer science and 

other related fields certainly would have had access to the 

Tygar-Yee article. The paper was additionally cited in a 

second paper presented by Tygar and Yee in 1994, and 

Stamps.com itself identified the Tygar-Yee article as 

bearing a 1993 date in an information disclosure statement filed in connection with another patent that is 

currently not in suit. 

Stamps.com did not submit any evidence to rebut the 

evidence that this paper was published in 1993. Thus, no 

genuine issues of material fact remain as to whether the 

article was publicly available more than one year prior to 

the filing dates of the ’991 patent (October 2, 1996) and 

the ’777 patent (July 15, 1998). The district court did not 

err in treating the Tygar-Yee article as § 102(b) prior art. 

III 

The district court also did not err in finding claims 7 

and 42 of the ’991 patent obvious over the Tygar-Yee 

article. Claim 7 depends from claim 1, which recites: 

[A] closed metering system for transferring a 

value from a portable processor device having representative value stored therein coupled to a first 

processor-based subsystem to selected ones of a 

plurality of affiliated individual processor-based 

subsystems via a communication link coupling 

said first subsystem and said selected affiliated 

subsystem, said closed metering system comprising: . . . means, executing at least in part on the 

second subsystem, for transferring a predetermined amount of said representative value from 
11 STAMPS.COM v. ENDICIA

the portable processor via the communication link 

to said second subsystem. 

’991 patent, col.28 ll.38–53. Claim 7 adds to claim 1 

“means . . . for queuing requests from other ones of the 

affiliated subsystems, the requests being communicated 

via the communication link, the requests seeking transfer 

of individual predetermined amounts of the representative value from the portable processor.” Id. col.29 ll.7–13. 

Claim 42 depends from claim 40. Claim 40 recites: 

A method for transferring a pecuniary value from 

a portable memory device coupled to a first general purpose processor-based system to a second 

general purpose processor-based system via a 

communication link, . . . said method comprising 

the steps of: . . . . printing, by said second system, 

an indicia having said pecuniary value. 

Id. col.31 ll.28–44. Claim 42 adds to claim 40 a step of 

“queuing information communication between said first 

system and a plurality of processor-based systems, the 

information communication comprising requests by ones 

of the plurality of systems for pecuniary value from said 

portable memory.” Id. col.31 ll.51–55. 

The district court found that the Tygar-Yee article 

taught “transferring value from the ‘first subsystem’ (e.g., 

a home PC or postage meter) to ‘affiliated systems’ (e.g., 

USPS network) via a communications link,” as required 

by claim 7. Stamps.com, slip op. at 19. 

Stamps.com argues, inter alia, that Tygar-Yee does 

not disclose such a system because Tygar-Yee requires the 

user to recharge their electronic postage meter “by phone, 

using credit card numbers or direct electronic funds 

transfer from payment.” J.A. 9598. Thus, according to 

Stamps.com, Tygar-Yee does not disclose a “USPS net-
STAMPS.COM v. ENDICIA 12

work” because the transfer comes from a bank account 

and not from a PC storage device connected to the USPS 

network. Claim 7, however, is not restricted to communication with a USPS network. It only requires that value 

be transported from a “first subsystem” to “affiliated 

systems” via a communications link. A transfer from a 

bank account, as allegedly disclosed in Tygar-Yee, could 

certainly be considered to be part of an “affiliated system.” 

Stamps.com also argues that the Tygar-Yee article did 

not disclose a “queuing” means1 or a “queuing” step as 

required, respectively, by claims 7 and 42. Nevertheless, 

Tygar-Yee teaches that its secure coprocessors can handle 

concurrent transactions from multiple workstations even 

if “users are unlikely to require many concurrent transactions.” See J.A. 6428 (emphasis added). 

In addition, Stamps.com argues that claims 7 and 42 

teach a “download 44 cents-print 44 cents” usage pattern 

that is very different from the “download 50 dollars, print 

44 cents” bulk-refill pattern allegedly disclosed in the 

Tygar-Yee article. Appellant’s Br. 25. Because this 

argument was not properly raised below, it is not properly 

before us on appeal. See, e.g., Sage Prods., Inc. v. Devon 

Indus., Inc., 126 F.3d 1420, 1426 (Fed. Cir. 1997). 

 1 Stamps.com argues that the district court erred 

when it failed to construe the means-plus-function limitations of various asserted claims in the course of its obviousness inquiry. After closely examining Stamps.com’s 

arguments, we conclude that Stamps.com suffered no 

prejudice from the district court’s failure to identify 

corresponding structure for each of the contested meansplus-function limitations because the structure disclosed 

in the asserted prior art was substantially identical to the 

structure identified in the specifications. 
13 STAMPS.COM v. ENDICIA

We therefore find no error in the district court’s conclusion that claims 7 and 42 of the ’991 patent are obvious 

over the Tygar-Yee article 

IV 

Stamps.com argues that the district court erred in not 

considering the secondary considerations it offered to 

rebut arguments that the asserted claims of the ’991 and 

’777 patents were obvious. These secondary considerations included a showing of expert skepticism and commercial success. However, Stamps.com did not 

demonstrate the requisite “nexus between the merits of 

the claimed invention” and the “evidence of secondary 

considerations.” Muniauction, Inc. v. Thomson Corp., 532 

F.3d 1318, 1327 (Fed. Cir. 2008) (quoting Ruiz v. A.B. 

Chance Co., 234 F.3d 654, 668 (Fed. Cir. 2000)); see also

In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (holding 

that the patentee’s proof must show “that the sales were a 

direct result of the unique characteristics of the claimed 

invention”). Given the strong showing of obviousness, we 

find that the evidence of secondary considerations was 

inadequate to overcome the legal conclusion that the 

contested claims would have been obvious. See Leapfrog 

Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 

(Fed. Cir. 2007). 

V 

The district court found claim 76 of the ’991 patent 

invalid over Tygar-Yee, citing the expert declaration of 

Tygar. However, Stamps.com’s expert, Patrick McDaniel, 

concluded that the Tygar-Yee article did not disclose the 

“blind passing of data between the processors,” as required by claim 74, on which asserted claim 76 depends. 

Claim 74 recites, in relevant part: 
STAMPS.COM v. ENDICIA 14

transferring said predetermined amount of monetary equivalent value from the second system to 

the refreshable memory device coupled to said 

first system via said communication link, said 

predetermined amount of monetary equivalent 

value being passed blindly by said first system 

from said second system to said refreshable memory device. 

’991 patent, col.34 ll.25–31 (emphasis added). The district 

court construed “passed blindly” to mean “to pass information, without interpreting it to determine whether to 

pass it along to its destination.” Claim Construction 

Order, Stamps.com, Inc. v. Endicia, Inc., No. CV 06-7499 

(C.D. Cal. June 15, 2009). 

By way of illustration, the “second system” in one embodiment could be the computer system at a post office. 

The refreshable memory device could be a postage dispenser, which is coupled to a “first system,” such as a 

user’s PC. See ’991 patent, col.11 ll.56–60 (“Typically, a 

user will buy a portable postage dispensing device 18, 

which could contain a quantity of postage, included with a 

copy of the E-STAMP program. The user will then install 

the E-STAMP program on the user’s host processor-based 

system 10.”). In order to replenish the postage dispenser, 

claim 74 requires the post office to send postage credit to 

the postage dispenser via the PC. See id. col.34 ll.25–31. 

The PC must receive the postage credit from the post 

office and blindly pass the information to the postage 

meter. See id. col.21 ll.1–7 (“[W]here [first system] remains a part of the communication bus between [second 

system] and the postage [dispenser], such commands 

must pass through [the first system]. The commands may 

be handed blindly to the postage [dispenser] by the ESTAMP program operating on system 10.”). In this 

embodiment, the PC must pass the postage credit without 
15 STAMPS.COM v. ENDICIA

interpreting this information to determine whether to 

pass it along to the postage meter. 

Stamps.com now argues that summary judgment of 

obviousness should not have been granted because there 

is a factual dispute as to whether “pass[ing] blindly” was 

disclosed by Tygar-Yee. No such factual dispute exists 

because Tygar-Yee clearly disclosed passing blindly a 

“predetermined amount of monetary value.” ’991 patent, 

col.34 ll.29–30. Tygar-Yee disclosed a “secure coprocessor,” (e.g., postage dispenser) that could be “added to a 

computer.” J.A. 9591. A secure coprocessor ensures that 

data about postage transactions can be protected from 

attacks by computer hackers. By storing the information 

in a separate secure coprocessor, the information is not 

vulnerable even when the PC is under attack. See, e.g., 

J.A. 9590 (noting that when information about postage 

transactions is stored on a PC, “[an] adversary may 

replace the memory subsystem in the computer with dual 

ported memory, and just read the [cryptographic] keys as 

they are used”). 

Tygar pointed out that the Tygar-Yee article described encrypting postage information to protect against 

attacks so that a PC could pass the funds from a post 

office to a “secure coprocessor” without interpreting the 

information: “[A]ll interpretation of the monetary equivalent value [postage credit] is performed inside the secure 

coprocessor and not by the PC to protect against 

fraud. . . . Thus, the funds transferred to the secure 

coprocessor from the post office, are encrypted and not 

interpreted until received by the secure coprocessor—i.e., 

the PC passes the [postage credit] to the secure coprocessor blindly.” J.A. 8059. Indeed, the PC does not contain 

the keys to encrypt or decrypt the postage information—

these keys reside in the secure coprocessor and the post 

office computers. 
STAMPS.COM v. ENDICIA 16

McDaniel countered that “[t]he mere use of encryption 

does not say anything about how data is passed.” J.A. 

10411. McDaniel's testimony, however, is inconsistent 

with a proper understanding of the pertinent claim language. The specification of the '991 patent makes clear 

that the reference to the “predetermined amount of monetary equivalent value being passed blindly” forecloses 

decryption of the “monetary equivalent” data. Claim 76 

requires only that the “monetary equivalent value” be 

“passed blindly.” This does not preclude the recited “first 

system” from interpreting any information from the 

“second system” that might be used to redirect the encrypted data to the “refreshable memory device.” As 

noted, the Tygar-Yee article discloses a system in which 

the “first system” does not decrypt the “monetary equivalent” data that is sent from the “second system,” but 

determines from the package of information that includes 

the encrypted data that the data should be forwarded to 

the “refreshable memory device.” Accordingly, we hold 

that Tygar-Yee clearly teaches the blind passing of monetary equivalent data between the processors, and there is 

no genuine issue of material fact as to whether claim 76 of 

the '991 patent would have been obvious. 

VI 

The district court found claims 3, 50, and 63 of the 

’777 patent obvious over the Tygar-Yee article and the 

Lewis ’565 patent, concluding that the Lewis ’565 patent 

was § 102(a) prior art. Section 102(a) provides that a 

person is not entitled to a patent if “the invention was . . . 

patented . . . in this or a foreign country, before the invention thereof by the applicant for patent.” 35 U.S.C. § 

102(a). Section 102(g) contains the basic rule for determining priority. Id. § 102(g); Mahurkar v. C.R. Bard, 

Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996). This section 

provides that “[a] person shall be entitled to a patent 
17 STAMPS.COM v. ENDICIA

unless . . . the invention was made in this country by 

another inventor who had not abandoned, suppressed, or 

concealed it.” 35 U.S.C. § 102(g)(2). Priority of invention 

“goes to the first party to reduce an invention to practice 

unless the other party can show that it was the first to 

conceive the invention and that it exercised reasonable 

diligence in later reducing that invention to practice.” 

Mahurkar, 79 F.3d at 1577. A showing that a patent was 

conceived at an earlier date and reduced to practice with 

reasonable diligence is called an effort to swear behind an 

earlier patent. See, e.g., Honeywell Inc. v. Victor Co. of 

Japan, Ltd., 298 F.3d 1317, 1327 (Fed. Cir. 2002). 

Therefore, “if a patentee's invention has been made by 

another, prior inventor who has not abandoned, suppressed, or concealed the invention, § 102(g) will invalidate that patent.” Apotex USA, Inc. v. Merck & Co., 254 

F.3d 1031, 1035 (Fed. Cir. 2001). The Lewis ’565 patent 

was filed on February 13, 1998, and constitutes § 102(a) 

prior art as long as the ’777 patent was not conceived at 

an earlier date and reduced to practice with reasonable 

diligence. Stamps.com argues that the Lewis ’565 patent 

could not be § 102(a) prior art because the ’777 patent had 

an earlier conception date, or that, at a minimum, a 

genuine issue of material fact remains as to the conception date of the ’777 patent. 

At issue then is the ’777 patent’s date of conception. 

Conception is the formation, in the mind of the inventor, 

of “a definite and permanent idea of the complete and 

operative invention . . . . The idea must be ‘so clearly 

defined in the inventor’s mind that only ordinary skill 

would be necessary to reduce the invention to practice, 

without extensive research or experimentation.’” Mahurkar, 79 F.3d at 1577 (quoting Burroughs Wellcome Co. v. 

Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994)). 
STAMPS.COM v. ENDICIA 18

In order to show that the subject matter of the ’777 

patent had been invented before the February 13, 1998, 

filing date of the Lewis ’565 patent, Stamps.com offered 

two pieces of evidence to swear-behind the reference: (1) a 

September 24, 2009, declaration from Martin Pagel, the 

co-inventor of the ’777 patent (“First Pagel Declaration”); 

and (2) a corroborating “Executive Status Report” dated 

March 19, 1998, discussing activity allegedly connected 

with the development of the ’777 patent (“March Status 

Report”). 

In rejecting this evidence as insufficient to establish 

prior conception, the district court stated that “[p]laintiff 

has not been able to prove by clear and convincing evidence . . . that the invention claimed in the ’777 patent 

was conceived before its July 15, 1998, filing date.” J.A. 

26. The district court erred in placing the burden of proof 

on the patentee.2 Though the patentee has the burden of 

production in antedating a reference, the burden of persuasion, by clear and convincing evidence, remains with 

the party that challenges an issued patent’s validity. 

 2 Endicia cites Price v. Symsek, 988 F.2d 1187, 1190 

(Fed. Cir. 1993), for the proposition that Stamps.com had 

the burden of showing conception and reduction to practice. However, Price is an interference action in which the 

priority dates of multiple patent applications were challenged. Id. at 1189. Patent applications, unlike patents 

that have been reviewed and issued by the PTO, deserve 

no presumption of validity in interference proceedings. 

See 35 U.S.C. § 282. Accordingly, the burden of proof in 

interference actions is the lower preponderance of evidence standard, and the burden is generally assigned to 

the junior party (the party that entered the interference 

action with a later filing date). See 37 C.F.R. § 1.657. In 

contrast, a party asserting invalidity in a district court 

always bears the burden of proof by clear and convincing 

evidence. Innovative Scuba Concepts, Inc. v. Feder Indus., 

Inc., 26 F.3d 1112, 1115 (Fed. Cir. 1994). 
19 STAMPS.COM v. ENDICIA

Mahurkar, 79 F.3d at 1576 (“By challenging the validity 

of the [patent], [the alleged infringer] bore the burden of 

persuasion by clear and convincing evidence on all issues 

relating to the status of the [reference] as [§ 102(a)] prior 

art.”). 

However, the patentee here did not meet its burden of 

production in antedating the Lewis ’565 patent. The First 

Pagel Declaration claims that “the conception of the 

invention . . . occurred in the second half of 1997, and 

certainly well before January 1, 1998.” J.A. 10388. 

Nonetheless, an inventor, such as Pagel, claiming prior 

conception must proffer evidence corroborating his testimony. See Mahurkar, 79 F.3d at 1577. “This requirement arose out of a concern that inventors testifying in 

patent infringement cases would be tempted to remember 

facts favorable to their case by the lure of protecting their 

patent or defeating another's patent.” Id.; see also Eibel 

Process Co. v. Minn. & Ontario Paper Co., 261 U.S. 45, 60 

(1923); Washburn & Moen Mfg. Co. v. Beat ‘Em All 

Barbed-Wire Co., 143 U.S. 275, 284–85 (1892); Gasser 

Chair Co. v. Infanti Chair Mfg. Corp., 60 F.3d 770, 776 

(Fed. Cir. 1995). The requirement for the corroboration of 

inventor testimony applies to efforts to swear behind a 

prior art reference. See, e.g., Mahurkar, 79 F.3d at 1577. 

Here, the primary evidence offered to corroborate the 

Pagel Declaration is the March Status Report. Pagel 

claims the report “indicates that in March of 1998, 

[Stamps.com] was in possession of a unique hardware 

device (‘[button] array’) that . . . was manufactured at our 

request by Dallas Semiconductor.” J.A. 10389. Because 

the manufacturing process would have taken many 

months, Pagel claims that conception of the “button 

array” must have “occurred prior to January 1, 1998.” 

J.A. 10389. 
STAMPS.COM v. ENDICIA 20

However, it is unclear how the “button array” is related to the subject matter of the ’777 patent. The March 

Status Report makes only opaque and incomprehensible 

references to a “button array” and “iButton.” These 

references hardly show that the conception for the ’777 

patent was “so clearly defined . . . that only ordinary skill 

would be necessary to reduce the invention to practice.” 

See Mahurkar, 79 F.3d at 1577. Indeed, Tygar’s expert 

testimony demonstrates that one of skill in the art would 

not have comprehended the status report: 

 [The March Status Report] is written in a way 

that prevents a person of ordinary skill in the art 

from knowing the particular subject matter to 

which it relates; its cursory language renders 

much of [the status report] unintelligible. I could 

not identify any portion of [the status report] that 

a person of ordinary skill in the art of computer 

science would recognize as a clear reference to the 

particular invention covered in the claims of the 

’777 patent, let alone a complete disclosure of that 

invention. 

J.A. 10922–23. Stamps.com offered no contrary expert 

evidence. There is no evidence that the March Status 

Report corroborates Pagel’s declaration. 

Additionally, Stamps.com argues that the district 

court abused its discretion in not considering evidence in 

a reply brief to cross-motions for summary judgment that 

it had submitted on October 5, 2009. This evidence 

included a second declaration by Pagel (“Second Pagel 

Declaration”) and a corroborating declaration (“Desai 

Declaration”) by Manish Desai, an engineer who was 

supervised by Pagel at Stamps.com’s predecessor company. Because these declarations were raised for the first 

time in a reply brief to which Endicia did not have an 
21 STAMPS.COM v. ENDICIA

opportunity to respond, we hold that the district court 

acted within its discretion when it did not consider these 

supplementary declarations. See In re Cygnus Telecomms. Tech., LLC, Patent Litig., 536 F.3d 1343, 1351–53 

(Fed. Cir. 2008) (applying regional circuit law in deciding 

the admissibility of evidence that was not included in 

motions for summary judgment); Merrick v. Paul Revere 

Life Ins. Co., 500 F.3d 1007, 1013 (Fed. Cir. 2007) (holding that issues raised for the first time in a reply brief are 

generally considered waived, but making an exception 

where appellee was given an opportunity to respond); 

Zamani v. Carnes, 491 F.3d 990, 997 (9th Cir. 2007) 

(holding that a district court “need not consider arguments raised for the first time in a reply brief”).3 

Because Stamps.com failed to meet its burden to produce evidence establishing prior conception, we hold that 

there is no genuine issue of material fact regarding the 

conception of the ’777 Patent, and we affirm the district 

court’s holding that the ’777 Patent was obvious over the 

Lewis ’565 patent and the Tygar-Yee article. 

VII 

 3 Stamps.com argues that Fair Housing Council v. 

Riverside Two, 249 F.3d 1132 (9th Cir. 2001), requires the 

consideration of the Second Pagel Declaration and the 

Desai Declaration. However, in Fair Housing, “the district court erred by failing to review the evidence that 

[appellants] had submitted in support of their motion for 

summary judgment as evidence in opposition to [appellee’s] motions for summary judgment.” Id. at 1135 (emphasis added). The Ninth Circuit explained that “the 

district court was required to review the evidence properly submitted in support of [appellants’] motion . . . .” Id.

(emphasis added). Here, the Second Pagel Declaration 

and the Desai Declaration were both submitted in a reply 

brief and not in the opening motions for summary judgment. 
STAMPS.COM v. ENDICIA 22

The district court held that claims 13, 50, and 89 of 

the ’214 patent were invalid as anticipated in view of the 

Ogg-Chow ’406 patent, which was cited as § 102(a) prior 

art. To swear behind the Ogg-Chow ’406 patent (filed 

October 16, 2000), Stamps.com offered a third declaration 

from Pagel (“Third Pagel Declaration”), which stated that 

the “conception of the invention recited in the ’214 Patent 

occurred at least by November of 1998, and certainly well 

before October of 1999.” J.A. 10394. As corroboration, 

Stamps.com offered a Status Report dated November 3, 

1998 (“November Status Report”). The November Status 

Report allegedly documented the development of a “vPSD” 

or “virtual postage security device,” which purportedly 

referred to the “user data files” in claim 1 of the ’214 

patent which “are loaded into . . . portable memory to 

thereby configure said portable memory for use in serving 

a corresponding demand [for postage].” ’214 patent, col.29 

ll.65–67; see also id. col.20 ll.15–60. Stamps.com claimed 

that the November Status Report corroborated the fact 

that Pagel was in possession of the vPSD system by at 

least November 1998. 

The November Status Report suffers from the same 

defects as the March Status Report with respect to the 

’214 patent. Like the March Status Report, the November 

Status Report is completely incomprehensible and fails to 

sufficiently corroborate the inventor testimony in the 

Third Pagel Declaration. Stamps.com again offered the 

Second Pagel Declaration and the Desai Declaration as 

corroborating evidence. As discussed in the previous 

section, the district court did not err in declining to consider those declarations. Because we hold that 

Stamps.com failed to bear its burden of production in 

antedating the Ogg-Chow ’406 patent, there are no genuine issues of material fact as to whether the Ogg-Chow 

’406 patent was § 102(a) prior art. Accordingly, we affirm 
23 STAMPS.COM v. ENDICIA

the district court’s holding that the ’214 patent is anticipated by the Ogg-Chow ’406 patent. 

VIII 

The district court held that claim 23 of the ’568 patent, as a means-plus-function claim, was indefinite for 

failing to disclose a corresponding structure for “means for 

determining a value of said transaction associated with 

two or more of said plurality of providers utilizing ones 

[sic] of said transaction parameters.” ’568 patent, col.34 

ll.35–37. The pertinent part of claim 21, from which 

claim 23 depends,4 recites: 

A general multi-purpose processor-based system 

for authorizing a desired transaction to be conducted utilizing a particular provider, wherein information with respect to said desired transaction 

as conducted by each of a plurality of providers is 

presented for selection of said particular provider, 

said system comprising: . . . 

 means for determining a value of said transaction associated with two or more of said plurality 

of providers utilizing ones [sic] of said transaction 

parameters; 

 means for presenting each of said determined 

values for comparison . . . . 

 4 Claim 23 recites: 

The system of claim 21, wherein said means for determining desired transaction parameters comprises: 

means for accepting information associated with 

said transaction parameters from a general purpose 

computer program operating on said general multipurpose processor-based system. 

’568 patent, col.34 ll.49–54. 
STAMPS.COM v. ENDICIA 24

Id. col.34 ll.27–39 (emphasis added). Using this system, a 

user could enter certain “transaction parameters” (e.g., 

ZIP code, weight, mail class) and the system would determine the costs of the transaction for each shipping 

provider (e.g., USPS and FedEx) and present this information to the user for comparison. Id. 

In Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 

1371, 1382 (Fed. Cir. 2009), we held that, “if one employs 

means-plus-function language in a claim, one must set 

forth in the specification an adequate disclosure showing 

what is meant by that language.” (citation and quotation 

omitted); see 35 U.S.C. § 112, ¶ 2. “If the specification 

does not contain an adequate disclosure of the structure 

that corresponds to the claimed function, the patentee 

will have ‘failed to particularly point out and distinctly 

claim the invention as required by the second paragraph 

of section 112,’ which renders the claim invalid for indefiniteness.” Blackboard, 574 F.3d at 1382 (quoting In re 

Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en 

banc)). 

In Aristocrat Technologies Australia Pty Ltd. v. International Game Technology, 521 F.3d 1328, 1333 (Fed. Cir. 

2008), we held that a “computer-implemented meansplus-function term is limited to the corresponding structure disclosed in the specification and equivalents thereof, 

and the corresponding structure is the algorithm.” (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1253 

(Fed. Cir. 2005)). In a means-plus-function claim in 

which the disclosed structure is a computer, “the disclosed 

structure is not the general purpose computer, but rather 

the special purpose computer programmed to perform the 

disclosed algorithm.” WMS Gaming, Inc. v. Int’l Game 

Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999). “In software 

cases, . . . algorithms in the specification need only disclose adequate defining structure to render the bounds of 
25 STAMPS.COM v. ENDICIA

the claim understandable to one of ordinary skill in the 

art.” AllVoice Computing PLC v. Nuance Commc’ns, Inc., 

504 F.3d 1236, 1245 (Fed. Cir. 2007). 

Before considering whether there was adequate disclosure of a corresponding structure, we must construe 

the claim language describing the function. In claim 21 of 

the ’568 patent, the claimed function is a “means for 

determining a value of said transaction associated with 

two or more of said plurality of providers utilizing ones 

[sic] of said transaction parameters.” ’568 patent, col.34 

ll.35–37. The district court appears to have construed the 

function to require a means for “determin[ing] the value 

[for the shipping transaction] (i.e., a program that links to 

the shipping companies’ websites or provides other means 

of ascertaining the shipping companies’ data).” 

Stamps.com, slip op. at 24. Stamps.com contends that the 

district court misconstrued the function and that “the 

determination [of value for a shipping provider] is most 

naturally understood to be the performance of this calculation rather than the process of obtaining such algorithms from the shipping companies.” Appellant’s Br. 46. 

We agree that the contested means-plus-function claim 

should be construed as requiring a means for calculating

the shipping costs, rather than a means for accessing or

obtaining algorithms for such calculations from the shipping providers. 

We turn to whether the specification discloses a corresponding structure for a means for calculating the shipping costs. Stamps.com identified the E-STAMP program 

as the corresponding structure for these calculations: “The 

E-STAMP program will automatically incorporate the . . . 

entered [transaction] parameters—weight, class, zone—in 

order to correctly calculate the correct postage or credit 

transaction authorization to print in conjunction with the 

postage indicia.” J.A. 10427. Stamps.com appears to 
STAMPS.COM v. ENDICIA 26

contend that, given certain transaction parameters (e.g., 

weight, class, zone), one of skill in the art would know 

how to calculate the shipping costs. 

Though the E-STAMP program may constitute the 

structure for the contested means, it is not sufficiently 

described for one of skill in the art to implement it. It is 

not enough that a person of skill in the art can identify a 

structure to determine the transaction value. As we 

stated in Blackboard: 

[Such an argument] conflates the definiteness requirement of section 112, paragraphs 2 and 6, and 

the enablement requirement of section 112, paragraph 1. The fact that an ordinarily skilled artisan might be able to design a program to create 

an access control list, based on the system users’ 

predetermined roles goes to enablement. The 

question before us is whether the specification 

contains a sufficiently precise description of the 

‘corresponding structure’ to satisfy section 112, 

paragraph 6, not whether a person of skill in the 

art could devise some means to carry out the recited function. 

574 F.3d at 1385. We must determine whether a skilled 

artisan would have understood the specification to encompass the necessary program and could have implemented the program—not simply whether he could have 

written the program. See Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1212 (Fed. Cir. 

2003). “It is not proper to look to the knowledge of one of 

skill in the art apart from and unconnected to the disclosure of the patent.” Id. Here, the calculation of shipping 

value appears to involve a complex interaction of zone 

variables, weight variables, and class variables. There is 

no disclosure of the actual algorithms necessary to calcu-
27 STAMPS.COM v. ENDICIA

late the transaction value, nor is there any disclosure that 

these algorithms involve only simple arithmetic. The 

failure to provide such an algorithm in the specification 

renders claim 23 of the ’568 patent invalid as indefinite. 

IX 

The district court determined that claim 17 of the ’451 

patent and claims 32 and 39 of ’808 patent were obvious 

over three prior art references: Word 95, DAZzle, and 

AddressMate. The ’451 patent claims a method of configuring a printer to print postage indicia near the margins 

of an envelope. Because standard printers typically differ 

in the way envelopes are fed into the printer, it is necessary for software programs to query databases for information about specific printers. Claim 17 of the ’451 

patent recites: 

The system of claim 16 wherein the means for 

querying one or more databases to determine the 

set up data for the user’s printer comprises means 

for querying one or more databases to determine a 

printer offset as a function of how the print media 

is fed into a printer. 

’451 patent, col.24 ll.32–36 (emphasis added). Thus, claim 

17 requires that the system query databases to determine 

how to set up a printer to use a specified “printer offset” 

from the edges of an envelope. The ’808 patent describes 

a method and system for printing information on print 

media, such as envelopes. Claims 32 and 39 are directed 

to determining a “printer offset as a function of how . . . 

one or more patterns print on a test envelope” and “determining the offset for the selected printer from a printer 

database having information on one or more printer 

drivers.” ’808 patent, col.25 ll.21–25 & col.25 ll.57–62 

(emphases added). Both the ’451 and ’808 patents define 

a printer offset as “a variable dependent upon how an 
STAMPS.COM v. ENDICIA 28

envelope is fed into a printer. . . . [T]he client software 

uses the printer offset to locate the envelope image within 

the printable region . . . .” ’451 patent, col.13 ll.1–10; ’808 

patent, col.13 ll.20–23. 

Each party offered its own expert testimony as to 

whether the prior art disclosed a printer offset. Endicia 

relied mainly on the expert declaration of Stuart Soffer, 

who took screenshots of these programs to show how a 

“printer offset” was queried in the Windows Registry (a 

database that, among other things, maintains information 

about printer drivers). The district court, relying on 

Soffer’s declaration, determined that 

Word 95 provides the user with the option of selecting a feed tray position and, once the feed tray 

position is selected, the information is stored in 

Windows Registry, which can be queried later to 

determine printer offset. Similarly, [DAZzle] allows a user to select how an envelope is fed into a 

printer and saves that feed option in the Windows 

Registry or in a layout file, which can be queried 

later to determine a printer offset. AddressMate 

also allows a user to select how an envelope is fed 

into a printer and to save that option in template 

layout files.

Stamps.com, slip op. at 29–30 (internal citations omitted). 

We think that Word 95, by itself, is sufficient to render claim 17 of the ’451 patent and claims 32 and 39 of 

the ’808 patent obvious. Word 95 has been publicly 

available since as early as 1995, well before the August 

30, 1999, filing date of the provisional application for the 

’451 and ’808 patents. Word 95 also discloses the printing 

of envelopes and labels under the “Envelopes and Labels” 

function of the “Tools” menu. J.A. 7468. In order to 

obtain printer feed information for a specific printer, 
29 STAMPS.COM v. ENDICIA

Word 95 can query the Windows Registry. For example, 

Soffer appears to have identified the “EnvFeed value” in 

the Windows Registry as a value representing the printer 

offset: “As the printer feed option changes, the Registry 

Key ‘EnvFeed’ changes for each of the envelope feed 

options.“ J.A. 7471. Word 95 then works with the user’s 

printer to print information displayed onto the envelope 

or label in accordance with the printer configuration data. 

Soffer’s declaration would support a finding that Word 95 

discloses every element of the disputed claims. 

On appeal, Stamps.com argues that Soffer’s declaration fails to support a finding that the prior art disclosed a 

“printer offset” because Soffer did not establish the behavior of the prior art software as it existed before the priority date of the ’451 and ’808 patents. In particular, 

Stamps.com contends that Soffer ran the prior art software on a non-prior art operating system with non-prior 

art printer drivers.5 This is argued to be problematic 

because the non-prior art printer drivers could themselves 

have supplied the purported printer offsets, rather than 

the Windows Registry in Word 95. However, as 

Stamps.com concedes, this argument was not made below 

and cannot properly be considered on appeal. See Sage 

Prods., Inc., 126 F.3d at 1426. We therefore decline to 

address this unsupported allegation. 

Moreover, Stamps.com offered a declaration from 

McDaniel, to challenge Soffer’s declaration. With regard 

to the ’451 patent, McDaniel stated: 

 85. For Word 95, [Endicia’s] expert cites the 

Windows Registry parameters “printMaxXExtent, 

 5 Stamps.com notes that the tests that Soffer relied 

on were run on an HP Photosmart 2570 printer, which 

was purportedly developed after the priority date of the 

’451 patent.
STAMPS.COM v. ENDICIA 30

printMaxYExtent, print MibXExtent [sic] and 

printMinYExtent” as examples of “printer offset.” 

. . . None of these parameters is a “printer offset” as 

defined in the ’451 Patent. 

 86. For DAZzle, [Endicia’s] expert cites the 

Windows Registry once again, but fails to point to 

any data that represents a “printer offset” as defined in the ’451 Patent. 

 87. For AddressMate, [Endicia’s] expert cites 

the “vertical and horizontal offsets” stored in a 

template layout (TPL) file. . . . However, these vertical and horizontal offsets are not a “printer offset” as defined in the ’451 Patent. 

J.A. 10416–17 (emphases added). These conclusory 

opinions fail to raise a genuine issue of fact. See Innogenetics N.V. v. Abbott Labs., 512 F.3d 1363, 1373–74 (Fed. 

Cir. 2008) (finding an expert report insufficient to raise a 

genuine issue of fact where the expert “merely lists a 

number of prior art references and then concludes with 

the stock phrase ‘to one skilled in the art it would have 

been obvious to perform [the claimed methods]’”). McDaniel failed to explain the basis for his conclusions that the 

printer offsets, as defined in the ’451 patent, were not 

disclosed in the prior art. Nor did McDaniel address the 

printer offset issue with regard to claims 32 and 39 of the 

’808 patent. 

Stamps.com has thus failed to offer sufficient evidence 

of non-obviousness to raise a genuine issue of material 

fact. The district court was correct to hold that claim 17 

of the ’451 patent and claims 32 and 39 of the ’808 patent 

were obvious over Word 95, DAZzle, and AddressMate.6

 6 In addition, Stamps.com argues there was a genuine issue of material fact as to whether Word 95, DAZzle, 

and AddressMate disclosed “mapping an image onto a 
31 STAMPS.COM v. ENDICIA

IX 

The district court found that claim 7 of the ’597 patent, claim 35 of the ’980 patent, and claim 32 of the ’808 

patent were obvious over the DAZzle software program 

and a combination of other prior art.7 These claims all 

 

virtualized sheet” as required by claims 32 and 39 of the 

’808 patent. A “virtualized sheet,” is a preview “of the 

information [to be printed] contained within a printable 

region.” ’808 patent, col.3 ll.1–2. Endicia’s expert presented claim charts showing how Word 95, DAZzle, and 

AddressMate disclosed the ability to preview an image of 

an envelope or letter before printing it. In response, 

Stamps.com offered McDaniel’s declaration, which simply 

stated that “None of these programs is capable of ‘mapping an image onto a virtualized sheet’ as described in the 

’808 patent.” J.A. 10418. We conclude that McDaniel’s 

conclusory opinion fails to raise a genuine issue of material fact. See Innogenetics N.V. v. Abbott Labs., 512 F.3d 

1363, 1373–74 (Fed. Cir. 2008). 

7 Asserted claim 7 of the ’597 patent provides: “The 

system set forth in claim 6 further including: means for 

transferring said printed postage and indicia from said 

transfer medium to a mailing envelope.” ’597 patent, 

col.18 ll.7–9 (emphases added). 

Asserted claim 35 of the ’980 patent provides: “The 

system of claim 34, wherein at least one of said generating means includes: means for selecting one of a plurality 

of graphical configurations of a postage indicia; and 

means for personalizing said selected graphical configuration.” ’980 patent, col.25 ll.39–44 (emphasis added). 

Asserted claim 32 of the ’808 patent provides: 

The system of claim 30 wherein the means for determining said printer offset comprises means for sending a print job having one or more patterns to said 

printer and means for determining said printer offset 

as a function of how said one or more patterns print 

on a test envelope. 
STAMPS.COM v. ENDICIA 32

contain the term “postage indicia” or “postal indicia.” The 

district court construed “postage indicia” as: “A printed 

postage designation on a mail piece or label that includes 

the amount of postage, and may include an arbitrary or 

fanciful graphic configuration and/or a machine readable 

encrypted message.” J.A. 42 (emphasis added). The 

district court construed “postal indicia” as “postal markings including but not limited to the amount of postage, 

and FIM barcodes and/or two-dimensional barcodes, 

printed or imprinted on a mail piece or label.” J.A. 46 

(emphasis added). 

On appeal, Stamps.com argues that both “postage indicia” and “postal indicia” must include actual postage 

and not just a representation of postage value. 

Stamps.com argues that DAZzle does not require the 

printing of actual postage and therefore does not render 

the claims obvious. Stamps.com is partly correct. DAZzle 

does not calculate or print actual postage. It merely 

allows the printing of a “postage box indicating the 

amount of postage due in the upper right corner of your 

mail piece” (i.e., a placeholder that says “$0.32 Place 

First-Class Postage Here”). J.A. 7424, 7434. 

 

’808 patent, col.25 ll.21–25. And claim 30 of the ’808 

patent, from which claim 32 depends, recites: 

A system for printing postal indicia comprising: 

means for determining a printer offset as a function 

of how an envelope is fed into said printer; means for 

mapping an image onto a virtualized sheet; means for 

generating a print job for the virtualized sheet, 

wherein the image is located within a printable region of the virtualized sheet as a function of said 

printer offset; and a printer for printing said postal 

indicia onto said envelope. 

Id. col.25 ll.9–18 (emphases added). 
33 STAMPS.COM v. ENDICIA

The term “postage indicia” in claim 7 of the ’597 patent and claim 35 of the ’980 patent does not appear to 

require the printing of actual postage.8 However, based 

on the specification of the ’808 patent, Stamps.com argues 

that the term “postal indicia” in the ’808 patent does 

require the printing of actual postage. See, e.g., ’808 

patent, col.6 ll.31–34 (“The printed indicium appears as a 

two-dimensional bar code that includes a unique serial 

number, mail delivery point information, and the amount 

of postage.”) (emphases added). But even assuming that 

both “postage indicia” and “postal indicia” require the 

delivery of actual postage, it would have been obvious to 

one of skill in the art to combine the DAZzle reference 

 

8 The use of “postage indicia” in the ’597 patent 

clearly differentiates between “postage” and “postage 

indicia.” Where “postage” requires actual postage value, 

“postage indicia” is merely a graphical designation that 

does not require actual postage value. Claim 6 of the ’597 

patent, from which asserted claim 7 depends, treats 

“postage” and “[postage] indicia” as separate claim elements, reciting a “system . . . wherein said printing means 

prints said created postage and postage indicia.” ’597 

patent, col.18 ll.4–6 (emphases added). Asserted claim 7 

adds: “The system set forth in claim 6 . . . including[ ] 

means for transferring said printed postage and indicia

from said transfer medium to a mailing envelope.” ’597 

patent, col.18 ll.7–9 (emphases added). The summary of 

the ’597 patent similarly distinguishes between “postage” 

and “postage indicia,” disclosing a “program that can 

generate customized greeting cards to allow the customer 

to automatically calculate the correct amount of postage

for the customized card, and to print that postage. This 

system can also generate an addressed envelope with a 

personalized postage indicia printed thereon.” ’597 patent, col.2 ll.35–39 (emphases added). Finally, the “stamp 

indicia 1508” depicted in FIGS. 15A and 15B of the ’597 

patent and the ’980 patent do not show actual postage. 

’597 patent, Figs. 15A, 15B; ’980 patent, Figs. 15A, 15B. 
STAMPS.COM v. ENDICIA 34

with the Whitehouse ’562 patent, which discloses the 

printing of actual postage value. See ’562 patent, col.11 

ll.61–65 (disclosing a computer system with a non-volatile 

memory for controlling a printer to print the actual postage amount on mail pieces: “The sample postage mark . . . 

express[es] the fundamental information required by the 

[USPS]—city/state of origin, date of issue, amount of 

postage, and meter number.”). 

Stamps.com, however, argues that DAZzle and the 

Whitehouse ’562 patent cannot be combined because the 

Whitehouse ’562 patent teaches away from certain features of DAZzle. Specifically, Whitehouse appears to 

teach a postage mark with a “graphical emblem similar in 

ways to the artistic and thematic content expressed in the 

regular stream of USPS stamp ‘new issues.’” ’562 patent, 

col.12 ll.31–33. This graphical emblem is stored in encrypted “hidden files” and used as an “industry standard” 

in order to “frustrate and control counterfeiting and/or 

unauthorized production of the postage mark.” Id. col.12 

l.39 & ll.49–50. Stamps.com contends that allowing users 

to choose their own “graphical emblems,” as taught by the 

DAZzle software, would defeat the anti-counterfeiting 

objectives of the Whitehouse ’562 patent. Thus, 

Stamps.com argues that the Whitehouse ’562 patent 

would teach away from giving users a choice of graphical 

configurations. This argument is unavailing. A reference 

does not teach away when it merely expresses a general 

preference for an alternative invention. In re Fulton, 391 

F.3d 1195, 1201 (Fed. Cir. 2004). Here, the use of the 

graphical emblem as an auto-counterfeiting measure was 

described as an “alternative embodiment” that was entirely optional and not required by the Whitehouse ’562 

patent. ’562 patent, col.12 l.28 & ll.46–48. Moreover, the 

’562 patent explicitly teaches another embodiment using 

the patent in conjunction with the “Envelope Manager” 
35 STAMPS.COM v. ENDICIA

program, an early version of the DAZzle program. Id.

col.1 ll.19–26, col.4 ll.4–8, 15–23, & 56–57. 

Stamps.com also contends that the term “postage indicia” should have been construed to require “arbitrary or 

fanciful graphical configurations.” Appellant’s Br. 15–16. 

We agree that the district court erred in construing these 

graphical configurations as optional. However, the district court correctly found that the DAZzle reference 

clearly disclosed such graphics. See, e.g., Stamps.com, 

slip op. at 14 (explaining that DaZzle could depict a 

“Graphic Image” of “Happy Birthday Mom” with a birthday hat and confetti). Therefore, Stamps.com was not 

prejudiced by a construction that made the graphics 

optional. 

We therefore affirm the invalidity of claim 7 of the 

’597 patent, claim 35 of the ’980 patent, and claim 32 of 

the ’808 patent as obvious over a combination of DAZzle 

and the Whitehouse ’562 patent. 

AFFIRMED 
NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit 

__________________________ 

STAMPS.COM INC., 

Plaintiff-Appellant, 

v. 

ENDICIA, INC. AND PSI SYSTEMS, INC., 

Defendants-Appellees. 

__________________________ 

2010-1328 

__________________________ 

Appeal from the United States District Court for the 

Central District of California in Case No. 06-CV-7499, 

Judge Otis D. Wright, II. 

__________________________ 

BRYSON, Circuit Judge, concurring-in-part and dissentingin-part. 

I concur in the court’s disposition of the nine asserted 

claims of the ’214, ’451, ’568, ’597, ’808, and ’980 patents. 

I also agree that the district court did not abuse its discretion in allowing Stamps.com to assert additional claims 

only upon a showing of need. In my view, however, the 

district court should not have entered summary judgment 

invalidating the six asserted claims of the ’777 and ’991 

patents. I therefore dissent with respect to the affirmance of that portion of the district court’s judgment. 
STAMPS.COM v. ENDICIA 2

The majority upholds the district court’s conclusion 

that the Tygar-Yee article is prior art to the ’777 and ’991 

patents. I do not agree that the evidence proffered by 

Endicia was sufficient to establish that the Tygar-Yee 

article was publicly accessible before the priority dates of 

those patents. 

The Tygar-Yee article is dated March 1, 1993, but 

there is no evidence as to the date of its publication. The 

majority notes that the article was cited in a subsequent 

article by Tygar and Yee published in 1994. That citation, 

however, does not constitute evidence that the 1993 

Tygar-Yee article was ever publicly accessible, particularly in light of the fact that the later article was written 

by the same authors. The majority also relies on a declaration by Dr. Tygar, the co-author of the Tygar-Yee article, stating that the article is prior art. Dr. Tygar’s 

declaration, however, consists of a conclusory legal assertion and provides nothing by way of evidence in support of 

that assertion. 

In the summary judgment proceedings, Endicia offered as an exhibit a printout of a webpage that an Endicia attorney identified as “a printout of Carnegie Mellon 

University’s School of Computer Science archive report 

for the year 1993.” The exhibit is entitled “Index 

of/anon/1993” and consists of a list of file names, file sizes, 

and the dates on which the files were last modified. 

Endicia claims that one of the files, “CMU-CS-93-

107.ps.Z,” represents the Tygar-Yee article. That file 

name lists a modification date of May 8, 1993. The majority characterizes the website as a “public forum,” but the 

record contains no evidence that the webpage in the 

exhibit was accessible to the public or widely disseminated in 1993. See In re Lister, 583 F.3d 1307, 1211 (Fed. 

Cir. 2009) (“A reference is considered publicly accessible if 
3 STAMPS.COM v. ENDICIA

it was disseminated or otherwise made available to the 

extent that persons interested and ordinarily skilled in 

the subject matter or art[,] exercising reasonable diligence, can locate it.”); Cordis Corp. v. Boston Scientific 

Corp., 561 F.3d 1319, 1332-35 (Fed. Cir. 2009) (holding 

that an academic paper distributed among a limited set of 

professional colleagues is not a prior art publication).

The majority highlights the fact that Stamps.com 

identified the Tygar-Yee article as bearing a 1993 date in 

several information disclosure statements that it filed in 

2000 in connection with other patents. It is well settled, 

however, that a patentee’s inclusion of a reference in an 

information disclosure statement does not constitute an 

admission that the reference is prior art. 37 C.F.R. § 

19.7(h); ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 

866 (Fed. Cir. 2010); Abbott Labs. v. Baxter Pharm. 

Prods., Inc., 334 F.3d 1274, 1279 (Fed. Cir. 2003). 

Finally, the majority states that Stamps.com submitted no evidence that the Tygar-Yee article was not published in 1993. Apart from the ordinary difficulty of 

proving a negative, it is well settled that, at the summary 

judgment stage, “the moving party must make a prima 

facie showing that it is entitled to summary judgment.” 

Celotex Corp. v. Catrett, 477 U.S. 317, 331 (1986). When 

the movant has the ultimate burden of proof on an issue, 

it must show that it is entitled to judgment, and if it does 

not do so, the non-moving party need not come forward 

with opposing evidence. Saab Cars USA, Inc. v. United 

States, 434 F.3d 1359, 1368 (Fed. Cir. 2006); 11 James 

Wm. Moore, Moore’s Federal Practice ¶ 56.40[1][c] (2011 

ed.) (“[T]he movant [with the burden of proof on the 

merits] must produce evidence that would conclusively 

support its right to a judgment after trial should the 

nonmovant fail to rebut the evidence. . . . [T]he evidence 
STAMPS.COM v. ENDICIA 4

in the movant’s favor must be so powerful that no reasonable jury would be free to disbelieve it.”) In the context of 

a motion for summary judgment of invalidity, the burden 

is not on the patentee to present evidence that a reference 

is not prior art; instead, the party challenging the patent 

has the burden to make a prima facie showing that the 

reference was publicly accessible. Because Endicia failed 

to show that the Tygar-Yee article is prior art, I would 

hold that the district court erred in invalidating the six 

asserted claims of the ’777 and ’991 patents as obvious.