Blackbird Technologies to Appeal Ineligibility Ruling in Cloudflare Patent Infringement Litigation

By Steve Brachmann
February 24, 2018

AppealOn Wednesday, February 14th, Boston, MA-based intellectual property monetization firm Blackbird Technologies filed a notice of appeal in a patent infringement case filed against San Francisco, CA-based content delivery firm Cloudflare. Blackbird is appealing to the Court of Appeals for the Federal Circuit after the Northern District of California invalidated the patent asserted by Blackbird against Cloudflare on Section 101 grounds.

Blackbird’s appeal to the Federal Circuit follows an order issued by the Northern California district court on February 12th granting Cloudflare’s motions for a judgment on the pleadings and to dismiss the case. “Abstract ideas are not patentable,” reads the court order penned by U.S. District Judge Vince Chhabria. The district court found that the patent asserted by Blackbird included limitations that recite generic computer, network and Internet components. Further, the court found that claims identifying a specific condition to be monitored by a processing device narrowed the scope of the claims but was not an inventive step. The district court’s order did not apply the two-step patentability test outlined by the Supreme Court in Alice Corp. v. CLS Bank International but the court’s decision does cite to recent Federal Circuit decisions to support its reasoning, including decisions in BASCOM Global Internet v. AT&T Mobility LLC and Intellectual Ventures I LLC v. Erie Indemnity Company.

“We do not think that the asserted patent covers an abstract idea,” said Wendy Verlander, president and CEO of Blackbird. “It’s a very concrete technology that is directed at improving how the Internet functions.” As we’ve reported before, Blackbird’s U.S. Patent No. 6453335, titled Providing an Internet Third Party Data Channel, claims a method for providing an Internet third party data channel being established within an existing data channel between an Internet server and an Internet client, the method involving the modification of data communication in response to third-party data to send a resultant data communication to an intended recipient. Before this patented technology, an intermediate networking device handled internet communications by simply forwarding them. This patent describes using an intermediate networking device to monitor internet communications and to modify the communications if certain parameters are detected. According to the patent, the technological improvement of modifying data between a server and client did not exist in the prior art. As the patent’s description indicates, the inclusion of third-party data is often desirable to provide value-added services or enhanced security and information features.

Cloudflare’s alleged infringement of the ‘335 patent is outlined in Blackbird’s initial complaint for patent infringement filed in district court in March 2017. Cloudflare’s content delivery network (CDN) includes multiple data centers operating in the United States. Systems at these data centers monitor data communications between origin servers and user systems and when Cloudflare processing devices detect an error code, those devices access a cache to retrieve a branded error page “instead of merely passing the error code onto the user system,” according to Blackbird’s allegations.

“At a high level, the district court’s invalidation of the patent didn’t follow the same methodology that the Federal Circuit has been using,” Verlander said. In patent cases, the Federal Circuit has often applied the Alice two-step framework. In step one, the court looks at whether the claims at issue are directed towards a patent-ineligible concept, such as a law of nature or an abstract idea. In step two, the court looks at any element or combination of elements in the claims at issue which constitute an inventive concept.

As it has been wont to do throughout its case against Blackbird, Cloudflare has been thumping its chest very loudly in public over the district court’s invalidation of the ‘335 patent. In an official blog post titled Bye Bye Blackbird, Cloudflare’s general counsel Doug Kramer decried Blackbird as a “patent troll” and championed Judge Chhabria’s decision that the ‘335 patent covered an abstract idea. Interestingly, Kramer discusses the effects of the Supreme Court’s decision in Alice as if the district court cited to that decision to support its decision to invalidate Blackbird’s patent. Kramer did not mince words, however, when discussing the sense of vindication Cloudflare felt, stemming from the district court’s decision to invalidate:

“All of this only confirms the position we’ve taken from the beginning with regard to the way that Blackbird and other patent trolls operate. Blackbird acquired an absurdly broad patent from an inventor that had apparently never attempted to turn that patent into a business that made products, hired people, or paid taxes. And Blackbird used that patent to harass at least three companies that are in the business of making products and contributing to the economy.”

Finally, as if to serve as the cherry on top of its self-serving rhetoric, Kramer’s blog post concludes with a GIF of the famous American boy band NSYNC from the single Bye Bye Bye. Because, as we all know in the age of social media, there’s nothing that helps make the demonization of an opposing side feel more comfortable than a humorous meme.

Interestingly, Kramer’s LinkedIn profile notes that Kramer served in various advisory roles at the White House during the administration of former President Barack Obama just as the patent reform lobby was achieving some of its greatest political successes of the past decade. Kramer served as associate counsel and special assistant to the President between September 2010 and March 2012, after which time he served as the staff secretary and deputy assistant to the President until November 2013. This period of time covers the passage of the America Invents Act (AIA) of 2011 and executive orders issued by Obama in June 2013 which increased restrictions on how patent owners could file infringement proceedings. Mr. Kramer might have a different job now but he seems to be afflicted with the same patent troll rhetoric which has proved disastrous to the U.S. patent system in recent years.

“One thing that I find curious is that Cloudflare claims to have 150 patent assets on the same type of technology,” Verlander said. Such assets include U.S. Patent No. 9342620, titled Loading of Web Resources, and U.S. Patent No. 9369437, entitled Internet-Based Proxy Method to Modify Internet Responses. “It seems to me that Cloudflare should be quite concerned. If the technology covered by the ‘335 patent isn’t patent-eligible, all of Cloudflare’s patent assets may be worthless and I imagine that their investors must be worried about that. They may have won the battle but they could lose the war because if they’re correct, competitors could jump right into the market and copy Cloudflare’s technology.”

The Author

Steve Brachmann

Steve Brachmann is a writer located in Buffalo, New York. He has worked professionally as a freelancer for more than a decade. He has become a regular contributor to, writing about technology, innovation and is the primary author of the Companies We Follow series. His work has been published by The Buffalo News, The Hamburg Sun,,, Motley Fool and Steve also provides website copy and documents for various business clients.

Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of Read more.

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There are currently 17 Comments comments. Join the discussion.

  1. Anon February 24, 2018 11:53 am

    from an inventor that had apparently never attempted to turn that patent into a business that made products, hired people, or paid taxes.

    The tyranny of the “must make” mindset…

    “must make” is NOT a part of US patent law.

    This is an element of the Efficient Infringer’s mantra that is simple legal error and needs to be exposed as such.

  2. Bemused February 24, 2018 12:13 pm

    Anon: Agreed. And its not only part of the infinger lobby’s mantra but it is a tool used by defense counsel during trial. To wit, calling out the business model of the non-practicing patent holder as a way to denigrate the patent holder or the value of the asserted patent(s). The implication to the jury being that if the patent holder doesn’t actually produce a product from that patent, either: (a) the patent holder is nothing more than a “litigation stick up” company; or (b) the patent is of suspect validity because the patent holder won’t produce any products.

    This is an issue that I’ve repeatedly raised with plaintiffs’ counsel: That it is incumbent upon them to educate the jury (and very often the judge) on folks such as the Wright Brothers, Edison, etc who were titans of American innovation but who chose to focus their time and attention on inventing instead of on manufacturing.

    The allegation that a patent holder must manufacture a product in order to have a valid patent, is the second great false narrative pushed by the efficient infringer group (the first being the patent troll myth).

  3. Gene Quinn February 24, 2018 12:20 pm

    Anon @1-

    Not only is “must make” not a part of U.S. patent law, but it has NEVER been a part of U.S. patent law. Perhaps I need to make this one of my next articles. I’ve written about it in the past a little, but not a dedicated article (I don’t think). The Founders intended for a patent system approachable by even average people (in sharp contrast to that of the UK at the time). They intentionally kept fees low to individuals would apply and obtain patents. The knew full well that those individuals would not have the capacity to make, and instead would license to those who had such capacity and/or who controlled distribution channels.

    So not only is “must make” not a part of U.S. patent law, but it was intentionally NOT made a part of U.S. patent law from the very beginning.

    Anyone having thoughts or information useful on this point please speak up. I know Marshall Phelps has talked about this with citation. Other citations are most welcome.

  4. Gene Quinn February 24, 2018 12:23 pm

    Bemused @2-

    Do plaintiff’s counsel resist explaining to the jury fact that throughout U.S. history patent laws haven’t required making, which has allowed some of the most ingenious inventors of all time to actually invent? That would be remarkable.

    Sometimes I wonder about the state of representation. I think patent owners have lost some high profile cases (or at least made it much easier for the cases to be lost) by not understanding patent law enough, and completely not understanding the technology they were arguing about.

  5. Bemused February 24, 2018 1:40 pm

    Gene@2: In my opinion, the resistance from plaintiff’s counsel stems from two factors.

    First, patent counsel oftentimes get so myopic about validity and infringement issues that they forget those issues are nearly secondary to the jury as compared to the litigation story or the invention narrative.

    Second, its a matter of desensitization in that patent counsel has gotten so used to hearing defense counsel denigrate patent holders to juries for not manufacturing a product, that patent counsel believes all it takes to push back on this false narrative is a brief mention to the jury (usually in closing arguments) that patent law does not require a patent holder to manufacture a product.

    And I think the latter is where the harm comes in. Unless the jury really understands up front that even innovation giants like Edison, et al did not manufacture products (and had to file suit to prevent their inventions from getting ripped off and to get paid fair value from infringers), the patent holder is going to be significantly disadvantaged by this false narrative.

    Stated another way, if all the jury sees is a plaintiff who doesn’t manufacture a product and who has repeatedly sued companies for infringement (i.e. is this patent holder really just a litigation mill?), the odds are pretty good that the jury will go into deliberations predisposed against the patent holder.

    Educating and disabusing the jury of these misconceptions very early in the trial is something that many plaintiff’s counsels fail to do to the detriment of their clients.

  6. Anon February 24, 2018 1:50 pm

    Gene @ 3,

    I am reminded of the Paper Bag case of 1908 (for the proposition that it is entirely rightful to do nothing at all with one’s granted patent rights, as well as a somewhat recent CAFC case in which a Judge specifically used the term “tyranny” in describing that thinking that those who “make something” must have some better right than someone else who merely has a patent. Unfortunately, I cannot recall that specific case…

  7. Ternary February 24, 2018 2:41 pm

    The Court determined: “The ‘335 patent is directed to the abstract idea of monitoring a data stream and modifying that data when a specific condition is identified.”

    Claim 1 requires: “… using a processing device distinct from said internet server for monitoring said existing data channel for a data communication having a predetermined property, said data communication having an intended recipient of one of said internet server and said internet client,”

    Accordingly, the claim requires a device to monitor a data stream. Currently billions and billion devices are applied around the world to “monitor a data stream.” They are applied in cars, airplanes, chemical plants, thermostats, cookers, alarm systems, TV set top boxes, cameras, cellphones, computers and anything else that includes a sensor. One cannot seriously and with a straight face maintain that these are all “directed to an abstract idea.” It is technologically absurd beyond words.

  8. Gene Quinn February 24, 2018 7:43 pm


    I agree with you that juries need to be educated and it is truly a shame that attorneys for patent owners refuse to do that. Anyone that does what you describe is simply not fit to represent a patent owner in litigation (in my opinion). Patent owners need to be much better about picking attorneys who will actually fight, rather than continuing to pick attorneys who only waive the white flag.

  9. Gene Quinn February 24, 2018 7:44 pm


    I just did a quick search and couldn’t find the “tyranny” reference you mentioned in a CAFC case. I’d love to find it if anyone might have a reference.

  10. Anon February 24, 2018 9:02 pm

    Could not fight it either, Gene.

    As I seem to recall, the use was in a concurrence.

    Maybe 12-16 months ago. Maybe longer.

  11. Anon February 24, 2018 9:02 pm

    Fight => find

  12. Anon February 25, 2018 8:12 am


    I have to stop looking for it. Searching the archives of that “other blog” is not producing that case or comment.

    It is producing evidence of long standing repeated gamesmanship of anti-patent rhetoric that is mind-numbing.

  13. Curious February 25, 2018 3:43 pm

    How is the ‘335 Patent not an improvement to computer technology?

    How is this District Judge even qualified to even understand computer technology and what constitutes an improvement thereof? There have been a lot of close calls, but this isn’t one of them. Decisions like this cause me to question my faith in the US judicial system. Hopefully, the Federal Circuit slaps this judge down hard.

  14. Curious February 25, 2018 3:46 pm

    Unless the jury really understands up front that even innovation giants like Edison, et al did not manufacture products (and had to file suit to prevent their inventions from getting ripped off and to get paid fair value from infringers), the patent holder is going to be significantly disadvantaged by this false narrative.
    I agree. As a good litigator, you need to tell a better story. Oftentimes, that involves rebutting the infringer’s story that the inventor never practiced the invention.

  15. Curious February 25, 2018 3:50 pm

    Patent owners need to be much better about picking attorneys who will actually fight, rather than continuing to pick attorneys who only waive the white flag.
    Unfortunately, the number of patent litigation attorneys out there is quite small, and if you are trying to do a litigation on contingency, that numbers becomes a lot smaller. With 101 summary judgement and IPRs, it has become much tougher to even get a case before the jury.

    Good luck finding an attorney these days if you are a little guy.

  16. T David Petite February 26, 2018 9:30 am

    101 needs to be squashed, it is a major hiccup in our legal system, which most West Coast infringer’s are putting lipstick and perfume on it and selling it to the courts as economic erosion by these bad NPE’s with infinite patent claims so do your duty and shut them down! 101 ruling is a huge problem for this country a mistake that I hope we can correct much sooner rather than later.

  17. staff February 27, 2018 11:48 am

    “Abstract ideas are not patentable”

    No doubt, many courts are having great difficulty applying patent law coming out of SCOTUS for the last several years, including Alice and several others. We gather that is what prompted former CAFC chief judge Michel to state it appears SCOTUS doesn’t ‘know what they are doing’.

    In fact, the rules for what is patentable have become so restricted and insensible that inventors no longer have any fair chance of obtaining patents for our inventions, or in the unlikely event we do we simply have no reasonable expectation that we will ever be able to commercialize, enforce, or even benefit materially from them.

    For example, the share of small entity issued patents has dropped to only about 1/10th of their historical share, if not less and still falling. We only succeed 3% of the time through appeal and even when we do win the CAFC severely and artificially slashes them to only a small fraction of the true economic benefit the infringers (thieves) receive from their theft. Worse yet, we no longer can get injunctions to stop their ongoing theft. For us the the patent system is now a sport of thieves which actually encourages our large competitors to rob and crush us. THIS, is justice?!

    We are now forming committees to draft our proposed measures into one or more bills that will restore the American patent system which has through the propaganda and duplicity of large multinational thieves been reduced to rubble.

    For our position and the changes we advocate (the rest of the truth) to restore the patent system, or to join our effort, please visit us at
    or, contact us at

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