MyMail is the holder of U.S. Patent Nos. 8,275,863 and 9,021,070, both directed to "methods of modifying toolbars that are displayed on Internet-connected devices such as personal computers." MyMail initially asserted these patents against ooVoo and IAC Search & Media, Inc. in the Eastern District of Texas. After the Supreme Court's decision in TC Heartland LLC v. Kraft Foods Group Brands LLC came down, the parties agreed to shift venues to the Northern District of California. Judge Lucy Koh was assigned to this case.
As an example of the claims under dispute, claim 1 of the '863 patent, recites:
A method for dynamically modifying a toolbar, the method comprising:
displaying the toolbar, at a user Internet device, that includes one or more toolbar buttons, the toolbar defined by toolbar data stored in one or more toolbar-defining databases, the toolbar data comprising a plurality of toolbar button attributes associated with the one or more toolbar buttons of the toolbar, wherein at least one of the plurality of toolbar button attributes identifies a function to be performed by a specific toolbar button upon actuation of the specific toolbar button;
invoking, from the user Internet device without user intervention, communication of information associated with the one or more toolbar-defining databases to a server associated with a network address;
receiving, at the server, the information associated with the one or more toolbar-defining databases;
determining, based on the information associated with the one or more toolbar-defining databases, that the user Internet device should receive updated toolbar data;
receiving, at the user Internet device, the updated toolbar data in response to determining that the user Internet device should receive the updated toolbar data;
initiating, at the user Internet device and without user interaction, an operation to update the toolbar data in accordance with the received updated toolbar data;
updating the toolbar data at the user Internet device based on the operation and in accordance with the updated toolbar data, thereby updating the toolbar data, the updating comprising at least one member of a group comprising (a) and (b):
(a) updating the toolbar data to include at least one new attribute of the toolbar data to change the toolbar by adding a toolbar button to the toolbar; and
(b) updating the toolbar data to modify an attribute of at least one of the one or more toolbar buttons of the toolbar; and
displaying at the user Internet device the toolbar as defined by the updated toolbar data,
wherein the information associated with the toolbar data includes at least one member of a group comprising a revision level, version, time, date, user ID, account owner ID, PAP ID, IP address, session keys, billing data, name, address, account information, connection history, procedures performed by a user, group ID, e-mail address, e-mail ID, e-mail password, residential address, and phone number.
Once in the Northern District of California, ooVoo and IAC filed Rule 12(c) motions on the pleadings, contending that the MyMail patents were "directed to patent-ineligible subject matter under 35 U.S.C. § 101." MyMail countered, noting that an earlier proceeding in the Eastern District of Texas had construed the claim term "toolbar" in such a fashion that rendered the claims patent-eligible. But Judge Koh did not adopt this construction, nor did she construe any claims or even address the parties' claim construction contentions. Instead she applied the two-part test from Alice Corp. v. CLS Bank Int'l on the plain language of the claims.
The Alice test is used to determine whether claims are eligible for patenting under § 101. One must first decide whether the claim at hand involves a judicially-excluded law of nature, a natural phenomenon, or an abstract idea. If so, then one must further decide whether any element or combination of elements in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exclusion. But elements or combinations of elements that are well-understood, routine, and conventional will not lift the claim over the § 101 hurdle. While this inquiry is generally carried out as a matter of law, factual issues can come into play when determining whether something is well-understood, routine, and conventional.
Applying the test, Judge Koh found that the claims are "directed to a process for updating toolbar software over a network without user intervention." Comparing this summary of the invention to those of claims found to be abstract in other cases, Judge Koh concluded that "because they fall within the category of gathering and processing information and recite a process comprised of transmitting data, analyzing data, and generating a response to transmitted data" they are directed to an abstract idea.
For part two of Alice, Judge Koh observed that "the claims recite generic, conventional components, such as 'Internet-connected computers and servers,' and that the specification confirmed that toolbars, which are the subject of the invention, were already in widespread use." She further wrote that "adding or changing a button on the toolbar based on data stored in a toolbar-defining database is routine and conventional."
Therefore, she concluded that the claims failed the test and were ineligible under § 101. MyMail appealed. Judge Reyna wrote the majority opinion and was joined by Judge O'Malley. Judge Lourie dissented.
Reviewing the appeal, the Federal Circuit noted that "[p]atent eligibility may be determined on a Rule 12(c) motion, but only when there are no factual allegations that, if taken as true, prevent resolving the eligibility question as a matter of law." Furthermore, based on the ruling in Aatrix Software, Inc. v. Green Shades Software, Inc., "if the parties raise a claim construction dispute at the Rule 12(c) stage, the district court must either adopt the non-moving party's constructions or resolve the dispute to whatever extent is needed to conduct the § 101 analysis."
As noted above, the parties did have a claim construction dispute before the District Court. Particularly, MyMail encouraged Judge Koh to adopt the Eastern District of Texas's construction of the term "toolbar" to mean a "button bar that can be dynamically changed or updated via a Pinger process or a MOT script." The specification defines a Pinger process to be:
[A]n entity that acts transparently as a "services" coordinator to provide and/or administer the following: 1. Heartbeat service to help maintain network connectivity with a client. 2. Authentication services that securely authenticate client access to email, commerce, and other public and private network servers and services. 3. Update services that can perform client software, database, and maintenance services during periods of inactivity.
MyMail contended that, under this construction, the claimed invention involved "a particular technological process for improving an exclusively computer-oriented device." ooVoo and IAC countered that this construction was erroneous.
The Federal Circuit ruled that the District Court's failure to either adopt this construction or to construe the term itself was an error under Aatrix. But the Federal Circuit declined to construe the term, noting that doing so could conflate "de novo review with an independent analysis." Additionally, the Federal Circuit explained that "[w]hile in some circumstances an appeal may present a record sufficiently developed to enable construction . . . we do not find such a record here." Moreover, the Court wrote that "to the extent ooVoo and IAC ask us to determine in the first instance patent eligibility of the MyMail patent claims under MyMail's proposed construction, we decline to do so."
Accordingly, the Federal Circuit remanded the case back to the District Court so that the claim construction dispute and its impact on the § 101 ruling can be reviewed.
Writing in dissent, Judge Lourie (who has been no friend of software patents over the years) opined that "the claims at issue are clearly abstract, regardless of claim construction." Relying on Electric Power Group, LLC v. Alstom S.A. -- which essentially held that "the analysis, transmission, and display of information are, in themselves, abstract ideas" -- Judge Lourie would have found the MyMail claims similarly abstract.
Particularly, he found that the claim's breadth "cover any toolbar modification, on any of the multitudes of Internet-connected devices, using generic servers and Internet functionality." Judge Lourie further asserted that the "toolbar" as construed -- involving a Pinger process -- was immaterial. He wrote that:
[T]he specification is clear that neither the unclaimed pinger process nor the unclaimed MOT script can be the inventive concept. The pinger process itself is not disclosed as the invention, but instead is functionality "assumed to be part of the access service provider." Its teaching on the "MOT script" is no more enlightening.
Ultimately, Judge Lourie found that the Pinger process was no more than:
[T]he idea of programming a generic computer to send certain data (the user's current toolbar software version) to a predetermined server at regular intervals in a conventional manner, and then having the server return certain data (updated toolbar software) in a conventional manner, when the server determines the user's toolbar version is out of date.
As a consequence, he would have found the claims invalid under § 101.
This case stands for the unremarkable notion that one should understand what a claim means before declaring it too abstract for patenting. Much ink has been spilled in the last five years decrying the Alice test's proclivity to facilitate invalidation of patents without considering the actual claim language at hand, much less the full extent of the invention. Berkheimer v. HP and Aatrix limited this tendency by requiring that the Alice test can involve factual issues that need to be resolved prior to carrying out the test. Here, the Court adds some color to those cases by highlighting a circumstance under which a district court must conduct at least some attempt at claim construction prior to applying Alice.
Judge Lourie's dissent, on the other hand, provides yet another example of how § 101 can be used in a conclusory fashion, or at least with questionable reasoning. Updating computer software is neither abstract nor an idea. But between the Supreme Court's and Federal Circuit's wrestling with patent-eligibility over the last several years, we now have a legal regime that has deviated so far from actual engineering logic that remotely-controllable electric vehicle chargers, image compression techniques, and playing a short ad before a user watches an online video fall under the legal fiction of the abstract idea.
Whether MyMail's claims are innovative is another story. Maybe they will ultimately fail under § 101 (or § 102 or § 103 for that matter). Nonetheless, the Federal Circuit has correctly determined that invalidating patents on grounds of subject matter requires a clear understanding of the nature of that subject matter.
MyMail, Ltd. v. ooVoo, LLC (Fed. Cir. 2019)
Panel: Circuit Judges Lourie, O'Malley, and Reyna
Opinion by Circuit Judge Reyna; dissenting opinion by Circuit Judge Lourie
