MyMail, Ltd. v. ooVoo, LLC

Background

MyMail sued ooVoo, LLC and IAC Search & Media, Inc. for allegedly infringing U.S. Patent Nos. 8,275,863 and 9,021,070. The patents concern methods for modifying Internet-device toolbars using toolbar data, databases, servers, and update processes. The court had consolidated the related actions under Case No. 17-CV-04488.

The defendants previously obtained a ruling invalidating the patents under 35 U.S.C. § 101 on motions for judgment on the pleadings. The Federal Circuit vacated and remanded that ruling because the court had not first construed the term “toolbar.” After remand, the defendants renewed their motions seeking invalidation. The parties agreed that the court should construe “toolbar” before addressing those motions, and the court denied the renewed motions for judgment on the pleadings without prejudice.

The parties’ proposed meanings

The parties disputed one claim term: “toolbar.” Claim construction is the court’s legal interpretation of the words used in a patent claim. MyMail proposed: “a button bar that can be generated, dynamically changed, or updated via a Pinger process or a MOT script.” The defendants proposed: “an arrangement of user controls to activate functions in an application.”

Court’s analysis

The court relied primarily on the patents’ specifications, which are the written descriptions accompanying the patent claims. Both specifications state that “[t]he Toolbar of the present invention” has the unique property that it can be “dynamically changed or updated via a Pinger process or a MOT script.” The court found this language definitional rather than an improper attempt to import a limitation from an example in the specifications. It also found that every disclosed toolbar embodiment had the ability to be dynamically changed or updated in that manner.

The court agreed with prior claim constructions involving the same patents, including a construction by the Eastern District of Texas and constructions by the Patent Trial and Appeal Board. However, it declined to include the words “can be generated.” The court found that the specifications did not consistently identify generation through a Pinger process or MOT script as a unique property of the toolbar; instead, that feature appeared in an example involving Figure 16. The court also rejected MyMail’s wording because it omitted the second use of “dynamically,” even though the specifications describe the toolbar as capable of being “dynamically changed or updated.”

The court further rejected the defendants’ arguments that the construction would have no practical effect or would confuse a jury. The court held that the construction meaningfully limits the claims because a toolbar that could not be dynamically changed or updated through a Pinger process or MOT script would fall outside the term “toolbar” as construed. The court also concluded that the definition in MyMail’s Information Disclosure Statement did not replace the definition in the patent specifications. The statement concerned the toolbar’s visual arrangement, while the specifications concerned the means of changing or updating it; the two descriptions were not mutually exclusive.

Ruling

Judge Lucy H. Koh construed “toolbar” in the ’863 and ’070 patents as: “a button bar that can be dynamically changed or updated via a Pinger process or a MOT script.” The order addressed claim meaning only. The opinion does not state a final ruling on infringement or the defendants’ renewed patent-validity motions.