MyMail, Ltd. v. ooVoo, LLC

Background

MyMail, Ltd. brought patent-infringement actions against ooVoo, LLC and IAC Search & Media, Inc. MyMail alleged infringement of claims in U.S. Patent Nos. 8,275,863 and 9,021,070. The patents describe updating Internet toolbars, including by sending information about toolbar databases to a server, determining whether updates are needed, sending update data, and automatically updating the toolbar.

The court had previously granted the defendants’ motion for judgment on the pleadings and held the patents invalid under 35 U.S.C. § 101. The Federal Circuit vacated that ruling because the court had not interpreted the term “toolbar.” After the court interpreted “toolbar” as “a button bar that can be dynamically changed or updated via a Pinger process or a MOT script,” the defendants renewed their motion.

Legal Standard

A motion for judgment on the pleadings under Federal Rule of Civil Procedure 12(c) challenges whether the pleadings legally support the claims. The court accepts the complaint’s factual allegations as true and grants the motion when there is no material factual dispute and the moving party is entitled to judgment under the law.

The defendants argued that the asserted claims were not patent-eligible subject matter under section 101. The court applied the two-step framework from Alice Corp. v. CLS Bank International: first, whether the claims are directed to an abstract idea; and second, whether the claims contain an “inventive concept” that transforms that idea into a patent-eligible invention.

The Court’s Analysis

The court treated claim 1 of each patent as representative because the parties agreed that those claims represented the asserted claims. The court analyzed the two claims together because they used substantially similar language and the patents had nearly identical specifications.

At the first step, the court held that the claims were directed to the abstract idea of updating toolbar software over a network without user intervention. In the court’s view, the claims described four basic functions: sending toolbar data to a server, analyzing that data to determine whether an update was needed, sending updated data, and automatically updating the toolbar.

The court rejected MyMail’s argument that the references to a Pinger process or MOT script made the claims a specific improvement to computer technology. The court explained that the Pinger process and MOT script performed substantially the same functions as the claims: transmitting data, analyzing it to determine whether an update was needed, and facilitating the update. The court also found that MyMail did not identify a specific improvement, explain how the process improved computer technology, or identify a problem in earlier toolbar-update systems that the claims solved.

At the second step, the court held that the claims lacked an inventive concept. The claims used generic devices, servers, databases, and software to perform ordinary functions such as displaying, sending, receiving, determining, and initiating an update. The court found that the Pinger process and MOT script also used generic components in a conventional manner and merely implemented the abstract idea itself.

The court rejected MyMail’s reliance on statements that the toolbar’s update capability was a “unique property.” It found that the complaint and patent specifications did not provide concrete allegations identifying an unconventional improvement. The court also rejected MyMail’s reliance on three Patent Trial and Appeal Board decisions upholding the patents in inter partes review proceedings, explaining that those proceedings addressed different validity questions under sections 102 and 103 rather than subject-matter eligibility under section 101.

Disposition

The court concluded that the asserted claims of the ’863 and ’070 patents were patent-ineligible under section 101. Judge Lucy H. Koh granted the defendants’ renewed motion for judgment on the pleadings.