MyMail, Ltd. v. ooVoo, LLC, Not Reported in Fed. Rptr. (2021)
`
`Peceycite Yellow Flag - Negative Treatment
`Distinguished by NexStep, Inc. v. Comcast Cable Communications, LLC,
`D.Del., August 20, 2021
`
`2021 WL 3671364
`Only the Westlaw citation is currently available.
`United States Court of Appeals, Federal Circuit.
`
`U.S.C. § 101. MyMail, Ltd. v. ooVoo, LLC (MyMail I), 934
`F.3d 1373, 1381 (Fed. Cir. 2019). On remand, the district
`court construed the disputed term, “toolbar.” Under this
`construction, the court again held that the claims of MyMail's
`patents are ineligible. MyMail, Ltd. v. ooVoo, LLC (MyMail
`IT), Nos. 17-cv-04487-LHK, 17-cv-04488-LHK, 2020 WL
`2219036, at *22 (N.D. Cal. May 7, 2020). For the reasons
`explained below, we affirm as to both decisions.
`
`MYMAIL,LTD.,Plaintiff-Appellant
`v.
`
`OOVOO, LLC, Defendant-Appellee
`MyMail, Ltd., Plaintiff-Appellant
`v.
`
`IAC Search & Media, Inc., Defendant-Appellee
`
`2020-1825, 2020-1826
`|
`Decided: August 19, 2021
`
`Appealfrom the United States District Court for the Northern
`District of California in No. 5:17-cv-04487-LHK, 5:17-cv-
`04488-LHK,Judge Lucy H. Koh.
`
`Attorneys and Law Firms
`
`Eric William Buether, Buether Joe & Counselors, LLC,
`Dallas, TX,
`for plaintiff-appellant. Also represented by
`Theresa Dawson.
`
`Robert Louis Hails, Jr., Baker & Hostetler LLP, Washington,
`DC,for defendants-appellees. Also represented by Cassandra
`Simmons, T. Cy Walker.
`Before Moore, Chief Judge, O'Malley and Reyna, Circuit
`Judges.
`
`Opinion
`
`O'Malley, Circuit Judge.
`
`*1 MyMail, Ltd. appeals from a pair of identical decisions of
`the United States District Court for the Northern District of
`
`California granting ooVoo, LLC's and IAC Search & Media,
`Inc.’s renewed motions for judgment on the pleadings. In a
`prior appeal, this court vacated the district court's judgments
`on the pleadings and remanded because the district court
`failed to addressthe parties’ claim construction dispute before
`consideringthe eligibility ofMyMail's patent claims under 35
`
`WESTLAW
`Page 1 of 8
`
`I. Background
`
`A. The Asserted Patents
`
`The two asserted patents—U.S. Patent Nos. 8,275,863 (“the
`°863 patent”) and 9,021,070 (“the ’070 patent”)—have
`virtually identical written descriptions. The °863 patent is
`entitled “Method ofModifying a Toolbar,” and the ’070 patent
`is entitled “Dynamically Modifying a Toolbar.” ’863 patent,
`at [54]; °070 patent, at [54]. The patents describe the field of
`invention as relating generally to digital data networks and
`more particularly to “network access and to minimizing
`unauthorized interception of data and denial of network
`services.” E.g., 863 patent, col. 1, ll. 26-29. They further
`describe the present invention as a method of and apparatus
`for (a) simplifying the process of access to a network, (b)
`dividing the responsibility of servicing a user wanting to
`access the network, and (c) minimizing the possibility of
`improper dissemination of email header data, as well as the
`possibility of improper use ofnetwork resources. See, e.g., id.
`at col. 3, ll. 44-50.
`
`The written descriptions describe a user—e.g., a computer
`system—thatincludesa client dispatch application. F.g., id. at
`col. 9, ll. 2-3. The client dispatch application communicates
`with an access service by transmitting user information and
`receiving access information for a particular Internet Service
`Provider (“ISP”). See, e.g., id. at col. 7, 1. 24-col. 8, 1. 3. The
`client dispatch application may then connectto that ISP. E.g.,
`id. at col. 8, ll. 4-16.
`
`In addition to the client dispatch application, the user includes
`several databases for storing information, including a button
`bar database. F.g., id. at col. 9,
`ll. 20-23. The button bar
`database includes
`information related to creating and
`
`ironSource Exhibit 1025
`ironSource Ltd. v. Digital Turbine Inc. PTAB-PGR2021-00096
`
`

`

`MyMail, Ltd. v. ooVoo, LLC, Not Reported in Fed. Rptr. (2021)
`
`modifying a button bar—i.e., a toolbar. F.g., id. at col. 10,Il.
`7-9. The toolbar
`is a human interface through which
`numerous functions may beinitiated. E.g., id. According to
`the written descriptions,
`the toolbar “has
`some unique
`properties as it can be dynamically changed or updated via a
`Pinger process or a MOTscript.” F.g., id. at col. 10, ll. 15-17.
`
`*2 The written descriptions explain that the Pingeris a process
`through which all communications betweenthe client dispatch
`application and the access service take place.! E.g., id. at col.
`11, ll. 53-55. According to the process, the client dispatch
`application initiates a pinger, or pinger message, with header
`information. F.g., id. at col. 11, ll. 44-52; col. 12, Il. 16-24.
`The header information includes the current user ID, the
`account owner ID, PAP ID,the current IP address assigned to
`the user, Group ID,the user's current time, database revisions
`levels, and the revision levels ofthe client dispatch application
`and other related software. E.g., id. With this information, the
`access service can determine if a user needs a databaseorfile
`
`update. E.g., id. at col. 12, ll. 25-28. In this way, the pinger
`process “allowsthe client dispatch application and the access
`service to interact and download database updates (or other
`information) to the user.” E.g., id. at col. 12, Il. 33-36.
`
`The patents describe MOTscript in several ways. MOTis not
`“an acronym for anything meaningful.” F.g., id. at col. 12,Il.
`50-51. It merely refers to the script language used by the
`Pinger process and elsewhere in the patents. F.g., id. at col.
`12, ll. 48-50. And, according to the written descriptions, “[a]s
`will be appreciated, a MOTscript defines how to build a
`button bar using the button bar database [ | and its database
`entries.” E.g.,
`id. at col. 11,
`Il. 5-7. The client dispatch
`application can use the MOTscript and button bar database
`information to build the toolbar automatically according to the
`specifications ofthe MOTscript. F.g., id. at col. 11, ll. 10-13.
`The written descriptions also identify MOTscript as a way to
`provide updatesto databases. F.g., id. at col. 12, ll. 36-47. The
`access service may provide the client dispatch application
`with MOTscript and other data through a webpagesite, an
`email message,a file transfer proceduresite, or other similar
`networking storage and transport mechanisms. F.g., id.
`
`Claim 1 of the *863 patent and claim | of the ’070 patent are
`representative. Claim 1 of the ’863 patentrecites:
`
`1. A method of modifying a toolbar, comprising the steps
`of:
`
`WESTLAW
`Page 2 of 8
`
`a user Internet device displaying a toolbar comprising one
`or more buttons, the toolbar defined by toolbar data stored
`in one or more toolbar-defining databases, the toolbar data
`comprising a plurality of attributes,
`each attribute
`associated with a button of the toolbar, wherein for each
`button of the toolbar, at
`least one of the plurality of
`attributes identifying a function to be performed when the
`button is actuated by the user Internet device;
`
`the user Internet device automatically sending a revision
`level of the one or more toolbar-defining databases to a
`predetermined network address;
`
`a server at the predetermined network address determining,
`from the revision level, the user Internet device should
`receive the toolbar update data;
`
`the user Internet device receiving toolbar update data from
`the Internet;
`
`the user Internet device initiating without user interaction
`an operation to update the toolbar data in accordance with
`the toolbar update data received;
`
`the user Internet device updating, by the operation, the
`toolbar data in accordance with the toolbar update data,
`thereby producing updated toolbar data,
`the updating
`comprising at least one of the following steps (a) and (b),
`each respectively comprising:
`
`(a) writing at least one new attribute to the original
`toolbar data, wherein the writing at
`least one new
`attribute to the toolbar data comprises changing the one
`or more buttons of the toolbar by adding a button; and
`
`*3 (b) updating at least one attribute of the toolbar data;
`and
`
`the user Internet device displaying the toolbar as defined by
`the updated toolbar data.
`
`Td. at col. 29, ll. 27-62.
`
`Claim 1 of the 070 patent is similar. It, however, recites a
`method for “dynamically” modifying a toolbar. See °070
`patent, col. 29,
`Il. 40-41.
`It also claims “information
`associated with the one or more toolbar-defining databases”
`instead of a revision level, “wherein the information
`associated with the toolbar data includesat least one mem-ber
`
`

`

`MyMail, Ltd. v. ooVoo, LLC, Not Reported in Fed. Rptr. (2021)
`
`of a group comprising a revision level, version, time, date,
`user ID, account owner ID, PAP ID,IP address, ses-sion 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.” See id. at col. 29, 1. 40-col. 30,1. 20.
`
`B. Procedural History
`
`MyMail separately sued ooVooandIACfor infringe-ment of
`claims 1—5, 9-13, 16-17, 19-20, and 23 ofthe ’863 patent and
`claims 1-13 and 15—22 ofthe ’070 patent. On March 16, 2018,
`without construing any debated claim terms or assuming
`MyMail's construction of those terms to be accurate,
`the
`district court granted ooVoo and IAC's motions for judgment
`on the pleadings, holding that MyMail's patent claims were
`ineligible under 35 U.S.C. § 101. On appeal, the parties
`strenuously debated the meaning of the term “toolbar” in the
`representative claims, largely predi-cating their § 101 debate
`on the meaning ofthat term. We declinedto interpret the term
`in the first instance. We also declined ooVoo and JAC's
`
`alternative invitation to assess patent eligibility under
`MyMail's proposed construction in thefirst instance. Because
`the record before us wasnotyet ripe for appellate review, we
`vacated and remanded for the district court to construe the
`
`disputed term in the first instance and to reassess whether the
`asserted claimsrecite ineligible subject matter. MyMailI, 934
`F.3d at 1380.
`
`On remand,the district court construed the term “toolbar” to
`mean “a button bar that can be dynamically changed or
`updated via a Pinger process or a MOTscript.” MyMail, Ltd.
`v. IAC Search & Media, Inc., No. 17-cv-04488-LHK, 2020
`WL 1043659, at *1 (N.D. Cal. Mar. 4, 2020). The court
`explained that
`its
`construction imposed a meaningful
`limitation on the claims. Jd. at *11. Although the construction
`does not require that the toolbar be dynamically changed or
`updated by a Pinger process or MOTscript, the toolbar must
`have such a capability, “regardless of whether the toolbar can
`be dynamically changed or updated by other means.” Jd.
`
`together becauseoftheir substantially similar wording and the
`patents’ nearly identical written descriptions. Jd. at *9.
`
`At Step One of the Alice framework,the court held that, even
`in light of its construction of“toolbar,” the claims are directed
`to the abstract
`idea of updating toolbar software over a
`network without user intervention. Jd. at *10—17. It reviewed
`
`the written descriptions’ disclosures on the Pinger process and
`the MOTscript, concluding that their functions are nearly
`identical to the steps recited in the representative claims. See
`id. at *11-13. The court found MyMail's arguments on the
`Pinger process and the MOTscript to be vague and conclusory
`because MyMailfailed to identify a specific improvementin
`computer functionality or a problem in the prior art that the
`claimssolve. See id. at *15—16. The court added that MyMail
`failed to explain how the toolbar, as construed, improves the
`toolbar update process.Jd. at *15.
`
`*4 At Step Two of the Alice framework, the district court
`found that all components ofthe claims, including the Pinger
`process and MOTscript, are generic and function in a
`conventional manner. Jd. at *17—19. Thedistrict court further
`
`found that the toolbar's ability to be dynamically changed or
`updated via a Pinger process or a MOTscript did not provide
`an inventive concept because it merely im-plements the
`abstract
`idea.
`Jd. at *19. Although MyMail made no
`arguments about the ordered combination of claim elements,
`the district court
`found no inventive concept
`in the
`combination. /d. at *19. The court concluded that there was
`
`no disputed issue of fact to preclude dismissal. It also rejected
`MyMail's argument that the denials of institution and the
`patentability determination of the Patent Trial and Appeal
`Board (“Board”) were relevant to patent eligibility. Id. at
`*20-22.
`
`MyMail timely appealed. We havejurisdiction pursuant to 28
`U.S.C. § 1295(a)(1).
`
`II. Discussion
`
`Despite accepting MyMail's construction ofthe disputed term,
`the district court granted the defendants’ renewed motions for
`judgmenton the pleadings on May 7, 2020. MyMail IT, 2020
`WL 2219036,at *22. It analyzed the two representative claims
`
`Wereview a grant ofjudgment on the pleadings underthe law
`of the regional circuit. Amdocs (Israel) Ltd. v. Openet
`Telecom, Inc., 841 F.3d 1288, 1293 (Fed. Cir. 2016). The
`Ninth Circuit reviews a grant ofjudgmenton the pleadings de
`novo. DaewooElecs. Am. Inc. v. Opta Corp., 875 F.3d 1241,
`
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`
`

`

`MyMail, Ltd. v. ooVoo, LLC, Not Reported in Fed. Rptr. (2021)
`
`1246 (9th Cir. 2017). Judgment on the pleadings is proper
`when, accepting all factual allegations in the complaint as
`true, there is no issue of material fact in dispute, and the
`moving party is entitled to judgment as a matter of law.
`Chavez v. United States, 683 F.3d 1102, 1108 (9th Cir. 2012).
`
`Patent-eligibility is a question of law with underlying factual
`issues. SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166
`(Fed. Cir. 2018). We review the ultimate issue of law de novo.
`Berkheimerv. HP Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018).
`
`Under § 101, the scope of patentable subject matter en-
`compasses “any new and useful process, machine, manu-
`facture, or composition of matter, or any new and useful
`improvement
`thereof.” 35 U.S.C.
`§
`101. Section 101,
`however, has an important implicit exception that laws of
`nature, natural phenomena, and abstract ideas are not patent
`eligible. See Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 216,
`134 S.Ct. 2347, 189 L.Ed.2d 296 (2014). We follow the
`Supreme Court's two-step Alice framework for determining
`patenteligibility. /d. at 217, 134 S.Ct. 2347. At Step One, we
`determine whether the claims at
`issue are directed to an
`
`ineligible law ofnature, natural phenomenon,or abstract idea.
`Id. If so, we proceed to Step Two, considering the elements of
`each claim both individually and as an ordered combination to
`determine whether the additional elements transform the
`
`nature of the claim into a patent-eligible application. Jd. This
`second step is often described as a search for an inventive
`concept. Id. at 217-18, 134 S.Ct. 2347.
`
`A. Step One
`
`Wehold that claim 1 ofthe ’863 patent and claim 1 ofthe 070
`patent are directed to the ineligible concept of updating
`toolbar software over a network withoutuser intervention.* At
`
`Step One, we look at the “focus of the claimed advance over
`the priorart” to determineifthe claim's “character as a whole”
`is directed to excluded subject matter. Affinity Labs of Tex.,
`LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016).
`In cases involving software innovations, this inquiry often
`turns on whether the claims focus on specific asserted
`improvements in computer capa-bilities or instead on a
`process or system that qualifies as an abstract idea for which
`computers are invoked merely as a tool. Uniloc USA, Inc. v.
`
`LG Elecs. USA, Inc., 957 F.3d 1303, 1306-07 (Fed. Cir.
`2020).
`
`*5 We have long “treated collecting information, including
`whenlimited to particular content (which does not changeits
`character as information), as within the realm of abstract
`ideas.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
`1353 (Fed. Cir. 2016). We have similarly treated analyzing
`information by steps that people perform mentally, or by
`mathematical algorithms, without more, as mental processes
`falling within the abstract-idea category. Jd. at 1354. And
`“merely presenting the results of abstract processes of
`collecting and analyzing information, without more (such as
`identifying a particular tool for presenta-tion), is abstract.” Jd.
`
`the representative claims are directed to updating
`Here,
`toolbar software over a network without user intervention.
`
`This amounts to no more than invoking computersas a tool to
`perform the abstract ideasofcollecting information, analyzing
`information, and presenting the results of the analysis in the
`software update context. For example,
`the representative
`claims recite collecting information by sending “a revision
`level of the one or more toolbar-defining databases” or
`“imformation associated with the one or more toolbar-defining
`databases” from a user device to a server. ’863 patent, col. 29,
`ll. 39-41; ’070 patent, col. 29, ll. 55-56. They further recite
`analyzing information by,at the server, determining from the
`collected information whether the user device should receive
`
`’070
`ll. 42-44;
`toolbar update data. °863 patent, col. 29,
`patent, col. 29, ll. 57-59. Andthey recite presenting the results
`by, at the user device, receiving the toolbar update data,
`updating the toolbar automatically, and displaying the updated
`toolbar. ’863 patent, col. 29, ll. 45-62; ’070 patent, col. 29,1.
`60-col. 30, 1. 11.
`
`Despite MyMail's contention otherwise, both in the earlier
`appeal and here, the district court's construction of the term
`“toolbar” to require the capability of being updated by a
`Pinger process or a MOT script does not
`rescue the
`representative claims from abstraction. Their character as a
`whole remains directed to updating toolbar software over a
`network without user intervention.
`
`The written descriptions make clear that updating via the
`Pinger process is no different than updating via the steps of
`the claimed method, which is directed to an abstract idea.
`
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`

`

`MyMail, Ltd. v. ooVoo, LLC, Not Reported in Fed. Rptr. (2021)
`
`Accordingto the written descriptions, the Pinger processis the
`process by which a client dispatch application and an access
`service communicate. F.g., 863 patent, col. 11, Il. 53-55. To
`update via this process, (1) the client dispatch application
`transmits information, including revision level, to the access
`service; (2) the access service determines whetherthe client
`dispatch application needs a database update; and (3) the
`client dispatch application downloads any database updates.
`See, e.g., 863 patent, col. 12, ll. 16-36. Wesee nothing in the
`written descriptions or MyMail's arguments on appeal
`persuadingus that updating via the Pinger processis a specific
`method or implementation of updating toolbar software. In
`view ofthe patents’ disclosures, the Pinger process does not
`change the character of the claims as a whole.
`
`the MOT script does not change the claims’
`Similarly,
`character as a whole. According to the written descriptions,
`MOTscript refers to the unspecified script language used by
`the Pinger process and elsewherein the patents. F.g., id. at col.
`12, ll. 48-50. The only other disclosures about MOTscript
`relate to its functions of (a) permitting the client dispatch
`application to build a toolbar automatically and (b) providing
`the client dispatch application with database updates. See, e.g.,
`id. at col. 11, Il. 5-13; col. 12, ll. 33-47. That the claimed
`toolbar can be updated via a MOTscript does not change the
`claims’ focus on the abstract idea ofupdating toolbar software
`over a network withoutuser intervention.
`
`*6 MyMail argues that its claims are instead directed to an
`improvement in the functionality of the software updating
`process. According to MyMail, its new and specific method
`of updating software via a Pinger process or a MOTscript
`improvesthe functionality of updating software “by allowing
`the toolbar to be updated via the [P]inger process or MOT
`script method.” Appellant's Br. at 30; accord, e.g., id. at 31—
`32. MyMail contendsthat the district court over-generalized
`its claims by ignoring the Pinger process and MOTscript
`methods for updating and modifying a toolbar.
`
`The written
`umnpersuasive.
`are
`arguments
`MyMail's
`descriptions provide no support
`for MyMail's purported
`improvement in computer functionality. As noted, updating
`via the Pinger process proceedsexactly as the claimed method
`of updating, which is abstract:
`the user device transmits
`information to the server; the server determines whether the
`user device needs an update; and the user device receives
`
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`
`update data, updates the toolbar, and displays the updated
`toolbar. And the MOTscript is merely a language that the
`Pinger process uses. The Pinger process and MOTscript
`therefore do little more than describe the abstract idea of
`
`updating software over a network without user intervention.
`Weseenothing in the specification sug-gesting that the Pinger
`process or MOTscript improvedprior art processes.
`
`MyMail also never explains how updating via the Pinger
`process or MOTscript improves computer functionality. At
`most, MyMail asserts that
`its claims improve computer
`functionality by enabling updating via a Pinger process or
`MOTscript. Such conclusory statements, however, fail to
`provide the level of detail our case law requires to establish an
`improvement in computer functionality. Compare Appellant's
`Br. 30-35 (arguing that the claimed toolbar's capacity to be
`updated via the Pinger process or MOT script
`improves
`computer functionality by allowing toolbars to be updated via
`the Pinger process or MOTscript), with, e.g., Koninklijke
`KPNN.V. v. Gemalto M2M GmbH,942 F.3d 1143, 1150 (Fed.
`Cir. 2019) (holding that a limitation requiring modification of
`a permutation to data “in time” improved the function of error
`detection sys-tems to detect systemic errors), and Thales
`Visionix Inc. v. United States, 850 F.3d 1343, 1348-49 (Fed.
`Cir. 2017) (holding that a particular configuration of sensors
`improvedthe accuracy of calculating the position and orien-
`tation of an object on a moving platform). In sum, without
`more, we are unpersuaded by MyMail's bare and rote as-
`sertions
`that a claimed capability improves
`computer
`functionality by enabling that capability.
`
`Because MyMail's claims are directed to abstract ideas, we
`turn to Step TwoofAlice.‘
`
`B. Step Two
`
`Wefind no inventive concept sufficient to transform the
`nature of the claims into a patent-eligible application. At Step
`Two, the inventive concept must be significantly more than
`the abstractideaitself. BASCOM Glob. Internet Servs., Inc. v.
`AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016).It
`cannot simply be an instruction to im-plement or apply the
`abstract idea on a computer. Jd. The inventive concept must
`also be more than well-understood, routine, or conventional
`activity. Affinity Labs, 838 F.3d at 1262.
`
`

`

`MyMail, Ltd. v. ooVoo, LLC, Not Reported in Fed. Rptr. (2021)
`
`description undercuts MyMail's characterization ofthe Pinger
`processas a specific way ofupdating toolbar data without user
`intervention.
`
`Second, MyMail relies heavily on the Board's denials of
`institution and the Board's
`final written decision of
`
`patentability. According to MyMail, it was legally incorrect
`for the district court to declare the Board's findings irrele-vant.
`Instead, “[a]t a minimum, the [Board] decisions show that
`there is a plausible basis for MyMail's contention that the
`Pinger process/MOTscript method was or was not a well-
`understood, routine and conventional methodat the time of
`the invention of the MyMail Patents.”Jd. at 41.
`
`In Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138
`(Fed. Cir. 2016), we rejected a similar prior-art based
`argument as a misstatement of the law. While “the § 101
`patent-eligibility inquiry and, say, the § 102 novelty inquiry
`might sometimes overlap,” we explainedthat the search for an
`inventive conceptis distinct from demonstrat-ing novelty. Jd.
`at 1151 (quoting Mayo Collaborative Servs. v. Prometheus
`Labs., Inc., 566 U.S. 66, 90, 132 S.Ct. 1289, 182 L.Ed.2d 321
`(2012)). Indeed, “a claim for a new abstract ideais still an
`abstract idea.’ Jd. Here, the Board's decisions do not supply
`an inventive concept, where there is none in the representative
`claims. Nor do they create a genuine factual dispute over
`whether updating via the Pinger process or MOTscript was
`well-understood, routine, or conventional. This is because, as
`noted, the Pinger process and MOTscript merely describe the
`abstract ideaitself.
`
`*7 Here, the individual claim elements are either generic
`computer components or routine activity. For example, the
`representative claims recite “a user Internet device” and “a
`server,” which are no more than a generic computer and
`server, respectively. See °863 patent, col. 29, ll. 30, 41; °070
`patent, col. 29, ll. 42, 55. These components perform routine
`functions, like “displaying a toolbar comprising one or more
`buttons,” “sending a revision level” from the device to the
`server, “determining” at the server whether the device needs
`an update, “receiving”at the device “toolbar update data,” and
`“initiating” at the device “an operation to update the toolbar
`data.” See ’863 patent, col. 29, Il. 30-31, 38-39, 41-49; see
`also °070 patent, col. 29, ll. 42-43, 55—65. These conventional
`steps, specified at a high level of generality, are insufficient to
`supply an inventive concept. Ultramercial, Inc. v. Hulu, LLC,
`772 F.3d 709, 716 (Fed. Cir. 2014).
`
`Even when viewing the claim elements as an ordered
`combination, we discern no inventive concept in the process
`of sending information from a user device to a server,
`determining at the server whether the user device should
`receive toolbar update data, receiving at the user device the
`update data, updating the toolbar, and displaying the toolbar.
`
`Wealso see no inventive concept arising from the district
`court's
`construction of the term “toolbar.” As noted
`
`the Pinger process and MOT script merely
`previously,
`describe the abstract claimed process. Therefore,
`the
`representative claims’ use of the Pinger process and MOT
`script cannot supply the necessary inventive concept. See BSG
`Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir.
`2018) (“It has been clear since Alice that a claimed invention's
`use of the ineligible concept to which it is directed cannot
`supply the inventive concept
`that renders the invention
`“significantly more’ than that ineligible concept.”).
`
`*8 Finally, MyMail argues that judgment on the pleadingsis
`inappropriate here, where the written descriptions char-
`acterize the claimed toolbar's capability of updating via a
`Pinger process or a MOTscript as “unique properties.” See,
`e.g.,
`°863 patent, col. 10,
`Il. 15-17. We disagree. The
`characterization of updating via a Pinger process or MOT
`
`Weare unpersuaded by MyMail's arguments to the contrary. script as unique does not demandadifferent conclusion on
`First, MyMail arguesthat its claims are directed at improving
`eligibility. The Pinger process and MOT script merely
`the functionality of a toolbar by providing “a specific ‘pinger
`describe the abstract ideaitself. For these reasons, we hold that
`process’ as a means to update the toolbar data display
`the representative claimsare ineligible under § 101.
`dynamically and automatically without user intervention.”
`Appellant's Br. 39-40. Relatedly, MyMail contends that the
`Pinger process confines the scope ofits claims to a specific
`application of the concept of updating toolbar data. As with
`MyMail's corresponding Step One arguments,
`the written
`
`III. Conclusion
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`MyMail, Ltd. v. ooVoo, LLC, Not Reported in Fed. Rptr. (2021)
`
`Wehaveconsidered MyMail's remaining arguments andfind
`them to be without merit. Because the district court properly
`granted the appellees judgmenton the pleadings, we affirm.
`
`AFFIRMED
`
`All Citations
`
`Not Reported in Fed. Rptr., 2021 WL 3671364
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`MyMail, Ltd. v. ooVoo, LLC, Not Reported in Fed. Rptr. (2021)
`
`Footnotes
`
`The written descriptions also describe the Pinger process as comprising “an entity that acts transparently as a ‘services’
`coordinator,” which provides services, including “[u]pdate services that can perform client software, database, and
`maintenanceservices during periodsof inactivity.” ’863 patent, col. 10, Il. 17-29.
`
`2
`
`In an inter partes review for which a third party petitioned, the Board upheld the patentability of claims of the ’863
`patent because noneofthe cited prior art disclosed the use of a Pinger process or MOTscript to update a toolbar. For
`the same reason, the Board denied IAC's two petitions for review of claims of the *863 patent and the ’070 patent,
`respectively.
`
`Wereject the appellees’ contention that the district court misconstrued the term “toolbar.” Given our conclusion that
`the asserted claimsare ineligible under that construction, we see no need to discussthe district court's thoughtful claim
`construction.
`
`In reply, MyMail also argues that the purported claimed advance—providing a toolbar capable of being updated
`dynamically via the Pinger process or MOT script—solves a prior art problem by “[e]liminat[ing] the need for a
`computer user to configure and reconfigure computer net-working software for network access through a multiplicity
`of ISPs and Network Access Providers.” E.g., ’863 patent, col. 4,
`ll. 58-61. We see no support in the written
`descriptions for MyMail's attorney argument.
`
`Our case law has used the word “new”in both the novelty and patent-eligibility contexts. We, however, have never
`subsumed novelty (or nonobviousness) into patent eligibility. Rather, our use of “new” to describe patent-eligible
`claims harkensbackto the “new and useful” language in § 101.
`
`
`
`End of Document
`
`© 2022 Thomson Reuters. No claim to original U.S. Government Works.
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