On remand from the Federal Circuit, the United States District Court for the Northern District of California deemed MyMail’s software patents ineligible under 35 U.S.C. § 101 due to lack of inventive concept. MyMail Ltd. v. ooVoo, LLC, 17-cv-04487 (N.D. Cal. May 7, 2020).MyMail (plaintiff) sued ooVoo (defendant) for infringement of U.S. Patent Nos. 8,275,863 and 9,021,070, which are both directed to “toolbars” that are displayed on computers. Claim 1 of the ‘863 patent, which is representative of the claims for both patents, recites in part:
1. A method of modifying a toolbar, comprising the steps of:
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 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
(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.
After remand by the Federal Circuit vacating the Court’s judgment on the pleadings for lack of claim construction on the term “toolbar,” the parties briefed the claim construction and Defendants again filed a motion to dismiss under Rule 12(c).
The Court applied the two-part Alice test, holding that the asserted claims were directed to the abstract idea of updating toolbar software over a network without user intervention. The construction of “toolbar” as “a button bar that can be dynamically changed or updated via a Pinger process or MOT script” did not change the fact that the claims were directed to transmitting data, analyzing data, and updating a toolbar, and thus generic and lacking inventiveness.
The District Court had previously held that the patents only claimed generic, conventional computer components and lacked an inventive concept. After the Court’s claim construction, the toolbar’s “Pinger process” and “MOT script” still failed to provide an inventive concept. MyMail argued that the toolbar patents were a “specific and improved way of updating a toolbar” but without additional details on why those were not generic, conventional, or routine, the Court held that there was no inventive
concept to satisfy step two of Alice. This lack of inventive concept did not raise a dispute of fact, and the Court granted the motion to dismiss on the pleadings
Perhaps MyMail could have survived the motion to dismiss had they provided technical details explaining why their claims provided an improvement over existing patents. It would seem that factual allegations of this type would present sufficient factual questions to survive a Rule 12 motion. Once again, for software patents in particular, incorporating technological improvements into the specification would greatly help any future § 101 eligibility issues. This has been a consistent theme among Fed Circuit decisions on § 101. The problem remains that patents that were written over ten years ago are subject to revised rules of today. This makes patent drafting very unpredictable.
Ricardo earned his JD from Tulane University Law School in 2019. His background in Microbiology and Virology has guided his interest into the field of Intellectual Property.