Docket: Case No. 17–CV–04487–LHK; Case No. 17–CV–04488–LHK
Court: District Court, N.D. California; March 16, 2018; Federal District Court
MyMail, Ltd. filed patent infringement lawsuits against ooVoo, LLC and IAC Search Media, Inc., claiming violations of U.S. Patent Nos. 8,275,863 ('863 Patent) and 9,021,070 ('070 Patent). The Court, presided over by Judge Lucy H. Koh, evaluated the Defendants' motions for judgment on the pleadings and granted them. MyMail, a Texas Limited Partnership based in Athens, Texas, is the assignee of both patents. ooVoo is a Delaware corporation with its main office in New York, while IAC is also a Delaware corporation based in Oakland, California.
The '863 Patent, titled "Method of Modifying a Toolbar," was filed on April 16, 2003, and issued on September 25, 2012. The '070 Patent, titled "Dynamically Modifying a Toolbar," was filed on June 20, 2013, and issued on April 28, 2015. The patents are related, with the '070 Patent being a continuation of U.S. Application No. 13/573,311, which is a continuation of the '863 Patent. Both patents feature similar claims, identical figures, and nearly identical specifications, focusing on digital data networks and methods for minimizing unauthorized data interception and denial of network services. They specifically describe a toolbar database that stores attributes of toolbars displayed on Internet-connected devices, detailing a process whereby a client dispatch application updates the toolbar database through a "pinger" that communicates with a network server to manage necessary updates.
MyMail claims infringement of specific claims from two patents: claims 1-5, 9-13, 16-17, 19-20, and 23 of the '863 Patent, with claim 1 designated as representative, and claims 1-13 and 15-22 of the '070 Patent, also with claim 1 as representative. Claim 1 of the '863 Patent describes a method for modifying a toolbar on a user’s Internet device. This method includes displaying a toolbar defined by data stored in databases, which consists of various attributes linked to toolbar buttons. Key steps in the claim involve the user device automatically sending a revision level to a server, which determines if the device should receive updated toolbar data. The device then receives and installs the updates automatically, modifying the toolbar data by either adding new attributes or updating existing ones, and ultimately displays the updated toolbar.
Claim 1 of the '070 Patent outlines a method for dynamically modifying a toolbar on a user Internet device. This method involves displaying a toolbar with buttons defined by data stored in databases, where each button has attributes that specify its functions. The process includes: automatically communicating toolbar data to a server without user intervention, receiving and determining the need for updated toolbar data at the user device, and updating the toolbar based on this new data. The update can involve adding new attributes or modifying existing button attributes, ultimately leading to the display of the modified toolbar. The information regarding toolbar data encompasses various identifiers such as user ID, account information, and connection history.
Regarding procedural history, MyMail initiated patent infringement complaints against ooVoo on November 18, 2016, and against IAC on December 20, 2016, both in the U.S. District Court for the Eastern District of Texas. Subsequently, ooVoo and IAC filed motions to dismiss for improper venue, along with counterclaims against MyMail. MyMail opposed these motions and responded to the counterclaims. On July 11, 2017, the court transferred both actions to a different district, with MyMail's case against ooVoo assigned to Magistrate Judge Susan van Keulen and that against IAC to Magistrate Judge Joseph Spero. MyMail declined magistrate jurisdiction in both cases, resulting in reassignments to other judges on September 1, 2017.
On October 2, 2017, MyMail filed a motion to relate its case against IAC to its case against ooVoo, which the Court granted on October 10, 2017. Consequently, the action against IAC was reassigned to the presiding judge. On October 31, 2017, the Defendants submitted motions for judgment on the pleadings, which were identical in both actions. MyMail opposed these motions on November 21, 2017, filing the same opposition in both cases. The Defendants replied on December 5, 2017, also submitting identical replies.
The legal standard for a motion for judgment on the pleadings under Federal Rule of Civil Procedure 12(c) allows a party to seek judgment after pleadings are closed, provided it does not delay the trial. Judgment is granted when all factual allegations in the complaint are accepted as true, and no material facts are in dispute, entitling the moving party to judgment as a matter of law. This standard parallels that of a motion to dismiss under Rule 12(b)(6), with the key difference being the timing of the filing. A complaint must contain enough factual content to suggest a plausible claim for relief, allowing the court to infer the defendant's liability. The plausibility standard requires more than mere possibility of unlawful action, and the court must construe pleadings in favor of the nonmoving party.
The Defendants' motions also challenge the patent eligibility of the claims under 35 U.S.C. § 101, referencing the Supreme Court's decision in Alice Corp. The determination of whether a claim is patent-eligible is a legal question, although certain underlying factual issues may arise. A district court can address patent eligibility through a motion for judgment on the pleadings, as supported by relevant case law.
Claim construction is not always necessary to determine patent eligibility under 35 U.S.C. § 101, as established by the Federal Circuit. If the court fully understands the claimed subject matter, eligibility can be assessed based on pleadings alone. Section 101 outlines patentable subject matter as "any new and useful process, machine, manufacture, or composition of matter," but explicitly excludes laws of nature, natural phenomena, and abstract ideas to prevent impeding innovation. The U.S. Supreme Court emphasized that while all inventions may reference these exceptions, courts must carefully apply this exclusion to avoid undermining patent law. The Alice framework, developed from prior cases, provides a two-step analysis for eligibility: first, determine if the claims are directed to ineligible concepts; second, assess whether any additional elements transform the claims into a patent-eligible application, focusing on whether they contain an "inventive concept" that significantly adds to the ineligible concept.
The excerpt outlines the challenges courts face in distinguishing between abstract ideas and concrete concepts under the Alice framework for patent eligibility. The U.S. Supreme Court and Federal Circuit have not established a clear test for this distinction, leading courts to compare claims to those previously deemed abstract. Key cases illustrate that claims related to fundamental economic practices, such as intermediated settlement and hedging, are considered abstract. Furthermore, information itself is recognized as intangible, and claims that involve acquiring, analyzing, or displaying information are often categorized as abstract. However, determining the abstract nature of computer-implemented claims remains complex, with courts employing various methods to evaluate these claims. The text highlights the lack of precision in defining boundaries between abstract and concrete concepts in the context of patent law.
Courts assess patent claims by determining if they improve the functioning of a computer or if they simply use computers as tools for an abstract process. Claims that result in specific technological improvements, such as chip architecture or software functionality, may be considered patent-eligible and not abstract. The Federal Circuit has upheld patent eligibility in cases demonstrating specific improvements in computer capabilities, such as in Visual Memory LLC v. NVIDIA Corp., where an improved memory system was deemed non-abstract, and in McRO, Inc. v. Bandai Namco Games Am. Inc., where automation of animation techniques was also found non-abstract. Claims must not be too analogous to traditional practices; those resembling fundamental practices prevalent in brick-and-mortar contexts may be considered abstract, as seen in Intellectual Ventures I LLC v. Symantec Corp. Furthermore, claims that could be performed mentally or with simple tools, like pencil and paper, may also be deemed abstract, as demonstrated in Synopsys, Inc. v. Mentor Graphics Corp. Courts use these criteria to evaluate the patentability of claims related to computer technology.
In CyberSource Corp. v. Retail Decisions, Inc., the Federal Circuit ruled that a claim for verifying credit card transactions over the Internet is patent-ineligible because it can be performed mentally or with traditional methods, such as pen and paper. Similarly, in Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., claims for a computer-implemented system allowing anonymous loan shopping were also deemed abstract, as the necessary steps could be executed without a computer. The Federal Circuit emphasizes that the initial step of the Alice inquiry aims to identify claims that are not directed to patent-ineligible concepts, requiring a holistic examination of the claims' character.
The second step of the Alice analysis focuses on whether claims with abstract ideas incorporate elements that transform them into patent-eligible applications. This transformation must involve more than a mere recitation of the abstract idea followed by its application. The Supreme Court clarified that merely stating an abstract idea and instructing its application is insufficient for patent eligibility. The Federal Circuit has consistently held that a computer's role must be meaningful, transcending 'well-understood, routine, and conventional activities' known in the industry. Generic computer components do not meet the inventive concept requirement unless they are integral to the invention, enabling processes that wouldn't be possible through conventional methods. Mere mention of specific components cannot confer patent eligibility if they only perform standard functions. Determining whether a claim element is routine or conventional involves factual inquiries that must be substantiated by clear and convincing evidence, which extends beyond what was known in prior art.
Limiting an abstract idea to a specific field of use or adding superficial post-solution components does not render it patentable, as established by the U.S. Supreme Court in Bilski and reiterated in Alice. The Federal Circuit has echoed this sentiment, noting that attempts to confine an abstract idea to a particular technological environment are insufficient for patent eligibility. However, claims that are "necessarily rooted in computer technology" and address specific problems within that domain may qualify as transformative, providing an inventive concept. For instance, the Federal Circuit recognized inventive concepts in claims that tackled Internet-centric issues, such as third-party advertisements, and in BASCOM, where a unique arrangement for Internet content filtering was deemed non-conventional. Similarly, Amdocs illustrated that claims involving a distributed architecture for managing data across networks satisfied the inventive concept requirement.
Additionally, the principle of preemption is critical in assessing patent eligibility. The Supreme Court has indicated that a claim is not patentable if it is overly abstract and effectively grants a monopoly over an abstract idea. However, the absence of complete preemption alone does not confirm patent eligibility, as highlighted in FairWarning.
Defendants seek judgment on the pleadings, arguing that the claims of the patents-in-suit are patent-ineligible abstract ideas under 35 U.S.C. § 101, employing the Alice framework for analysis. The court acknowledges that it can analyze representative claims rather than every claim individually, with both parties agreeing that claim 1 of the '863 Patent and claim 1 of the '070 Patent serve as representatives due to their similar wording and specifications.
In applying Alice Step One, the court examines whether the claims are directed to an abstract idea, ensuring that the characterization of the claims is not overly abstract and remains aligned with the claims' language. Defendants contend the claims pertain to "updating software stored on a computer," which has been deemed abstract in prior cases. Conversely, MyMail argues that the claims describe a specific process for modifying toolbar data over a network without user interaction, representing a concrete improvement in software functionality.
The court determines that the claims indeed describe a process for updating toolbar software via a network autonomously, involving steps such as sending data to a server, analyzing it for necessary updates, retrieving update data from the Internet, and executing the update without user involvement.
The claims in question focus on the process of updating a toolbar rather than simply adding or altering a button. Both the '863 Patent and the '070 Patent specifications do not mention button modifications, emphasizing that the essence of the claims relates to updating toolbar software over a network without user intervention. The Court finds these claims to be directed to an abstract idea based on comparisons to prior cases. Specifically, they resemble claims categorized as gathering and processing information, aligning with precedents such as FairWarning IP, LLC v. Iatric Systems, Inc., where claims involving fraud detection through data collection and analysis were deemed abstract. Similarly, in West View Research, LLC v. Audi AG, claims focused on data querying, analysis, and response generation were also categorized as abstract ideas. The claims in the current case involve receiving and analyzing data to determine toolbar update needs, paralleling processes in previous rulings that handle data collection and responses to data queries. Furthermore, the Court cites White Knuckle Gaming, LLC v. Electronic Arts, Inc. as an example of claims using communication networks for software updates being deemed abstract. Overall, the claims do not exceed the realm of basic data processing and updating functions, thus falling under the classification of abstract ideas.
Claims in White Knuckle Gaming pertained to a method for gaming companies to update sports video game software to reflect real-life changes, such as performance statistics and appearances, by transmitting data from a server to a console via the Internet. The court determined these claims represented a straightforward internet-based method for updating software, thus constituting an abstract idea. The process involved only conventional computer, server, and network components performing routine functions. The claims in this case are comparable, as both involve updating data via the Internet. While White Knuckle Gaming focused on video game data, the current case concerns toolbar data, which similarly determines characteristics displayed on Internet-connected devices. Both cases feature generic components executing standard functions for their updating processes, with neither set of claims including specific software algorithms.
In Personalized Media Communications, LLC v. Amazon.com, the court addressed claims for a process that updates operating system software on a remote computer through a network. The court found these claims directed to the abstract idea of updating operating instructions, deeming them generic and akin to checking if a document is up-to-date. The claims in the current case closely align with those deemed abstract in Personalized Media.
The claims in the current case involve a process for updating software on a computer, which includes transmitting information about the software, determining the need for an update, and sending updated data for implementation. These claims are likened to the process of ensuring legal documents are current, suggesting they lack novelty. MyMail's assertion that the claims are distinct due to their automatic operation without user intervention is rejected, as the Federal Circuit has ruled that automation of manual processes using generic computers does not equate to a patentable advancement. The claims are compared to those in *Intellectual Ventures I, LLC v. Motorola Mobility LLC*, where similar steps of presenting, selecting, transmitting, and receiving software updates were deemed abstract, with the court emphasizing that generic recitations do not provide sufficient detail to constitute a non-abstract idea. The court concludes that the claims at issue are likewise directed to the abstract concept of distributing software updates.
In the analysis of Alice step two, the court seeks an "inventive concept" that transforms the claim into a patent-eligible application, requiring that this concept be significantly more than the abstract idea itself and not merely conventional activity. The court cites prior cases to reinforce the need for an inventive concept that exceeds the boundaries of routine and well-understood practices.
An abstract idea cannot be merely implemented or applied on a computer; it requires an inventive concept found in an inventive set of components, methods, programming, or approach to achieving a desired result. The court assessed the claims and determined that none of their elements provide an inventive concept, as all hardware components are generic and conventional. The claims include a "user Internet device" and a server, both described as generic Internet-connected computers. The toolbar mentioned, equipped with buttons, is confirmed to be widely used, with operations initiated through standard human interfaces. The claims require these conventional components to perform typical functions like displaying a toolbar and sending or receiving information, which lack unconventional operation or specific programming. The language used in the claims is too general to provide an inventive concept. MyMail's argument referencing the updating of the toolbar by adding or modifying buttons does not demonstrate any inventive or non-conventional methods, as these actions are routine results of a toolbar update. The claims specify that toolbar attributes are defined by data in databases, with updates being standard processes rather than inventive. Additionally, the ordered combination of elements in the claims does not yield an inventive concept, contrasting with the DDR case where the Federal Circuit recognized validity due to a specific manipulation of Internet interactions to achieve a unique result.
The claims in question do not present a novel process for software updating, instead outlining conventional steps such as checking toolbar data and performing updates when necessary. These claims utilize generic components executing their standard functions to automate software updates, similar to those in Intellectual Ventures I, rather than altering a routine process. The specifications corroborate this view, indicating that the claims do not produce results that deviate from typical software update sequences. Although the claims mention actions being performed "automatically" and "dynamically," mere automation does not confer patentability, as shown in Procter & Gamble Co. v. Quantificare, Inc. A general-purpose computer can execute such automated functions with minimal programming, which does not constitute an inventive concept. Consequently, the Court determines that the claims are directed to an abstract idea regarding toolbar software updates without user intervention and lack any inventive concept, rendering them patent-ineligible. The Court grants the Defendants' motions for judgment on the pleadings, concluding the matter with finality.
