IP Law Daily, PATENT—N.D. Cal.: Two patents for dynamic update of toolbar database invalidated on remand from Federal Circuit, (May 12, 2020)

By John W. Scanlan, J.D.

Cited embodiments had nearly identical functions as the claims, and did not change the claims’ character as being directed to the abstract idea of updating toolbar software over a network without user intervention.

Two patents for updating toolbars on personal computers and other Internet-connected devices were directed toward the abstract idea of updating toolbar software over the Internet without user intervention and lacked an inventive concept, the U.S. District Court for the Northern District of California has ruled in finding the patents’ claims were not patent eligible. The district court did not change from its prior ruling despite its construction of the term "toolbar" at the direction of the Federal Circuit, which had vacated its prior decision (MyMail, Ltd. v. ooVoo, LLC, May 7, 2020, Koh, L.).

MyMail is the assignee of two patents—U.S. Patent no. 8,275,863 ("the ’863 Patent"), called "Modifying a Toolbar," and no. 9,021,070 ("the ’070 Patent"), called "Dynamically Modifying a Toolbar"—that describe a toolbar database that stores information regarding the attributes of the toolbar. When the device with the toolbar connects to the Internet, a "client dispatch application" on it initiates a "pinger" that sends information to the database, which then determines whether the database needs updates; if so, the server sends the updates to the device. The patents describe the use of a "Pinger process" as one embodiment for performing this function, with a "MOT script" as an alternative to this process. The ’070 patent is a continuation of the ’863 patent and the two patents have similar claims, identical figures, and almost identical specifications.

In 2016, MyMail brought patent infringement claims in separate actions against ooVoo, LLC, and IAC Search & Media, Inc., asserting that they infringed several claims of the two patents; both defendants filed counterclaims. The suits were transferred to the Northern District of California and eventually were assigned to the same court. The defendants filed to invalidate the patents as being patent-ineligible and moved for judgment on the pleadings; the court granted the motion, finding that the claims were directed to the abstract idea of "a process for updating toolbar software over a network without user intervention." MyMail appealed to the Federal Circuit, which vacated the district court’s decision because the lower court had not construed the term "toolbar." On remand, the district court construed the term "toolbar" as "a button bar that can be dynamically changed or updated via a Pinger process or a MOT script," and the defendants filed a renewed motion for judgment on the pleadings. The court treated claim 1 of each of the patents as representative, noting that they were substantially similar.

Abstract idea. Finding that its construction of the term "toolbar" would not change its earlier decision, the court again determined that the claims were directed toward an abstract idea under step one of the Alice test, given their character as a whole and given existing precedent. It found that the claims described a process of sending data from a toolbar database to a server, analyzing the data to determine if the toolbar needs to be updated and sending update data from the Internet, and automatically updating the toolbar with the update data. The claims recited adding a button to a toolbar or changing an attribute of an existing button, but the court noted that the specifications did not mention adding or changing a button.

Contrary to MyMail’s argument, the court’s use of the language "a Pinger process and a MOT script" in the construction of "toolbar" did not change the fact that the character as a whole was directed to "updating toolbar software over the Internet without user intervention." The court examined the descriptions of "Pinger process" and "MOT script" in the specification and determined that the function of both was to transmit data, analyze the data to determine whether an update to the toolbar was required, and then send an update if necessary. As such, their functions were nearly identical to the patents’ claims and did not change the claims’ character as a whole.

Furthermore, Federal Circuit caselaw has established that claims involving the gathering and processing of information are directed to an abstract idea; the district court found the present claims to be similar in nature because they recite a process for transmitting data, analyzing it, and sending a response. They also were analogous to claims relating to using communications networks to update software stored on computers, which other courts have found to be abstract, as are the claims involving distributing software updates to a computer. Although MyMail asserted that the claims were not directed to an abstract idea because they use the specific process of a Pinger process or a MOT script for updating the toolbar automatically, the court found that MyMail had never identified the specific improvement from the invention, explained how the toolbar’s ability to be updated using a Pinger process or a MOT script improved the update process, or identified how this was a specific implementation of a solution to a problem in the prior art. The specification mentioned "at least ten problems" solved by the invention, but the court found that none of these problems related to the toolbar update or even mentioned a toolbar or a process for updating one.

Inventive concept. Similarly, the court’s construction of the term "toolbar" did not change its previous ruling that none of the claims provided an inventive concept pursuant to step two of Alice. The claims recited a "user Internet device" and a server and the specifications referred only to generic computers and servers. The claims used these conventional components to perform routine functions described at a high level of generality, including displaying, sending, and receiving information and initiating an update. MyMail did not argue that any individual component of a Pinger process or MOT script was non-conventional or non-generic, and Federal Circuit precedent has found similar components to be generic. The specification showed that these components functioned in a conventional and well-understood manner when changing or updating the toolbar. The use of a Pinger process or MOT script to change or update the toolbar merely implemented the claims’ abstract idea and did not provide an inventive concept. Furthermore, the ordered combination of the claim elements did not yield an inventive concept because they used conventional and well-understood steps of checking data to determine if an update was necessary.

The statement in the specification that the ability to be dynamically changed using the Pinger process or MOT script was a "unique property" of the invention was not enough by itself to prevent dismissal. This was a conclusory statement and did not create an issue of material fact. Three PTAB decisions upholding the validity of these patents were not relevant to the court’s decision because the PTAB proceedings can address validity only under Secs. 102 and 103, not the issue of subject-matter eligibility under Sec. 101 that was at issue in the present proceeding.

This case is No. 17-CV-04487-LHK.

Attorneys: Alfredo A. Bismonte (Beck, Bismonte & Finley LLP) for MyMail, Ltd. Jared A. Brandyberry (Baker & Hostetler LLP) for ooVoo LLC.

Companies: MyMail, Ltd.; ooVoo LLC

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