Two years ago, MyMail and ooVoo went to the mat in the Federal Circuit over claims that the District Court for the Northern District of California found ineligible under 35 U.S.C. § 101.  Patent holder MyMail was able to convince two out of three judges on the Federal Circuit panel that the dispute between the parties regarding claim construction required a remand to the Distract Court.  Now, with claims construed and once more found ineligible by the District Court judge, MyMail again appeals.

Background

MyMail's U.S. Patent Nos. 8,275,863 and 9,021,070, are both directed to "methods of modifying toolbars that are displayed on Internet-connected devices such as personal computers."  As an example of the claims under dispute, claim 1 of the '863 patent recites:

A method for dynamically modifying a toolbar, the method comprising:
    displaying the toolbar, at a user Internet device, that includes one or more toolbar buttons, the toolbar defined by toolbar data stored in one or more toolbar-defining databases, the toolbar data comprising a plurality of toolbar button attributes associated with the one or more toolbar buttons of the toolbar, wherein at least one of the plurality of toolbar button attributes identifies a function to be performed by a specific toolbar button upon actuation of the specific toolbar button;
    invoking, from the user Internet device without user intervention, communication of information associated with the one or more toolbar-defining databases to a server associated with a network address;
    receiving, at the server, the information associated with the one or more toolbar-defining databases;
    determining, based on the information associated with the one or more toolbar-defining databases, that the user Internet device should receive updated toolbar data;
    receiving, at the user Internet device, the updated toolbar data in response to determining that the user Internet device should receive the updated toolbar data;
    initiating, at the user Internet device and without user interaction, an operation to update the toolbar data in accordance with the received updated toolbar data;
    updating the toolbar data at the user Internet device based on the operation and in accordance with the updated toolbar data, thereby updating the toolbar data, the updating comprising at least one member of a group comprising (a) and (b): (a) updating the toolbar data to include at least one new attribute of the toolbar data to change the toolbar by adding a toolbar button to the toolbar; and (b) updating the toolbar data to modify an attribute of at least one of the one or more toolbar buttons of the toolbar; and
    displaying at the user Internet device the toolbar as defined by the updated toolbar data, wherein the information associated with the toolbar data includes at least one member of a group comprising a revision level, version, time, date, user ID, account owner ID, PAP ID, IP address, session 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.

In Alice v. CLS Bank, the Supreme Court set forth a two-part test to determine whether claims are directed to patent-eligible subject matter under § 101.  One must first decide whether the claim at hand involves a judicially-excluded law of nature, a natural phenomenon, or an abstract idea.  If so, then one must further decide whether any element or combination of elements in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exclusion.  But elements or combinations of elements that are well-understood, routine, and conventional will not lift the claim over the § 101 hurdle.  While this inquiry is generally carried out as a matter of law, factual issues can come into play when determining whether something is well-understood, routine, and conventional.

Last year, the Federal Circuit provided a major clue as to how to think about patent eligibility in practice.  In Dropbox Inc. v. Synchronoss Techs. Inc., the Court wrote that "an inventive concept exists when a claim recites a specific, discrete implementation of the abstract idea where the particular arrangement of elements is a technical improvement over the prior art."  This suggests that in order for a claim that is otherwise directed to an abstract idea to be successful under § 101, it should have three qualities:  specificity, a technical solution that it provides, and some degree of novelty.  More particularly, there should be a nexus between these three qualities -- specificity, technical character, and novelty should appear in the same claim element or at least be explicitly linked in some fashion in the recitation of the claim.

District Court Proceedings

The claim construction issue centered on the term "toolbar."  The District Court construed this term to mean "a button bar that can be dynamically changed or updated via a Pinger process or a MOT script."  The District Court noted that changing or updating the toolbar with the Pinger process or MOT script is not required but the capability must exist.

While definitions of these two techniques turned out to not be critical in the ultimate § 101 outcome, for sake of completeness they are provided as follows.  A Pinger process is an identification and updating procedure for the toolbar that involves downloading of a database from server device to a client device hosting the toolbar.  A MOT script specifies how the toolbar is built from the database.

Applying part one of Alice, the District Court found that the claims are "directed to the abstract idea of updating toolbar software over a network without user intervention."  The District Court saw no significant difference between how the Pinger process and MOT scripts were defined in the specification versus the language of the claim.  Further, "MyMail failed to identify a specific improvement in computer functionality or a problem in the prior art that the claims solve."

Applying part two, the District Court concluded that all claimed components were generic and conventional, merely implementing the abstract idea.  MyMail did not make any arguments regarding the combination of additional elements, and the District Court found no inventive concept therein.

Federal Circuit Opinion

On appeal, the Federal Circuit largely agreed.

With reference to part one of Alice, the Court wrote that "we look at the focus of the claimed advance over the prior art to determine if the claim's character as a whole is directed to excluded subject matter."  For software inventions, this determination often is based on "whether the claims focus on specific asserted improvements in computer capabilities or instead on a process or system that qualifies as an abstract idea for which computers are invoked merely as a tool."

In view of these parameters, the Court observed that the claims are drawn to "no more than invoking computers as a tool to perform the abstract ideas of collecting information, analyzing information, and presenting the results of the analysis in the software update context."  The construction of the "toolbar" term did nothing to change the Court's view.

MyMail argued, somewhat circularly, that the "claims are instead directed to an improvement in the functionality of the software updating process . . . via a Pinger process or a MOT script."  But the Court found nothing in the specification that supported this notion, and stated that MyMail's arguments regarding the alleged improvement were conclusory.

Moving on to part two, the Court also found no inventive concept in the claims.  In particular, the Court found the claimed computer components to be generic and their functions to be routine.  The Court took a dim view toward the lack of specificity in how the claimed functions are performed, even when considered as an ordered combination in light of the claim construction.

Finally, MyMail cited to its success in avoiding and overcoming prior art challenges at the PTAB.  But MyMail pushed this too far, arguing that it was incorrect for the District Court to ignore those proceedings.  The Court adopted reasoning that we have seen since 2014's Ultramercial v. Hulu -- that claims found novel and/or non-obvious do not automatically have an inventive concept.  Instead, "a claim for a new abstract idea is still an abstract idea."

This aesthetically unsatisfying doctrine is best understood in terms of the three qualities noted above.  Even if there was some daylight between the claimed invention and the prior art, this difference needs to be a specifically-claimed technical improvement.  Since the Court found no technical improvement and implied that the claims were vague, at least two of the three qualities were missing.

Thus, the Court found the claims to lack patentability under § 101.

MyMail, Ltd. v. ooVoo, LLC (Fed. Cir. 2021)
Panel: Chief Judge Moore and Circuit Judges O'Malley and Reyna
Opinion by Circuit Judge O'Malley