Construe Claims First; Then Rule on Eligibility

MyMail, Ltd. v. ooVoo, LLC (Fed. Cir. 2019)

In a split decision, the Federal Circuit has remanded this case — holding that the district court needs to construe the claims before adjuding patent eligibility.

MyMail’s patents cover the method method of modifying toolbars on a (PC) computer display from the server-side without user interaction.  N.D. Cal. Judge Koh dismissed the case on the pleadings — finding the claims directed to the abstract idea of “updating toolbar software over a network without user intervention.”  The court noted that the claims basically gather, analyze and process information and generate a response to transmitted data — all of which are generally abstract functions. In addition the court noted that the claims “relate to [the abstract idea of] using communications networks to update software stored on computers.” Under Alice Step 2, the court found no inventive concepts in the claim — but rather generic, conventional components such as “Internet-connected computers and servers.”  While a “toolbar” might be interesting, they were already in widespread use as of the invention and so not an inventive concept.

In an earlier proceeding, the E.D. Tex. construed the term “toolbar” with some particularity as a “button bar that can be dynamically changed or updated via a Pinger process or a MOT script.” MyMail, Ltd. v. Yahoo! Inc., 16-CV-1000 (E.D. Tex. Sept. 9, 2017). MyMail requested the same construction in this case — hoping that the added complexity would either (1) take the concept out of the abstract idea realm or (2) be considered an inventive concept.  ooVoo argued that the prior claim construction was “wrong.”

Judge Koh did not address claim construction in her R. 12(c) dismissal on the pleadings and, on appeal, the Federal Circuit has vacated that holding:

[T]he district court’s failure to address the parties’ claim construction dispute is error under Aatrix.

Although claim construction is a question of law, the Federal Circuit deferred on the idea of construing the term itself — noting its role of providing “de novo review” is quite different from and more limited than a district court’s initial determination of the merits. So, on remand, the district court will need to construe the claims and then consider whether they are still ineligible.

The majority opinion was authored by Judge Reyna and joined by Judge O’Malley.  Judge Lourie wrote in dissent and argued that the claim construction issue is a “mirage” because the claims are “clearly abstract, regardless of claim construction.”

The claims’ breadth illustrates their abstract nature. They cover any toolbar modification, on any of the multitudes of Internet-connected devices, using generic servers and Internet functionality. . . .  [A]ny invention in using known devices in a new way to transmit data must lie in using the devices themselves differently to accomplish a new process, not simply transmitting a different type of data according to the same process.

According to Judge Lourie, this is not a case of “inventive programming.”

= = = =

The patent here stems from a broad provisional application filed in 1997 by Netsafe. Netsafe owed Robert Derry $70,000. He obtained judgment and was awarded the patent rights as payment back in 2000. Derry is the head of MyMail and lead inventor Thomas Selgas is a co-founder.

Mymail obtained $6.8 million settlement on the patents from various companies back in 2005 and Selgas reportedly received a distribution of $1.1 million. According to IRS court filings, Selgas bought gold coins rather than paying taxes on the income. [US v. Selgas][DOJ Press Release]. That case is ongoing.

= = = =

In a separate IPR, the PTAB found the patent not proven invalid as obvious. Unified Patents Inc. v. MyMail, Ltd., IPR2017-00967.

= = = =

Eric Buether from Buether Joe & Carpenter (Dallas) argued for the patentee MyMail; Robert Hails from Baker Hostetler (DC) argued for the defendants.

51 thoughts on “Construe Claims First; Then Rule on Eligibility

  1. 11

    On remand perhaps a more thorough prior art search will be done? Even Wikipedia notes that what we now call PC toolbars were originally called “ribbons,” and cites these two footnotes dated before the indicated 1997 provisional filing date:
    1. The 1996 Oxford Dictionary of Computing describes the term “ribbon” in user interface design as “…a horizontal row of control icons that can often be redefined to suit the user’s requirements.”- what is currently more commonly referred to as “toolbar”. Illingworth, V. (ed.) (1996). Oxford dictionary of computing. 4ed.
    2. ESPRIT ’88: putting the technology to use : proceedings of the 5th Annual ESPRIT Conference, Brussels, November 14-17, 1988, Part 2. North-Holland. 1988. ISBN 978-0-444-87145-9. Retrieved 28 May 2013. […] a ribbon that contains labeled icons (64×64 bit maps) representing tasks and tools that has been instantiated by the user. Each tasktool is represented by a different icon.
    [Of course it would also be necessary to provide evidence of how these ribbons were updated.]

    1. 11.1

      The 1996 Oxford Dictionary of Computing describes the term “ribbon” in user interface design as “…a horizontal row of control icons that can often be redefined to suit the user’s requirements.”-

      You know what would be really incredible? A physical box with a horizontal row of sub-compartments where the owner of the box could decide what objects to put in the sub-compartments. I bet nobody ever thought of THAT before. No electricity required, baby!

  2. 10

    Note how Judge Lourie’s dissent deals with the narrow claim interpretation of the prior D.C. and IPR decisions which read two additional limitations from the spec into the claims:
    “[T]he specification is clear that neither the unclaimed pinger process nor the unclaimed MOT script can be the inventive concept. The pinger process itself is not disclosed as the invention, but instead is functionality “assumed to be part of the access service provider.” Its teaching on the “MOT script” is no more enlightening.”
    [Factual disputations anyone?]

    1. 10.1

      As noted below, Lourie understands the facts and the posture of the case better than the majority. He also understands how subject matter eligibility works.

      It’s a straightforward analysis: if the only element that’s new in your data processing claim is a description of the content of some data (e.g., “toolbar data”) then your claim is ineligible. Why? Because the claim protects data. Sure, it protects data in a context that includes some non-abstractions (e.g., an old physical machine called a “computer”). But if that context itself is in the prior art (as is the case here) then the eligibility problem remains. You can’t protect data (e.g., “prostate cancer data”) with a patent claim merely by reciting a prior art non-abstract context (e.g., “a piece of paper”). This is easy and sensible and the patent system operated this way for eons. But some people want to make this difficult and complicated. Try to guess why.

      Can you guess why, Dennis? Come on. Just take a guess.

      1. 10.1.1

        The inte11ectually DIShonest canard of “prior art context” clearly is merely a run-away from the Grand Hall experiment (which clearly shows that the core of Malcolm’s view on “computers” is nothing more than the fallacy of the television show “House.”

        It’s not like he does not know that he is prevaricating either.


          “Derpity derp derp derp Monte Hall derp derp derp mcderp!”

          Look at the cl-0-wn dance! Those big shoes can really kick up the dust.

    2. 10.2

      Where in the statutes is this “inventive concept?”

      Quite in fact, the facts surrounding the Act of 1952 show something very different written by Congress.

      1. 10.2.1

        Where in the statutes is this “inventive concept?”

        News flash: statutes don’t need to recite elementary rules of reason and logic that are required to interpret the statute.

        Also, there can be no rational basis for a statute that purports to forbid the application of the most basic forms of reason and logic in the course of conducting a legal analysis.

        A claim that recites “[Prior art data transmission tech] plus [“new” data described by its content]” protects certain data in that prior art context. Data, however, is ineligible subject matter for protecting with a patent. And so the claim is ineligible.

        This is a very straightforward application of legal reasoning and basic logic. It’s not even unique to patent claims. And that’s why you and your maximalists c0 h0 rts need to try to ram junk through C0n gress rather than actually engage in the slightest critical thinking about the issues.

        Dennis and Jason should be ashamed of themselves, by the way, for not addressing this stuff directly himself. But I’m beginning to suspect they have bigger issues to be concerned with, most likely having to do with living in Missouri and Iowa and being surrounded by many of the deplorable human beings in the country.


          News flash: statutes don’t need to recite elementary rules of reason and logic that are required to interpret the statute.

          Nice non sequitur.

          Now answer the question put to you.

          This is a very straightforward application of legal reasoning and basic logic.

          Except it is not – and clearly so, since you dive into non-sequiturs rather than answer the direct and straight forward question.

          actually engage in the slightest critical thinking about the issues.

          From your posts, THIS is something that you would not even recognize.

          should be ashamed of themselves, by the way, for not addressing this stuff directly

          LOL – try it yourself first. I have given your countless opportunities along a panoply of counter points for you to address.

          Funny thing about that – for all of your rants, you have NEVER actually replied in an inte11ectually honest manner.

          Not even once.

          Although I DO recall you engaging David Stein once upon a time, and making an admission against your interests ON the exceptions to the doctrine of printed matter (and funny that, for all of your bravado about “writing a book” on the ongoing conversations of the blog, you have highly selective memory of some very critical conversations.

          Hmm, much like Trump.

  3. 9

    “wherein the uploaded data object is a correlation between x and y”

    “wherein the data embedded on the storage medium is a correlation between x and y”

    Evidently this kind of thing is poised to be considered “inventing” in our Brave New Patent System. Nobody can predict how this will play out!

    Certainly not a tenured professor. It would be soooo uncivil to speculate …

    1. 9.1

      Poised to be….?

      Really Malcolm? More of your typical obfuscations.

      Maybe someone should spell out the exceptions to the judicial doctrine of printed matter for you in a direct and easy to understand Set Theory explication.

      Oh wait, someone already did that.

      1. 9.1.1

        Oh, right. We’re supposed to rely on non-statutory nonsensical judge made doctrines to correct the absurd defects in the statute as drafted.

        Sure that will work.

        Quick question: Is non-obvious useful technical data eligible subject matter? Can such data be protected in certain contexts? Which ones? Give a couple examples.

        Phone Dennis if you have difficulty with this.


          LOL – you clearly have not bothered with even the slightest effort towards understanding that direct and straight forward explication.

          I suggest that you do so prior to commenting.


            direct and straight forward explication.


            There is nothing “direct and straight forward” about a “test” that comprises determining whether an ineligible abstraction recited in a patent claim is “functionally related” to other elements in that same patent claim. It’s self-serving gobbledyg-0-0-k and your incessant mewling reference to this silly “set theory” is just part of your dust-kicking cl-0-wnshow, Bildo. Nobody knows what you’re talking about nobody cares.


              Anyone who bothered with the simple and direct explication would immediately see that you are merely

  4. 8

    From the moment a computer display was capable of displaying graphics and a moving cursor, there was never anything remotely inventive about the concept of arranging action-effecting virtual buttons on the screen.

    That’s all a “toolbar” is. The name alone gives the whole game away.

    1. 8.1

      From the moment that man realized that configurations of the basic particles of protons, neutrons, and electrons were capable of being configured(following the moments of the universe old Laws of Nature), “there was never anything remotely inventive about the concept of arranging these elementary particles”

      (Classic Malcolm “Logic” soon to be released as copyrighted in Malcolm’s “Tell-All” book)

      1. 8.1.1

        “If arranging buttons on a screen that can display anything isn’t inventive then nothing is inventive!”

        Meet Bildo. He’s a patent maximalist. And a glibertarian who goes out of his way to defend white supremacists.

  5. 7

    Lourie got this one right, of course. This patent goes up in flames on remand unless the defendant does something silly and caves.

    The claims are pure gar b@ge.

    1. 7.1

      Your cognitive dissonance is noted.

      Do you even realize that this is NOT a patent law issue as much as it is a civil procedure issue?

      1. 7.1.1

        My very early comment re the civil procedure aspect was blocked.

        Bottom line is that it’s both a patent and a civil procedure issue. Fundamentally, it’s about fairness and the recognition that the PTO granted reams of cr @p in the “do it on a computer” space and continues to do so.

      1. 7.2.1

        So … glibertatian desperados are now defending g@r bage by comparing experienced attorney Ph.D’s who correctly identify gar b@ge as gar b@ge to … Perznit

        Funny stuff. As noted elsewhere, Lourie is ahead of the curve here. Takes five seconds to “construe” these claims and reach the correct result.

        Of course, all that will change when Congress forbids us all from using reason and logic to evaluate claims to … logic.



          So… now…?


          Hey, your emotional control level fits, as does your style of blight, so whether or not you are a “experienced attorney Ph.D” is very much besides the point.

          It is your rather un-patent related behavior that draws the parallel — and a parallel that has LONG been drawn; and LONG been drawn quite accurately. That you seem incapable of “getting this” is very much part of that parallel.


              Not sure just what you think that you mean when you say “Keep digging!,” Malcolm – NPtC has you nailed.

              As I have stated: that you do not seem to grasp this is part of your problem.


                Projecting one’s miserable failings onto others is the oldest trick in the Repu-k-k-k-e playbook, Bildo. You and your new bff have been playing this game for years.


                1. Projecting one’s miserable failings onto others is the oldest trick in the Repu-k-k-k-e playbook,

                  It ALSO happens to be Malcolm’s LONG noted number one meme of Accuse Others.

                  You really are the Trump of these boards, and it is absolutely hilarious that you insist on being oblivious to this.

  6. 6

    This MyMail, Ltd. v. ooVoo, LLC (Fed. Cir. 2019) and the prior Aatrix decision appear to require a Markman claim interpretation at the very start of many patent suits in order to even then-entertain a motion under Alice or Mayo re claiming unpatentable subject matter.
    That could actually be a significant [if unintended] benefit to many defendants in a different respect. Namely, the ability of more defendants to be able to move early for low cost summary judgment decisions of non-infringement. [In contrast to many patent suits in which expanded discovery and many other trial costs drag on until nearly the trial date because of Markman claim interpretations being delayed until then, thus leaving undefined broadly asserted claim scopes until then.]

    1. 6.1

      Claim construction in most of these cases is a trivial exercise. What district court judges need to be on the watch for is patentees creating fake “factual disputes” that don’t exist and are irrelevant to the eligibility issue. The judges need to be sanctioning the offenders. Careful defendants can eliminate distractions by highlighting the undisputed facts. Make the patentee look st-00-pit. Most of them are, after all, in the “do it on a computer” space.

      1. 6.1.2

        A more detailed response I got from an expert noted several different reasons why most 101 motions are unlikely to cause a D.C. judge to conduct a Markman at that point.

        [Also, this MyMail, Ltd. v. ooVoo is unusual in already having inconsistent D.C. claim interpretations.]

  7. 5

    The prior IPR also took a narrow view of the subject claim terminology, and noted that there had been several other D.C. suits.

  8. 2

    Notwithstanding the result here (and especially in view of the dissent – and that dissent’s inherent contradictions with reality), the scoreboard remains broken.

    Congress – hurry up.

    By the way, Greg is wrong (again), as the writing of Reyna was decidedly NOT a finding of eligibility (in the first instance), and this decision does not more than merely chide the regional d1ctator Judge Koh to abide by the Aatrix decision.

  9. 1

    Kevin Noonan once told me that he had the impression from talking to Judge Reyna that he is an Alice “true believer.” I defy anyone to read Judge Reyna’s decision here and conclude that he is a “true believer” in Alice. If anything, this is just the latest data point for my hypothesis that the CAFC (Judge Reyna very much included) is working little-by-little (slowly, slowly, catches monkey) to cabin the SCotUS’s Mayo/Alice excesses.

    1. 1.1

      Agreed; what is more interesting is the ongoing legal Stockholm-syndrome behavior by Judge Lourie, who now apparently has gone from “Alice is an awful decision” to “I see Alice applying everywhere”

      1. 1.1.1

        The reality is that the Lourie and the Obama appointed judges are just tra sh.

        The CAFC needs to be abolished to get rid of these gan gsters.

      2. 1.1.2

        Hey look! It’s the inventor of the “proxy” computer, J. Nicholas Gross. Let’s all bow down before the wisdom.

        Maybe time for a history lesson, for the peanut gallery.


          Translation: Hey look, let me only attack the person on unrelated matters and not pay any attention to the substance of what may be immediately present.

          From Merriam Webster:

          Definition of ad hominem.
          1 : appealing to feelings or prejudices rather than intellect; an ad hominem argument.
          2 : marked by or being an attack on an opponent’s character rather than by an answer to the contentions made an ad hominem personal attack on his rival.

          Hmmm, who else is known for feelings/prejudices rather than intellect…. How very Trump of you, Malcolm.


              Rhetorical question, hypocrite.

              LOL – Malcolm whips out his number one meme of Accuse Others while asking a question (that he just does not want an answer to, and thus mislabels his own question as “rhetorical.”)

              That’s just not how to use that word, Malcolm.

    2. 1.2

      “Judges” like Reyan need to be removed. Just f i l t h. The appointment purchased by SV to get an ignorant anti-technologist on the CAFC.

Comments are closed.