U.S. District Court Again Finds Patents For Updating Toolbar Without User Intervention Invalid

• Published date: 25 June 2020
• Subject Matter: Intellectual Property, Patent
• Law Firm: Holland & Knight
• Author: Allison Lucier

On remand from the Federal Circuit, the U.S. District Court for the Northern District of California once again found patents directed to a method of modifying computer toolbars without user interaction invalid under Section 101.

Background

MyMail asserted patents that are directed to a method of modifying computer toolbars without user interaction on internet connected devices. Specifically, the patents disclose a toolbar database that stores data defining the attributes of the toolbar, e.g., button captions and button functionality, such that when a device is connected to the internet, the server can send any updates to the toolbar database to the device.

The Northern District of California dismissed the complaint and found that the asserted claims were directed to the abstract idea of "updating toolbar software without user intervention." The district court declined to address the parties' claim construction dispute regarding the term "toolbar."

On appeal, the Federal Circuit vacated that decision (See previous Holland & Knight blog, "Federal Circuit: Construe Disputed Claim Terms Before Deciding ' 101 Eligibility," Aug. 19, 2019), writing that determining patent eligibility requires a full understanding of the basic character of the claimed subject matter. Thus, if the parties raise a claim construction dispute at the Rule 12(c) stage, the district court must either adopt the non-moving party's constructions or resolve the dispute to whatever extent is needed to conduct the ' 101 analysis. The Federal Circuit remanded for further proceedings.

On remand, the defendants' renewed their motion for judgment on the pleadings. Following the Federal Circuit's directive, the court held claim construction proceedings, construing the term "toolbar" as "a button bar that can be dynamically changed or updated via a Pinger process or a MOT script." Notably, the court adopted the construction proposed by MyMail, the patentee in this case. On appeal, MyMail had argued that this construction of "toolbar" demonstrates that the claims of the patents are directed to a particular technological process for improving an exclusively computer-oriented device.

In finding that the claims were drawn to nonstatutory subject matter under 35 U.S.C. ' 101, the district court applied the two-step Mayo/Alice analysis.

Step One: Are the Claims Directed to an Abstract Idea?

When the court first considered Alice step one, it found that the claims were directed to the abstract idea of "a...