A district court has granted a Rule 12 motion for judgment on the pleadings, holding that claims of two patents directed to modifying toolbars of Internet applications are patent-ineligible under the Alice test and 35 USC § 101. MyMail, Ltd. v. ooVoo, LLC, Nos. 17-CV-04487-LHK and 17-CV-04488-LHK (N.D. Cal. March 16, 2018) (Judge Lucy Koh).
The patents-in-suit were US 8,275,863 and 9,021,070, the ’070 patent being a continuation of the ’863 patent. The court considered, as representative, claim 1 from each patent. Claim 1 of the ’863 patent is reproduced below:
1. A method of modifying a toolbar, comprising the steps of:
a user Internet device displaying a toolbar comprising one or more buttons, the toolbar defined by toolbar data stored in one or more toolbar-defining databases, the toolbar data comprising a plurality of attributes, each attribute associated with a button of the toolbar, wherein for each button of the toolbar, at least one of the plurality of attributes identifying a function to be performed when the button is actuated by the user Internet device;
the user Internet device automatically sending a revision level of the one or more toolbar-defining databases to a predetermined network address;
a server at the predetermined network address determining, from the revision level, the user Internet device should receive the toolbar update data;
the user Internet device receiving toolbar update data from the Internet;
the user Internet device initiating without user interaction an operation to update the toolbar data in accordance with the toolbar update data received;
the user Internet device updating, by the operation, the toolbar data in accordance with the toolbar update data, thereby producing updated toolbar data, the updating comprising at least one of the following steps (a) and (b), each respectively comprising:
(a) writing at least one new attribute to the original toolbar data, wherein the writing at least one new attribute to the toolbar data comprises changing the one or more buttons of the toolbar by adding a button; and
(b) updating at least one attribute of the toolbar data; and
the user Internet device displaying the toolbar as defined by the updated toolbar data.
Under step 1 of the Alice test, the court found that the claims are directed to the abstract idea of updating toolbar software over a network without user intervention. The claims here were akin to those found patent-ineligible in FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089 (Fed. Cir. 2016) and Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), in that they “recite a process comprised of transmitting data, analyzing data, and generating a response to transmitted data.”
Turning to step 2 of the Alice test, none of the claims provided in inventive concept because they simply recited conventional hardware and conventional programming techniques. The claims were thus like those in Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332 (Fed. Cir. 2017), because they could be broken up into generic steps, and simply performing “toolbar updates and modifications . . . ‘without user interaction’ and ‘dynamically’” did not “make the claimed invention any less abstract.”