Mymail, Ltd. v. Oovoo, LLC

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
MYMAIL, LTD.,
Plaintiff-Appellant
v.
OOVOO, LLC,
Defendant-Appellee
______________________
2020-1825
______________________
Appeal from the United States District Court for the
Northern District of California in No. 5:17-cv-04487-LHK,
Judge Lucy H. Koh.
-------------------------------------------------
MYMAIL, LTD.,
Plaintiff-Appellant
v.
IAC SEARCH & MEDIA, INC.,
Defendant-Appellee
______________________
2020-1826
______________________
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MYMAIL, LTD . v. OOVOO, LLC 2
Appeal from the United States District Court for the
Northern District of California in No. 5:17-cv-04488-LHK,
Judge Lucy H. Koh.
______________________
Decided: August 19, 2021
______________________
ERIC W ILLIAM BUETHER, Buether Joe & Counselors,
LLC, Dallas, TX, for plaintiff-appellant. Also represented
by THERESA D AWSON .
ROBERT LOUIS H AILS , JR., Baker & Hostetler LLP,
Washington, DC, for defendants-appellees. Also repre-
sented by CASSANDRA SIMMONS , T. CY WALKER.
______________________
Before M OORE, Chief Judge, O’M ALLEY and REYNA, Circuit
Judges.
O’M ALLEY, Circuit Judge.
MyMail, Ltd. appeals from a pair of identical decisions
of the United States District Court for the Northern Dis-
trict of California granting ooVoo, LLC’s and IAC Search &
Media, Inc.’s renewed motions for judgment on the plead-
ings. In a prior appeal, this court vacated the district
court’s judgments on the pleadings and remanded because
the district court failed to address the parties’ claim con-
struction dispute before considering the eligibility of
MyMail’s patent claims under 35 U.S.C. § 101. MyMail,
Ltd. v. ooVoo, LLC (MyMail I), 934 F.3d 1373, 1381 (Fed.
Cir. 2019). On remand, the district court construed the dis-
puted term, “toolbar.” Under this construction, the court
again held that the claims of MyMail’s patents are ineligi-
ble. MyMail, Ltd. v. ooVoo, LLC (MyMail II), Nos. 17-cv-
04487-LHK, 17-cv-04488-LHK, 2020 WL 2219036, at *22
(N.D. Cal. May 7, 2020). For the reasons explained below,
we affirm as to both decisions.
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I. BACKGROUND
A. The Asserted Patents
The two asserted patents—U.S. Patent Nos. 8,275,863
(“the ’863 patent”) and 9,021,070 (“the ’070 patent”)—have
virtually identical written descriptions. The ’863 patent is
entitled “Method of Modifying a Toolbar,” and the ’070 pa-
tent is entitled “Dynamically Modifying a Toolbar.” ’863
patent, at [54]; ’070 patent, at [54]. The patents describe
the field of invention as relating generally to digital data
networks and more particularly to “network access and to
minimizing unauthorized interception of data and denial of
network services.” E.g., ’863 patent, col. 1, ll. 26–29. They
further describe the present invention as a method of and
apparatus for (a) simplifying the process of access to a net-
work, (b) dividing the responsibility of servicing a user
wanting to access the network, and (c) minimizing the pos-
sibility of improper dissemination of email header data, as
well as the possibility of improper use of network resources.
See, e.g., id. at col. 3, ll. 44–50.
The written descriptions describe a user—e.g., a com-
puter system—that includes a client dispatch application.
E.g., id. at col. 9, ll. 2–3. The client dispatch application
communicates with an access service by transmitting user
information and receiving access information for a particu-
lar Internet Service Provider (“ISP”). See, e.g., id. at col. 7,
l. 24–col. 8, l. 3. The client dispatch application may then
connect to that ISP. E.g., id. at col. 8, ll. 4–16.
In addition to the client dispatch application, the user
includes several databases for storing information, includ-
ing a button bar database. E.g., id. at col. 9, ll. 20–23. The
button bar database includes information related to creat-
ing and modifying a button bar—i.e., a toolbar. E.g., id. at
col. 10, ll. 7–9. The toolbar is a human interface through
which numerous functions may be initiated. E.g., id. Ac-
cording to the written descriptions, the toolbar “has some
unique properties as it can be dynamically changed or
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MYMAIL, LTD . v. OOVOO, LLC 4
updated via a Pinger process or a MOT script.” E.g., id. at
col. 10, ll. 15–17.
The written descriptions explain that the Pinger is a
process through which all communications between the cli-
ent dispatch application and the access service take place.1
E.g., id. at col. 11, ll. 53–55. According to the process, the
client dispatch application initiates a pinger, or pinger
message, with header information. E.g., id. at col. 11,
ll. 44–52; col. 12, ll. 16–24. The header information in-
cludes the current user ID, the account owner ID, PAP ID,
the current IP address assigned to the user, Group ID, the
user’s current time, database revisions levels, and the re-
vision levels of the client dispatch application and other re-
lated software. E.g., id. With this information, the access
service can determine if a user needs a database or file up-
date. E.g., id. at col. 12, ll. 25–28. In this way, the pinger
process “allows the client dispatch application and the ac-
cess service to interact and download database updates (or
other information) to the user.” E.g., id. at col. 12, ll. 33–36.
The patents describe MOT script in several ways. MOT
is not “an acronym for anything meaningful.” E.g., id. at
col. 12, ll. 50–51. It merely refers to the script language
used by the Pinger process and elsewhere in the patents.
E.g., id. at col. 12, ll. 48–50. And, according to the written
descriptions, “[a]s will be appreciated, a MOT script defines
how to build a button bar using the button bar database [ ]
and its database entries.” E.g., id. at col. 11, ll. 5–7. The
client dispatch application can use the MOT script and but-
ton bar database information to build the toolbar
1 The written descriptions also describe the Pinger
process as comprising “an entity that acts transparently as
a ‘services’ coordinator,” which provides services, including
“[u]pdate services that can perform client software, data-
base, and maintenance services during periods of inactiv-
ity.” ’863 patent, col. 10, ll. 17–29.
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MYMAIL, LTD . v. OOVOO, LLC 5
automatically according to the specifications of the MOT
script. E.g., id. at col. 11, ll. 10–13. The written descrip-
tions also identify MOT script as a way to provide updates
to databases. E.g., id. at col. 12, ll. 36–47. The access ser-
vice may provide the client dispatch application with MOT
script and other data through a web page site, an email
message, a file transfer procedure site, or other similar net-
working storage and transport mechanisms. E.g., id.
Claim 1 of the ’863 patent and claim 1 of the ’070 patent
are representative. Claim 1 of the ’863 patent recites:
1. A method of modifying a toolbar, comprising the
steps of:
a user Internet device displaying a toolbar compris-
ing 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 but-
ton 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 de-
termining, from the revision level, the user Inter-
net 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 in-
teraction an operation to update the toolbar data in
accordance with the toolbar update data received;
the user Internet device updating, by the opera-
tion, the toolbar data in accordance with the
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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.
Id. at col. 29, ll. 27–62.
Claim 1 of the ’070 patent is similar. It, however, re-
cites a method for “dynamically” modifying a toolbar. See
’070 patent, col. 29, ll. 40–41. It also claims “information
associated with the one or more toolbar-defining data-
bases” instead of a revision level, “wherein the information
associated with the toolbar data includes at least one mem-
ber of a group comprising a revision level, version, time,
date, user ID, account owner ID, PAP ID, IP address, ses-
sion keys, billing data, name, address, account infor-
mation, connection history, procedures performed by a
user, group ID, e-mail address, e-mail ID, e-mail password,
residential address, and phone number.” See id. at col. 29,
l. 40–col. 30, l. 20.
B. Procedural History
MyMail separately sued ooVoo and IAC for infringe-
ment of claims 1–5, 9–13, 16–17, 19–20, and 23 of the ’863
patent and claims 1–13 and 15–22 of the ’070 patent. On
March 16, 2018, without construing any debated claim
terms or assuming MyMail’s construction of those terms to
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MYMAIL, LTD . v. OOVOO, LLC 7
be accurate, the district court granted ooVoo and IAC’s mo-
tions for judgment on the pleadings, holding that MyMail’s
patent claims were ineligible under 35 U.S.C. § 101. On
appeal, the parties strenuously debated the meaning of the
term “toolbar” in the representative claims, largely predi-
cating their § 101 debate on the meaning of that term. We
declined to interpret the term in the first instance. We also
declined ooVoo and IAC’s alternative invitation to assess
patent eligibility under MyMail’s proposed construction in
the first instance. Because the record before us was not yet
ripe for appellate review, we vacated and remanded for the
district court to construe the disputed term in the first in-
stance and to reassess whether the asserted claims recite
ineligible subject matter. MyMail I, 934 F.3d at 1380.
On remand, the district court construed the term
“toolbar” to mean “a button bar that can be dynamically
changed or updated via a Pinger process or a MOT script.”
MyMail, Ltd. v. IAC Search & Media, Inc., No. 17-cv-
04488-LHK, 2020 WL 1043659, at *1 (N.D. Cal. Mar. 4,
2020). The court explained that its construction imposed a
meaningful limitation on the claims. Id. at *11. Although
the construction does not require that the toolbar be dy-
namically changed or updated by a Pinger process or MOT
script, the toolbar must have such a capability, “regardless
of whether the toolbar can be dynamically changed or up-
dated by other means.” Id.
Despite accepting MyMail’s construction of the dis-
puted term, the district court granted the defendants’ re-
newed motions for judgment on the pleadings on May 7,
2020. MyMail II, 2020 WL 2219036, at *22. It analyzed
the two representative claims together because of their
substantially similar wording and the patents’ nearly iden-
tical written descriptions. Id. at *9.
At Step One of the Alice framework, the court held that,
even in light of its construction of “toolbar,” the claims are
directed to the abstract idea of updating toolbar software
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MYMAIL, LTD . v. OOVOO, LLC 8
over a network without user intervention. Id. at *10–17.
It reviewed the written descriptions’ disclosures on the
Pinger process and the MOT script, concluding that their
functions are nearly identical to the steps recited in the
representative claims. See id. at *11–13. The court found
MyMail’s arguments on the Pinger process and the MOT
script to be vague and conclusory because MyMail failed to
identify a specific improvement in computer functionality
or a problem in the prior art that the claims solve. See id.
at *15–16. The court added that MyMail failed to explain
how the toolbar, as construed, improves the toolbar update
process. Id. at *15.
At Step Two of the Alice framework, the district court
found that all components of the claims, including the
Pinger process and MOT script, are generic and function in
a conventional manner. Id. at *17–19. The district court
further found that the toolbar’s ability to be dynamically
changed or updated via a Pinger process or a MOT script
did not provide an inventive concept because it merely im-
plements the abstract idea. Id. at *19. Although MyMail
made no arguments about the ordered combination of claim
elements, the district court found no inventive concept in
the combination. Id. at *19. The court concluded that
there was no disputed issue of fact to preclude dismissal.
It also rejected MyMail’s argument that the denials of in-
stitution and the patentability determination of the Patent
Trial and Appeal Board (“Board”) were relevant to patent
eligibility.2 Id. at *20–22.
2 In an inter partes review for which a third party
petitioned, the Board upheld the patentability of claims of
the ’863 patent because none of the cited prior art disclosed
the use of a Pinger process or MOT script to update a
toolbar. For the same reason, the Board denied IAC’s two
petitions for review of claims of the ’863 patent and the ’070
patent, respectively.
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MYMAIL, LTD . v. OOVOO, LLC 9
MyMail timely appealed. We have jurisdiction pursu-
ant to 28 U.S.C. § 1295(a)(1).
II. D ISCUSSION
We review a grant of judgment on the pleadings under
the law of the regional circuit. Amdocs (Israel) Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288, 1293 (Fed. Cir. 2016).
The Ninth Circuit reviews a grant of judgment on the
pleadings de novo. Daewoo Elecs. Am. Inc. v. Opta Corp.,
875 F.3d 1241, 1246 (9th Cir. 2017). Judgment on the
pleadings is proper when, accepting all factual allegations
in the complaint as true, there is no issue of material fact
in dispute, and the moving party is entitled to judgment as
a matter of law. Chavez v. United States, 683 F.3d 1102,
1108 (9th Cir. 2012).
Patent-eligibility is a question of law with underlying
factual issues. SAP Am., Inc. v. InvestPic, LLC, 898 F.3d
1161, 1166 (Fed. Cir. 2018). We review the ultimate issue
of law de novo. Berkheimer v. HP Inc., 881 F.3d 1360, 1365
(Fed. Cir. 2018).
Under § 101, the scope of patentable subject matter en-
compasses “any new and useful process, machine, manu-
facture, or composition of matter, or any new and useful
improvement thereof.” 35 U.S.C. § 101. Section 101, how-
ever, has an important implicit exception that laws of na-
ture, natural phenomena, and abstract ideas are not patent
eligible. See Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014). We follow the Supreme Court’s two-step Alice
framework for determining patent eligibility. Id. at 217.
At Step One, we determine whether the claims at issue are
directed to an ineligible law of nature, natural phenome-
non, or abstract idea. Id. If so, we proceed to Step Two,
considering the elements of each claim both individually
and as an ordered combination to determine whether the
additional elements transform the nature of the claim into
a patent-eligible application. Id. This second step is often
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MYMAIL, LTD . v. OOVOO, LLC 10
described as a search for an inventive concept. Id. at
217–18.
A. Step One
We hold that claim 1 of the ’863 patent and claim 1 of
the ’070 patent are directed to the ineligible concept of up-
dating toolbar software over a network without user inter-
vention.3 At Step One, 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 mat-
ter. Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016). In cases involving software
innovations, this inquiry often turns on whether the claims
focus on specific asserted improvements in computer capa-
bilities or instead on a process or system that qualifies as
an abstract idea for which computers are invoked merely
as a tool. Uniloc USA, Inc. v. LG Elecs. USA, Inc., 957 F.3d
1303, 1306–07 (Fed. Cir. 2020).
We have long “treated collecting information, including
when limited to particular content (which does not change
its character as information), as within the realm of ab-
stract ideas.” Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016). We have similarly
treated analyzing information by steps that people perform
mentally, or by mathematical algorithms, without more, as
mental processes falling within the abstract-idea category.
Id. at 1354. And “merely presenting the results of abstract
processes of collecting and analyzing information, without
more (such as identifying a particular tool for presenta-
tion), is abstract.” Id.
3 We reject the appellees’ contention that the district
court misconstrued the term “toolbar.” Given our conclu-
sion that the asserted claims are ineligible under that con-
struction, we see no need to discuss the district court’s
thoughtful claim construction.
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MYMAIL, LTD . v. OOVOO, LLC 11
Here, the representative claims are directed to updat-
ing toolbar software over a network without user interven-
tion. This amounts to no more than invoking computers as
a tool to perform the abstract ideas of collecting infor-
mation, analyzing information, and presenting the results
of the analysis in the software update context. For exam-
ple, the representative claims recite collecting information
by sending “a revision level of the one or more toolbar-de-
fining databases” or “information associated with the one
or more toolbar-defining databases” from a user device to a
server. ’863 patent, col. 29, ll. 39–41; ’070 patent, col. 29,
ll. 55–56. They further recite analyzing information by, at
the server, determining from the collected information
whether the user device should receive toolbar update
data. ’863 patent, col. 29, ll. 42–44; ’070 patent, col. 29,
ll. 57–59. And they recite presenting the results by, at the
user device, receiving the toolbar update data, updating
the toolbar automatically, and displaying the updated
toolbar. ’863 patent, col. 29, ll. 45–62; ’070 patent, col. 29,
l. 60–col. 30, l. 11.
Despite MyMail’s contention otherwise, both in the
earlier appeal and here, the district court’s construction of
the term “toolbar” to require the capability of being up-
dated by a Pinger process or a MOT script does not rescue
the representative claims from abstraction. Their charac-
ter as a whole remains directed to updating toolbar soft-
ware over a network without user intervention.
The written descriptions make clear that updating via
the Pinger process is no different than updating via the
steps of the claimed method, which is directed to an ab-
stract idea. According to the written descriptions, the
Pinger process is the process by which a client dispatch ap-
plication and an access service communicate. E.g., ’863 pa-
tent, col. 11, ll. 53–55. To update via this process, (1) the
client dispatch application transmits information, includ-
ing revision level, to the access service; (2) the access ser-
vice determines whether the client dispatch application
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needs a database update; and (3) the client dispatch appli-
cation downloads any database updates. See, e.g., ’863 pa-
tent, col. 12, ll. 16–36. We see nothing in the written
descriptions or MyMail’s arguments on appeal persuading
us that updating via the Pinger process is a specific method
or implementation of updating toolbar software. In view of
the patents’ disclosures, the Pinger process does not change
the character of the claims as a whole.
Similarly, the MOT script does not change the claims’
character as a whole. According to the written descrip-
tions, MOT script refers to the unspecified script language
used by the Pinger process and elsewhere in the patents.
E.g., id. at col. 12, ll. 48–50. The only other disclosures
about MOT script relate to its functions of (a) permitting
the client dispatch application to build a toolbar automati-
cally and (b) providing the client dispatch application with
database updates. See, e.g., id. at col. 11, ll. 5–13; col. 12,
ll. 33–47. That the claimed toolbar can be updated via a
MOT script does not change the claims’ focus on the ab-
stract idea of updating toolbar software over a network
without user intervention.
MyMail argues that its claims are instead directed to
an improvement in the functionality of the software updat-
ing process. According to MyMail, its new and specific
method of updating software via a Pinger process or a MOT
script improves the functionality of updating software “by
allowing the toolbar to be updated via the [P]inger process
or MOT script method.” Appellant’s Br. at 30; accord, e.g.,
id. at 31–32. MyMail contends that the district court over-
generalized its claims by ignoring the Pinger process and
MOT script methods for updating and modifying a toolbar.
MyMail’s arguments are unpersuasive. The written
descriptions provide no support for MyMail’s purported im-
provement in computer functionality. As noted, updating
via the Pinger process proceeds exactly as the claimed
method of updating, which is abstract: the user device
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MYMAIL, LTD . v. OOVOO, LLC 13
transmits information to the server; the server determines
whether the user device needs an update; and the user de-
vice receives update data, updates the toolbar, and displays
the updated toolbar. And the MOT script is merely a lan-
guage that the Pinger process uses. The Pinger process
and MOT script therefore do little more than describe the
abstract idea of updating software over a network without
user intervention. We see nothing in the specification sug-
gesting that the Pinger process or MOT script improved
prior art processes.
MyMail also never explains how updating via the
Pinger process or MOT script improves computer function-
ality. At most, MyMail asserts that its claims improve
computer functionality by enabling updating via a Pinger
process or MOT script. Such conclusory statements, how-
ever, fail to provide the level of detail our case law requires
to establish an improvement in computer functionality.
Compare Appellant’s Br. 30–35 (arguing that the claimed
toolbar’s capacity to be updated via the Pinger process or
MOT script improves computer functionality by allowing
toolbars to be updated via the Pinger process or MOT
script), with, e.g., Koninklijke KPN N.V. v. Gemalto M2M
GmbH, 942 F.3d 1143, 1150 (Fed. Cir. 2019) (holding that
a limitation requiring modification of a permutation to
data “in time” improved the function of error detection sys-
tems to detect systemic errors), and Thales Visionix Inc. v.
United States, 850 F.3d 1343, 1348–49 (Fed. Cir. 2017)
(holding that a particular configuration of sensors im-
proved the accuracy of calculating the position and orien-
tation of an object on a moving platform). In sum, without
more, we are unpersuaded by MyMail’s bare and rote as-
sertions that a claimed capability improves computer func-
tionality by enabling that capability.
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MYMAIL, LTD . v. OOVOO, LLC 14
Because MyMail’s claims are directed to abstract ideas,
we turn to Step Two of Alice.4
B. Step Two
We find no inventive concept sufficient to transform
the nature of the claims into a patent-eligible application.
At Step Two, the inventive concept must be significantly
more than the abstract idea itself. BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349
(Fed. Cir. 2016). It cannot simply be an instruction to im-
plement or apply the abstract idea on a computer. Id. The
inventive concept must also be more than well-understood,
routine, or conventional activity. Affinity Labs, 838 F.3d
at 1262.
Here, the individual claim elements are either generic
computer components or routine activity. For example, the
representative claims recite “a user Internet device” and “a
server,” which are no more than a generic computer and
server, respectively. See ’863 patent, col. 29, ll. 30, 41; ’070
patent, col. 29, ll. 42, 55. These components perform rou-
tine functions, like “displaying a toolbar comprising one or
more buttons,” “sending a revision level” from the device to
the server, “determining” at the server whether the device
needs an update, “receiving” at the device “toolbar update
data,” and “initiating” at the device “an operation to update
the toolbar data.” See ’863 patent, col. 29, ll. 30–31, 38–39,
4 In reply, MyMail also argues that the purported
claimed advance—providing a toolbar capable of being up-
dated dynamically via the Pinger process or MOT script—
solves a prior art problem by “[e]liminat[ing] the need for a
computer user to configure and reconfigure computer net-
working software for network access through a multiplicity
of ISPs and Network Access Providers.” E.g., ’863 patent,
col. 4, ll. 58–61. We see no support in the written descrip-
tions for MyMail’s attorney argument.
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MYMAIL, LTD . v. OOVOO, LLC 15
41–49; see also ’070 patent, col. 29, ll. 42–43, 55–65. These
conventional steps, specified at a high level of generality,
are insufficient to supply an inventive concept. Ultramer-
cial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014).
Even when viewing the claim elements as an ordered
combination, we discern no inventive concept in the process
of sending information from a user device to a server, de-
termining at the server whether the user device should re-
ceive toolbar update data, receiving at the user device the
update data, updating the toolbar, and displaying the
toolbar.
We also see no inventive concept arising from the dis-
trict court’s construction of the term “toolbar.” As noted
previously, the Pinger process and MOT script merely de-
scribe the abstract claimed process. Therefore, the repre-
sentative claims’ use of the Pinger process and MOT script
cannot supply the necessary inventive concept. See BSG
Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed.
Cir. 2018) (“It has been clear since Alice that a claimed in-
vention’s use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the in-
vention ‘significantly more’ than that ineligible concept.”).
We are unpersuaded by MyMail’s arguments to the
contrary. First, MyMail argues that its claims are directed
at improving the functionality of a toolbar by providing “a
specific ‘pinger process’ as a means to update the toolbar
data display dynamically and automatically without user
intervention.” Appellant’s Br. 39–40. Relatedly, MyMail
contends that the Pinger process confines the scope of its
claims to a specific application of the concept of updating
toolbar data. As with MyMail’s corresponding Step One
arguments, the written description undercuts MyMail’s
characterization of the Pinger process as a specific way of
updating toolbar data without user intervention.
Second, MyMail relies heavily on the Board’s denials of
institution and the Board’s final written decision of
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patentability. According to MyMail, it was legally incorrect
for the district court to declare the Board’s findings irrele-
vant. Instead, “[a]t a minimum, the [Board] decisions show
that there is a plausible basis for MyMail’s contention that
the Pinger process/MOT script method was or was not a
well-understood, routine and conventional method at the
time of the invention of the MyMail Patents.” Id. at 41.
In Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138 (Fed. Cir. 2016), we rejected a similar prior-art based
argument as a misstatement of the law. While “the § 101
patent-eligibility inquiry and, say, the § 102 novelty in-
quiry might sometimes overlap,” we explained that the
search for an inventive concept is distinct from demonstrat-
ing novelty. Id. at 1151 (quoting Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 90 (2012)). Indeed,
“a claim for a new abstract idea is still an abstract idea.”5
Id. Here, the Board’s decisions do not supply an inventive
concept, where there is none in the representative claims.
Nor do they create a genuine factual dispute over whether
updating via the Pinger process or MOT script was well-
understood, routine, or conventional. This is because, as
noted, the Pinger process and MOT script merely describe
the abstract idea itself.
Finally, MyMail argues that judgment on the pleadings
is inappropriate here, where the written descriptions char-
acterize the claimed toolbar’s capability of updating via a
Pinger process or a MOT script as “unique properties.” See,
e.g., ’863 patent, col. 10, ll. 15–17. We disagree. The char-
acterization of updating via a Pinger process or MOT script
5 Our case law has used the word “new” in both the
novelty and patent-eligibility contexts. We, however, have
never subsumed novelty (or nonobviousness) into patent el-
igibility. Rather, our use of “new” to describe patent-eligi-
ble claims harkens back to the “new and useful” language
in § 101.
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MYMAIL, LTD . v. OOVOO, LLC 17
as unique does not demand a different conclusion on eligi-
bility. The Pinger process and MOT script merely describe
the abstract idea itself. For these reasons, we hold that the
representative claims are ineligible under § 101.
III. CONCLUSION
We have considered MyMail’s remaining arguments
and find them to be without merit. Because the district
court properly granted the appellees judgment on the
pleadings, we affirm.
AFFIRMED
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