MyMail, Ltd. v. ooVoo, LLC
5:17-cv-04487
| N.D. Cal. | Mar 4, 2020Background:
- MyMail owns U.S. Patents Nos. 8,275,863 and 9,021,070, which claim methods for modifying/dynamically modifying a "toolbar" (button/bar displayed on Internet-connected devices) using a client "pinger" and MOT scripts to update toolbar-defining databases.
- Defendants ooVoo and IAC moved to invalidate the patents under 35 U.S.C. § 101; the district court previously granted that motion but the Federal Circuit vacated and remanded because the court had not construed the term "toolbar."
- The parties agreed to resolve claim construction for the single disputed term "toolbar" before addressing renewed § 101 motions; the court consolidated related cases and appointed the undersigned.
- The patents’ specifications repeatedly describe the "Toolbar of the present invention" as having the unique property of being able to be "dynamically changed or updated via a Pinger process or a MOT script," and every disclosed embodiment shows that capability.
- During prosecution MyMail submitted an IDS offering a visual/arrangement-focused definition of "toolbar" (a row/column of on-screen buttons) but also disclaimed intending to limit claim terms to those submitted definitions.
- Prior decisions (PTAB IPR rulings and an E.D. Tex. district ruling) construed "toolbar" similarly to MyMail’s proposed construction; the court found those constructions persuasive.
Issues:
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Meaning of "toolbar" | "Toolbar" is definitional in the spec: "a button bar that can be generated, dynamically changed, or updated via a Pinger process or a MOT script." | "Toolbar" is a generic arrangement of user controls to activate application functions; IDS supports this ordinary meaning. | Court adopted a specification-based construction but omitted "generated" and adjusted wording: "a button bar that can be dynamically changed or updated via a Pinger process or a MOT script." |
| Whether adopting spec language improperly imports limitations | Spec language is definitional (uses "Toolbar of the present invention" and consistently describes the dynamic-update capability). | Relying on the spec would improperly import limitations and inject uncertainty for a jury. | Court held the spec language is definitional (repeatedly described as a unique property) and therefore may properly limit the term. |
| Effect of prosecution-history/IDS definition | IDS was not intended to limit claims; MyMail expressly disavowed adopting the submitted definitions as exclusive. | IDS provided a clear, unmistakable definition supporting Defendants’ construction. | Court gave greater weight to the specification; found the IDS not sufficiently clear or binding and not mutually exclusive of the spec construction. |
| Whether to include "generated" (as in PTAB) | PTAB and MyMail included "generated" in their constructions. | Defendants opposed adding extraneous limitations. | Court rejected adding "generated" because the specs emphasize "dynamically changed or updated" as the unique property and "generated" appears only in an exemplary context. |
Key Cases Cited
- Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp., 744 F.3d 1272 (Fed. Cir. 2014) (en banc) (claim construction principles).
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (specification is primary guide to claim meaning).
- Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) (specification and intrinsic evidence guidance).
- Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314 (Fed. Cir. 2003) (clear and unmistakable prosecution statements can disclaim claim scope).
- Northern Telecom Ltd. v. Samsung Elecs. Co., 215 F.3d 1281 (Fed. Cir. 2000) (ambiguous prosecution statements are not definitional).
- Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121 (Fed. Cir. 2011) (consistent reference to limitation as "present invention" can limit scope).
- In re Abbott Diabetes Care Inc., 696 F.3d 1142 (Fed. Cir. 2012) (every embodiment showing a feature supports limiting claim to that feature).
- Poly-America, L.P. v. API Indus., Inc., 839 F.3d 1131 (Fed. Cir. 2016) (consistent embodiment disclosure supports limiting claim scope).
- Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111 (Fed. Cir. 2004) (claims define the invention).
- Prima Tek II, L.L.C. v. Polypap, S.A.R.L., 318 F.3d 1143 (Fed. Cir. 2003) (claims not limited to preferred embodiment absent clear language).
- MyMail, Ltd. v. ooVoo, LLC, 934 F.3d 1373 (Fed. Cir. 2019) (vacated and remanded prior § 101 invalidation because court had not construed "toolbar").