MyMail, Ltd. v. OoVoo, LLC

Full title: MYMAIL, LTD., Plaintiff, v. OOVOO, LLC, Defendant. MYMAIL, LTD.…

Court: UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

Date published: May 7, 2020

613 F. Supp. 3d 1142 (N.D. Cal. 2020)

Opinion

Case No. 17-CV-04487-LHK Case No. 17-CV-04488-LHK

2020-05-07

MYMAIL, LTD., Plaintiff, v. OOVOO, LLC, Defendant. MyMail, Ltd., Plaintiff, v. IAC Search & Media, Inc., Defendant.

Alfredo A. Bismonte, Beck, Bismonte & Finley, LLP, San Jose, CA, Brian Andrew Carpenter, Christopher Michael Joe, Pro Hac Vice, Michael David Ricketts, Pro Hac Vice, Buether Joe & Carpenter, LLC, Dallas, TX, for Plaintiff Jared A. Brandyberry, Jared Alan Brandyberry, Pro Hac Vice, Baker & Hostetler LLP-Denver, Denver, CO, Kevin P. Flynn, Baker Hostetler LLP, Cincinnati, OH, Melissa Richards Smith, Gillam & Smith, LLP, Marshall, TX, Robert Louis Hails, Jr., Pro Hac Vice, T. Cy Walker, Pro Hac Vice, Baker Hostetler LLP, Washington, DC, Teresa Carey Chow, Baker & Hostetler LLP, Los Angeles, CA, for Defendants

LUCY H. KOH, United States District Judge

Alfredo A. Bismonte, Beck, Bismonte & Finley, LLP, San Jose, CA, Brian Andrew Carpenter, Christopher Michael Joe, Pro Hac Vice, Michael David Ricketts, Pro Hac Vice, Buether Joe & Carpenter, LLC, Dallas, TX, for Plaintiff

Jared A. Brandyberry, Jared Alan Brandyberry, Pro Hac Vice, Baker & Hostetler LLP-Denver, Denver, CO, Kevin P. Flynn, Baker Hostetler LLP, Cincinnati, OH, Melissa Richards Smith, Gillam & Smith, LLP, Marshall, TX, Robert Louis Hails, Jr., Pro Hac Vice, T. Cy Walker, Pro Hac Vice, Baker Hostetler LLP, Washington, DC, Teresa Carey Chow, Baker & Hostetler LLP, Los Angeles, CA, for Defendants

LUCY H. KOH, United States District Judge ORDER GRANTING DEFENDANTS' RENEWED MOTION FOR JUDGMENT ON THE PLEADINGS Re: Dkt. No. 159

Plaintiff MyMail, Ltd. ("MyMail") filed patent infringement actions against Defendants ooVoo, LLC ("ooVoo") and IAC Search & Media, Inc. ("IAC") (collectively, "Defendants"). MyMail alleges that Defendants infringe claims of U.S. Patent No. 8,275,863 ("the '863 Patent") and U.S. Patent No. 9,021,070 ("the '070 Patent") (collective, "MyMail patents" or "the patents"). Before the Court is Defendants' renewed motion for judgment on the pleadings.¹ See ECF No. 159.² Having considered the submissions of the parties, the relevant law, and the records in these cases, the Court GRANTS Defendants' renewed motion for judgment on the pleadings.

1 Defendants' renewed motion for judgment on the pleadings includes a notice of motion that is separate from the memorandum of points and authorities. Civil Local Rule 7-2(b) provides that the notice of motion and points and authorities should be contained in one document. See Civ. L. R. 7-2(b).

2 On January 8, 2020, the Court consolidated Case Nos. 17-CV-4487 and 17-CV-4488 and designated Case No. 17-CV-04488 as the lead case. ECF No. 139 at 2. "ECF No." refers to docket entries in Case No. 17-CV-4488. Id. "ooVoo ECF No." denotes docket entries in Case No. 17-CV-4487 that were filed prior to consolidation and were not added to the docket in Case No. 17-CV-4488.

I. BACKGROUND

A. Factual Background

1. The Parties

Plaintiff MyMail is a "Texas Limited Partnership" with a primary place of business in Athens, Texas. ooVoo ECF No. 1 ¶ 1. MyMail is the assignee of the '863 and '070 Patents. Id. ¶ 9. Defendant ooVoo is a Delaware corporation with its primary place of business in New York, New York. Id. ¶ 2. Defendant IAC is a Delaware corporation with its primary place of business in Oakland, California. ECF No. 1 ¶ 2.

2. The Patents

The '863 Patent is titled "Method of Modifying a Toolbar." ECF No. 143-1 ( '863 Patent). It was filed on April 16, 2003 and issued on September 25, 2012. The '070 Patent is titled "Dynamically Modifying a Toolbar." ECF No. 143-2 ( '070 Patent). It was filed on June 20, 2013 and issued on April 28, 2015. The two patents are related. Specifically, the '070 Patent is a continuation of U.S. Application No. 13/573,311, which in turn is a continuation application of the '863 Patent. Thus, the '863 Patent and the '070 Patent share similar claims, identical figures, and nearly identical specifications. As such, for simplicity, the Court's citations to the text and figures of the MyMail patents refer to the '863 Patent.

The patents state that they relate "in general to digital data networks and, more particularly, to network access and to minimizing unauthorized interception of data and denial of network services." '863 Patent col. 1:26-29. However, the patents also describe a method for updating toolbars or "button bars" that are displayed on Internet-connected devices such as personal computers. Id. at col. 10:7-11:16. Specifically, the patents disclose a toolbar database that stores data defining the attributes of the toolbar, like button captions and button functionality. Id. at col. 10:38-11:4. When the device that displays the toolbar is connected to the internet, the device executes software called a "client dispatch application" that initiates a "pinger" to update the toolbar database, along with other databases. Id. at col. 11:44-47, col. 12:16-17, col. 17:30-32. The pinger sends information about those databases to a network server, which in turn uses the sent information to determine whether any of the databases require updates. Id. at col. 11:47-52, col. 12:17-24, col. 17:32-40. If any updates are required, the server sends those updates to the device. Id. at col. 17:40-66.

MyMail asserts 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. ECF No. 109 at 5.

B. Procedural History

On November 18, 2016, MyMail filed its complaint for patent infringement against Defendant ooVoo in the United States District Court for the Eastern District of Texas. See ooVoo ECF No. 1. Then, on December 20, 2016, MyMail filed its complaint for patent infringement against Defendant IAC in the same court. See ECF No. 1.

On February 2, 2017, ooVoo moved to dismiss MyMail's action for improper venue, answered MyMail's complaint, and asserted counterclaims against MyMail. ooVoo ECF Nos. 18, 19. On February 3, 2017, MyMail opposed ooVoo's motion to dismiss for improper venue. ooVoo ECF No. 24.

Similarly, on February 13, 2017, IAC moved to dismiss MyMail's action for improper venue, answered MyMail's complaint, and asserted counterclaims against MyMail. ECF Nos. 16, 17. On that same day, MyMail opposed IAC's motion to dismiss for improper venue. ECF No. 20.

On February 23, 2017, MyMail answered ooVoo's counterclaims. ooVoo ECF No. 27. On March 6, 2017, MyMail answered IAC's counterclaims. ECF No. 27.

On July 11, 2017, the United States District Court for the Eastern District of Texas transferred both of MyMail's actions to this district. ooVoo ECF No. 33; ECF No. 70. MyMail's action against ooVoo was originally assigned to United States Magistrate Judge Susan van Keulen, see ooVoo ECF No. 35, and MyMail's action against IAC was originally assigned to United States Magistrate Judge Joseph Spero. See ECF No. 72. However, MyMail declined magistrate judge jurisdiction in both actions. ooVoo ECF No. 36; ECF No. 74. Thus, on September 1, 2017, MyMail's action against ooVoo was reassigned to the undersigned judge, ooVoo ECF No. 38, and MyMail's action against IAC was reassigned to United States District Judge Phyllis J. Hamilton, ECF No. 77.

On October 2, 2017, MyMail filed a motion to relate MyMail's action against IAC to MyMail's action against ooVoo. ooVoo ECF No. 48. On October 10, 2017, the Court granted MyMail's motion to relate. ooVoo ECF No. 55. As a result, MyMail's action against IAC was reassigned to the undersigned judge. ECF No. 93.

On October 31, 2017, Defendants filed motions for judgment on the pleadings that sought to invalidate MyMail's patents under 35 U.S.C. § 101. ooVoo ECF No. 62; ECF No. 101. On March 16, 2018, the Court granted Defendants' motion for judgment on the pleadings, invalidating MyMail's patents under 35 U.S.C. § 101. ooVoo ECF No. 90; ECF No. 129. On March 26, 2018, MyMail filed a notice of appeal to the Federal Circuit Court of Appeals. ooVoo ECF No. 92; ECF No. 131. On August 16, 2019, a divided panel of the Federal Circuit Court of Appeals vacated and remanded the Court's order granting Defendants' motion for judgment on the pleadings because the Court did not construe the term "toolbar." MyMail, Ltd. v. ooVoo, LLC , 934 F.3d 1373, 1380 (Fed. Cir. 2019).

On October 1, 2019, Defendants filed renewed motions for judgment on the pleadings and again sought to invalidate the patents under 35 U.S.C. § 101. ooVoo ECF No. 98; ECF No. 133.

However, on January 8, 2020, at a case management conference, the parties agreed that the Court should first construe the term "toolbar" before addressing Defendants' renewed motions. ECF No. 139. Accordingly, the Court denied without prejudice Defendants' renewed motions for judgment on the pleadings. The Court also consolidated the cases under Case No. 17-CV-04488. Id.

In response to the Court's case management order, the parties filed claim construction briefing, ECF Nos. 140, 143, 144, and on March 4, 2020, the Court construed the term "toolbar" as "a button bar that can be dynamically changed or updated via a Pinger process or a MOT script." ECF No. 156 ("Claim Constr. Order").

Accordingly, on March 26, 2020, Defendants filed the instant renewed motion for judgment on the pleadings. ooVoo ECF No. 110 (later refiled as ECF No. 159 ("Mot.")). On April 4, 2020, MyMail filed an opposition, ECF No. 160 ("Opp."), and on April 16, 2020, Defendants filed a reply. ECF No. 161 ("Reply").

II. LEGAL STANDARD

A. Motion For Judgment on the Pleadings Under Federal Rule of Civil Procedure 12(c)

"After the pleadings are closed—but early enough not to delay trial—a party may move for judgment on the pleadings." Fed. R. Civ. P. 12(c). "Judgment on the pleadings is properly granted 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) (brackets and internal quotation marks omitted). Like a motion to dismiss under Rule 12(b)(6), a motion under Rule 12(c) challenges the legal sufficiency of the claims asserted in the complaint. See id. Indeed, a Rule 12(c) motion is "functionally identical" to a Rule 12(b)(6) motion, and courts apply the "same standard." Dworkin v. Hustler Magazine, Inc. , 867 F.2d 1188, 1192 (9th Cir. 1989) (explaining that the "principal difference" between Rule 12(b)(6) and Rule 12(c) "is the timing of filing"); see also U.S. ex rel. Cafasso v. Gen. Dynamics C4 Sys. , 637 F.3d 1047, 1054 n.4 (9th Cir. 2011).

Judgment on the pleadings should thus be entered when a complaint does not plead "enough facts to state a claim to relief that is plausible on its face." Bell Atl. Corp. v. Twombly , 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007). "A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Ashcroft v. Iqbal , 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009). "The plausibility standard is not akin to a probability requirement, but it asks for more than a sheer possibility that a defendant has acted unlawfully." Id. (internal quotation marks omitted). For purposes of ruling on a Rule 12(c) motion, the Court "accept[s] factual allegations in the complaint as true and construe[s] the pleadings in the light most favorable to the nonmoving party." Manzarek v. St. Paul Fire & Marine Ins. Co. , 519 F.3d 1025, 1031 (9th Cir. 2008).

B. Patent Eligibility Challenges Under 35 U.S.C. § 101

Defendants' motion argues that the patents-in-suit fail to claim patent-eligible subject matter under 35 U.S.C. § 101 in light of the United States Supreme Court's decision in Alice Corp. Pty. Ltd. v. CLS Bank International , 573 U.S. 208, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014). The ultimate question whether a claim recites patent-eligible subject matter under § 101 is a question of law. Intellectual Ventures I LLC v. Capital One Fin. Corp. , 850 F.3d 1332, 1338 (Fed. Cir. 2017) ("Patent eligibility under § 101 is an issue of law[.]"); In re Roslin Inst. (Edinburgh) , 750 F.3d 1333, 1335 (Fed. Cir. 2014) (same). Although the Federal Circuit has noted that the § 101 analysis "may contain disputes over underlying facts," it has also made clear that patent eligibility can often be resolved on the pleadings. Berkheimer v. HP Inc. , 881 F.3d 1360, 1368 (Fed. Cir. 2018) ("As our cases demonstrate, not every § 101 determination contains genuine disputes over the underlying facts material to the § 101 inquiry."); Secured Mail Sols. LLC v. Universal Wilde, Inc. , 873 F.3d 905, 912 (Fed. Cir. 2017) (affirming determination of ineligibility made on 12(b)(6) motion). Accordingly, a district court may resolve the issue of patent eligibility under § 101 by way of a motion for judgment on the pleadings. See, e.g. , buySAFE, Inc. v. Google, Inc. , 765 F.3d 1350, 1352 (Fed. Cir. 2014) (affirming determination of ineligibility made on motion for judgment on the pleadings).

C. Substantive Legal Standards Applicable Under 35 U.S.C. § 101

1. Patent-Eligible Subject Matter Under 35 U.S.C. § 101

Section 101 of Title 35 of the United States Code "defines the subject matter that may be patented under the Patent Act." Bilski v. Kappos , 561 U.S. 593, 601, 130 S.Ct. 3218, 177 L.Ed.2d 792 (2010). Under § 101, the scope of patentable subject matter encompasses "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." Id. (quoting 35 U.S.C. § 101 ). These categories are broad, but they are not limitless. Section 101 "contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable." Alice , 573 U.S. at 216, 134 S.Ct. 2347 (citation omitted). These three categories of subject matter are excepted from patent-eligibility because "they are the basic tools of scientific and technological work," which are "free to all men and reserved exclusively to none." Mayo Collaborative Servs. v. Prometheus Labs., Inc. , 566 U.S. 66, 71, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012) (citations omitted). The United States Supreme Court has explained that allowing patent claims for such purported inventions would "tend to impede innovation more than it would tend to promote it," thereby thwarting the primary object of the patent laws. Id. However, the United States Supreme Court has also cautioned that "[a]t some level, all inventions embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas." Alice , 573 U.S. at 217, 134 S.Ct. 2347 (alteration, internal quotation marks, and citation omitted). Accordingly, courts must "tread carefully in construing this exclusionary principle lest it swallow all of patent law." Id.

In Alice , the leading case on patent-eligible subject matter under § 101, the United States Supreme Court refined the "framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts" originally set forth in Mayo , 566 U.S. at 77, 132 S.Ct. 1289. Alice , 573 U.S. at 217, 134 S.Ct. 2347. This analysis, generally known as the " Alice " framework, proceeds in two steps as follows:

First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, "[w]hat else is there in the claims before us?" To answer that question, we consider 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. We have described step two of this analysis as a search for an " ‘inventive concept’ "— i.e. , an element or combination of elements that is "sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself."

Id. at 217-18 (alterations in original) (citations omitted); see also In re TLI Commc'ns LLC Patent Litig. , 823 F.3d 607, 611 (Fed. Cir. 2016) (describing "the now familiar two-part test described by the [United States] Supreme Court in Alice ").

2. Alice Step One—Identification of Claims Directed to an Abstract Idea

Neither the United States Supreme Court nor the Federal Circuit has set forth a bright-line test separating abstract ideas from concepts that are sufficiently concrete so as to require no further inquiry under the first step of the Alice framework. See, e.g. , Alice , 573 U.S. at 221, 134 S.Ct. 2347 (noting that "[the United States Supreme Court] need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case"); DDR Holdings, LLC v. Hotels.com, L.P. , 773 F.3d 1245, 1256 (Fed. Cir. 2014) (observing that the United States Supreme Court did not "delimit the precise contours of the ‘abstract ideas’ category" in Alice (citation omitted)). As a result, in evaluating whether particular claims are directed to patent-ineligible abstract ideas, courts have generally begun by "compar[ing] claims at issue to those claims already found to be directed to an abstract idea in previous cases." Enfish, LLC v. Microsoft Corp. , 822 F.3d 1327, 1334 (Fed. Cir. 2016).

Two of the United States Supreme Court's leading cases concerning the "abstract idea" exception involved claims held to be abstract because they were drawn to longstanding, fundamental economic practices. See Alice , 573 U.S. at 219, 134 S.Ct. 2347 (claims "drawn to the concept of intermediated settlement, i.e. , the use of a third party to mitigate settlement risk" were directed to a patent-ineligible abstract idea); Bilski , 561 U.S. at 611-12, 130 S.Ct. 3218 (claims drawn to "the basic concept of hedging, or protecting against risk" were directed to a patent-ineligible abstract idea because "[h]edging is a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class" (citation omitted)).

Similarly, the United States Supreme Court has recognized that information itself is intangible. See Microsoft Corp. v. AT & T Corp. , 550 U.S. 437, 451 n.12, 127 S.Ct. 1746, 167 L.Ed.2d 737 (2007). Accordingly, the Federal Circuit has generally found claims abstract where they are directed to some combination of acquiring information, analyzing information, and/or displaying the results of that analysis. See FairWarning IP, LLC v. Iatric Sys., Inc. , 839 F.3d 1089, 1094-95 (Fed. Cir. 2016) (claims "directed to collecting and analyzing information to detect misuse and notifying a user when misuse is detected" were drawn to a patent-ineligible abstract idea); Elec. Power Grp., LLC v. Alstom S.A. , 830 F.3d 1350, 1354 (Fed. Cir. 2016) (claims directed to an abstract idea because "[t]he advance they purport to make is a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions"); In re TLI Commc'ns LLC , 823 F.3d at 611 (claims were "directed to the abstract idea of classifying and storing digital images in an organized manner"); see also Elec. Power Grp. , 830 F.3d at 1353-54 (collecting cases).

However, the determination of whether other types of computer-implemented claims are abstract has proven more "elusive." See, e.g. , Internet Patents Corp. v. Active Network, Inc. , 790 F.3d 1343, 1345 (Fed. Cir. 2015) ("[P]recision has been elusive in defining an all-purpose boundary between the abstract and the concrete[.]"). As a result, in addition to comparing claims to prior United States Supreme Court and Federal Circuit precedents, courts considering computer-implemented inventions have taken varied approaches to determining whether particular claims are directed to an abstract idea.

For example, courts have considered whether the claims "purport to improve the functioning of the computer itself," Alice , 573 U.S. at 225, 134 S.Ct. 2347, which may suggest that the claims are not abstract, or instead whether "computers are invoked merely as a tool" to carry out an abstract process, Enfish , 822 F.3d at 1336 ; see also id. at 1335 ("[S]ome improvements in computer-related technology when appropriately claimed are undoubtedly not abstract, such as a chip architecture, an LED display, and the like. Nor do we think that claims directed to software, as opposed to hardware, are inherently abstract[.]"). The Federal Circuit has followed this approach to find claims patent-eligible in several cases. See Visual Memory LLC v. NVIDIA Corp. , 867 F.3d 1253, 1259-60 (Fed. Cir. 2017) (claims directed to an improved memory system were not abstract because they "focus[ed] on a ‘specific asserted improvement in computer capabilities’— the use of programmable operational characteristics that are configurable based on the type of processor" (quoting Enfish , 822 F.3d at 1336 )); McRO, Inc. v. Bandai Namco Games Am. Inc. , 837 F.3d 1299, 1314 (Fed. Cir. 2016) (claims directed to automating part of a preexisting method for 3-D facial expression animation were not abstract because they "focused on a specific asserted improvement in computer animation, i.e., the automatic use of rules of a particular type"); Enfish , 822 F.3d at 1335-36 (claims directed to a specific type of self-referential table in a computer database were not abstract because they focused "on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database)").

Similarly, the Federal Circuit has found that claims directed to a "new and useful technique" for performing a particular task were not abstract. See Thales Visionix Inc. v. United States , 850 F.3d 1343, 1349 (Fed. Cir. 2017) (holding that "claims directed to a new and useful technique for using sensors to more efficiently track an object on a moving platform" were not abstract); Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc. , 827 F.3d 1042, 1048, 1050 (Fed. Cir. 2016) (holding that claims directed to "a new and useful laboratory technique for preserving hepatocytes," a type of liver cell, were not abstract); see also Diamond v. Diehr , 450 U.S. 175, 187, 101 S.Ct. 1048, 67 L.Ed.2d 155 (1981) (holding that claims for a method to cure rubber that employed a formula to calculate the optimal cure time were not abstract).

By contrast, courts have frequently invalidated claims that have a close analogy in the brick-and-mortar world, such that the claims cover " ‘fundamental practices long prevalent in our system’ and ‘methods of organizing human activity.’ " Intellectual Ventures I LLC v. Symantec Corp. , 838 F.3d 1307, 1317 (Fed. Cir. 2016) (quoting Alice , 573 U.S. at 219, 134 S.Ct. 2347 ) (alterations omitted) (finding an email processing software program to be abstract through comparison to a "brick-and-mortar" post office); Intellectual Ventures I LLC v. Symantec Corp. , 100 F. Supp. 3d 371, 383 (D. Del. 2015) ("Another helpful way of assessing whether the claims of the patent are directed to an abstract idea is to consider if all of the steps of the claim could be performed by human beings in a non-computerized ‘brick and mortar’ context." (citing buySAFE, Inc. v. Google, Inc. , 765 F.3d 1350, 1353 (Fed. Cir. 2014) ).

Courts will also (or alternatively, as the facts require) consider a related question of whether the claims are, in essence, directed to a mental process or a process that could be done with pencil and paper. See Synopsys, Inc. v. Mentor Graphics Corp. , 839 F.3d 1138, 1147 (Fed. Cir. 2016) (claims for translating a functional description of a logic circuit into a hardware component description of the logic circuit were patent-ineligible because the "method can be performed mentally or with pencil and paper"); CyberSource Corp. v. Retail Decisions, Inc. , 654 F.3d 1366, 1372 (Fed. Cir. 2011) (claim for verifying the validity of a credit card transaction over the Internet was patent-ineligible because the "steps can be performed in the human mind, or by a human using a pen and paper"); see also, e.g. , Mortg. Grader, Inc. v. First Choice Loan Servs. Inc. , 811 F.3d 1314, 1324 (Fed. Cir. 2016) (claims for computer-implemented system to enable borrowers to shop for loan packages anonymously were abstract where "[t]he series of steps covered by the asserted claims...could all be performed by humans without a computer").³

3 One court has noted that, like all tools of analysis, the "pencil and paper" analogy must not be unthinkingly applied. See Cal. Inst. of Tech. v. Hughes Commc'ns Inc. , 59 F. Supp. 3d 974, 995 (C.D. Cal. 2014) (viewing pencil-and-paper test as a "stand-in for another concern: that humans engaged in the same activity long before the invention of computers," and concluding that test was unhelpful where "error correction codes were not conventional activity that humans engaged in before computers").

At all events, however, the Federal Circuit has emphasized that "the first step of the [ Alice ] inquiry is a meaningful one." Enfish , 822 F.3d at 1335. In particular, the court's task is not to determine whether claims merely involve an abstract idea at some level, see id. , but rather to examine the claims "in their entirety to ascertain whether their character as a whole is directed to excluded subject matter," Internet Patents , 790 F.3d at 1346.

3. Alice Step Two—Evaluation of Abstract Claims for a Limiting Inventive Concept

A claim drawn to an abstract idea is not necessarily invalid if the claim's limitations—considered individually or as an ordered combination—serve to "transform the claims into a patent-eligible application." Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass'n , 776 F.3d 1343, 1348 (Fed. Cir. 2014). Thus, the second step of the Alice analysis (the search for an "inventive concept") asks whether the claim contains an element or combination of elements that "ensure[s] that the patent in practice amounts to significantly more than a patent upon the [abstract idea] itself." 573 U.S. at 218, 134 S.Ct. 2347 (citation omitted).

The United States Supreme Court has made clear that transforming an abstract idea to a patent-eligible application of the idea requires more than simply reciting the idea followed by "apply it." Id. at 221, 134 S.Ct. 2347 (quoting Mayo , 566 U.S. at 72, 132 S.Ct. 1289 ). In that regard, the Federal Circuit has repeatedly held that "[f]or the role of a computer in a computer-implemented invention to be deemed meaningful in the context of this analysis, it must involve more than performance of ‘well-understood, routine, [and] conventional activities previously known to the industry.’ " Content Extraction , 776 F.3d at 1347-48 (alteration in original) (quoting Alice , 573 U.S. at 225, 134 S.Ct. 2347 ); see also Mortg. Grader , 811 F.3d at 1324-25 (holding that "generic computer components such as an ‘interface,’ ‘network,’ and ‘database’...do not satisfy the inventive concept requirement"); Bancorp Servs. , 687 F.3d at 1278 ("To salvage an otherwise patent-ineligible process, a computer must be integral to the claimed invention, facilitating the process in a way that a person making calculations or computations could not.").

Likewise, "[i]t is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea" where those components simply perform their "well-understood, routine, conventional" functions. In re TLI Commc'ns LLC , 823 F.3d at 613 (citation omitted); see also id. (ruling that "telephone unit," "server," "image analysis unit," and "control unit" limitations were insufficient to satisfy Alice step two where claims were drawn to abstract idea of classifying and storing digital images in an organized manner). "The question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact" that "must be proven by clear and convincing evidence." Berkheimer , 881 F.3d at 1368. This inquiry "goes beyond what was simply known in the prior art." Id. at 1369.

In addition, the United States Supreme Court explained in Bilski that "limiting an abstract idea to one field of use or adding token postsolution components [does] not make the concept patentable." 561 U.S. at 612, 130 S.Ct. 3218 (citing Parker v. Flook , 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978) ); see also Alice , 573 U.S. at 223, 134 S.Ct. 2347 (same). The Federal Circuit has similarly stated that attempts "to limit the use of the abstract idea to a particular technological environment" are insufficient to render an abstract idea patent-eligible. Ultramercial, Inc. v. Hulu, LLC , 772 F.3d 709, 716 (Fed. Cir. 2014) (internal quotation marks and citation omitted); see also Intellectual Ventures I LLC v. Capital One Bank (USA) , 792 F.3d 1363, 1366 (Fed. Cir. 2015) ("An abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet.").

In keeping with these restrictions, the Federal Circuit has found that claims "necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks" can be sufficiently transformative to supply an inventive concept. DDR , 773 F.3d at 1257 ; see also id. at 1248, 1259 (concluding that claims that addressed the "Internet-centric problem" of third-party merchant advertisements that would "lure...visitor traffic away" from a host website amounted to an inventive concept).

In addition, a "non-conventional and non-generic arrangement of known, conventional pieces" can amount to an inventive concept. BASCOM Glob. Internet Servs., Inc. v. AT & T Mobility LLC , 827 F.3d 1341, 1350 (Fed. Cir. 2016). For example, in BASCOM , the Federal Circuit addressed a claim for Internet content filtering performed at "a specific location, remote from the end-users, with customizable filtering features specific to each end user." Id. Because this "specific location" was different from the location where Internet content filtering was traditionally performed, the Federal Circuit concluded this was a "non-conventional and non-generic arrangement of known, conventional pieces" that provided an inventive concept. Id. As another example, in Amdocs (Israel) Ltd. v. Openet Telecom, Inc. , the Federal Circuit held that claims relating to solutions for managing accounting and billing data over large, disparate networks recited an inventive concept because they contained "specific enhancing limitation[s] that necessarily incorporate[d] the invention's distributed architecture." 841 F.3d 1288, 1301 (Fed. Cir. 2016), cert. denied , ––– U.S. ––––, 138 S. Ct. 469, 199 L.Ed.2d 356 (Nov. 27, 2017). The use of a "distributed architecture," which stored accounting data information near the source of the information in the disparate networks, transformed the claims into patentable subject matter. Id.

4. Preemption

In addition to these principles, courts sometimes find it helpful to assess claims against the policy rationale for § 101. The United States Supreme Court has recognized that the "concern that undergirds [the] § 101 jurisprudence" is preemption. Alice , 573 U.S. at 223, 134 S.Ct. 2347. Thus, courts have readily concluded that a claim is not patent-eligible when the claim is so abstract that it preempts "use of [the claimed] approach in all fields" and "would effectively grant a monopoly over an abstract idea." Bilski , 561 U.S. at 612, 130 S.Ct. 3218. However, the inverse is not true: "[w]hile preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility." FairWarning , 839 F.3d at 1098 (alteration in original) (citation omitted).

III. DISCUSSION

Defendants' renewed motion for judgment on the pleadings contends that the asserted claims of the patents-in-suit fall within the patent-ineligible "abstract ideas" exception to § 101. See Mot. at 7. The Court applies the Alice framework described above to the claims of the '863 and '070 Patents.

However, the Court need not individually analyze every claim if certain claims are representative. See generally Alice , 573 U.S. at 224-26, 134 S.Ct. 2347 (finding claims to be patent-ineligible based on analysis of one representative claim). In the parties' briefing for Defendants' initial motion for judgment on the pleadings, both MyMail and Defendants agreed that claim 1 of the '863 Patent and claim 1 of the '070 Patent were representative. ECF No. 101 at 16; ECF No. 109 at 5-6. For the current motion, Defendants continue to identify claim 1 of each patent as representative. See Mot. at 3. MyMail does not dispute that claim 1 of each patent continues to be representative. See Opp. at 1-6. As a result, the Court treats claim 1 of the '863 Patent and claim 1 of the '070 Patent as 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 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.

'863 Patent col. 29:28-63 (emphasis added). Similarly, claim 1 of the '070 Patent recites:

1. A method for dynamically modifying a toolbar, the method comprising:

displaying the toolbar, at a user Internet device, that includes one or more toolbar buttons, the toolbar defined by toolbar data stored in one or more toolbar-defining databases, the toolbar data comprising a plurality of toolbar button attributes associated with the one or more toolbar buttons of the toolbar, wherein at least one of the plurality of toolbar button attributes identifies a function to be performed by a specific toolbar button upon actuation of the specific toolbar button;

invoking, from the user Internet device without user intervention, communication of information associated with the one or more toolbar-defining databases to a server associated with a network address;

receiving, at the server, the information associated with the one or more toolbar-defining databases;

determining, based on the information associated with the one or more toolbar-defining databases, that the user Internet device should receive updated toolbar data;

receiving, at the user Internet device, the updated toolbar data in response to determining that the user Internet device should receive the updated toolbar data;

initiating, at the user Internet device and without user interaction, an operation to update the toolbar data in accordance with the received updated toolbar data;

updating the toolbar data at the user Internet device based on the operation and in accordance with the updated toolbar data, thereby updating the toolbar data, the updating comprising at least one member of a group comprising (a) and (b):

(a) updating the toolbar data to include at least one new attribute of the toolbar data to change the toolbar by adding a toolbar button to the toolbar; and

(b) updating the toolbar data to modify an attribute of at least one of the one or more toolbar buttons of the toolbar;

and displaying at the user Internet device the toolbar as defined by the updated toolbar data,

wherein the information associated with the toolbar data includes at least one member of a group comprising a revision level, version, time, date, user ID, account owner ID, PAP ID, IP address, session keys, billing data, name, address, account information, connection history, procedures performed by a user, group ID, e-mail address, e-mail ID, e-mail password, residential address, and phone number.

'070 Patent col. 29:40-30:20 (emphasis added). Because these two claims contain substantially similar wording, and because the two patents have nearly identical specifications, the Court analyzes the claims together. Accordingly, the Court addresses the above claims under the Alice step one inquiry and the Alice step two inquiry in light of the Court's recent construction of "toolbar" as "a button bar that can be dynamically changed or updated via a Pinger process or a MOT script." See Claim Constr. Order. at 10.

A. Alice Step One

Step one of the Alice framework directs the Court to assess "whether the claims at issue are directed to [an abstract idea]." Alice , 573 U.S. at 217, 134 S.Ct. 2347. The step one inquiry "applies a stage-one filter to claims, considered in light of the specification, based on whether ‘their character as a whole is directed to excluded subject matter.’ " Enfish , 822 F.3d at 1335 (citation omitted). However, in distilling the character of a claim, the Court is careful not to express the claim's focus at an unduly "high level of abstraction...untethered from the language of the claims," but rather at a level consonant with the level of generality or abstraction expressed in the claims themselves. Enfish , 822 F.3d at 1337 ; see also Thales Visionix , 850 F.3d at 1347 ("We must therefore ensure at step one that we articulate what the claims are directed to with enough specificity to ensure the step one inquiry is meaningful.").

As an initial matter, when the Court first addressed the Alice step one inquiry in Defendants' first motion for judgment on the pleadings, the Court held that the claims were directed to the abstract idea of "a process for updating toolbar software over a network without user intervention." ECF No. 129 at 17. Specifically, the Court found that:

[T]he claims recite a process of (1) sending data from a toolbar database to a server; (2) analyzing the data to determine whether the toolbar needs to be updated; (3) if the toolbar needs to be updated, sending toolbar update data from the Internet; and (4) automatically updating the toolbar in accordance with the toolbar update data....Although the claims recite adding a button or changing at least one attribute of an existing button on the toolbar, the focus of the claims is on the process by which the toolbar is updated ."

ECF No. 129 at 17 (emphasis added).

However, a divided Federal Circuit panel vacated the Court's previous holding because the Court did not construe the term "toolbar." See MyMail , 934 F.3d at 1380-81. Now that the Court has construed "toolbar" as "a button bar that can be dynamically changed or updated via a Pinger process or a MOT script," see Claim Constr. Order at 10, the Court addresses whether the claims are directed to an abstract idea.

In Defendants' renewed motion, Defendants argue that the Court's construction does not alter the Court's previous conclusion. See Mot. at 9-13. Defendants contend that even after claim construction, "[t]he MyMail claims are analogous to claims analyzed in [ ] other judicial decisions [that all] concluded that software update techniques are directed to abstract ideas." Id. at 10.

In opposition, MyMail argues that the asserted claims are not directed to an abstract idea but are instead "directed at a toolbar with the capability of performing the updating function automatically in a specific way—via a Pinger process or MOT script." Opp. at 7. Specifically, MyMail contends that the patents "improved the functioning of the software updating process by invoking the capability of using a Pinger process or a MOT script," and that this focus means that the claims are directed to a specific improvement "in the functioning of computing devices [sic] networks, which is a non-abstract idea." Id. at 9-10.

The Court first analyzes the claims' "character as a whole" in light of the Court's construction of "toolbar" as "a button bar that can be dynamically changed or updated via a Pinger process or a MOT script." The Court then compares the claims "to those claims already found to be directed to an abstract idea in previous cases" to determine whether the claims are directed to a specific improvement or to an abstract idea. Enfish , 822 F.3d at 1334. For the reasons discussed below, the Court concludes that even given the Court's construction of "toolbar" as "a button bar that can be dynamically changed or updated via a Pinger process or a MOT script," the claims are directed to the abstract idea of updating toolbar software over a network without user intervention.

1. The Claims' "Character as a Whole"

The claims recite a process of (1) sending data from a toolbar database to a server;

(2) analyzing the data to determine whether the toolbar needs to be updated; (3) if the toolbar needs to be updated, sending toolbar update data from the Internet; and (4) automatically updating the toolbar in accordance with the toolbar update data. See '863 Patent col. 29:28-63; '070 Patent col. 29:40-30:20. Although the claims recite adding a button or changing at least one attribute of an existing button on the toolbar, the focus of the claims is on the process by which the toolbar is updated. Further, the specifications of both the '893 Patent and the '070 Patent, to the extent they describe toolbar updates, make no mention of adding or changing a button. Thus, updating toolbar software over a network without user intervention accurately captures what the "character as a whole" of the claims is "directed to." Enfish , 822 F.3d at 1335.

MyMail contends, however, that in light of the Court's construction of "toolbar" as "a button bar that can be dynamically changed or updated via a Pinger process or a MOT script," the patents "are not directed at the abstract idea of merely ‘updating toolbar software over a network without user intervention.’ " Opp. at 7. For the reasons stated below, despite the invocation of a Pinger process and a MOT script, the Court disagrees. Put simply, the patents' specifications confirm that the claims' "character as a whole" is "directed to" updating toolbar software over a network without user intervention. The Court first analyzes the functions of the "Pinger process" and then proceeds to analyze the functions of the "MOT script." The Court then determines the claims' "character as a whole" in light of these functions.

a. The "Pinger Process"

The patents' specifications describe the "Pinger process" as a process that:

[C]omprises an entity that acts transparently as a "services" coordinator to provide and/or administer the following:

1. Heartbeat service to help maintain network connectivity with a client.

2. Authentication services that securely authenticate client access to email, commerce, and other public and private network servers and services.

3. Update services that can perform client software, database, and maintenance services during periods of inactivity.

'863 Patent col. 10:19-29. More specifically, the specifications describe that:

The pinger is initiated by the client dispatch application 200 upon connection to the network 100. The client dispatch application 200 transmits header information to the access server 106 using the IP address of the access server 106. The header information includes the current user ID, account owner ID, PAP ID, the current IP address assigned to the user 110, Group ID, the users system's current time, database (204, 206, 208, 210) revisions levels, and client dispatch application 200 and other related software revision levels. With this information, the access server 106 determines whether a user 110 is making two connections while only paying for one and thus needs to be disconnected, or is a user 110 that needs a database or file update.

Id. at col. 12:16-28. Furthermore, the specifications additionally state that:

The pinger function causes the client dispatch application 200 to transmit header information to the access service 106, as set forth in the "Send Information To Server (Pinger)" block. The header information may include a Unique Identification string for the user (user ID, PAP ID, etc.), a unique computer identification string (IP address, etc.), time stamp information, and revision information for the client dispatch application 200 and databases 204, 206, 208, 210, as described earlier. After receipt, the access service 106 reviews the header information to determine what, if any, updates are required to be made to the user client's dispatch application, databases, or network access devices operating system. Such updates may include: new dial-in locations, new identification information such as PAP IDs, network authentication passwords such as PAP passwords, other IDs, other passwords, change of phone numbers, change of area codes, low cost ISP, dial-in location priority sequence numbers, or any combination thereof, or any other information relating to gaining access to the ISP 102. If any updates are required, these are supplied by the access service 106 and any necessary updates will take place transparent (automatic while the user is logged on) to the user 110 as part of the "True" process path emanating from the "Transparent Update Required?" decision block.

Id. at col. 17:32-55. Accordingly, "the pinger process (transparent to the user) allows the client dispatch application 200 and the access service 106 to interact and download database updates...to the user." Id. at col. 12:33-36.

Based on the above, the specifications show that the "Pinger process" operates in several steps when the Pinger process dynamically changes or updates the "toolbar." First, the Pinger process triggers transmission of "header information" from the "client dispatch application" to the "access service." Id. at col. 12:16-19; 17:32-34. This "header information" contains various information, including "revision information" for the "button bar database," which the invention uses to update the toolbar. Id. at col. 12:19-24; 17:35-40. The "Pinger process" then causes "the access service 106 [to] review[ ] the header information to determine what, if any, updates [to the toolbar] are required." Id. at col. 17:40-42; see also id. at col. 12:25-28. Lastly, the Pinger process provides that "[i]f any updates [to the toolbar] are required[,] these are supplied by the access service 106 and any necessary [toolbar] updates will take place transparent (automatic while the user is logged on) to the user 110 ." Id. at col. 17:50-53. As such, the Pinger process operates to (1) transmit update-related data, (2) review that data to determine if an update is required, and then to, if necessary, (3) send an update.

In its opposition, MyMail fails to explain the function of the Pinger process and instead opts to repeat at length the Court's construction of "toolbar." Opp. at 7-11. The Court's analysis of the Pinger process, however, is consistent with MyMail's previous characterization of the Pinger process. Specifically, in MyMail's opposition to Defendants' first motion for judgment on the pleadings, MyMail described the Pinger process as follows:

The asserted patents explain one embodiment for performing this function involving a toolbar using a "pinger" process for obtaining updates to the toolbar database. When the user connects to the Internet, [1] the user's machine "dispatches an initial ‘pinger’ message to the access service 106 via the Internet 100." '863 Patent at 11:44-47; '070 Patent at 11:51-54. The pinger message includes information such as the current database revision levels. From this information, [2] the access service determines if the end-user's device should receive updated toolbar data and, if so, [3] send the updated toolbar data. '863 Patent at 11: 47-52 and 17:30-44; '070 Patent at 11:54-61 and 17:38-52.

ECF No. 109 at 4 n.5.

b. The "MOT Script"

The Court next addresses the "MOT script." Again, MyMail fails to explain the function of the MOT script and instead opts to repeat at length the Court's construction of "toolbar." See Opp. at 7-11.

As an initial matter, the specifications state that "MOT is not [ ] an acronym for anything meaningful," but that MOT is "an interpretive [script] language" "used by the Pinger and elsewhere in [the patent.]" '863 Patent col. 12:48-51. Accordingly, the patents' specifications offer substantially less detail as to the operation of the MOT script than the Pinger process.

However, despite the lack of meaning of "MOT," the specifications highlight the MOT script as a process that operates to send and use data to update the toolbar. Specifically, the MOT script "can be a ‘mime-type’ definition part of an E-mail message, an HTTP web document download and so forth, which transparently automates the Toolbar update ." Id. at col. 10:32-35 (emphasis added). The specifications state that the:

MOT script defines how to build a button bar using the button bar database 210 and its database entries. The MOT script is typically associated with a Web page and when the user 110 clicks on the Web page, the MOT script associated with the Web page is read back by the client dispatch application 200. The client dispatch application 200 uses the particular MOT script and the button bar database 210 information and builds the button bar automatically according to the MOT script specifications.

Id. at col. 11:5-14.

The patents' specifications also highlight the MOT script as an alternative to the Pinger process, and the specifications state that:

While the pinger process (transparent to the user) allows the client dispatch application 200 and the access service 106 to interact and download database updates (or other information) to the user 110, there is an alternative way to provide the updates to the databases, etc. at the request of the user 110. The access

service 106 may provide a Web page whereby when the user 110 clicks on the Web page, a MOT script and other data associated with the Web page is transmitted from the Web page site to the client dispatch application 106. This gives the user 110 the capability to request a data update (or to receive other information). Alternatively[,] a MOT script and other data can be transmitted via an email message, an FTP (file transfer procedure) site or other similar networking storage and transport mechanism to the client dispatch application.

Id. at col. 12:33-47.

Accordingly, as with the Pinger process, when the MOT script dynamically changes or updates the toolbar, the MOT script transmits data, analyzes data, and then "transparently automates the Toolbar update." Id. at col. 10:34-35. Specifically, "an E-mail message [ ] or an HTTP web document download and so forth" first transmits the MOT script "to the client dispatch application." Id. at col. 10:33-34, 12:41. The "client dispatch application" can then "read back" the "MOT script." Id. at col. 11:9-10. Following this, "[t]he client dispatch application 200 uses the particular MOT script and the button bar database 210 information and builds the [toolbar] automatically." Id. at col. 11:10-13.

c. The Claims' "Character as a Whole" In Light of the Functions of the Pinger Process and MOT Script

The above demonstrates that both the Pinger process and the MOT script function to (1) transmit data, (2) analyze that data to determine whether a toolbar update is required, and (3) facilitate the toolbar update if required. These functions are nearly identical to the steps that the claims recite. Namely, the claims recite a process of (1) sending data from a toolbar database to a server; (2) analyzing the data to determine whether the toolbar needs to be updated; (3) if the toolbar needs to be updated, sending toolbar update data from the Internet; and (4) automatically updating the toolbar in accordance with the toolbar update data. See '863 Patent col. 29:28-63; '070 Patent col. 29:40-30:20.

Because the patents' claims share nearly identical functions as the Pinger process and the MOT script, the Court concludes that even in light of the Court's construction of "toolbar" as "a button bar that can be dynamically changed or updated via a Pinger process or a MOT script," the claims' "character as a whole" is "directed to" updating toolbar software over a network without user intervention.

2. Precedent Establishes That the Claims are Directed to an Abstract Idea

The Court now compares the claims "to those claims already found to be directed to an abstract idea in previous cases." Enfish , 822 F.3d at 1334.

First, the Court finds that the claims are analogous to claims that fall within the category of gathering and processing information, which the Federal Circuit has established is an abstract idea. Specifically, in FairWarning IP, LLC v. Iatric Systems, Inc. , the Federal Circuit considered a set of claims that recited a method of detecting fraud and misuse of personal health information; this method "collects information regarding accesses of a patient's personal health information, analyzes the information according to one of several rules...to determine if the activity indicates improper access, and provides notification if it determines that improper access has occurred." 839 F.3d 1089, 1093 (Fed. Cir. 2016). FairWarning concluded that the claims were directed to an abstract idea because the claims were "directed to a combination" of three "abstract-idea categories": (1) collecting information; (2) analyzing information; and (3) presenting the results of the collection and analysis of information. 839 F.3d at 1093-94. Similarly, in West View Research, LLC v. Audi AG , 685 Fed. App'x 923, 926 (Fed. Cir. 2017), the Federal Circuit held that claims that "do not go beyond receiving or collecting data queries, analyzing the data query, retrieving and processing the information constituting a response to the initial data query, and generating a visual or audio response to the initial data query" were directed to the abstract idea of collecting, analyzing, and displaying information.

Like the claims in FairWarning and West View Research , the claims in the instant case recite a process for transmitting data, analyzing data, and generating a response based on that transmitted data. Specifically, the claims recite a process of receiving and analyzing data to determine whether a toolbar requires an update, and if so, sending updated toolbar data and updating the toolbar. Moreover, as addressed above, the function of the Pinger process and the MOT script are nearly identical to the claims' recited process. Particularly, the Pinger process and the MOT script similarly comprise a process of transmitting data pertaining to a toolbar update, analyzing that data to determine if a toolbar update is required, and then facilitating a toolbar update if needed. As such, even after this Court's construction of "toolbar," the claims remain analogous to the claims in FairWarning and West View Research .

Second, the Court finds that the claims are analogous to claims that other district courts have held to be directed to an abstract idea because the claims relate to using communications networks to update software stored on computers. For example, in Personalized Media Communications, LLC v. Amazon.com, Inc. , 161 F. Supp. 3d 325 (D. Del. 2015), aff'd , 671 F. App'x 777 (Fed. Cir. 2016) (per curiam), the United States District Court for the District of Delaware addressed the patent-eligibility of, inter alia, claims directed to a process for updating the operating system software stored on a remote computer via a transmission network. Specifically, the claims at issue in Personalized Media Communications recited an updating process comprised of (1) transmitting information about the specific version of the operating system of a remote receiver station to a "signal detector"; (2) determining whether the specific version matches a "designated version"; (3) if the specific version matches the "designated version," sending updated operating system instructions to the remote receiver station, erasing the remote receiver station's previous operating system instructions, and storing the updated operating system instructions in the receiver station's memory. Id. at 331-32. The Personalized Media court held that those claims were directed to "the abstract idea of updating operating instructions." Id. at 332. The Personalized Media court also stated that "[o]ther than the fact that the method [disclosed by the claims] is implemented on a computer, it is no different from checking to see if a copy of the Federal Rules is up to date, and, if it is not, replacing it with a new one." Id.

The claims at issue here are similar to the claims in Personalized Media . Like the Personalized Media claims, the claims in the instant case recite a process of updating software wherein the process is comprised of transmitting information about the software, determining based on that information whether the software needs to be updated, and if so, sending updated data to the device containing the software. As addressed above, this is true even though the claims now invoke a Pinger process or a MOT script, as both the Pinger process and the MOT script function in the same manner. Thus, even with the toolbar's ability to be dynamically changed or updated via a Pinger process or a MOT script, the claims appear "no different from checking to see if a copy of the Federal Rules is up to date, and, if it is not, replacing it with a new one." Personalized Media , 161 F. Supp. 3d at 332. As the Federal Circuit has stated, "mere automation of manual processes using generic computers does not constitute a patentable improvement in computer technology." Credit Acceptance Corp. v. Westlake Servs. , 859 F.3d 1044, 1055 (Fed. Cir. 2017).

The claims in the instant case are also analogous to one set of claims considered in Intellectual Ventures I, LLC v. Motorola Mobility LLC , 81 F. Supp. 3d 356 (D. Del. 2015). In Intellectual Ventures I , the relevant claims, "[w]hen broken into their fundamental elements," recited: "(1) presenting a directory of software updates at [a] user station; (2) selecting and transmitting the desired software updates; and (3) receiving the requested software updates." Id. at 365-66. The court in Intellectual Ventures I noted that those claims "generically recite[d] the steps of ‘presenting,’ ‘sending,’ and ‘receiving,’ with no description of the underlying programming." Id. at 366. The court also stated that "the limitations provided by the dependent claims—that the software updates be ‘automatically installed on the user station’ over ‘the Internet’—do not make the claimed invention any less abstract." Id. Based on this analysis, the court concluded that "the claims [were] directed to the abstract idea of distributing software updates to a computer." Id.

The same is true of the claims at issue in the instant case. Specifically, like in Intellectual Ventures I , the focus of the instant claims is on distributing updated software to a computer through the Internet—particularly distributing updated toolbar software. As discussed above, this is true even though the claims now invoke a Pinger process and a MOT script. Again, as the Federal Circuit has stated, "mere automation of manual processes using generic computers does not constitute a patentable improvement in computer technology." Credit Acceptance Corp. , 859 F.3d at 1055.

MyMail's opposition's only response to this extensive Federal Circuit and district court case law is that because the claims utilize "a specific process for updating a toolbar automatically without user intervention—i.e. , dynamically, via a Pinger process or a MOT script—and not just any means for doing so," that alone is enough to conclude that "the asserted claims are not directed at an abstract idea." Opp. at 9. Specifically, MyMail asserts that the claims "improve[ ] the functioning of the software updating process by invoking the capability of using a Pinger process or a MOT script." Id In other words, MyMail argues specifically that the toolbar's ability to be dynamically changed or updated via a Pinger process or a MOT script is a "specific and improved way of updating a toolbar." Id. at 2; see also id. at 12 ("The claimed invention...improves upon what was previously done with toolbars by adding the ‘Pinger process/MOT script’ requirement.").

The Court disagrees for at least three reasons. First, MyMail conclusorily claims an improvement, but never identifies what the specific improvement is, despite the Federal Circuit's requirement that claims assert a "specific asserted improvement." See McRO , 837 F.3d at 1314-15 (claims are directed to a specific improvement where the claims "focused on a specific asserted improvement"). Second, MyMail fails to explain how the toolbar's ability to be dynamically changed or updated via a Pinger process or a MOT script improves the toolbar update process. Moreover, MyMail fails to identify how the toolbar's ability to be dynamically changed or updated via a Pinger process or a MOT script is a non-abstract improvement to computer technology. See Enfish , 822 F.3d at 1335 (claims are directed to a specific improvement where the invention made "non-abstract improvements to computer technology"). Finally, the Federal Circuit has held that claims are directed to a specific improvement where the claims used "a specific implementation of a solution to a problem [in the prior art]." Id. at 1339 (emphasis added). In the instant case, MyMail fails to identify how the toolbar's ability to be dynamically changed or updated via a Pinger process or a MOT script is a specific implementation of a solution to a problem in the prior art.

Although MyMail's opposition to the instant motion claims that the toolbar's ability to be dynamically changed or updated via a Pinger process and a MOT script is an improvement, the specifications do not. Moreover, the specifications fail to identify what actual benefit or improvement the Pinger process or the MOT script confer upon the toolbar update. See '863 Patent col. 10:15-17. The Court agrees with Defendants that the specifications do not identify how the Pinger process or the MOT script benefit "[toolbar] update techniques by making [the toolbar update process] more powerful, more efficient, or more sophisticated." Reply at 4.

Furthermore, although the specifications list "at least ten problems" that "the present invention solves," none of these problems relate to the toolbar update. See '863 Patent col. 4:56-5:28. MyMail never even argues that the toolbar update relates to any of these problems. See Opp. at 7-11. Indeed, none of the "ten problems" even reference a "toolbar" or any process for updating a toolbar. See '863 Patent col. 4:56-5:28. Instead the "problems" appear to focus primarily on "the need for a computer user to configure and reconfigure computer networking software for network access." See id. Even if the Court were to generously construe these "ten problems" to cover a toolbar update process, the specifications do not tie the ability of the toolbar to be dynamically changed or updated via a Pinger process or a MOT script to solving any of these problems, or to solving any additional problems that were present in the industry at the time of the invention. See id. Accordingly, not only do the specifications fail to identify any problem in preexisting toolbar update processes, the specifications also fail to show how the toolbar's ability to be dynamically changed or updated via a Pinger process or a MOT script provides any benefit whatsoever. As such, in stark contrast to Enfish and McRO , the specifications here do not identify the toolbar's ability to be dynamically changed or updated via a Pinger process or a MOT script as "a specific implementation of a solution to a problem in the software arts." Enfish , 822 F.3d at 1339 ; see also McRO 837 F.3d at 1314 ("Claim 1 of the [ ] patent is focused on a specific asserted improvement in computer animation.").

MyMail's opposition only confirms the Court's conclusion. MyMail's opposition simply argues that the Pinger process and the MOT script are "a specific, new, and useful method of [updating toolbar software]," but MyMail relies solely on vague, conclusory statements and never explains how this is so. Opp. at 10. For example, MyMail's opposition states, "The claimed invention does not simply use a computer to automate what was done previously, but rather improves upon what was previously done with toolbars by adding the ‘Pinger process/MOT script’ requirement." Opp. at 12. MyMail's vague and conclusory statements fail to identify the specific improvement, fail to explain how computer technology is improved, and fail to identify a problem in the prior art that is solved. Such vague and conclusory statements do not suffice. See Yu v. Apple, Inc. , 611 F. Supp. 3d 908, 914 (N.D. Cal. Mar. 24, 2020) ("Yu also says that the architecture in claim 1 is a specific improvement to a technical problem, and so not an abstract idea under step 1. But Yu presents this point only as a conclusory allegation, with no facts alleged in support."); Mkt. Track, LLC v. Efficient Collaborative Retail Mktg., LLC , 2015 WL 3637740, at *6 n.2 (N.D. Ill. June 11, 2015) ("The mere fact that a patent asserts that it represents an improvement on prior art does not, of course, suffice.").

Failure to identify the specific improvement, failure to explain how the computer technology is improved, and failure to identify a problem in the prior art that is solved do not demonstrate that the asserted claims are directed to an "asserted improvement" rather than an abstract idea. TriPlay, Inc. v. WhatsApp Inc. , 2018 WL 1479027, at *8 (D. Del. Mar. 27, 2018), aff'd , 771 Fed. App'x 492 (Fed. Cir. 2019) ("[T]he specification describes the claimed invention. But it never really seems to clearly articulate...what problems remained unsolved as to those prior art systems, and/or how the use of these components as a part of a messaging system provided an improvement over the prior art." (quotation marks omitted)); see id. (invalidating patent because, among other things, "the specification here is silent as to what the specific claimed improvement is [and] how it differs from the prior art").

For these reasons, this instant case is unlike Koninklijke KPN N.V. v. Gemalto M2M GmbH , 942 F.3d 1143 (Fed. Cir. 2019), on which MyMail relies. See Opp. at 9-10. In Koninklijke , the Federal Circuit found that a set of claims were "directed to a non-abstract improvement in an existing technological process." Id. at 1150. However, in Koninklijke , the Federal Circuit held that "a review of the specification ma[de] clear that [the invention] provide[d] [a] technological benefit." Id. at 1152. Indeed, even in Koninklijke , the Federal Circuit stated that for a claim to be directed to a specific improvement, "the claims must recite a specific means or method that solves a problem in an existing technological process ." Id. at 1150 (emphasis added); see also Uniloc USA, Inc. v. LG Elecs. USA, Inc. , 957 F.3d 1303, 1307–09 (Fed. Cir. Apr. 30, 2020) (holding claims were directed to a patent-eligible improvement to computer functionality because the claims recited specific means of improving a problem in the prior art, "namely the reduction of latency experienced by parked secondary stations in communications systems"). In contrast to Koninklijke , the '863 Patent and the '070 Patent fail to identify "a problem in an existing technological process" that is solved by the toolbar's ability to be dynamically changed or updated via a Pinger process or a MOT script. Id. Thus, Koninklijke is inapplicable to the claims at issue here.

Therefore, the Court rejects MyMail's notion that the toolbar's capability of being dynamically changed or updated via a Pinger process or a MOT script changes the claims "character as a whole" and renders the claims directed to a specific improvement for updating toolbar software. Instead, the Court finds that the claims at issue here are directed to the abstract idea of updating toolbar software over a network without user intervention. Therefore, the Court proceeds to Alice step two.

B. Alice Step Two

"In step two of the Alice inquiry, [the Court] search[es] for an ‘inventive concept sufficient to transform the nature of the claim into a patent-eligible application.’ " RecogniCorp, LLC v. Nintendo Co. , 855 F.3d 1322, 1327 (Fed. Cir. 2017) (quoting McRO , 837 F.3d at 1312 (internal quotation marks omitted)). This inventive concept "must be significantly more than the abstract idea itself," BASCOM , 827 F.3d at 1349, "must be more than well-understood, routine, conventional activity," Affinity Labs of Texas, LLC v. DIRECTV , 838 F.3d 1253, 1262 (Fed. Cir. 2016), "and cannot simply be an instruction to implement or apply the abstract idea on a computer." BASCOM , 827 F.3d at 1349.

When the Court first addressed the Alice step two inquiry in Defendant's first motion for judgment on the pleadings, the Court concluded that "none of the elements of the claims at issue...provided an inventive concept." ECF No. 129 at 22. Specifically, the Court found that "[a]ll the hardware components recited in the claims are generic, conventional components," and that "the claims call on these conventional components to perform their routine functions." Id. However, as stated above, a divided Federal Circuit panel vacated the Court's holding, see MyMail , 934 F.3d at 1380-81, and the Court subsequently construed the claim term "toolbar" as "a button bar that can be dynamically changed or updated via a Pinger process or a MOT script." See Claim Constr. Order. Accordingly, the Court performs the Alice step two inquiry in light of the Court's construction of "toolbar."

In Defendants' renewed motion, Defendants argue that "the Court's prior analysis remains applicable to the claims as construed" because "the [Pinger process and the MOT script] merely represent[ ] a conduit through which the toolbar is updated" and which does not improve the "toolbar update process." Mot. at 16. Moreover, Defendants argue that even after the Court's construction, that the construed claims merely "recite generic steps that are performed routinely by computers and servers." Id. at 15.

In opposition, MyMail argues that the "Pinger process/MOT script limitations imposed by the specification and specified in the Court's claim construction add the inventive concept required by [ Alice ] step two." Opp. at 11. Further, MyMail argues that three PTAB decisions, as well as statements within the patents' specifications, create at least a question of fact as to whether the Pinger process or the MOT script provide an "inventive concept." See id.

The Court first addresses whether there is an "inventive concept" sufficient to satisfy Alice step two. The Court then turns to MyMail's argument that statements in the specifications and the three prior PTAB decisions create an issue of fact which would preclude dismissal.

1. There is No Inventive Concept Sufficient to Satisfy Alice Step Two

At the outset, the Court notes that MyMail only argues that the toolbar's capability to be dynamically changed or updated via a Pinger process or a MOT script provides the "inventive concept" necessary to satisfy Alice step two. See Opp. at 11-15. Put differently, the only argument MyMail raises in the opposition is that the toolbar's ability to be dynamically changed or updated via a Pinger process or a MOT script is a "specific and improved way of updating a toolbar." Id. at 2; see also Opp. at 12 ("The claimed invention...improves upon what was previously done with toolbars by adding the ‘Pinger process/MOT script’ requirement."). However, even if the Court considers the claims' other components beyond the Pinger process and MOT script, the Court concludes that none of the elements provide an inventive concept.

First, the claims fail the Alice step two inquiry because the components—including the Pinger process and MOT script—are all generic and function in a conventional manner. Specifically, the claims recite a "user Internet device" and a server, and the specifications refer only to generic Internet-connected computers and servers.

Moreover, the claims call on these conventional components to perform their routine functions, including "displaying" a toolbar, "sending" and "receiving" information, "determining" something based on that information, and "initiating...an operation to update" the toolbar software. See id. at col. 29:28-63. No language in the claims or the specifications "demonstrat[es] that the generic computer components function in an unconventional manner or employ sufficiently specific programming." Intellectual Ventures I , 81 F. Supp. 3d at 367. Instead, the functions recited by the claims at issue—that is, "displaying," "sending," "receiving," "determining," and "initiating"—are "specified at a high level of generality," which the Federal Circuit has found to be "insufficient to supply an inventive concept." Ultramercial , 772 F.3d at 716.

Furthermore, the "toolbar" as "a button bar that can be dynamically changed or updated via a Pinger process or a MOT script" is also insufficient to add an inventive concept because the Pinger process and the MOT script merely use generic components in a conventional manner when dynamically changing or updating the toolbar.

In particular, when the Pinger process and the MOT script dynamically change or update the toolbar, the Pinger process and the MOT script use a "client dispatch application," an "access server," and various "databases." See, e.g. , '863 Patent col. 12:33-47. However, the specifications describe the "client dispatch application" as merely a "program" that provides various pieces of information and "provides basic configuration and initialization information...to the user's computer." Id. at col. 6:31-53 (describing the "client dispatch application"). Further, the specifications define the "access service" as comprised of "one or more network servers/databases," which "include[ ] a computer system having one or more processors, memory, and support hardware." Id. at 11:25-30. The specifications do not identify any of these components as unique to the invention, and MyMail does not argue that any individual component of the Pinger process or the MOT script is non-conventional or non-generic. See Opp. at 11-15.

Indeed, the Federal Circuit has held that similar components are generic. See, e.g. , Mortg. Grader , 811 F.3d at 1324-25 (holding that "interface," "network," and "database" were generic); In re TLI Commc'ns LLC , 823 F.3d at 613 (holding that "telephone unit," "server," "image analysis unit," and "control unit" were generic). As a result, the Court finds that the components that the Pinger process and the MOT script use when they dynamically change or update the toolbar are "generic computer components." Intellectual Ventures I , 81 F. Supp. 3d at 367.

Further, the specifications indicate that the components of the Pinger process and the MOT script function in a conventional and well-understood manner when they dynamically change or update the toolbar. For instance, the specifications state the generic components "transmit[ ] header information," '863 Patent col. 12:18; "determine[ ] whether a user...needs a database or file update," id. at col 12:25-28; "download database updates," id. at col. 12:35; and "build[ ] the [toolbar]," id. at col. 11:13. These steps are merely the well-understood and routine process one would perform to determine if a toolbar needs to be updated and then to update the toolbar if necessary—specifically checking to see if a toolbar needs an update and sending an update if needed. Moreover, the Federal Circuit has held that functions such as "sending and receiving data" are "well-understood, routine activit[ies]." TLI Commc'ns LLC , 823 F.3d at 614 (citing Alice , 573 U.S. at 225, 134 S.Ct. 2347 ).

Indeed, MyMail does not present any argument that the Pinger process and the MOT script themselves function in any specific manner that is more than the conventional and well-understood steps of checking toolbar data to determine whether the toolbar needs an update, and if so, updating the toolbar. In fact, the "specification[s] [are] silent as to" as to how the Pinger process or the MOT script "differ[ ] from the prior art, or how any inventive feature...is used in an unconventional manner." TriPlay , 2018 WL 1479027, at *8. Instead, MyMail only vaguely and conclusorily states that "[t]he claimed invention...improves upon what was previously done with toolbars by adding the ‘Pinger process/MOT script’ requirement." Opp. 12.

As a result, the Court concludes that when the Pinger process and the MOT script dynamically change or update the toolbar they use generic computer components and that those generic components function in a manner that does not "override[ ] the routine and conventional sequence of events" involved in updating a toolbar. DDR Holdings , 773 F.3d at 1256. Accordingly, the patents fail to satisfy Alice step two because their components are all generic components which function in a conventional manner.

Second, the Court also finds that the toolbar's ability to be dynamically changed or updated via a Pinger process or a MOT script only implements the claims' abstract idea, which itself cannot provide an inventive concept. As discussed above, in the context of the toolbar update, the Pinger process and the MOT script simply function to update toolbar software over a network without user intervention—the precise abstract idea to which the claims are directed. However, the Federal Circuit has routinely held that a claim's mere use of an abstract idea cannot satisfy Alice step two. See BSG Tech LLC v. Buyseasons, Inc. , 899 F.3d 1281, 1290 (Fed. Cir. 2018) ("It has been clear since Alice that a claimed invention's use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than the ineligible concept."); see also ChargePoint, Inc. v. SemaConnect, Inc. , 920 F.3d 759, 774 (Fed. Cir. 2019) ("In essence, the alleged ‘inventive concept’ that solves problems identified in the field is that charging stations are networked-controlled. But network control is the abstract idea itself [and thus cannot supply the inventive concept]."). Therefore, the toolbar's mere ability to be dynamically changed or updated via a Pinger process or a MOT script—which the Pinger process and the MOT script do via generic computer components in a conventional manner—is insufficient to add an "inventive concept."

Third, although MyMail does not raise this argument, the Court also finds that the ordered combination of the elements in the claims at issue does not yield an inventive concept, even in light of the Court's construction of "toolbar." Even as an ordered combination, the claims at issue do not recite a process for updating software that deviates from the "routine and conventional" updating process. DDR Holdings , 773 F.3d at 1258-59. On the contrary, as discussed above, both the claims and the Pinger process and the MOT script use the conventional and well-understood steps of checking toolbar data to determine whether the toolbar needs an update, and if so, updating the toolbar. Thus, much like the claims in Intellectual Ventures I , "instead of overriding a routine sequence of events," the instant claims apply generic components performing their routine functions "to automate the delivery of software updates." 81 F. Supp. 3d at 367. The specifications in the instant case further confirm this conclusion because nothing in the specifications remotely suggests that the claims produce a result that "overrides the routine and conventional sequence of events" for updating software on a computer. DDR Holdings , 773 F.3d at 1258-59. Indeed, the specifications are entirely "silent as to...how any inventive feature, alone or in an ordered combination, is used in an unconventional manner." TriPlay , 2018 WL 1479027, at *8.

Finally, the Court notes that this analysis accords with United States Circuit Judge Alan Lourie's dissenting opinion in MyMail, Ltd. v. ooVoo, LLC , 934 F.3d 1373 (Fed. Cir. 2019). There, the majority of a Federal Circuit panel reversed the Court for not having construed "toolbar" and did not reach the Alice inquiry or discuss either the Pinger process or the MOT script. See id. at 1378-81. However, Judge Lourie addressed the Alice inquiry, including the Pinger process and the MOT script, and found that "the claims at issue are clearly abstract regardless of claim construction." Id. at 1381 (Lourie, J., dissenting). Judge Lourie further stated that "[w]hile ‘inventive programming’ may provide an inventive concept in some circumstances, no such programming is disclosed here." Id. Specifically, Judge Lourie concluded that "the specification is clear that neither the unclaimed pinger process nor the unclaimed MOT script can be the inventive concept ." Id. (emphasis added). Although Defendants cite Judge Lourie's dissent in Defendants' renewed motion for judgment on the pleadings, see Mot. at 6-7, MyMail fails to respond to, or even acknowledge, Judge Lourie's dissent. See Opp. 11-15. Additionally, nothing in the Court's claim construction order alters Judge Lourie's analysis. MyMail , 934 F.3d at 1381 (Lourie, J., dissenting) ("[T]he claims at issue are clearly abstract regardless of claim construction.").

As such, the Court finds that neither the claims themselves, nor the Court's construction of "toolbar" as "a button bar that can be dynamically changed or updated via a Pinger process or a MOT script" confers an "inventive concept."

2. MyMail Fails to Create a Dispute of Fact That the Pinger Process and the MOT Script Operate in a Manner to Supply an "Inventive Concept"

The Court now turns to MyMail's argument that dismissal is precluded by the specifications' use of the phrase "unique propert[y]," as well as three prior PTAB decisions which upheld the validity of the patents. See Opp. at 13.

First, the Court rejects MyMail's argument that because the patents' specifications state that the "ability to be dynamically changed or updated via a Pinger process or a MOT script is a ‘unique property ’ of the invention," that "this assertion alone is sufficient to preclude a dismissal of MyMail's claims." Id. (emphasis added). Specifically, MyMail attempts to rely on Berkheimer v. HP Inc. and Aatrix Software, Inc. v. Green Shades Software, Inc. to create an issue of fact that would preclude dismissal. Id. (citing Berkheimer v. HP Inc. , 881 F.3d 1360 (Fed. Cir. 2018), and Aatrix Software, Inc. v. Green Shades Software, Inc. , 882 F.3d 1121 (Fed. Cir. 2018) ).

In Berkheimer , the Federal Circuit held that "[w]hile patent eligibility is ultimately a question of law,...[w]hether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination." 881 F.3d at 1369 ; see also Aatrix , 882 F.3d at 1128 (Fed. Cir. 2018) ("Whether the claim elements or the claimed combination are well-understood, routine, conventional is a question of fact."). However, in Berkheimer , "[t]he specification describe[d] an inventive feature that stores parsed data in a purportedly unconventional manner ." Id. (emphasis added). Further, "[t]he specification state[d] that storing object structures in the archive without substantial redundancy improve[d] system operating efficiency and reduce[d] storage costs ." Id. at 1370 (emphasis added). Given the allegations present in the specification, the Federal Circuit held that there was "at least a genuine issue of material fact" as to whether the "inventive feature" was "well-understood, routine, and conventional." Id. at 1370.

The Federal Circuit ruled similarly in Aatrix and held that because "[t]here [were] concrete allegations in the second amended complaint that individual elements and the claimed combination are not well-understood, routine, or conventional activity," questions of fact precluded dismissal at the motion to dismiss stage. See 882 F.3d at 1128.

Berkheimer and Aatrix are distinguishable from the instant case for at least the following three reasons. First, unlike Berkheimer and Aatrix , the Complaint in the instant case and the specifications of the '863 and '070 Patents fail to identify the toolbar's ability to be dynamically changed or updated via a Pinger process or a MOT script as an "inventive concept." The Complaint in the instant case fails to even mention a Pinger process or a MOT script. See Compl. ¶¶ 7-9 (describing the '863 and '070 Patents without reference to the Pinger process or the MOT script).

Second, Berkheimer and Aatrix identified concrete inventive concepts. By contrast, as discussed above, MyMail's Complaint, specifications, and opposition fail to identify what the specific improvement is and fail to identify how the toolbar's ability to be dynamically changed or updated via a Pinger process or a MOT script improves the toolbar update process or solves any problem in the prior art. Indeed, the specifications do not even identify any problems that existed in prior art toolbar update processes.

Third, as discussed above, MyMail's specifications and opposition lack any allegation that either the Pinger process or the MOT script themselves use non-generic or non-conventional components to function in an unconventional or non-routine manner. For instance, when the Pinger process and the MOT script dynamically change or update the toolbar, the Pinger process and the MOT script use a "client dispatch application," an "access server," and various "databases." See, e.g. , '863 Patent col. 12:33-47. However, the specifications describe the "client dispatch application" as merely a "program" that provides various pieces of information and "provides basic configuration and initialization information...to the user's computer." Id. at col. 6:31-53 (describing the "client dispatch application"). Further, the specifications define the "access service" as comprised of "one or more network servers/databases," which "include[ ] a computer system having one or more processors, memory, and support hardware." Id. at col. 11:25-30. The specifications do not identify any of these components as unique to the invention or identify any functions as an "inventive concept."

Moreover, as explained above, the specifications state that the generic components "transmit[ ] header information," '863 Patent col. 12:18; "determine[ ] whether a user...needs a database or file update," id. at col 12:25-28; "download database updates," id. at col. 12:35; and "build[ ] the [toolbar]," id. at col. 11:13. These steps are merely the well-understood and routine process one would perform to determine if a toolbar needs to be updated and then to update the toolbar if necessary. TLI Commc'ns LLC , 823 F.3d at 614 (holding that "sending and receiving data" are "well-understood, routine activit[ies]").

As a result, the '863 and '070 Patents are distinct from those in Berkheimer and Aatrix . See Berkheimer , 881 F.3d at 1369-70 (describing the patent's specifications and the allegedly "unconventional" elements); Aatrix , 882 F.3d at 1128 ("There are concrete allegations in the second amended complaint that individual elements and the claimed combination are not well-understood, routine, or conventional activity."). Specifically, as in TriPlay , the specifications here are "silent as to what the specific claimed improvement is" or what is unconventional with regard to a toolbar being dynamically changed or updated via a Pinger process or a MOT script. TriPlay , 2018 WL 1479027, at *8 ("Unlike, for instance, the claims involved in [ Berkheimer ], the specification here is silent as to what the specific claimed improvement is, how it differs from the prior art, or how any inventive feature, alone or as an ordered combination, is used in an unconventional manner."); see also WhitServe LLC v. Donuts Inc. , 390 F. Supp. 3d 571, 581 (D. Del. 2019), aff'd , 809 Fed. App'x 929 (Fed. Cir. Apr. 10, 2020) ("Here, Berkheimer and Aatrix are inapplicable because neither the patent nor the complaint alleges any improvement in technology.").

MyMail's opposition's sole response is that the '863 and '070 Patents state that the "toolbar's ability to be dynamically changed or updated via a Pinger process or a MOT script is a ‘unique property’ of the invention" and that "[t]his assertion alone is sufficient to preclude [ ] dismissal." Opp. at 13, This single conclusory statement is insufficient to create an issue of fact. '863 Patent col. 10:15-17; see TriPlay , 2018 WL 1479027, at *8 ("Unlike, for instance, the claims involved in [ Berkheimer ], the specification here is silent as to what the specific claimed improvement is, how it differs from the prior art, or how any inventive feature, alone or as an ordered combination, is used in an unconventional manner."); see also WhitServe , 390 F. Supp. 3d at 581 ("Here, Berkheimer and Aatrix are inapplicable because neither the patent nor the complaint alleges any improvement in technology.").

Therefore, the Court concludes that the '863 and '070 Patents' reference to the toolbar's ability to be dynamically changed or updated via a Pinger process or a MOT script as a "unique property" is insufficient to preclude dismissal.

Second, the Court also rejects MyMail's attempt to rely on three prior PTAB decisions to "show that there is a plausible basis for MyMail's contention that the Pinger process/MOT script...was not a well-understood, routine and conventional method." See Opp. at 13. On three separate occasions the PTAB has upheld the validity of the '863 and '070 Patents during inter partes review proceedings ("IPR") based on, in part, the Pinger process and the MOT script. See generally ECF No. 140-2 (IPR2018-00117) (denying institution of IPR for the '070 Patent ); ECF No. 140-3 (IPR2018-00118) (denying institution of IPR for the '863 Patent ); and ECF No. 140-4 (IPR2017-00967) (final written decision upholding validity of the '863 Patent ). However, in IPR proceedings, the PTAB can only address validity under §§ 102 and 103—inquiries that are vastly different from the current assessment of subject-matter eligibility under § 101. Neptune Generics, LLC v. Eli Lilly & Co. , 921 F.3d 1372, 1378 (Fed. Cir. 2019) ("Congress expressly limited the scope of inter partes review to a subset of grounds that can be raised under 35 U.S.C. §§ 102 & 103." (citing 35 U.S.C. § 311(b) )). As the United States Supreme Court has stated, "The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter." Diamond , 450 U.S. at 188-89, 101 S.Ct. 1048. Accordingly, the Federal Circuit has held that "it is not enough for [ § 101 ] subject-matter eligibility that claimed techniques be novel and nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102 and 103." SAP Am., Inc. v. InvestPic, LLC , 898 F.3d 1161, 1163 (Fed. Cir. 2018). Thus, the PTAB's assessment of validity under §§ 102 and 103 is irrelevant to the Court's assessment under § 101. As a result, the Court rejects MyMail's attempt to rely on the PTAB decisions to demonstrate that the Pinger process or the MOT script provide an "inventive concept."

In sum, because the Court finds at Alice step one that the claims are directed to an abstract idea and at step two that there is no inventive concept sufficient to save the claims, the Court concludes that the asserted claims are patent-ineligible under § 101. Defendants' renewed motion for judgment on the pleadings is therefore GRANTED.

IV. CONCLUSION

For the foregoing reasons, the Court GRANTS Defendants' renewed motion for judgment on the pleadings.

IT IS SO ORDERED.