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8 UNITED STATES DISTRICT COURT

9 NORTHERN DISTRICT OF CALIFORNIA 10 SAN JOSE DIVISION 11

12 MYMAIL, LTD., Case No. 17-CV-04487-LHK 13 Plaintiff, Case No. 17-CV-04488-LHK

14 v. ORDER GRANTING DEFENDANTS' RENEWED MOTION FOR JUDGMENT ON THE PLEADINGS 15 OOVOO, LLC, Re: Dkt. No. 159 16 Defendant. 17 MYMAIL, LTD., 18 Plaintiff, 19 v. 20 IAC SEARCH & MEDIA, INC., 21 Defendant. 22 23 Plaintiff MyMail, Ltd. (“MyMail”) filed patent infringement actions against Defendants 24 ooVoo, LLC (“ooVoo”) and IAC Search & Media, Inc. (“IAC”) (collectively, “Defendants”). 25 MyMail alleges that Defendants infringe claims of

(“the ’863 Patent”) 26 and

(“the ’070 Patent”) (collective, “MyMail patents” or “the patents”). 27 1 Before the Court is Defendants’ renewed motion for judgment on the pleadings.1 See ECF No. 2 159.2 Having considered the submissions of the parties, the relevant law, and the records in these 3 cases, the Court GRANTS Defendants’ renewed motion for judgment on the pleadings. 4 I. BACKGROUND 5 A. Factual Background 6 1. The Parties 7 Plaintiff MyMail is a “Texas Limited Partnership” with a primary place of business in 8 Athens, Texas. ooVoo ECF No. 1 ¶ 1. MyMail is the assignee of the ’863 and ’070 Patents.

9 ¶ 9. Defendant ooVoo is a Delaware corporation with its primary place of business in New York, 10 New York.

. Defendant IAC is a Delaware corporation with its primary place of business 11 in Oakland, California. ECF No. 1 ¶ 2. 12 2. The Patents 13 The ’863 Patent is titled “Method of Modifying a Toolbar.” ECF No. 143-1 (’863 Patent). 14 It was filed on April 16, 2003 and issued on September 25, 2012. The ’070 Patent is titled 15 “Dynamically Modifying a Toolbar.” ECF No. 143-2 (’070 Patent). It was filed on June 20, 2013 16 and issued on April 28, 2015. The two patents are related. Specifically, the ’070 Patent is a 17 continuation of U.S. Application No. 13/573,311, which in turn is a continuation application of the 18 ’863 Patent. Thus, the ’863 Patent and the ’070 Patent share similar claims, identical figures, and 19 nearly identical specifications. As such, for simplicity, the Court’s citations to the text and figures 20 of the MyMail patents refer to the ’863 Patent. 21 The patents state that they relate “in general to digital data networks and, more particularly, 22 23 1 Defendants’ renewed motion for judgment on the pleadings includes a notice of motion that is 24 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.

-2(b). 2 On January 8, 2020, the Court consolidated Case Nos. 17-CV-4487 and 17-CV-4488 and 26 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.

“ooVoo ECF No.” denotes docket entries in Case 27 No. 17-CV-4487 that were filed prior to consolidation and were not added to the docket in Case No. 17-CV-4488. 1 to network access and to minimizing unauthorized interception of data and denial of network 2 services.” ’863 Patent col. 1:26-29. However, the patents also describe a method for updating 3 toolbars or “button bars” that are displayed on Internet-connected devices such as personal 4 computers.

at col. 10:7-11:16. Specifically, the patents disclose a toolbar database that stores 5 data defining the attributes of the toolbar, like button captions and button functionality.

at col. 6 10:38-11:4. When the device that displays the toolbar is connected to the internet, the device 7 executes software called a “client dispatch application” that initiates a “pinger” to update the 8 toolbar database, along with other databases.

at col. 11:44-47, col. 12:16-17, col. 17:30-32. 9 The pinger sends information about those databases to a network server, which in turn uses the 10 sent information to determine whether any of the databases require updates.

at col. 11:47-52, 11 col. 12:17-24, col. 17:32-40. If any updates are required, the server sends those updates to the 12 device.

at col. 17:40-66. 13 MyMail asserts claims 1-5, 9-13, 16-17, 19-20, and 23 of the ’863 Patent and claims 1-13 14 and 15-22 of the ’070 Patent. ECF No. 109 at 5. 15 B. Procedural History 16 On November 18, 2016, MyMail filed its complaint for patent infringement against 17 Defendant ooVoo in the United States District Court for the Eastern District of Texas. See ooVoo 18 ECF No. 1. Then, on December 20, 2016, MyMail filed its complaint for patent infringement 19 against Defendant IAC in the same court. See ECF No. 1. 20 On February 2, 2017, ooVoo moved to dismiss MyMail’s action for improper venue, 21 answered MyMail’s complaint, and asserted counterclaims against MyMail. ooVoo ECF Nos. 18, 22 19. On February 3, 2017, MyMail opposed ooVoo’s motion to dismiss for improper venue. 23 ooVoo ECF No. 24. 24 Similarly, on February 13, 2017, IAC moved to dismiss MyMail’s action for improper 25 venue, answered MyMail’s complaint, and asserted counterclaims against MyMail. ECF Nos. 16, 26 17. On that same day, MyMail opposed IAC’s motion to dismiss for improper venue. ECF No. 27 20. 1 On February 23, 2017, MyMail answered ooVoo’s counterclaims. ooVoo ECF No. 27. 2 On March 6, 2017, MyMail answered IAC’s counterclaims. ECF No. 27. 3 On July 11, 2017, the United States District Court for the Eastern District of Texas 4 transferred both of MyMail’s actions to this district. ooVoo ECF No. 33; ECF No. 70. MyMail’s 5 action against ooVoo was originally assigned to United States Magistrate Judge Susan van 6 Keulen, see ooVoo ECF No. 35, and MyMail’s action against IAC was originally assigned to 7 United States Magistrate Judge Joseph Spero. See ECF No. 72. However, MyMail declined 8 magistrate judge jurisdiction in both actions. ooVoo ECF No. 36; ECF No. 74. Thus, on 9 September 1, 2017, MyMail’s action against ooVoo was reassigned to the undersigned judge, 10 ooVoo ECF No. 38, and MyMail’s action against IAC was reassigned to United States District 11 Judge Phyllis J. Hamilton, ECF No. 77. 12 On October 2, 2017, MyMail filed a motion to relate MyMail’s action against IAC to 13 MyMail’s action against ooVoo. ooVoo ECF No. 48. On October 10, 2017, the Court granted 14 MyMail’s motion to relate. ooVoo ECF No. 55. As a result, MyMail’s action against IAC was 15 reassigned to the undersigned judge. ECF No. 93. 16 On October 31, 2017, Defendants filed motions for judgment on the pleadings that sought 17 to invalidate MyMail’s patents under

. ooVoo ECF No. 62; ECF No. 101. On 18 March 16, 2018, the Court granted Defendants’ motion for judgment on the pleadings, 19 invalidating MyMail’s patents under

. ooVoo ECF No. 90; ECF No. 129. On 20 March 26, 2018, MyMail filed a notice of appeal to the Federal Circuit Court of Appeals. ooVoo 21 ECF No. 92; ECF No. 131. 22 On August 16, 2019, a divided panel of the Federal Circuit Court of Appeals vacated and 23 remanded the Court’s order granting Defendants’ motion for judgment on the pleadings because 24 the Court did not construe the term “toolbar.” MyMail, Ltd. v. ooVoo, LLC,

, 1380 25 (Fed. Cir. 2019). 26 On October 1, 2019, Defendants filed renewed motions for judgment on the pleadings and 27 again sought to invalidate the patents under

. ooVoo ECF No. 98; ECF No. 133. 1 However, on January 8, 2020, at a case management conference, the parties agreed that the 2 Court should first construe the term “toolbar” before addressing Defendants’ renewed motions. 3 ECF No. 139. Accordingly, the Court denied without prejudice Defendants’ renewed motions for 4 judgment on the pleadings. The Court also consolidated the cases under Case No. 17-CV-04488. 5

6 In response to the Court’s case management order, the parties filed claim construction 7 briefing, ECF Nos. 140, 143, 144, and on March 4, 2020, the Court construed the term “toolbar” 8 as “a button bar that can be dynamically changed or updated via a Pinger process or a MOT 9 script.” ECF No. 156 (“Claim Constr. Order”). 10 Accordingly, on March 26, 2020, Defendants filed the instant renewed motion for 11 judgment on the pleadings. ooVoo ECF No. 110 (later refiled as ECF No. 159 (“Mot.”)). On 12 April 4, 2020, MyMail filed an opposition, ECF No. 160 (“Opp.”), and on April 16, 2020, 13 Defendants filed a reply. ECF No. 161 (“Reply”). 14 II. LEGAL STANDARD 15 A. Motion For Judgment on the Pleadings Under Federal Rule of Civil Procedure 12(c) 16 “After the pleadings are closed—but early enough not to delay trial—a party may move for 17 judgment on the pleadings.” Fed. R. Civ. P. 12(c). “Judgment on the pleadings is properly 18 granted when, accepting all factual allegations in the complaint as true, there is no issue of 19 material fact in dispute, and the moving party is entitled to judgment as a matter of law.” Chavez 20 v. United States,

(9th Cir. 2012) (brackets and internal quotation marks 21 omitted). Like a motion to dismiss under Rule 12(b)(6), a motion under Rule 12(c) challenges the 22 legal sufficiency of the claims asserted in the complaint. See

Indeed, a Rule 12(c) motion is 23 “functionally identical” to a Rule 12(b)(6) motion, and courts apply the “same standard.” Dworkin 24 v. Hustler Magazine, Inc.,

(9th Cir. 1989) (explaining that the “principal 25 difference” between Rule 12(b)(6) and Rule 12(c) “is the timing of filing”); see also U.S. ex rel. 26 Cafasso v. Gen. Dynamics C4 Sys.,

, 1054 n.4 (9th Cir. 2011). 27 Judgment on the pleadings should thus be entered when a complaint does not plead 1 “enough facts to state a claim to relief that is plausible on its face.” Bell Atl. Corp. v. Twombly, 2

(2007). “A claim has facial plausibility when the plaintiff pleads factual 3 content that allows the court to draw the reasonable inference that the defendant is liable for the 4 misconduct alleged.” Ashcroft v. Iqbal,

(2009). “The plausibility standard is 5 not akin to a probability requirement, but it asks for more than a sheer possibility that a defendant 6 has acted unlawfully.”

(internal quotation marks omitted). For purposes of ruling on a Rule 7 12(c) motion, the Court “accept[s] factual allegations in the complaint as true and construe[s] the 8 pleadings in the light most favorable to the nonmoving party.” Manzarek v. St. Paul Fire & 9 Marine Ins. Co.,

(9th Cir. 2008). 10 B. Patent Eligibility Challenges Under

11 Defendants’ motion argues that the patents-in-suit fail to claim patent-eligible subject 12 matter under

in light of the United States Supreme Court’s decision in Alice Corp. 13 Pty. Ltd. v. CLS Bank International,

(2014). The ultimate question whether a claim 14 recites patent-eligible subject matter under § 101 is a question of law. Intellectual Ventures I LLC 15 v. Capital One Fin. Corp.,

(Fed. Cir. 2017) (“Patent eligibility under § 101 is 16 an issue of law[.]”); In re Roslin Inst. (Edinburgh),

(Fed. Cir. 2014) (same). 17 Although the Federal Circuit has noted that the § 101 analysis “may contain disputes over 18 underlying facts,” it has also made clear that patent eligibility can often be resolved on the 19 pleadings. Berkheimer v. HP Inc.,

(Fed. Cir. 2018) (“As our cases 20 demonstrate, not every § 101 determination contains genuine disputes over the underlying facts 21 material to the § 101 inquiry.”); Secured Mail Sols. LLC v. Universal Wilde, Inc.,

, 22 912 (Fed. Cir. 2017) (affirming determination of ineligibility made on 12(b)(6) motion). 23 Accordingly, a district court may resolve the issue of patent eligibility under § 101 by way of a 24 motion for judgment on the pleadings. See, e.g., buySAFE, Inc. v. Google, Inc.,

, 25 1352 (Fed. Cir. 2014) (affirming determination of ineligibility made on motion for judgment on 26 the pleadings). 27 C. Substantive Legal Standards Applicable Under

1 1. Patent-Eligible Subject Matter Under

2 Section 101 of Title 35 of the United States Code “defines the subject matter that may be 3 patented under the Patent Act.” Bilski v. Kappos,

(2010). Under § 101, the 4 scope of patentable subject matter encompasses “any new and useful process, machine, 5 manufacture, or composition of matter, or any new and useful improvement thereof.” Id. (quoting 6

). These categories are broad, but they are not limitless. Section 101 “contains an 7 important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not 8 patentable.” Alice, 573 U.S. at 216 (citation omitted). These three categories of subject matter are 9 excepted from patent-eligibility because “they are the basic tools of scientific and technological 10 work,” which are “free to all men and reserved exclusively to none.” Mayo Collaborative Servs. 11 v. Prometheus Labs., Inc.,

(2012) (citations omitted). The United States Supreme 12 Court has explained that allowing patent claims for such purported inventions would “tend to 13 impede innovation more than it would tend to promote it,” thereby thwarting the primary object of 14 the patent laws.

However, the United States Supreme Court has also cautioned that “[a]t some 15 level, all inventions embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or 16 abstract ideas.” Alice, 573 U.S. at 217 (alteration, internal quotation marks, and citation omitted). 17 Accordingly, courts must “tread carefully in construing this exclusionary principle lest it swallow 18 all of patent law.” Id. 19 In Alice, the leading case on patent-eligible subject matter under § 101, the United States 20 Supreme Court refined the “framework for distinguishing patents that claim laws of nature, natural 21 phenomena, and abstract ideas from those that claim patent-eligible applications of those 22 concepts” originally set forth in Mayo,

. Alice, 573 U.S. at 217. This analysis, 23 generally known as the “Alice” framework, proceeds in two steps as follows:

24 First, we determine whether the claims at issue are directed to one of those patent- 25 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 26 individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application. We 27 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 1 patent in practice amounts to significantly more than a patent upon the [ineligible 2 concept] itself.” Id. at 217-18 (alterations in original) (citations omitted); see also In re TLI Commc’ns LLC Patent

F.3d 607, 611 (Fed. Cir. 2016) (describing “the now familiar two-part test described by 4 the [United States] Supreme Court in Alice”). 5 2. Alice Step One—Identification of Claims Directed to an Abstract Idea 6 Neither the United States Supreme Court nor the Federal Circuit has set forth a bright-line 7 test separating abstract ideas from concepts that are sufficiently concrete so as to require no further 8 inquiry under the first step of the Alice framework. See, e.g., Alice, 573 U.S. at 221 (noting that 9 “[the United States Supreme Court] need not labor to delimit the precise contours of the ‘abstract 10 ideas’ category in this case”); DDR Holdings, LLC v. Hotels.com, L.P.,

(Fed. 11 Cir. 2014) (observing that the United States Supreme Court did not “delimit the precise contours 12 of the ‘abstract ideas’ category” in Alice (citation omitted)). As a result, in evaluating whether 13 particular claims are directed to patent-ineligible abstract ideas, courts have generally begun by 14 “compar[ing] claims at issue to those claims already found to be directed to an abstract idea in 15 previous cases.” Enfish, LLC v. Microsoft Corp.,

(Fed. Cir. 2016). 16 Two of the United States Supreme Court’s leading cases concerning the “abstract idea” 17 exception involved claims held to be abstract because they were drawn to longstanding, 18 fundamental economic practices. See Alice, 573 U.S. at 219 (claims “drawn to the concept of 19 intermediated settlement, i.e., the use of a third party to mitigate settlement risk” were directed to a 20 patent-ineligible abstract idea); Bilski,

(claims drawn to “the basic concept of 21 hedging, or protecting against risk” were directed to a patent-ineligible abstract idea because 22 “[h]edging is a fundamental economic practice long prevalent in our system of commerce and 23 taught in any introductory finance class” (citation omitted)). 24 Similarly, the United States Supreme Court has recognized that information itself is 25 intangible. See Microsoft Corp. v. AT & T Corp.,

, 451 n.12 (2007). Accordingly, 26 the Federal Circuit has generally found claims abstract where they are directed to some 27 1 combination of acquiring information, analyzing information, and/or displaying the results of that 2 analysis. See FairWarning IP, LLC v. Iatric Sys., Inc.,

(Fed. Cir. 2016) 3 (claims “directed to collecting and analyzing information to detect misuse and notifying a user 4 when misuse is detected” were drawn to a patent-ineligible abstract idea); Elec. Power Grp., LLC 5 v. Alstom S.A.,

(Fed. Cir. 2016) (claims directed to an abstract idea because 6 “[t]he advance they purport to make is a process of gathering and analyzing information of a 7 specified content, then displaying the results, and not any particular assertedly inventive 8 technology for performing those functions”); In re TLI Commc’ns LLC, 823 F.3d at 611 (claims 9 were “directed to the abstract idea of classifying and storing digital images in an organized 10 manner”); see also Elec. Power Grp.,

(collecting cases). 11 However, the determination of whether other types of computer-implemented claims are 12 abstract has proven more “elusive.” See, e.g., Internet Patents Corp. v. Active Network, Inc., 790

(Fed. Cir. 2015) (“[P]recision has been elusive in defining an all-purpose 14 boundary between the abstract and the concrete[.]”). As a result, in addition to comparing claims 15 to prior United States Supreme Court and Federal Circuit precedents, courts considering 16 computer-implemented inventions have taken varied approaches to determining whether particular 17 claims are directed to an abstract idea. 18 For example, courts have considered whether the claims “purport to improve the 19 functioning of the computer itself,” Alice, 573 U.S. at 225, which may suggest that the claims are 20 not abstract, or instead whether “computers are invoked merely as a tool” to carry out an abstract 21 process, Enfish,

; see also

(“[S]ome improvements in computer- 22 related technology when appropriately claimed are undoubtedly not abstract, such as a chip 23 architecture, an LED display, and the like. Nor do we think that claims directed to software, as 24 opposed to hardware, are inherently abstract[.]”). The Federal Circuit has followed this approach 25 to find claims patent-eligible in several cases. See Visual Memory LLC v. NVIDIA Corp., 867

(Fed. Cir. 2017) (claims directed to an improved memory system were not 27 abstract because they “focus[ed] on a ‘specific asserted improvement in computer capabilities’— 1 the use of programmable operational characteristics that are configurable based on the type of 2 processor” (quoting Enfish,

)); McRO, Inc. v. Bandai Namco Games Am. Inc., 3

(Fed. Cir. 2016) (claims directed to automating part of a preexisting method 4 for 3-D facial expression animation were not abstract because they “focused on a specific asserted 5 improvement in computer animation, i.e., the automatic use of rules of a particular type”); Enfish, 6

(claims directed to a specific type of self-referential table in a computer 7 database were not abstract because they focused “on the specific asserted improvement in 8 computer capabilities (i.e., the self-referential table for a computer database)”). 9 Similarly, the Federal Circuit has found that claims directed to a “new and useful 10 technique” for performing a particular task were not abstract. See Thales Visionix Inc. v. United 11 States,

(Fed. Cir. 2017) (holding that “claims directed to a new and useful 12 technique for using sensors to more efficiently track an object on a moving platform” were not 13 abstract); Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc.,

(Fed. Cir. 2016) 14 (holding that claims directed to “a new and useful laboratory technique for preserving 15 hepatocytes,” a type of liver cell, were not abstract); see also Diamond v. Diehr,

, 16 187 (1981) (holding that claims for a method to cure rubber that employed a formula to calculate 17 the optimal cure time were not abstract). 18 By contrast, courts have frequently invalidated claims that have a close analogy in the 19 brick-and-mortar world, such that the claims cover “‘fundamental practices long prevalent in our 20 system’ and ‘methods of organizing human activity.’” Intellectual Ventures I LLC v. Symantec 21 Corp.,

(Fed. Cir. 2016) (quoting Alice, 573 U.S. at 219) (alterations omitted) 22 (finding an email processing software program to be abstract through comparison to a “brick-and- 23 mortar” post office); Intellectual Ventures I LLC v. Symantec Corp.,

(D.

) (“Another helpful way of assessing whether the claims of the patent are directed to an 25 abstract idea is to consider if all of the steps of the claim could be performed by human beings in a 26 non-computerized ‘brick and mortar’ context.” (citing buySAFE, Inc. v. Google, Inc.,

(Fed. Cir. 2014)). 1 Courts will also (or alternatively, as the facts require) consider a related question of 2 whether the claims are, in essence, directed to a mental process or a process that could be done 3 with pencil and paper. See Synopsys, Inc. v. Mentor Graphics Corp.,

(Fed. 4 Cir. 2016) (claims for translating a functional description of a logic circuit into a hardware 5 component description of the logic circuit were patent-ineligible because the “method can be 6 performed mentally or with pencil and paper”); CyberSource Corp. v. Retail Decisions, Inc., 654

, 1372 (Fed. Cir. 2011) (claim for verifying the validity of a credit card transaction over 8 the Internet was patent-ineligible because the “steps can be performed in the human mind, or by a 9 human using a pen and paper”); see also, e.g., Mortg. Grader, Inc. v. First Choice Loan Servs. 10 Inc.,

(Fed. Cir. 2016) (claims for computer-implemented system to enable 11 borrowers to shop for loan packages anonymously were abstract where “[t]he series of steps 12 covered by the asserted claims . . . could all be performed by humans without a computer”).3 13 At all events, however, the Federal Circuit has emphasized that “the first step of the [Alice] 14 inquiry is a meaningful one.” Enfish,

. In particular, the court’s task is not to 15 determine whether claims merely involve an abstract idea at some level, see

but rather to 16 examine the claims “in their entirety to ascertain whether their character as a whole is directed to 17 excluded subject matter,” Internet Patents, 790 F.3d at 1346. 18 3. Alice Step Two—Evaluation of Abstract Claims for a Limiting Inventive Concept 19 A claim drawn to an abstract idea is not necessarily invalid if the claim’s limitations— 20 considered individually or as an ordered combination—serve to “transform the claims into a 21 patent-eligible application.” Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. 22 Ass’n,

(Fed. Cir. 2014). Thus, the second step of the Alice analysis (the 23 search for an “inventive concept”) asks whether the claim contains an element or combination of 24

25 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.,

, 995 26 (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 27 unhelpful where “error correction codes were not conventional activity that humans engaged in before computers”). 1 elements that “ensure[s] that the patent in practice amounts to significantly more than a patent 2 upon the [abstract idea] itself.” 573 U.S. at 218 (citation omitted). 3 The United States Supreme Court has made clear that transforming an abstract idea to a 4 patent-eligible application of the idea requires more than simply reciting the idea followed by 5 “apply it.” Id. at 221 (quoting Mayo,

). In that regard, the Federal Circuit has 6 repeatedly held that “[f]or the role of a computer in a computer-implemented invention to be 7 deemed meaningful in the context of this analysis, it must involve more than performance of 8 ‘well-understood, routine, [and] conventional activities previously known to the industry.’” 9 Content Extraction,

(alteration in original) (quoting Alice, 573 U.S. at 225); 10 see also Mortg. Grader,

(holding that “generic computer components such as 11 an ‘interface,’ ‘network,’ and ‘database’ . . . do not satisfy the inventive concept requirement”); 12 Bancorp Servs., 687 F.3d at 1278 (“To salvage an otherwise patent-ineligible process, a computer 13 must be integral to the claimed invention, facilitating the process in a way that a person making 14 calculations or computations could not.”). 15 Likewise, “[i]t is well-settled that mere recitation of concrete, tangible components is 16 insufficient to confer patent eligibility to an otherwise abstract idea” where those components 17 simply perform their “well-understood, routine, conventional” functions. In re TLI Commc’ns 18 LLC, 823 F.3d at 613 (citation omitted); see also id. (ruling that “telephone unit,” “server,” “image 19 analysis unit,” and “control unit” limitations were insufficient to satisfy Alice step two where 20 claims were drawn to abstract idea of classifying and storing digital images in an organized 21 manner). “The question of whether a claim element or combination of elements is well- 22 understood, routine and conventional to a skilled artisan in the relevant field is a question of fact” 23 that “must be proven by clear and convincing evidence.” Berkheimer,

. This 24 inquiry “goes beyond what was simply known in the prior art.”

. 25 In addition, the United States Supreme Court explained in Bilski that “limiting an abstract 26 idea to one field of use or adding token postsolution components [does] not make the concept 27 patentable.”

(citing Parker v. Flook,

(1978)); see also Alice, 573 1 U.S. at 223 (same). The Federal Circuit has similarly stated that attempts “to limit the use of the 2 abstract idea to a particular technological environment” are insufficient to render an abstract idea 3 patent-eligible. Ultramercial, Inc. v. Hulu, LLC,

(Fed. Cir. 2014) (internal 4 quotation marks and citation omitted); see also Intellectual Ventures I LLC v. Capital One Bank 5 (USA),

(Fed. Cir. 2015) (“An abstract idea does not become nonabstract by 6 limiting the invention to a particular field of use or technological environment, such as the 7 Internet.”). 8 In keeping with these restrictions, the Federal Circuit has found that claims “necessarily 9 rooted in computer technology in order to overcome a problem specifically arising in the realm of 10 computer networks” can be sufficiently transformative to supply an inventive concept. DDR, 773 11 F.3d at 1257; see also id. at 1248, 1259 (concluding that claims that addressed the “Internet- 12 centric problem” of third-party merchant advertisements that would “lure . . . visitor traffic away” 13 from a host website amounted to an inventive concept). 14 In addition, a “non-conventional and non-generic arrangement of known, conventional 15 pieces” can amount to an inventive concept. BASCOM Glob. Internet Servs., Inc. v. AT&T 16 Mobility LLC,

(Fed. Cir. 2016). For example, in BASCOM, the Federal 17 Circuit addressed a claim for Internet content filtering performed at “a specific location, remote 18 from the end-users, with customizable filtering features specific to each end user.”

Because 19 this “specific location” was different from the location where Internet content filtering was 20 traditionally performed, the Federal Circuit concluded this was a “non-conventional and non- 21 generic arrangement of known, conventional pieces” that provided an inventive concept.

As 22 another example, in Amdocs (Israel) Ltd. v. Openet Telecom, Inc., the Federal Circuit held that 23 claims relating to solutions for managing accounting and billing data over large, disparate 24 networks recited an inventive concept because they contained “specific enhancing limitation[s] 25 that necessarily incorporate[d] the invention’s distributed architecture.”

, 1301 26 (Fed. Cir. 2016), cert. denied,

(Nov. 27, 2017). The use of a “distributed 27 architecture,” which stored accounting data information near the source of the information in the 1 disparate networks, transformed the claims into patentable subject matter. Id. 2 4. Preemption 3 In addition to these principles, courts sometimes find it helpful to assess claims against the 4 policy rationale for § 101. The United States Supreme Court has recognized that the “concern that 5 undergirds [the] § 101 jurisprudence” is preemption. Alice, 573 U.S. at 223. Thus, courts have 6 readily concluded that a claim is not patent-eligible when the claim is so abstract that it preempts 7 “use of [the claimed] approach in all fields” and “would effectively grant a monopoly over an 8 abstract idea.” Bilski,

. However, the inverse is not true: “[w]hile preemption may 9 signal patent ineligible subject matter, the absence of complete preemption does not demonstrate 10 patent eligibility.” FairWarning, 839 F.3d at 1098 (alteration in original) (citation omitted). 11 III. DISCUSSION 12 Defendants’ renewed motion for judgment on the pleadings contends that the asserted 13 claims of the patents-in-suit fall within the patent-ineligible “abstract ideas” exception to § 101. 14 See Mot. at 7. The Court applies the Alice framework described above to the claims of the ’863 15 and ’070 Patents. 16 However, the Court need not individually analyze every claim if certain claims are 17 representative. See generally Alice, 573 U.S. at 224-26 (finding claims to be patent-ineligible 18 based on analysis of one representative claim). In the parties’ briefing for Defendants’ initial 19 motion for judgment on the pleadings, both MyMail and Defendants agreed that claim 1 of the 20 ’863 Patent and claim 1 of the ’070 Patent were representative. ECF No. 101 at 16; ECF No. 109 21 at 5-6. For the current motion, Defendants continue to identify claim 1 of each patent as 22 representative. See Mot. at 3. MyMail does not dispute that claim 1 of each patent continues to be 23 representative. See Opp. at 1-6. As a result, the Court treats claim 1 of the ’863 Patent and claim 24 1 of the ’070 Patent as representative. 25 Claim 1 of the ’863 Patent recites:

26 1. A method of modifying a toolbar, comprising the steps of: 27 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 1 databases, the toolbar data comprising a plurality of attributes, each attribute 2 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 3 when the button is actuated by the user Internet device;

4 the user Internet device automatically sending a revision level of the one or more toolbar-defining databases to a predetermined network address; 5

6 a server at the predetermined network address determining, from the revision level, the user Internet device should receive the toolbar update data; 7 the user Internet device receiving toolbar update data from the Internet; 8 the user Internet device initiating without user interaction an operation to update 9 the toolbar data in accordance with the toolbar update data received; 10 the user Internet device updating, by the operation, the toolbar data in 11 accordance with the toolbar update data, thereby producing updated toolbar data, the updating comprising at least one of the following steps (a) and (b), 12 each respectively comprising:

13 (a) writing at least one new attribute to the original toolbar data, wherein 14 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 15 (b) updating at least one attribute of the toolbar data; and 16 the user Internet device displaying the toolbar as defined by the updated toolbar 17 data. 18 ’863 Patent col. 29:28-63 (emphasis added). Similarly, claim 1 of the ’070 Patent recites: 19 1. A method for dynamically modifying a toolbar, the method comprising: 20 displaying the toolbar, at a user Internet device, that includes one or more 21 toolbar buttons, the toolbar defined by toolbar data stored in one or more toolbar-defining databases, the toolbar data comprising a plurality of toolbar 22 button attributes associated with the one or more toolbar buttons of the toolbar, 23 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 24 specific toolbar button;

25 invoking, from the user Internet device without user intervention, 26 communication of information associated with the one or more toolbar-defining databases to a server associated with a network address; 27 receiving, at the server, the information associated with the one or more toolbar- 1 defining databases; 2 determining, based on the information associated with the one or more toolbar- 3 defining databases, that the user Internet device should receive updated toolbar data; 4 receiving, at the user Internet device, the updated toolbar data in response to 5 determining that the user Internet device should receive the updated toolbar 6 data;

7 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; 8 updating the toolbar data at the user Internet device based on the operation and 9 in accordance with the updated toolbar data, thereby updating the toolbar data, 10 the updating comprising at least one member of a group comprising (a) and (b):

11 (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; 12 and

13 (b) updating the toolbar data to modify an attribute of at least one of the one 14 or more toolbar buttons of the toolbar;

15 and displaying at the user Internet device the toolbar as defined by the updated toolbar data, 16 wherein the information associated with the toolbar data includes at least one 17 member of a group comprising a revision level, version, time, date, user ID, 18 account owner ID, PAP ID, IP address, session keys, billing data, name, address, account information, connection history, procedures performed by a 19 user, group ID, e-mail address, e-mail ID, e-mail password, residential address, and phone number. 20 ’070 Patent col. 29:40-30:20 (emphasis added). Because these two claims contain substantially 21 similar wording, and because the two patents have nearly identical specifications, the Court 22 analyzes the claims together. Accordingly, the Court addresses the above claims under the Alice 23 step one inquiry and the Alice step two inquiry in light of the Court’s recent construction of 24 “toolbar” as “a button bar that can be dynamically changed or updated via a Pinger process or a 25 MOT script.” See Claim Constr. Order. at 10. 26 A. Alice Step One 27 1 Step one of the Alice framework directs the Court to assess “whether the claims at issue are 2 directed to [an abstract idea].” Alice, 573 U.S. at 217. The step one inquiry “applies a stage-one 3 filter to claims, considered in light of the specification, based on whether ‘their character as a 4 whole is directed to excluded subject matter.’” Enfish,

(citation omitted). 5 However, in distilling the character of a claim, the Court is careful not to express the claim’s focus 6 at an unduly “high level of abstraction . . . untethered from the language of the claims,” but rather 7 at a level consonant with the level of generality or abstraction expressed in the claims themselves. 8 Enfish,

; see also Thales Visionix,

(“We must therefore ensure at 9 step one that we articulate what the claims are directed to with enough specificity to ensure the 10 step one inquiry is meaningful.”). 11 As an initial matter, when the Court first addressed the Alice step one inquiry in 12 Defendants’ first motion for judgment on the pleadings, the Court held that the claims were 13 directed to the abstract idea of “a process for updating toolbar software over a network without 14 user intervention.” ECF No. 129 at 17. Specifically, the Court found that:

15 [T]he claims recite a process of (1) sending data from a toolbar database to a 16 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 17 the Internet; and (4) automatically updating the toolbar in accordance with the toolbar update data. . . . Although the claims recite adding a button or changing 18 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.” 19 ECF No. 129 at 17 (emphasis added). 20 However, a divided Federal Circuit panel vacated the Court’s previous holding because the 21 Court did not construe the term “toolbar.” See MyMail,

. Now that the Court 22 has construed “toolbar” as “a button bar that can be dynamically changed or updated via a Pinger 23 process or a MOT script,” see Claim Constr. Order at 10, the Court addresses whether the claims 24 are directed to an abstract idea. 25 In Defendants’ renewed motion, Defendants argue that the Court’s construction does not 26 alter the Court’s previous conclusion. See Mot. at 9-13. Defendants contend that even after claim 27 1 construction, “[t]he MyMail claims are analogous to claims analyzed in [] other judicial decisions 2 [that all] concluded that software update techniques are directed to abstract ideas.” Id. at 10. 3 In opposition, MyMail argues that the asserted claims are not directed to an abstract idea 4 but are instead “directed at a toolbar with the capability of performing the updating function 5 automatically in a specific way—via a Pinger process or MOT script.” Opp. at 7. Specifically, 6 MyMail contends that the patents “improved the functioning of the software updating process by 7 invoking the capability of using a Pinger process or a MOT script,” and that this focus means that 8 the claims are directed to a specific improvement “in the functioning of computing devices [sic] 9 networks, which is a non-abstract idea.” Id. at 9-10. 10 The Court first analyzes the claims’ “character as a whole” in light of the Court’s 11 construction of “toolbar” as “a button bar that can be dynamically changed or updated via a Pinger 12 process or a MOT script.” The Court then compares the claims “to those claims already found to 13 be directed to an abstract idea in previous cases” to determine whether the claims are directed to a 14 specific improvement or to an abstract idea. Enfish,

. For the reasons discussed 15 below, the Court concludes that even given the Court’s construction of “toolbar” as “a button bar 16 that can be dynamically changed or updated via a Pinger process or a MOT script,” the claims are 17 directed to the abstract idea of updating toolbar software over a network without user intervention. 18 1. The Claims’ “Character as a Whole” 19 The claims recite a process of (1) sending data from a toolbar database to a server; 20 (2) analyzing the data to determine whether the toolbar needs to be updated; (3) if the toolbar 21 needs to be updated, sending toolbar update data from the Internet; and (4) automatically updating 22 the toolbar in accordance with the toolbar update data. See ’863 Patent col. 29:28-63; ’070 Patent 23 col. 29:40-30:20. Although the claims recite adding a button or changing at least one attribute of 24 an existing button on the toolbar, the focus of the claims is on the process by which the toolbar is 25 updated. Further, the specifications of both the ’893 Patent and the ’070 Patent, to the extent they 26 describe toolbar updates, make no mention of adding or changing a button. Thus, updating toolbar 27 software over a network without user intervention accurately captures what the “character as a 1 whole” of the claims is “directed to.” Enfish,

. 2 MyMail contends, however, that in light of the Court’s construction of “toolbar” as “a 3 button bar that can be dynamically changed or updated via a Pinger process or a MOT script,” the 4 patents “are not directed at the abstract idea of merely ‘updating toolbar software over a network 5 without user intervention.’” Opp. at 7. For the reasons stated below, despite the invocation of a 6 Pinger process and a MOT script, the Court disagrees. Put simply, the patents’ specifications 7 confirm that the claims’ “character as a whole” is “directed to” updating toolbar software over a 8 network without user intervention. The Court first analyzes the functions of the “Pinger process” 9 and then proceeds to analyze the functions of the “MOT script.” The Court then determines the 10 claims’ “character as a whole” in light of these functions. 11 a. The “Pinger Process” 12 The patents’ specifications describe the “Pinger process” as a process that:

13 [C]omprises an entity that acts transparently as a “services” coordinator to 14 provide and/or administer the following:

15 1. Heartbeat service to help maintain network connectivity with a client. 2. Authentication services that securely authenticate client access to email, 16 commerce, and other public and private network servers and services. 3. Update services that can perform client software, database, and 17 maintenance services during periods of inactivity. 18 ’863 Patent col. 10:19-29. More specifically, the specifications describe that: 19 The pinger is initiated by the client dispatch application 200 upon connection to the network 100. The client dispatch application 200 transmits header 20 information to the access server 106 using the IP address of the access server 21 106. 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 22 system’s current time, database (204, 206, 208, 210) revisions levels, and client dispatch application 200 and other related software revision levels. With this 23 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 24 a user 110 that needs a database or file update. 25

at col. 12:16-28. Furthermore, the specifications additionally state that: 26 The pinger function causes the client dispatch application 200 to transmit header information to the access service 106, as set forth in the “Send 27 Information To Server (Pinger)” block. The header information may include a Unique Identification string for the user (user ID, PAP ID, etc.), a unique 1 computer identification string (IP address, etc.), time stamp information, and 2 revision information for the client dispatch application 200 and databases 204, 206, 208, 210, as described earlier. After receipt, the access service 106 reviews 3 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 4 devices operating system. Such updates may include: new dial-in locations, new identification information such as PAP IDs, network authentication 5 passwords such as PAP passwords, other IDs, other passwords, change of phone 6 numbers, change of area codes, low cost ISP, dial-in location priority sequence numbers, or any combination thereof, or any other information relating to 7 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 8 (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 9 block. 10

at col. 17:32-55. Accordingly, “the pinger process (transparent to the user) allows the client 11 dispatch application 200 and the access service 106 to interact and download database 12 updates . . . to the user.”

at col. 12:33-36. 13 Based on the above, the specifications show that the “Pinger process” operates in several 14 steps when the Pinger process dynamically changes or updates the “toolbar.” First, the Pinger 15 process triggers transmission of “header information” from the “client dispatch application” to the 16 “access service.”

at col. 12:16-19; 17:32-34. This “header information” contains various 17 information, including “revision information” for the “button bar database,” which the invention 18 uses to update the toolbar.

at col. 12:19-24; 17:35-40. The “Pinger process” then causes “the 19 access service 106 [to] review[] the header information to determine what, if any, updates [to the 20 toolbar] are required.”

at col. 17:40-42; see also

at col. 12:25-28. Lastly, the Pinger 21 process provides that “[i]f any updates [to the toolbar] are required[,] these are supplied by the 22 access service 106 and any necessary [toolbar] updates will take place transparent (automatic 23 while the user is logged on) to the user 110.”

at col. 17:50-53. As such, the Pinger process 24 operates to (1) transmit update-related data, (2) review that data to determine if an update is 25 required, and then to, if necessary, (3) send an update. 26 In its opposition, MyMail fails to explain the function of the Pinger process and instead 27 opts to repeat at length the Court’s construction of “toolbar.” Opp. at 7-11. The Court’s analysis 1 of the Pinger process, however, is consistent with MyMail’s previous characterization of the 2 Pinger process. Specifically, in MyMail’s opposition to Defendants’ first motion for judgment on 3 the pleadings, MyMail described the Pinger process as follows:

4 The asserted patents explain one embodiment for performing this function involving a toolbar using a “pinger” process for obtaining updates to the toolbar 5 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 6 100.” `863 Patent at 11:44-47; `070 Patent at 11:51-54. The pinger message 7 includes information such as the current database revision levels. From this information, [2] the access service determines if the end-user’s device should 8 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. 9 ECF No. 109 at 4 n.5. 10 b. The “MOT Script” 11 The Court next addresses the “MOT script.” Again, MyMail fails to explain the function 12 of the MOT script and instead opts to repeat at length the Court’s construction of “toolbar.” See 13 Opp. at 7-11. 14 As an initial matter, the specifications state that “MOT is not [] an acronym for anything 15 meaningful,” but that MOT is “an interpretive [script] language” “used by the Pinger and 16 elsewhere in [the patent.]” ’863 Patent col. 12:48-51. Accordingly, the patents’ specifications 17 offer substantially less detail as to the operation of the MOT script than the Pinger process. 18 However, despite the lack of meaning of “MOT,” the specifications highlight the MOT 19 script as a process that operates to send and use data to update the toolbar. Specifically, the MOT 20 script “can be a ‘mime-type’ definition part of an E-mail message, an HTTP web document 21 download and so forth, which transparently automates the Toolbar update.”

at col. 10:32-35 22 (emphasis added). The specifications state that the: 23 MOT script defines how to build a button bar using the button bar database 210 24 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 25 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 26 bar database 210 information and builds the button bar automatically according 27 to the MOT script specifications. 1

at col. 11:5-14. 2 The patents’ specifications also highlight the MOT script as an alternative to the Pinger 3 process, and the specifications state that:

4 While the pinger process (transparent to the user) allows the client dispatch application 200 and the access service 106 to interact and download database 5 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 6 access service 106 may provide a Web page whereby when the user 110 clicks 7 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 8 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 9 via an email message, an FTP (file transfer procedure) site or other similar networking storage and transport mechanism to the client dispatch application. 10

at col. 12:33-47. 11 Accordingly, as with the Pinger process, when the MOT script dynamically changes or 12 updates the toolbar, the MOT script transmits data, analyzes data, and then “transparently 13 automates the Toolbar update.”

at col. 10:34-35. Specifically, “an E-mail message [] or an 14 HTTP web document download and so forth” first transmits the MOT script “to the client dispatch 15 application.”

at col. 10:33-34, 12:41. The “client dispatch application” can then “read back” 16 the “MOT script.”

at col. 11:9-10. Following this, “[t]he client dispatch application 200 uses 17 the particular MOT script and the button bar database 210 information and builds the [toolbar] 18 automatically.”

at col. 11:10-13. 19 c. The Claims’ “Character as a Whole” In Light of the Functions of the Pinger 20 Process and MOT Script 21 The above demonstrates that both the Pinger process and the MOT script function to 22 (1) transmit data, (2) analyze that data to determine whether a toolbar update is required, and 23 (3) facilitate the toolbar update if required. These functions are nearly identical to the steps that 24 the claims recite. Namely, the claims recite a process of (1) sending data from a toolbar database 25 to a server; (2) analyzing the data to determine whether the toolbar needs to be updated; (3) if the 26 toolbar needs to be updated, sending toolbar update data from the Internet; and (4) automatically 27 updating the toolbar in accordance with the toolbar update data. See ’863 Patent col. 29:28-63; 1 ’070 Patent col. 29:40-30:20. 2 Because the patents’ claims share nearly identical functions as the Pinger process and the 3 MOT script, the Court concludes that even in light of the Court’s construction of “toolbar” as “a 4 button bar that can be dynamically changed or updated via a Pinger process or a MOT script,” the 5 claims’ “character as a whole” is “directed to” updating toolbar software over a network without 6 user intervention. 7 2. Precedent Establishes That the Claims are Directed to an Abstract Idea 8 The Court now compares the claims “to those claims already found to be directed to an 9 abstract idea in previous cases.” Enfish,

. 10 First, the Court finds that the claims are analogous to claims that fall within the category of 11 gathering and processing information, which the Federal Circuit has established is an abstract idea. 12 Specifically, in FairWarning IP, LLC v. Iatric Systems, Inc., the Federal Circuit considered a set 13 of claims that recited a method of detecting fraud and misuse of personal health information; this 14 method “collects information regarding accesses of a patient’s personal health information, 15 analyzes the information according to one of several rules . . . to determine if the activity indicates 16 improper access, and provides notification if it determines that improper access has occurred.” 17

(Fed. Cir. 2016). FairWarning concluded that the claims were directed to an 18 abstract idea because the claims were “directed to a combination” of three “abstract-idea 19 categories”: (1) collecting information; (2) analyzing information; and (3) presenting the results of 20 the collection and analysis of information. 839 F.3d at 1093-94. Similarly, in West View 21 Research, LLC v. Audi AG, 685 Fed. App’x 923, 926 (Fed. Cir. 2017), the Federal Circuit held 22 that claims that “do not go beyond receiving or collecting data queries, analyzing the data query, 23 retrieving and processing the information constituting a response to the initial data query, and 24 generating a visual or audio response to the initial data query” were directed to the abstract idea of 25 collecting, analyzing, and displaying information. 26 Like the claims in FairWarning and West View Research, the claims in the instant case 27 recite a process for transmitting data, analyzing data, and generating a response based on that 1 transmitted data. Specifically, the claims recite a process of receiving and analyzing data to 2 determine whether a toolbar requires an update, and if so, sending updated toolbar data and 3 updating the toolbar. Moreover, as addressed above, the function of the Pinger process and the 4 MOT script are nearly identical to the claims’ recited process. Particularly, the Pinger process and 5 the MOT script similarly comprise a process of transmitting data pertaining to a toolbar update, 6 analyzing that data to determine if a toolbar update is required, and then facilitating a toolbar 7 update if needed. As such, even after this Court’s construction of “toolbar,” the claims remain 8 analogous to the claims in FairWarning and West View Research. 9 Second, the Court finds that the claims are analogous to claims that other district courts 10 have held to be directed to an abstract idea because the claims relate to using communications 11 networks to update software stored on computers. For example, in Personalized Media 12 Communications, LLC v. Amazon.com, Inc.,

(D. Del. 2015), aff’d,

App’x 777 (Fed. Cir. 2016) (per curiam), the United States District Court for the District of 14 Delaware addressed the patent-eligibility of, inter alia, claims directed to a process for updating 15 the operating system software stored on a remote computer via a transmission network. 16 Specifically, the claims at issue in Personalized Media Communications recited an updating 17 process comprised of (1) transmitting information about the specific version of the operating 18 system of a remote receiver station to a “signal detector”; (2) determining whether the specific 19 version matches a “designated version”; (3) if the specific version matches the “designated 20 version,” sending updated operating system instructions to the remote receiver station, erasing the 21 remote receiver station’s previous operating system instructions, and storing the updated operating 22 system instructions in the receiver station’s memory.

. The Personalized Media 23 court held that those claims were directed to “the abstract idea of updating operating instructions.” 24

. The Personalized Media court also stated that “[o]ther than the fact that the method 25 [disclosed by the claims] is implemented on a computer, it is no different from checking to see if a 26 copy of the Federal Rules is up to date, and, if it is not, replacing it with a new one.”

27 The claims at issue here are similar to the claims in Personalized Media. Like the 1 Personalized Media claims, the claims in the instant case recite a process of updating software 2 wherein the process is comprised of transmitting information about the software, determining 3 based on that information whether the software needs to be updated, and if so, sending updated 4 data to the device containing the software. As addressed above, this is true even though the claims 5 now invoke a Pinger process or a MOT script, as both the Pinger process and the MOT script 6 function in the same manner. Thus, even with the toolbar’s ability to be dynamically changed or 7 updated via a Pinger process or a MOT script, the claims appear “no different from checking to 8 see if a copy of the Federal Rules is up to date, and, if it is not, replacing it with a new one.” 9 Personalized Media,

. As the Federal Circuit has stated, “mere automation 10 of manual processes using generic computers does not constitute a patentable improvement in 11 computer technology.” Credit Acceptance Corp. v. Westlake Servs.,

(Fed. 12 Cir. 2017). 13 The claims in the instant case are also analogous to one set of claims considered in 14 Intellectual Ventures I, LLC v. Motorola Mobility LLC,

(D. Del. 2015). In 15 Intellectual Ventures I, the relevant claims, “[w]hen broken into their fundamental elements,” 16 recited: “(1) presenting a directory of software updates at [a] user station; (2) selecting and 17 transmitting the desired software updates; and (3) receiving the requested software updates.”

at 18 365-66. The court in Intellectual Ventures I noted that those claims “generically recite[d] the steps 19 of ‘presenting,’ ‘sending,’ and ‘receiving,’ with no description of the underlying programming.” 20

. The court also stated that “the limitations provided by the dependent claims—that the 21 software updates be ‘automatically installed on the user station’ over ‘the Internet’—do not make 22 the claimed invention any less abstract.”

Based on this analysis, the court concluded that “the 23 claims [were] directed to the abstract idea of distributing software updates to a computer.”

24 The same is true of the claims at issue in the instant case. Specifically, like in Intellectual 25 Ventures I, the focus of the instant claims is on distributing updated software to a computer 26 through the Internet—particularly distributing updated toolbar software. As discussed above, this 27 is true even though the claims now invoke a Pinger process and a MOT script. Again, as the 1 Federal Circuit has stated, “mere automation of manual processes using generic computers does 2 not constitute a patentable improvement in computer technology.” Credit Acceptance Corp., 859 3 F.3d at 1055. 4 MyMail’s opposition’s only response to this extensive Federal Circuit and district court 5 case law is that because the claims utilize “a specific process for updating a toolbar automatically 6 without user intervention—i.e., dynamically, via a Pinger process or a MOT script—and not just 7 any means for doing so,” that alone is enough to conclude that “the asserted claims are not 8 directed at an abstract idea.” Opp. at 9. Specifically, MyMail asserts that the claims “improve[] 9 the functioning of the software updating process by invoking the capability of using a Pinger 10 process or a MOT script.” Id. In other words, MyMail argues specifically that the toolbar’s 11 ability to be dynamically changed or updated via a Pinger process or a MOT script is a “specific 12 and improved way of updating a toolbar.” Id. at 2; see also id. at 12 (“The claimed 13 invention . . . improves upon what was previously done with toolbars by adding the ‘Pinger 14 process/MOT script’ requirement.”). 15 The Court disagrees for at least three reasons. First, MyMail conclusorily claims an 16 improvement, but never identifies what the specific improvement is, despite the Federal Circuit’s 17 requirement that claims assert a “specific asserted improvement.” See McRO,

-15 18 (claims are directed to a specific improvement where the claims “focused on a specific asserted 19 improvement”). Second, MyMail fails to explain how the toolbar’s ability to be dynamically 20 changed or updated via a Pinger process or a MOT script improves the toolbar update process. 21 Moreover, MyMail fails to identify how the toolbar’s ability to be dynamically changed or 22 updated via a Pinger process or a MOT script is a non-abstract improvement to computer 23 technology. See Enfish,

(claims are directed to a specific improvement where 24 the invention made “non-abstract improvements to computer technology”). Finally, the Federal 25 Circuit has held that claims are directed to a specific improvement where the claims used “a 26 specific implementation of a solution to a problem [in the prior art].”

(emphasis 27 added). In the instant case, MyMail fails to identify how the toolbar’s ability to be dynamically 1 changed or updated via a Pinger process or a MOT script is a specific implementation of a solution 2 to a problem in the prior art. 3 Although MyMail’s opposition to the instant motion claims that the toolbar’s ability to be 4 dynamically changed or updated via a Pinger process and a MOT script is an improvement, the 5 specifications do not. Moreover, the specifications fail to identify what actual benefit or 6 improvement the Pinger process or the MOT script confer upon the toolbar update. See ‘863 7 Patent col. 10:15-17. The Court agrees with Defendants that the specifications do not identify 8 how the Pinger process or the MOT script benefit “[toolbar] update techniques by making [the 9 toolbar update process] more powerful, more efficient, or more sophisticated.” Reply at 4. 10 Furthermore, although the specifications list “at least ten problems” that “the present 11 invention solves,” none of these problems relate to the toolbar update. See ’863 Patent col. 4:56- 12 5:28. MyMail never even argues that the toolbar update relates to any of these problems. See 13 Opp. at 7-11. Indeed, none of the “ten problems” even reference a “toolbar” or any process for 14 updating a toolbar. See ’863 Patent col. 4:56-5:28. Instead the “problems” appear to focus 15 primarily on “the need for a computer user to configure and reconfigure computer networking 16 software for network access.” See

Even if the Court were to generously construe these “ten 17 problems” to cover a toolbar update process, the specifications do not tie the ability of the toolbar 18 to be dynamically changed or updated via a Pinger process or a MOT script to solving any of these 19 problems, or to solving any additional problems that were present in the industry at the time of the 20 invention. See

Accordingly, not only do the specifications fail to identify any problem in 21 preexisting toolbar update processes, the specifications also fail to show how the toolbar’s ability 22 to be dynamically changed or updated via a Pinger process or a MOT script provides any benefit 23 whatsoever. As such, in stark contrast to Enfish and McRO, the specifications here do not identify 24 the toolbar’s ability to be dynamically changed or updated via a Pinger process or a MOT script as 25 “a specific implementation of a solution to a problem in the software arts.” Enfish,

1339; see also McRO

(“Claim 1 of the [] patent is focused on a specific asserted 27 improvement in computer animation.”). 1 MyMail’s opposition only confirms the Court’s conclusion. MyMail’s opposition simply 2 argues that the Pinger process and the MOT script are “a specific, new, and useful method of 3 [updating toolbar software],” but MyMail relies solely on vague, conclusory statements and never 4 explains how this is so. Opp. at 10. For example, MyMail’s opposition states, “The claimed 5 invention does not simply use a computer to automate what was done previously, but rather 6 improves upon what was previously done with toolbars by adding the ‘Pinger process/MOT script’ 7 requirement.” Opp. at 12. MyMail’s vague and conclusory statements fail to identify the specific 8 improvement, fail to explain how computer technology is improved, and fail to identify a problem 9 in the prior art that is solved. Such vague and conclusory statements do not suffice. See Yu v. 10 Apple, Inc., --- F. Supp. 3d ---,

, at *4 (N.D. Cal. Mar. 24, 2020) (“Yu also says 11 that the architecture in claim 1 is a specific improvement to a technical problem, and so not an 12 abstract idea under step 1. But Yu presents this point only as a conclusory allegation, with no 13 facts alleged in support.”); Mkt. Track, LLC v. Efficient Collaborative Retail Mktg., LLC, 2015

, at *6 n.2 (N.D. Ill. June 11, 2015) (“The mere fact that a patent asserts that it 15 represents an improvement on prior art does not, of course, suffice.”). 16 Failure to identify the specific improvement, failure to explain how the computer 17 technology is improved, and failure to identify a problem in the prior art that is solved do not 18 demonstrate that the asserted claims are directed to an “asserted improvement” rather than an 19 abstract idea. TriPlay, Inc. v. WhatsApp Inc.,

, at *8 (D. Del. Mar. 27, 2018), 20 aff’d, 771 Fed. App’x 492 (Fed. Cir. 2019) (“[T]he specification describes the claimed invention. 21 But it never really seems to clearly articulate . . . what problems remained unsolved as to those 22 prior art systems, and/or how the use of these components as a part of a messaging system 23 provided an improvement over the prior art.” (quotation marks omitted)); see

(invalidating 24 patent because, among other things, “the specification here is silent as to what the specific claimed 25 improvement is [and] how it differs from the prior art”). 26 For these reasons, this instant case is unlike Koninklijke KPN N.V. v. Gemalto M2M 27 GmbH,

(Fed. Cir. 2019), on which MyMail relies. See Opp. at 9-10. In 1 Koninklijke, the Federal Circuit found that a set of claims were “directed to a non-abstract 2 improvement in an existing technological process.”

. However, in Koninklijke, the 3 Federal Circuit held that “a review of the specification ma[de] clear that [the invention] provide[d] 4 [a] technological benefit.”

. Indeed, even in Koninklijke, the Federal Circuit stated that 5 for a claim to be directed to a specific improvement, “the claims must recite a specific means or 6 method that solves a problem in an existing technological process.”

(emphasis added); 7 see also Uniloc USA, Inc. v. LG Elecs. USA, Inc., --- F.3d ---,

, at *4 (Fed. Cir. 8 Apr. 30, 2020) (holding claims were directed to a patent-eligible improvement to computer 9 functionality because the claims recited specific means of improving a problem in the prior art, 10 “namely the reduction of latency experienced by parked secondary stations in communications 11 systems”). In contrast to Koninklijke, the ’863 Patent and the ’070 Patent fail to identify “a 12 problem in an existing technological process” that is solved by the toolbar’s ability to be 13 dynamically changed or updated via a Pinger process or a MOT script.

Thus, Koninklijke is 14 inapplicable to the claims at issue here. 15 Therefore, the Court rejects MyMail’s notion that the toolbar’s capability of being 16 dynamically changed or updated via a Pinger process or a MOT script changes the claims 17 “character as a whole” and renders the claims directed to a specific improvement for updating 18 toolbar software. Instead, the Court finds that the claims at issue here are directed to the abstract 19 idea of updating toolbar software over a network without user intervention. Therefore, the Court 20 proceeds to Alice step two. 21 B. Alice Step Two 22 “In step two of the Alice inquiry, [the Court] search[es] for an ‘inventive concept sufficient 23 to transform the nature of the claim into a patent-eligible application.’” RecogniCorp, LLC v. 24 Nintendo Co.,

(Fed. Cir. 2017) (quoting McRO,

(internal 25 quotation marks omitted)). This inventive concept “must be significantly more than the abstract 26 idea itself,” BASCOM,

, “must be more than well-understood, routine, 27 conventional activity,” Affinity Labs of Texas, LLC v. DIRECTV,

(Fed. Cir. 1 2016), “and cannot simply be an instruction to implement or apply the abstract idea on a 2 computer.” BASCOM,

. 3 When the Court first addressed the Alice step two inquiry in Defendant’s first motion for 4 judgment on the pleadings, the Court concluded that “none of the elements of the claims at 5 issue . . . provided an inventive concept.” ECF No. 129 at 22. Specifically, the Court found that 6 “[a]ll the hardware components recited in the claims are generic, conventional components,” and 7 that “the claims call on these conventional components to perform their routine functions.”

8 However, as stated above, a divided Federal Circuit panel vacated the Court’s holding, see 9 MyMail,

, and the Court subsequently construed the claim term “toolbar” as “a 10 button bar that can be dynamically changed or updated via a Pinger process or a MOT script.” See 11 Claim Constr. Order. Accordingly, the Court performs the Alice step two inquiry in light of the 12 Court’s construction of “toolbar.” 13 In Defendants’ renewed motion, Defendants argue that “the Court’s prior analysis remains 14 applicable to the claims as construed” because “the [Pinger process and the MOT script] merely 15 represent[] a conduit through which the toolbar is updated” and which does not improve the 16 “toolbar update process.” Mot. at 16. Moreover, Defendants argue that even after the Court’s 17 construction, that the construed claims merely “recite generic steps that are performed routinely by 18 computers and servers.” Id. at 15. 19 In opposition, MyMail argues that the “Pinger process/MOT script limitations imposed by 20 the specification and specified in the Court’s claim construction add the inventive concept 21 required by [Alice] step two.” Opp. at 11. Further, MyMail argues that three PTAB decisions, as 22 well as statements within the patents’ specifications, create at least a question of fact as to whether 23 the Pinger process or the MOT script provide an “inventive concept.” See id. 24 The Court first addresses whether there is an “inventive concept” sufficient to satisfy Alice 25 step two. The Court then turns to MyMail’s argument that statements in the specifications and the 26 three prior PTAB decisions create an issue of fact which would preclude dismissal. 27 1. There is No Inventive Concept Sufficient to Satisfy Alice Step Two 1 At the outset, the Court notes that MyMail only argues that the toolbar’s capability to be 2 dynamically changed or updated via a Pinger process or a MOT script provides the “inventive 3 concept” necessary to satisfy Alice step two. See Opp. at 11-15. Put differently, the only 4 argument MyMail raises in the opposition is that the toolbar’s ability to be dynamically changed 5 or updated via a Pinger process or a MOT script is a “specific and improved way of updating a 6 toolbar.” Id. at 2; see also Opp. at 12 (“The claimed invention . . . improves upon what was 7 previously done with toolbars by adding the ‘Pinger process/MOT script’ requirement.”). 8 However, even if the Court considers the claims’ other components beyond the Pinger process and 9 MOT script, the Court concludes that none of the elements provide an inventive concept. 10 First, the claims fail the Alice step two inquiry because the components—including the 11 Pinger process and MOT script—are all generic and function in a conventional manner. 12 Specifically, the claims recite a “user Internet device” and a server, and the specifications refer 13 only to generic Internet-connected computers and servers. 14 Moreover, the claims call on these conventional components to perform their routine 15 functions, including “displaying” a toolbar, “sending” and “receiving” information, “determining” 16 something based on that information, and “initiating . . . an operation to update” the toolbar 17 software. See id. at col. 29:28-63. No language in the claims or the specifications “demonstrat[es] 18 that the generic computer components function in an unconventional manner or employ 19 sufficiently specific programming.” Intellectual Ventures I,

. Instead, the 20 functions recited by the claims at issue—that is, “displaying,” “sending,” “receiving,” 21 “determining,” and “initiating”—are “specified at a high level of generality,” which the Federal 22 Circuit has found to be “insufficient to supply an inventive concept.” Ultramercial,

716. 24 Furthermore, the “toolbar” as “a button bar that can be dynamically changed or updated via 25 a Pinger process or a MOT script” is also insufficient to add an inventive concept because the 26 Pinger process and the MOT script merely use generic components in a conventional manner 27 when dynamically changing or updating the toolbar. 1 In particular, when the Pinger process and the MOT script dynamically change or update 2 the toolbar, the Pinger process and the MOT script use a “client dispatch application,” an “access 3 server,” and various “databases.” See, e.g., ’863 Patent col. 12:33-47. However, the 4 specifications describe the “client dispatch application” as merely a “program” that provides 5 various pieces of information and “provides basic configuration and initialization 6 information . . . to the user’s computer.”

at col. 6:31-53 (describing the “client dispatch 7 application”). Further, the specifications define the “access service” as comprised of “one or more 8 network servers/databases,” which “include[] a computer system having one or more processors, 9 memory, and support hardware.” Id. at 11:25-30. The specifications do not identify any of these 10 components as unique to the invention, and MyMail does not argue that any individual component 11 of the Pinger process or the MOT script is non-conventional or non-generic. See Opp. at 11-15. 12 Indeed, the Federal Circuit has held that similar components are generic. See, e.g., Mortg. 13 Grader,

(holding that “interface,” “network,” and “database” were generic); 14 In re TLI Commc’ns LLC, 823 F.3d at 613 (holding that “telephone unit,” “server,” “image 15 analysis unit,” and “control unit” were generic). As a result, the Court finds that the components 16 that the Pinger process and the MOT script use when they dynamically change or update the 17 toolbar are “generic computer components.” Intellectual Ventures I,

. 18 Further, the specifications indicate that the components of the Pinger process and the MOT 19 script function in a conventional and well-understood manner when they dynamically change or 20 update the toolbar. For instance, the specifications state the generic components “transmit[] 21 header information,” ’863 Patent col. 12:18; “determine[] whether a user . . . needs a database or 22 file update,”

at col 12:25-28; “download database updates,”

at col. 12:35; and “build[] the 23 [toolbar],”

at col. 11:13. These steps are merely the well-understood and routine process one 24 would perform to determine if a toolbar needs to be updated and then to update the toolbar if 25 necessary—specifically checking to see if a toolbar needs an update and sending an update if 26 needed. Moreover, the Federal Circuit has held that functions such as “sending and receiving 27 data” are “well-understood, routine activit[ies].” TLI Commc’ns LLC, 823 F.3d at 614 (citing 1 Alice, 573 U.S. at 225). 2 Indeed, MyMail does not present any argument that the Pinger process and the MOT script 3 themselves function in any specific manner that is more than the conventional and well- 4 understood steps of checking toolbar data to determine whether the toolbar needs an update, and if 5 so, updating the toolbar. In fact, the “specification[s] [are] silent as to” as to how the Pinger 6 process or the MOT script “differ[] from the prior art, or how any inventive feature . . . is used in 7 an unconventional manner.” TriPlay,

, at *8. Instead, MyMail only vaguely 8 and conclusorily states that “[t]he claimed invention . . . improves upon what was previously done 9 with toolbars by adding the ‘Pinger process/MOT script’ requirement.” Opp. 12. 10 As a result, the Court concludes that when the Pinger process and the MOT script 11 dynamically change or update the toolbar they use generic computer components and that those 12 generic components function in a manner that does not “override[] the routine and conventional 13 sequence of events” involved in updating a toolbar. DDR Holdings,

. 14 Accordingly, the patents fail to satisfy Alice step two because their components are all generic 15 components which function in a conventional manner. 16 Second, the Court also finds that the toolbar’s ability to be dynamically changed or 17 updated via a Pinger process or a MOT script only implements the claims’ abstract idea, which 18 itself cannot provide an inventive concept. As discussed above, in the context of the toolbar 19 update, the Pinger process and the MOT script simply function to update toolbar software over a 20 network without user intervention—the precise abstract idea to which the claims are directed. 21 However, the Federal Circuit has routinely held that a claim’s mere use of an abstract idea cannot 22 satisfy Alice step two. See BSG Tech LLC v. Buyseasons, Inc.,

(Fed. Cir. 23 2018) (“It has been clear since Alice that a claimed invention’s use of the ineligible concept to 24 which it is directed cannot supply the inventive concept that renders the invention ‘significantly 25 more’ than the ineligible concept.”); see also ChargePoint, Inc. v. SemaConnect, Inc.,

759, 774 (Fed. Cir. 2019) (“In essence, the alleged ‘inventive concept’ that solves problems 27 identified in the field is that charging stations are networked-controlled. But network control is 1 the abstract idea itself [and thus cannot supply the inventive concept].”). Therefore, the toolbar’s 2 mere ability to be dynamically changed or updated via a Pinger process or a MOT script—which 3 the Pinger process and the MOT script do via generic computer components in a conventional 4 manner—is insufficient to add an “inventive concept.” 5 Third, although MyMail does not raise this argument, the Court also finds that the ordered 6 combination of the elements in the claims at issue does not yield an inventive concept, even in 7 light of the Court’s construction of “toolbar.” Even as an ordered combination, the claims at issue 8 do not recite a process for updating software that deviates from the “routine and conventional” 9 updating process. DDR Holdings,

. On the contrary, as discussed above, both 10 the claims and the Pinger process and the MOT script use the conventional and well-understood 11 steps of checking toolbar data to determine whether the toolbar needs an update, and if so, 12 updating the toolbar. Thus, much like the claims in Intellectual Ventures I, “instead of overriding 13 a routine sequence of events,” the instant claims apply generic components performing their 14 routine functions “to automate the delivery of software updates.”

. The 15 specifications in the instant case further confirm this conclusion because nothing in the 16 specifications remotely suggests that the claims produce a result that “overrides the routine and 17 conventional sequence of events” for updating software on a computer. DDR Holdings,

. Indeed, the specifications are entirely “silent as to . . . how any inventive feature, 19 alone or in an ordered combination, is used in an unconventional manner.” Triplay,

1479027, at *8. 21 Finally, the Court notes that this analysis accords with United States Circuit Judge Alan 22 Lourie’s dissenting opinion in MyMail, Ltd. v. ooVoo, LLC,

(Fed. Cir. 2019). 23 There, the majority of a Federal Circuit panel reversed the Court for not having construed 24 “toolbar” and did not reach the Alice inquiry or discuss either the Pinger process or the MOT 25 script. See

. However, Judge Lourie addressed the Alice inquiry, including the 26 Pinger process and the MOT script, and found that “the claims at issue are clearly abstract 27 regardless of claim construction.”

(Lourie, J., dissenting). Judge Lourie further stated 1 that “[w]hile ‘inventive programming’ may provide an inventive concept in some circumstances, 2 no such programming is disclosed here.”

Specifically, Judge Lourie concluded that “the 3 specification is clear that neither the unclaimed pinger process nor the unclaimed MOT script can 4 be the inventive concept.”

(emphasis added). Although Defendants cite Judge Lourie’s dissent 5 in Defendants’ renewed motion for judgment on the pleadings, see Mot. at 6-7, MyMail fails to 6 respond to, or even acknowledge, Judge Lourie’s dissent. See Opp. 11-15. Additionally, nothing 7 in the Court’s claim construction order alters Judge Lourie’s analysis. MyMail,

8 (Lourie, J., dissenting) (“[T]he claims at issue are clearly abstract regardless of claim 9 construction.”). 10 As such, the Court finds that neither the claims themselves, nor the Court’s construction of 11 “toolbar” as “a button bar that can be dynamically changed or updated via a Pinger process or a 12 MOT script” confers an “inventive concept.” 13 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” 14 The Court now turns to MyMail’s argument that dismissal is precluded by the 15 specifications’ use of the phrase “unique propert[y],” as well as three prior PTAB decisions which 16 upheld the validity of the patents. See Opp. at 13. 17 First, the Court rejects MyMail’s argument that because the patents’ specifications state 18 that the “ability to be dynamically changed or updated via a Pinger process or a MOT script is a 19 ‘unique property’ of the invention,” that “this assertion alone is sufficient to preclude a dismissal 20 of MyMail’s claims.”

(emphasis added). Specifically, MyMail attempts to rely on Berkheimer 21 v. HP Inc. and Aatrix Software, Inc. v. Green Shades Software, Inc. to create an issue of fact that 22 would preclude dismissal.

(citing Berkheimer v. HP Inc.,

(Fed. Cir. 2018), and 23 Aatrix Software, Inc. v. Green Shades Software, Inc.,

(Fed. Cir. 2018)). 24 In Berkheimer, the Federal Circuit held that “[w]hile patent eligibility is ultimately a 25 question of law, . . . [w]hether something is well-understood, routine, and conventional to a skilled 26 artisan at the time of the patent is a factual determination.”

; see also Aatrix, 882 27 1 F.3d at 1128 (Fed. Cir. 2018) (“Whether the claim elements or the claimed combination are well- 2 understood, routine, conventional is a question of fact.”). However, in Berkheimer, “[t]he 3 specification describe[d] an inventive feature that stores parsed data in a purportedly 4 unconventional manner.” Id. (emphasis added). Further, “[t]he specification state[d] that storing 5 object structures in the archive without substantial redundancy improve[d] system operating 6 efficiency and reduce[d] storage costs.” Id. at 1370 (emphasis added). Given the allegations 7 present in the specification, the Federal Circuit held that there was “at least a genuine issue of 8 material fact” as to whether the “inventive feature” was “well-understood, routine, and 9 conventional.” Id. at 1370. 10 The Federal Circuit ruled similarly in Aatrix and held that because “[t]here [were] concrete 11 allegations in the second amended complaint that individual elements and the claimed 12 combination are not well-understood, routine, or conventional activity,” questions of fact 13 precluded dismissal at the motion to dismiss stage. See

. 14 Berkheimer and Aatrix are distinguishable from the instant case for at least the following 15 three reasons. First, unlike Berkheimer and Aatrix, the Complaint in the instant case and the 16 specifications of the ’863 and ’070 Patents fail to identify the toolbar’s ability to be dynamically 17 changed or updated via a Pinger process or a MOT script as an “inventive concept.” The 18 Complaint in the instant case fails to even mention a Pinger process or a MOT script. See Compl. 19 ¶¶ 7-9 (describing the ’863 and ’070 Patents without reference to the Pinger process or the MOT 20 script). 21 Second, Berkheimer and Aatrix identified concrete inventive concepts. By contrast, as 22 discussed above, MyMail’s Complaint, specifications, and opposition fail to identify what the 23 specific improvement is and fail to identify how the toolbar’s ability to be dynamically changed or 24 updated via a Pinger process or a MOT script improves the toolbar update process or solves any 25 problem in the prior art. Indeed, the specifications do not even identify any problems that existed 26 in prior art toolbar update processes. 27 Third, as discussed above, MyMail’s specifications and opposition lack any allegation that 1 either the Pinger process or the MOT script themselves use non-generic or non-conventional 2 components to function in an unconventional or non-routine manner. For instance, when the 3 Pinger process and the MOT script dynamically change or update the toolbar, the Pinger process 4 and the MOT script use a “client dispatch application,” an “access server,” and various 5 “databases.” See, e.g., ’863 Patent col. 12:33-47. However, the specifications describe the “client 6 dispatch application” as merely a “program” that provides various pieces of information and 7 “provides basic configuration and initialization information . . . to the user’s computer.”

at col. 8 6:31-53 (describing the “client dispatch application”). Further, the specifications define the 9 “access service” as comprised of “one or more network servers/databases,” which “include[] a 10 computer system having one or more processors, memory, and support hardware.”

at col. 11 11:25-30. The specifications do not identify any of these components as unique to the invention 12 or identify any functions as an “inventive concept.” 13 Moreover, as explained above, the specifications state that the generic components 14 “transmit[] header information,” ’863 Patent col. 12:18; “determine[] whether a user . . . needs a 15 database or file update,”

at col 12:25-28; “download database updates,”

at col. 12:35; and 16 “build[] the [toolbar],”

at col. 11:13. These steps are merely the well-understood and routine 17 process one would perform to determine if a toolbar needs to be updated and then to update the 18 toolbar if necessary. TLI Commc’ns LLC, 823 F.3d at 614 (holding that “sending and receiving 19 data” are “well-understood, routine activit[ies]”). 20 As a result, the ’863 and ’070 Patents are distinct from those in Berkheimer and Aatrix. 21 See Berkheimer,

(describing the patent’s specifications and the allegedly 22 “unconventional” elements); Aatrix,

(“There are concrete allegations in the 23 second amended complaint that individual elements and the claimed combination are not well- 24 understood, routine, or conventional activity.”). Specifically, as in TriPlay, the specifications here 25 are “silent as to what the specific claimed improvement is” or what is unconventional with regard 26 to a toolbar being dynamically changed or updated via a Pinger process or a MOT script. Triplay, 27

, at *8 (“Unlike, for instance, the claims involved in [Berkheimer], the 1 specification here is silent as to what the specific claimed improvement is, how it differs from the 2 prior art, or how any inventive feature, alone or as an ordered combination, is used in an 3 unconventional manner.”); see also WhitServe LLC v. Donuts Inc.,

(D.

), aff’d, --- Fed. App’x ---,

(Fed. Cir. Apr. 10, 2020) (“Here, 5 Berkheimer and Aatrix are inapplicable because neither the patent nor the complaint alleges any 6 improvement in technology.”). 7 MyMail’s opposition’s sole response is that the ’863 and ’070 Patents state that the 8 “toolbar’s ability to be dynamically changed or updated via a Pinger process or a MOT script is a 9 ‘unique property’ of the invention” and that “[t]his assertion alone is sufficient to preclude [] 10 dismissal.” Opp. at 13, This single conclusory statement is insufficient to create an issue of fact. 11 ’863 Patent col. 10:15-17; see Triplay,

, at *8 (“Unlike, for instance, the claims 12 involved in [Berkheimer], the specification here is silent as to what the specific claimed 13 improvement is, how it differs from the prior art, or how any inventive feature, alone or as an 14 ordered combination, is used in an unconventional manner.”); see also WhitServe, 390 F. Supp. at 15 581 (“Here, Berkheimer and Aatrix are inapplicable because neither the patent nor the complaint 16 alleges any improvement in technology.”). 17 Therefore, the Court concludes that the ’863 and ’070 Patents’ reference to the toolbar’s 18 ability to be dynamically changed or updated via a Pinger process or a MOT script as a “unique 19 property” is insufficient to preclude dismissal. 20 Second, the Court also rejects MyMail’s attempt to rely on three prior PTAB decisions to 21 “show that there is a plausible basis for MyMail’s contention that the Pinger process/MOT 22 script . . . was not a well-understood, routine and conventional method.” See Opp. at 13. On three 23 separate occasions the PTAB has upheld the validity of the ’863 and ’070 Patents during inter 24 partes review proceedings (“IPR”) based on, in part, the Pinger process and the MOT script. See 25 generally ECF No. 140-2 (IPR2018-00117) (denying institution of IPR for the ’070 Patent); ECF 26 No. 140-3 (IPR2018-00118) (denying institution of IPR for the ’863 Patent); and ECF No. 140-4 27 (IPR2017-00967) (final written decision upholding validity of the ’863 Patent). However, in IPR 1 proceedings, the PTAB can only address validity under §§ 102 and 103—inquiries that are vastly 2 different from the current assessment of subject-matter eligibility under § 101. Neptune Generics, 3 LLC v. Eli Lilly & Co.,

(Fed. Cir. 2019) (“Congress expressly limited the 4 scope of inter partes review to a subset of grounds that can be raised under

& 5 103.” (citing

(b))). As the United States Supreme Court has stated, “The ‘novelty’ 6 of any element or steps in a process, or even of the process itself, is of no relevance in determining 7 whether the subject matter of a claim falls within the § 101 categories of possibly patentable 8 subject matter.” Diamond, 450 U.S at 188-89. Accordingly, the Federal Circuit has held that “it 9 is not enough for [§ 101] subject-matter eligibility that claimed techniques be novel and 10 nonobvious in light of prior art, passing muster under

and 103.” SAP Am., Inc. 11 v. InvestPic, LLC,

(Fed. Cir. 2018). Thus, the PTAB’s assessment of validity 12 under §§ 102 and 103 is irrelevant to the Court’s assessment under § 101. As a result, the Court 13 rejects MyMail’s attempt to rely on the PTAB decisions to demonstrate that the Pinger process or 14 the MOT script provide an “inventive concept.” 15 In sum, because the Court finds at Alice step one that the claims are directed to an abstract 16 idea and at step two that there is no inventive concept sufficient to save the claims, the Court 17 concludes that the asserted claims are patent-ineligible under § 101. Defendants’ renewed motion 18 for judgment on the pleadings is therefore GRANTED. 19 IV. CONCLUSION 20 For the foregoing reasons, the Court GRANTS Defendants’ renewed motion for judgment 21 on the pleadings. 22 IT IS SO ORDERED. 23 Dated: May 7, 2020 24 ______________________________________ LUCY H. KOH 25 United States District Judge 26 27