The Software IP Report

On Remand, Software Patents Held Invalid for Lacking Sufficient Factual Allegations

While software patents have recently survived Rule 12 motions to dismiss on the pleadings, a lack of an inventive concept doomed a set of software patents as ineligible under 35 U.S.C. § 101. MyMail Ltd. v. ooVoo, LLC, 17-cv-04487 (N.D. Cal. May 7, 2020).

Plaintiff MyMail sued Defendants ooVoo and IAC for infringement of U.S. Patent Nos. 8,275,863 and 9,021,070. After remand by the Federal Circuit vacating the Court’s judgment on the pleadings for lack of claim construction on the term “toolbar,” the parties briefed the claim construction and Defendants refiled motions to dismiss under Rule 12(c). As with Rule 12(b)(6), factual allegations in a complaint are considered true and construed in favor of the movant, and if no dispute of fact remains, the motion to dismiss is granted.

The Court applied the two-part Alice/Mayo test, holding that the asserted claims were directed to the abstract idea of updating toolbar software over a network without user intervention. The construction of “toolbar” as “a button bar that can be dynamically changed or updated via a Pinger process or MOT script” did not change the fact that the claims were directed to transmitting data, analyzing data, and updating a toolbar. Notably, the “Pinger process” and “MOT script” were simply automation tools for updating the toolbar.

The crux of many of these cases has, of course, been step two and whether factual allegations in a complaint could survive a motion to dismiss. Previously, the Court had held that the claims only claimed generic, conventional computer components and lacked an inventive concept. After the Court’s claim construction, the toolbar’s “Pinger process” and “MOT script” still failed to provide an inventive concept. Plaintiff described the toolbar as a “specific and improved way of updating a toolbar” without additional argument on the technical advantages of the toolbar, and the Court held that these were “all generic and function in a conventional manner.” Notably, because Plaintiff “vaguely and conclusorily state[d]” that the Pinger process and MOT script were improvements, without details on why those were not generic, conventional, or routine, the Court held that there was no inventive concept to satisfy step two. This lack of inventive concept did not raise a dispute of fact, and the Court granted the judgment on the pleadings to invalidate the claims under § 101.

Lessons for Practice

This appears to be one of the rare instances in which granting dismissal on the pleadings on § 101 eligibility is appropriate. Unlike several other cases in which pleading factual allegations lead to surviving a Rule 12 motion, Plaintiff here didn’t explain why the asserted claims included an improvement that wasn’t generic, routine, or conventional. Perhaps the Court’s construction of “toolbar” pinned Plaintiff in an untenable position, but even a brief discussion of technical details can allege a dispute of fact to survive dismissal.