NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

MYMAIL, LTD.,

Plaintiff-Appellant

v.

OOVOO, LLC,

Defendant-Appellee

______________________

2020-1825

______________________

Appeal from the United States District Court for the 

Northern District of California in No. 5:17-cv-04487-LHK, 

Judge Lucy H. Koh.

-------------------------------------------------

MYMAIL, LTD.,

Plaintiff-Appellant

v.

IAC SEARCH & MEDIA, INC.,

Defendant-Appellee

______________________

2020-1826

______________________

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2 MYMAIL, LTD. v. OOVOO, LLC

Appeal from the United States District Court for the 

Northern District of California in No. 5:17-cv-04488-LHK, 

Judge Lucy H. Koh.

______________________

Decided: August 19, 2021

______________________

ERIC WILLIAM BUETHER, Buether Joe & Counselors, 

LLC, Dallas, TX, for plaintiff-appellant. Also represented 

by THERESA DAWSON.

 ROBERT LOUIS HAILS, JR., Baker & Hostetler LLP, 

Washington, DC, for defendants-appellees. Also represented by CASSANDRA SIMMONS, T. CY WALKER.

 ______________________

Before MOORE, Chief Judge, O’MALLEY and REYNA, Circuit 

Judges.

O’MALLEY, Circuit Judge.

MyMail, Ltd. appeals from a pair of identical decisions

of the United States District Court for the Northern District of California granting ooVoo, LLC’s and IAC Search & 

Media, Inc.’s renewed motions for judgment on the pleadings. In a prior appeal, this court vacated the district 

court’s judgments on the pleadings and remanded because 

the district court failed to address the parties’ claim construction dispute before considering the eligibility of

MyMail’s patent claims under 35 U.S.C. § 101. MyMail, 

Ltd. v. ooVoo, LLC (MyMail I), 934 F.3d 1373, 1381 (Fed. 

Cir. 2019). On remand, the district court construed the disputed term, “toolbar.” Under this construction, the court 

again held that the claims of MyMail’s patents are ineligible. MyMail, Ltd. v. ooVoo, LLC (MyMail II), Nos. 17-cv04487-LHK, 17-cv-04488-LHK, 2020 WL 2219036, at *22 

(N.D. Cal. May 7, 2020). For the reasons explained below, 

we affirm as to both decisions. 

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MYMAIL, LTD. v. OOVOO, LLC 3

I. BACKGROUND

A. The Asserted Patents

The two asserted patents—U.S. Patent Nos. 8,275,863 

(“the ’863 patent”) and 9,021,070 (“the ’070 patent”)—have 

virtually identical written descriptions. The ’863 patent is 

entitled “Method of Modifying a Toolbar,” and the ’070 patent is entitled “Dynamically Modifying a Toolbar.” ’863 

patent, at [54]; ’070 patent, at [54]. The patents describe 

the field of invention as relating generally to digital data 

networks and more particularly to “network access and to 

minimizing unauthorized interception of data and denial of 

network services.” E.g., ’863 patent, col. 1, ll. 26–29. They 

further describe the present invention as a method of and 

apparatus for (a) simplifying the process of access to a network, (b) dividing the responsibility of servicing a user 

wanting to access the network, and (c) minimizing the possibility of improper dissemination of email header data, as 

well as the possibility of improper use of network resources. 

See, e.g., id. at col. 3, ll. 44–50. 

The written descriptions describe a user—e.g., a computer system—that includes a client dispatch application. 

E.g., id. at col. 9, ll. 2–3. The client dispatch application 

communicates with an access service by transmitting user 

information and receiving access information for a particular Internet Service Provider (“ISP”). See, e.g., id. at col. 7, 

l. 24–col. 8, l. 3. The client dispatch application may then 

connect to that ISP. E.g., id. at col. 8, ll. 4–16. 

In addition to the client dispatch application, the user

includes several databases for storing information, including a button bar database. E.g., id. at col. 9, ll. 20–23. The 

button bar database includes information related to creating and modifying a button bar—i.e., a toolbar. E.g., id. at 

col. 10, ll. 7–9. The toolbar is a human interface through 

which numerous functions may be initiated. E.g., id. According to the written descriptions, the toolbar “has some 

unique properties as it can be dynamically changed or 

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updated via a Pinger process or a MOT script.” E.g., id. at 

col. 10, ll. 15–17. 

The written descriptions explain that the Pinger is a 

process through which all communications between the client dispatch application and the access service take place.1 

E.g., id. at col. 11, ll. 53–55. According to the process, the 

client dispatch application initiates a pinger, or pinger 

message, with header information. E.g., id. at col. 11, 

ll. 44–52; col. 12, ll. 16–24. The header information includes the current user ID, the account owner ID, PAP ID, 

the current IP address assigned to the user, Group ID, the 

user’s current time, database revisions levels, and the revision levels of the client dispatch application and other related software. E.g., id. With this information, the access 

service can determine if a user needs a database or file update. E.g., id. at col. 12, ll. 25–28. In this way, the pinger 

process “allows the client dispatch application and the access service to interact and download database updates (or 

other information) to the user.” E.g., id. at col. 12, ll. 33–36. 

The patents describe MOT script in several ways. MOT 

is not “an acronym for anything meaningful.” E.g., id. at 

col. 12, ll. 50–51. It merely refers to the script language 

used by the Pinger process and elsewhere in the patents. 

E.g., id. at col. 12, ll. 48–50. And, according to the written 

descriptions, “[a]s will be appreciated, a MOT script defines 

how to build a button bar using the button bar database [ ] 

and its database entries.” E.g., id. at col. 11, ll. 5–7. The 

client dispatch application can use the MOT script and button bar database information to build the toolbar 

1 The written descriptions also describe the Pinger 

process as comprising “an entity that acts transparently as 

a ‘services’ coordinator,” which provides services, including 

“[u]pdate services that can perform client software, database, and maintenance services during periods of inactivity.” ’863 patent, col. 10, ll. 17–29. 

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MYMAIL, LTD. v. OOVOO, LLC 5

automatically according to the specifications of the MOT 

script. E.g., id. at col. 11, ll. 10–13. The written descriptions also identify MOT script as a way to provide updates 

to databases. E.g., id. at col. 12, ll. 36–47. The access service may provide the client dispatch application with MOT 

script and other data through a web page site, an email 

message, a file transfer procedure site, or other similar networking storage and transport mechanisms. E.g., id. 

Claim 1 of the ’863 patent and claim 1 of the ’070 patent 

are representative. Claim 1 of the ’863 patent recites: 

1. A method of modifying a toolbar, comprising the 

steps of:

a user Internet device displaying a toolbar comprising one or more buttons, the toolbar defined by 

toolbar data stored in one or more toolbar-defining 

databases, the toolbar data comprising a plurality 

of attributes, each attribute associated with a button of the toolbar, wherein for each button of the 

toolbar, at least one of the plurality of attributes 

identifying a function to be performed when the 

button is actuated by the user Internet device;

the user Internet device automatically sending a 

revision level of the one or more toolbar-defining 

databases to a predetermined network address;

a server at the predetermined network address determining, from the revision level, the user Internet device should receive the toolbar update data;

the user Internet device receiving toolbar update 

data from the Internet;

the user Internet device initiating without user interaction an operation to update the toolbar data in 

accordance with the toolbar update data received;

the user Internet device updating, by the operation, the toolbar data in accordance with the 

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6 MYMAIL, LTD. v. OOVOO, LLC

toolbar update data, thereby producing updated 

toolbar data, the updating comprising at least one 

of the following steps (a) and (b), each respectively 

comprising:

(a) writing at least one new attribute to the 

original toolbar data, wherein the writing 

at least one new attribute to the toolbar 

data comprises changing the one or more 

buttons of the toolbar by adding a button; 

and

(b) updating at least one attribute of the 

toolbar data; and 

the user Internet device displaying the toolbar as 

defined by the updated toolbar data.

Id. at col. 29, ll. 27–62. 

Claim 1 of the ’070 patent is similar. It, however, recites a method for “dynamically” modifying a toolbar. See 

’070 patent, col. 29, ll. 40–41. It also claims “information 

associated with the one or more toolbar-defining databases” instead of a revision level, “wherein the information 

associated with the toolbar data includes at least one member of a group comprising a revision level, version, time, 

date, user ID, account owner ID, PAP ID, IP address, session keys, billing data, name, address, account information, connection history, procedures performed by a 

user, group ID, e-mail address, e-mail ID, e-mail password, 

residential address, and phone number.” See id. at col. 29, 

l. 40–col. 30, l. 20. 

B. Procedural History

MyMail separately sued ooVoo and IAC for infringement of claims 1–5, 9–13, 16–17, 19–20, and 23 of the ’863 

patent and claims 1–13 and 15–22 of the ’070 patent. On 

March 16, 2018, without construing any debated claim 

terms or assuming MyMail’s construction of those terms to 

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MYMAIL, LTD. v. OOVOO, LLC 7

be accurate, the district court granted ooVoo and IAC’s motions for judgment on the pleadings, holding that MyMail’s 

patent claims were ineligible under 35 U.S.C. § 101. On 

appeal, the parties strenuously debated the meaning of the 

term “toolbar” in the representative claims, largely predicating their § 101 debate on the meaning of that term. We 

declined to interpret the term in the first instance. We also 

declined ooVoo and IAC’s alternative invitation to assess 

patent eligibility under MyMail’s proposed construction in 

the first instance. Because the record before us was not yet 

ripe for appellate review, we vacated and remanded for the 

district court to construe the disputed term in the first instance and to reassess whether the asserted claims recite 

ineligible subject matter. MyMail I, 934 F.3d at 1380. 

On remand, the district court construed the term 

“toolbar” to mean “a button bar that can be dynamically 

changed or updated via a Pinger process or a MOT script.” 

MyMail, Ltd. v. IAC Search & Media, Inc., No. 17-cv04488-LHK, 2020 WL 1043659, at *1 (N.D. Cal. Mar. 4, 

2020). The court explained that its construction imposed a 

meaningful limitation on the claims. Id. at *11. Although 

the construction does not require that the toolbar be dynamically changed or updated by a Pinger process or MOT 

script, the toolbar must have such a capability, “regardless 

of whether the toolbar can be dynamically changed or updated by other means.” Id. 

Despite accepting MyMail’s construction of the disputed term, the district court granted the defendants’ renewed motions for judgment on the pleadings on May 7, 

2020. MyMail II, 2020 WL 2219036, at *22. It analyzed 

the two representative claims together because of their 

substantially similar wording and the patents’ nearly identical written descriptions. Id. at *9. 

At Step One of the Alice framework, the court held that, 

even in light of its construction of “toolbar,” the claims are 

directed to the abstract idea of updating toolbar software 

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8 MYMAIL, LTD. v. OOVOO, LLC

over a network without user intervention. Id. at *10–17. 

It reviewed the written descriptions’ disclosures on the 

Pinger process and the MOT script, concluding that their 

functions are nearly identical to the steps recited in the 

representative claims. See id. at *11–13. The court found

MyMail’s arguments on the Pinger process and the MOT 

script to be vague and conclusory because MyMail failed to 

identify a specific improvement in computer functionality 

or a problem in the prior art that the claims solve. See id.

at *15–16. The court added that MyMail failed to explain 

how the toolbar, as construed, improves the toolbar update 

process. Id. at *15. 

At Step Two of the Alice framework, the district court 

found that all components of the claims, including the 

Pinger process and MOT script, are generic and function in 

a conventional manner. Id. at *17–19. The district court 

further found that the toolbar’s ability to be dynamically 

changed or updated via a Pinger process or a MOT script 

did not provide an inventive concept because it merely implements the abstract idea. Id. at *19. Although MyMail 

made no arguments about the ordered combination of claim 

elements, the district court found no inventive concept in 

the combination. Id. at *19. The court concluded that 

there was no disputed issue of fact to preclude dismissal. 

It also rejected MyMail’s argument that the denials of institution and the patentability determination of the Patent 

Trial and Appeal Board (“Board”) were relevant to patent 

eligibility.2 Id. at *20–22. 

2 In an inter partes review for which a third party 

petitioned, the Board upheld the patentability of claims of 

the ’863 patent because none of the cited prior art disclosed 

the use of a Pinger process or MOT script to update a 

toolbar. For the same reason, the Board denied IAC’s two 

petitions for review of claims of the ’863 patent and the ’070 

patent, respectively. 

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MYMAIL, LTD. v. OOVOO, LLC 9

MyMail timely appealed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). 

II. DISCUSSION

We review a grant of judgment on the pleadings under 

the law of the regional circuit. Amdocs (Israel) Ltd. v. 

Openet Telecom, Inc., 841 F.3d 1288, 1293 (Fed. Cir. 2016). 

The Ninth Circuit reviews a grant of judgment on the 

pleadings de novo. Daewoo Elecs. Am. Inc. v. Opta Corp., 

875 F.3d 1241, 1246 (9th Cir. 2017). Judgment on the 

pleadings is proper when, accepting all factual allegations 

in the complaint as true, there is no issue of material fact 

in dispute, and the moving party is entitled to judgment as 

a matter of law. Chavez v. United States, 683 F.3d 1102, 

1108 (9th Cir. 2012). 

Patent-eligibility is a question of law with underlying 

factual issues. SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 

1161, 1166 (Fed. Cir. 2018). We review the ultimate issue 

of law de novo. Berkheimer v. HP Inc., 881 F.3d 1360, 1365 

(Fed. Cir. 2018). 

Under § 101, the scope of patentable subject matter encompasses “any new and useful process, machine, manufacture, or composition of matter, or any new and useful 

improvement thereof.” 35 U.S.C. § 101. Section 101, however, has an important implicit exception that laws of nature, natural phenomena, and abstract ideas are not patent 

eligible. See Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 

216 (2014). We follow the Supreme Court’s two-step Alice

framework for determining patent eligibility. Id. at 217. 

At Step One, we determine whether the claims at issue are 

directed to an ineligible law of nature, natural phenomenon, or abstract idea. Id. If so, we proceed to Step Two, 

considering the elements of each claim both individually 

and as an ordered combination to determine whether the 

additional elements transform the nature of the claim into 

a patent-eligible application. Id. This second step is often 

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10 MYMAIL, LTD. v. OOVOO, LLC

described as a search for an inventive concept. Id. at 

217–18. 

A. Step One

We hold that claim 1 of the ’863 patent and claim 1 of 

the ’070 patent are directed to the ineligible concept of updating toolbar software over a network without user intervention.3 At Step One, we look at the “focus of the claimed 

advance over the prior art” to determine if the claim’s 

“character as a whole” is directed to excluded subject matter. Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 

1253, 1257 (Fed. Cir. 2016). In cases involving software 

innovations, this inquiry often turns on whether the claims 

focus on specific asserted improvements in computer capabilities or instead on a process or system that qualifies as 

an abstract idea for which computers are invoked merely 

as a tool. Uniloc USA, Inc. v. LG Elecs. USA, Inc., 957 F.3d 

1303, 1306–07 (Fed. Cir. 2020). 

We have long “treated collecting information, including 

when limited to particular content (which does not change 

its character as information), as within the realm of abstract ideas.” Elec. Power Grp., LLC v. Alstom S.A., 830 

F.3d 1350, 1353 (Fed. Cir. 2016). We have similarly 

treated analyzing information by steps that people perform 

mentally, or by mathematical algorithms, without more, as

mental processes falling within the abstract-idea category. 

Id. at 1354. And “merely presenting the results of abstract 

processes of collecting and analyzing information, without 

more (such as identifying a particular tool for presentation), is abstract.” Id. 

3 We reject the appellees’ contention that the district 

court misconstrued the term “toolbar.” Given our conclusion that the asserted claims are ineligible under that construction, we see no need to discuss the district court’s

thoughtful claim construction. 

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Here, the representative claims are directed to updating toolbar software over a network without user intervention. This amounts to no more than invoking computers as 

a tool to perform the abstract ideas of collecting information, analyzing information, and presenting the results 

of the analysis in the software update context. For example, the representative claims recite collecting information 

by sending “a revision level of the one or more toolbar-defining databases” or “information associated with the one 

or more toolbar-defining databases” from a user device to a 

server. ’863 patent, col. 29, ll. 39–41; ’070 patent, col. 29, 

ll. 55–56. They further recite analyzing information by, at 

the server, determining from the collected information 

whether the user device should receive toolbar update 

data. ’863 patent, col. 29, ll. 42–44; ’070 patent, col. 29, 

ll. 57–59. And they recite presenting the results by, at the 

user device, receiving the toolbar update data, updating 

the toolbar automatically, and displaying the updated 

toolbar. ’863 patent, col. 29, ll. 45–62; ’070 patent, col. 29, 

l. 60–col. 30, l. 11. 

Despite MyMail’s contention otherwise, both in the 

earlier appeal and here, the district court’s construction of 

the term “toolbar” to require the capability of being updated by a Pinger process or a MOT script does not rescue 

the representative claims from abstraction. Their character as a whole remains directed to updating toolbar software over a network without user intervention. 

The written descriptions make clear that updating via 

the Pinger process is no different than updating via the 

steps of the claimed method, which is directed to an abstract idea. According to the written descriptions, the 

Pinger process is the process by which a client dispatch application and an access service communicate. E.g., ’863 patent, col. 11, ll. 53–55. To update via this process, (1) the 

client dispatch application transmits information, including revision level, to the access service; (2) the access service determines whether the client dispatch application 

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12 MYMAIL, LTD. v. OOVOO, LLC

needs a database update; and (3) the client dispatch application downloads any database updates. See, e.g., ’863 patent, col. 12, ll. 16–36. We see nothing in the written 

descriptions or MyMail’s arguments on appeal persuading

us that updating via the Pinger process is a specific method 

or implementation of updating toolbar software. In view of 

the patents’ disclosures, the Pinger process does not change 

the character of the claims as a whole. 

Similarly, the MOT script does not change the claims’ 

character as a whole. According to the written descriptions, MOT script refers to the unspecified script language 

used by the Pinger process and elsewhere in the patents. 

E.g., id. at col. 12, ll. 48–50. The only other disclosures 

about MOT script relate to its functions of (a) permitting 

the client dispatch application to build a toolbar automatically and (b) providing the client dispatch application with

database updates. See, e.g., id. at col. 11, ll. 5–13; col. 12, 

ll. 33–47. That the claimed toolbar can be updated via a 

MOT script does not change the claims’ focus on the abstract idea of updating toolbar software over a network 

without user intervention.

MyMail argues that its claims are instead directed to 

an improvement in the functionality of the software updating process. According to MyMail, its new and specific 

method of updating software via a Pinger process or a MOT 

script improves the functionality of updating software “by 

allowing the toolbar to be updated via the [P]inger process 

or MOT script method.” Appellant’s Br. at 30; accord, e.g., 

id. at 31–32. MyMail contends that the district court overgeneralized its claims by ignoring the Pinger process and 

MOT script methods for updating and modifying a toolbar. 

MyMail’s arguments are unpersuasive. The written 

descriptions provide no support for MyMail’s purported improvement in computer functionality. As noted, updating 

via the Pinger process proceeds exactly as the claimed 

method of updating, which is abstract: the user device 

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MYMAIL, LTD. v. OOVOO, LLC 13

transmits information to the server; the server determines 

whether the user device needs an update; and the user device receives update data, updates the toolbar, and displays 

the updated toolbar. And the MOT script is merely a language that the Pinger process uses. The Pinger process 

and MOT script therefore do little more than describe the 

abstract idea of updating software over a network without 

user intervention. We see nothing in the specification suggesting that the Pinger process or MOT script improved

prior art processes. 

MyMail also never explains how updating via the 

Pinger process or MOT script improves computer functionality. At most, MyMail asserts that its claims improve

computer functionality by enabling updating via a Pinger 

process or MOT script. Such conclusory statements, however, fail to provide the level of detail our case law requires 

to establish an improvement in computer functionality. 

Compare Appellant’s Br. 30–35 (arguing that the claimed 

toolbar’s capacity to be updated via the Pinger process or 

MOT script improves computer functionality by allowing 

toolbars to be updated via the Pinger process or MOT 

script), with, e.g., Koninklijke KPN N.V. v. Gemalto M2M 

GmbH, 942 F.3d 1143, 1150 (Fed. Cir. 2019) (holding that 

a limitation requiring modification of a permutation to 

data “in time” improved the function of error detection systems to detect systemic errors), and Thales Visionix Inc. v. 

United States, 850 F.3d 1343, 1348–49 (Fed. Cir. 2017) 

(holding that a particular configuration of sensors improved the accuracy of calculating the position and orientation of an object on a moving platform). In sum, without 

more, we are unpersuaded by MyMail’s bare and rote assertions that a claimed capability improves computer functionality by enabling that capability.

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14 MYMAIL, LTD. v. OOVOO, LLC

Because MyMail’s claims are directed to abstract ideas, 

we turn to Step Two of Alice.4

B. Step Two

We find no inventive concept sufficient to transform 

the nature of the claims into a patent-eligible application. 

At Step Two, the inventive concept must be significantly 

more than the abstract idea itself. BASCOM Glob. Internet 

Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 

(Fed. Cir. 2016). It cannot simply be an instruction to implement or apply the abstract idea on a computer. Id. The 

inventive concept must also be more than well-understood, 

routine, or conventional activity. Affinity Labs, 838 F.3d 

at 1262. 

Here, the individual claim elements are either generic 

computer components or routine activity. For example, the 

representative claims recite “a user Internet device” and “a 

server,” which are no more than a generic computer and 

server, respectively. See ’863 patent, col. 29, ll. 30, 41; ’070 

patent, col. 29, ll. 42, 55. These components perform routine functions, like “displaying a toolbar comprising one or 

more buttons,” “sending a revision level” from the device to 

the server, “determining” at the server whether the device 

needs an update, “receiving” at the device “toolbar update 

data,” and “initiating” at the device “an operation to update 

the toolbar data.” See ’863 patent, col. 29, ll. 30–31, 38–39, 

4 In reply, MyMail also argues that the purported 

claimed advance—providing a toolbar capable of being updated dynamically via the Pinger process or MOT script—

solves a prior art problem by “[e]liminat[ing] the need for a 

computer user to configure and reconfigure computer networking software for network access through a multiplicity 

of ISPs and Network Access Providers.” E.g., ’863 patent, 

col. 4, ll. 58–61. We see no support in the written descriptions for MyMail’s attorney argument. 

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41–49; see also ’070 patent, col. 29, ll. 42–43, 55–65. These 

conventional steps, specified at a high level of generality, 

are insufficient to supply an inventive concept. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014). 

Even when viewing the claim elements as an ordered 

combination, we discern no inventive concept in the process 

of sending information from a user device to a server, determining at the server whether the user device should receive toolbar update data, receiving at the user device the 

update data, updating the toolbar, and displaying the 

toolbar. 

We also see no inventive concept arising from the district court’s construction of the term “toolbar.” As noted 

previously, the Pinger process and MOT script merely describe the abstract claimed process. Therefore, the representative claims’ use of the Pinger process and MOT script 

cannot supply the necessary inventive concept. See BSG 

Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. 

Cir. 2018) (“It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed 

cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”). 

We are unpersuaded by MyMail’s arguments to the 

contrary. First, MyMail argues that its claims are directed 

at improving the functionality of a toolbar by providing “a 

specific ‘pinger process’ as a means to update the toolbar 

data display dynamically and automatically without user 

intervention.” Appellant’s Br. 39–40. Relatedly, MyMail 

contends that the Pinger process confines the scope of its 

claims to a specific application of the concept of updating 

toolbar data. As with MyMail’s corresponding Step One 

arguments, the written description undercuts MyMail’s 

characterization of the Pinger process as a specific way of 

updating toolbar data without user intervention. 

Second, MyMail relies heavily on the Board’s denials of 

institution and the Board’s final written decision of 

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16 MYMAIL, LTD. v. OOVOO, LLC

patentability. According to MyMail, it was legally incorrect 

for the district court to declare the Board’s findings irrelevant. Instead, “[a]t a minimum, the [Board] decisions show 

that there is a plausible basis for MyMail’s contention that 

the Pinger process/MOT script method was or was not a 

well-understood, routine and conventional method at the 

time of the invention of the MyMail Patents.” Id. at 41. 

In Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 

1138 (Fed. Cir. 2016), we rejected a similar prior-art based 

argument as a misstatement of the law. While “the § 101 

patent-eligibility inquiry and, say, the § 102 novelty inquiry might sometimes overlap,” we explained that the 

search for an inventive concept is distinct from demonstrating novelty. Id. at 1151 (quoting Mayo Collaborative Servs. 

v. Prometheus Labs., Inc., 566 U.S. 66, 90 (2012)). Indeed, 

“a claim for a new abstract idea is still an abstract idea.”5 

Id. Here, the Board’s decisions do not supply an inventive 

concept, where there is none in the representative claims. 

Nor do they create a genuine factual dispute over whether 

updating via the Pinger process or MOT script was wellunderstood, routine, or conventional. This is because, as 

noted, the Pinger process and MOT script merely describe 

the abstract idea itself. 

Finally, MyMail argues that judgment on the pleadings 

is inappropriate here, where the written descriptions characterize the claimed toolbar’s capability of updating via a 

Pinger process or a MOT script as “unique properties.” See, 

e.g., ’863 patent, col. 10, ll. 15–17. We disagree. The characterization of updating via a Pinger process or MOT script 

5 Our case law has used the word “new” in both the 

novelty and patent-eligibility contexts. We, however, have 

never subsumed novelty (or nonobviousness) into patent eligibility. Rather, our use of “new” to describe patent-eligible claims harkens back to the “new and useful” language 

in § 101. 

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as unique does not demand a different conclusion on eligibility. The Pinger process and MOT script merely describe 

the abstract idea itself. For these reasons, we hold that the 

representative claims are ineligible under § 101. 

III. CONCLUSION

We have considered MyMail’s remaining arguments 

and find them to be without merit. Because the district 

court properly granted the appellees judgment on the 

pleadings, we affirm. 

AFFIRMED

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