United States Court of Appeals for the Federal Circuit 

06-1147, -1172 

MYMAIL, LTD., 

 

Plaintiff-Appellant, 

v. 

AMERICA ONLINE, INC., 

 Defendant, 

and 

NETZERO, INC., JUNO ONLINE SERVICES, INC. 

and NETBRANDS, INC., 

Defendants-Cross Appellants, 

and 

EARTHLINK, INC., 

Defendant-Cross Appellant, 

and 

SOUTHWESTERN BELL INTERNET SERVICES, INC., 

PRODIGY COMMUNICATIONS CORPORATION 

and SBC INTERNET SERVICES, INC., 

 Defendants-Appellees. 

 

 Douglas A. Cawley, McKool Smith, P.C., of Dallas, Texas, argued for plaintiffappellant. With him on the brief were Theodore Stevenson, III, David Sochia, 

Christopher T. Bovenkamp, Charles W. Miller, and Bradley Wayne Caldwell. 

 L. Norwood Jameson, Duane Morris LLP, of Atlanta, Georgia, argued for 

defendants-appellees and defendants/cross-appellants, Earthlink, Inc. With him on the 

brief were Matthew C. Gaudet and Claus D. Melarti for Earthlink, Inc.; and Timothy G. 

Newman and Russell W. White, Larson Newman Abel Polansky & White, LLP, of Austin, 

Texas, for Southwestern Bell Internet Services, Inc., et al. Of counsel was Anthony A. 

Sheldon, Cardinal Law Group, of Evanston Illinois. 

 William J. Robinson and Ronald Coslick, Foley & Lardner, LLP, of Los Angeles, 

California, for defendants-cross appellants, Netzero, Inc., et al. 
Appealed from: United States District Court for the Eastern District of Texas 

Judge Leonard Davis 
United States Court of Appeals for the Federal Circuit

06-1147,-1172 

MYMAIL, LTD., 

Plaintiff-Appellant, 

v. 

AMERICA ONLINE, INC., 

 Defendant, 

and 

NETZERO, INC., JUNO ONLINE SERVICES, INC. 

and NETBRANDS, INC., 

 Defendants-Cross Appellants, 

and 

EARTHLINK, INC., 

 Defendant-Cross Appellant, 

and 

SOUTHWESTERN BELL INTERNET SERVICES, INC., 

PRODIGY COMMUNICATIONS CORPORATION, 

and SBC INTERNET SERVICES, INC., 

 Defendants-Appellees. 

___________________________ 

DECIDED: February 20, 2007 

___________________________ 

Before NEWMAN, SCHALL, and BRYSON, Circuit Judges. 

BRYSON, Circuit Judge. 
06-1147,-1172 2 

 MyMail, Ltd., brought this patent infringement action in the United States District 

Court for the Eastern District of Texas, No. 6:04-cv-00189-LED, charging eight internet 

service providers with infringing U.S. Patent No. 6,571,290 (“the ’290 patent”). The 

district court granted summary judgment of noninfringement, and MyMail appeals from 

that order. Four of the defendant internet service providers cross-appeal from the 

district court’s ruling that MyMail has standing to assert infringement of the ’290 patent. 

We affirm the district court’s judgment in all respects. 

I 

 The claims of the ’290 patent relate to a method of providing network customers 

with access to a network, such as the internet, when they are away from their normal 

base of operations. The claimed method operates as follows: a customer who is 

temporarily in a remote location uses contact and login information (i.e., a telephone 

number and a preassigned user ID and password) to access the internet through an 

internet service provider (ISP) or through a third-party modem bank affiliated with that 

ISP. ’290 patent, col. 4, ll. 62-64 & col. 6, ll. 11-13. Through that internet connection 

the user then contacts another entity called an “internet service provider access service” 

or ASP. The ASP provides the user with login information for a new ISP that is more 

suitable to the customer’s remote location, typically because it is closer to that location. 

The user then terminates the connection to the internet established through the first ISP 

and reconnects to the internet by using the new ISP. To generalize the invention, the 

claims use the term Network Service Provider or NSP to refer to a party in a generic 

network performing the function of an ISP and providing modem services to network 

users. ’290 patent, col. 5, ll. 38-44 & col. 6, ll. 11-13. The district court construed all the 
06-1147,-1172 3 

asserted claims to require the presence of an NSP, a conclusion unchallenged here, 

and it defined NSP as “a party that provides a connection to the network and 

authenticates users for access to the network.” The issue on appeal relates to the 

authentication requirement. 

Each of the defendants’ practices are the same in all respects pertinent to this 

appeal. In each accused architecture, a user dials in to a third-party modem bank 

associated with the defendant. The modem bank confirms that the user’s ID has a 

“realm string” indicating that the user has an account with a domain serviced by the 

modem bank. Thus, for example, if the modem bank services EarthLink customers, the 

modem bank looks for the term “earthlink” in the customer’s ID, as in the ID 

“user@earthlink.net.” If the realm string does not match a domain serviced by the 

modem bank, the modem bank denies the user internet access. If the realm string 

matches, the modem bank sends the user’s ID and password to the defendant that 

operates that domain. The defendant checks the ID and password combination against 

a database of valid users. The result of that authentication query is then communicated 

to the modem bank, where the user is allowed or denied internet access depending on 

whether the authentication process indicates that the customer is a valid user entitled to 

service. Once connected, the defendant updates the user’s access information, which 

may include new or updated user IDs and passwords, or telephone numbers for thirdparty modem providers. The user then reconnects at a later time using the new access 

information. 

Under MyMail’s theory, the defendants infringe the asserted claims because the 

third-party modem banks serve as the NSPs referred to in the claims, while the 
06-1147,-1172 4 

defendants serve as the ASPs referred to in the claims. MyMail argues that the 

defendants infringe because the third-party modem banks and the defendants connect 

users to the internet and to NSPs by using the methods claimed in the patent. 

The district court found that the patent defines authentication as the process of 

checking whether the user ID and password are valid. Because the defendants are the 

ones performing the authentication check and, under MyMail’s theory, the defendants 

are the ASPs, the district court determined that the alleged NSPs did not perform the 

required authentication and thus the defendants could not infringe the patent. 

On appeal, MyMail first argues that authentication is not a function the NSP must 

perform. Second, MyMail argues that even if the NSP must perform authentication, 

conducting a realm string check or forwarding the user’s information to the ASP and 

allowing or denying access according to the defendants’ reply would satisfy any 

authentication requirement. We agree with the district court that authentication is a 

required function of the NSP and that the functions performed by the NSP in the 

defendants’ systems do not constitute authentication. Accordingly, we affirm the district 

court on this issue. 

NetZero, Juno, Netbrands, and Earthlink cross-appeal, arguing that MyMail is not 

the owner of the patent and thus lacks standing to bring an infringement action. MyMail 

obtained ownership of the ’290 patent through an assignment from Mr. Robert Derby. 

Mr. Derby had acquired the patent application through a state court foreclosure action 

on a promissory note secured by the application. The cross-appealing defendants 

allege that the promissory note was fraudulent and that MyMail’s chain of title is 

therefore insufficient to establish lawful ownership of the ’290 patent. They do not say 
06-1147,-1172 5 

who the legal owner should be, but they assert that the district court must be able to 

inquire into that issue and, effectively if not explicitly, should be able to set aside the 

state court’s judgment granting ownership rights to Mr. Derby. We agree with the 

district court that the state court judgment is not amenable to collateral attack in this 

proceeding and therefore deny relief on the cross-appeal. 

II 

We first address the jurisdictional question that several of the defendants have 

raised in their cross-appeal. A plaintiff must demonstrate legal title to the patent at the 

inception of the lawsuit to be entitled to sue for patent infringement. Paradise 

Creations, Inc. v. UV Sales, Inc., 315 F.3d 1304, 1309 (Fed. Cir. 2003). State law—in 

this case Texas law—governs the question of who has legal title. Int’l Nutrition Co. v. 

Horphag Research Ltd., 257 F.3d 1324, 1329-30 (Fed. Cir. 2001); Jim Arnold Corp. v. 

Hydrotech Sys., 109 F.3d 1567, 1572 (Fed. Cir. 1997). Here, MyMail has shown that it 

was the legal owner of the ’290 patent at the inception of the lawsuit. MyMail relies in 

part on an enforceable state court judgment that transferred title under Texas law, a 

judgment that under Texas law is open to challenge only in certain limited 

circumstances. The cross-appealing defendants must nullify that judgment to establish 

a break in the title chain. They have not attempted to do so under the applicable 

provisions of state law. 

Instead, the cross-appealing defendants argue that, as a matter of federal law, 

anyone can assert fraud at any time and thereby require a federal court to “make an 

independent review of all facts underlying [the] purported chain of title.” In support of 

that proposition, the defendants rely on Precision Instruments Manufacturing Co. v. 
06-1147,-1172 6 

Automotive Maintenance Machinery Co., 324 U.S. 806 (1945), and its progeny, which 

deal with conduct relating to the procurement of a patent. While it is true that laterdiscovered fraud relating to patent procurement can be raised as a defense in federal 

court, the same is not true of fraud relating to patent ownership. Fraud in the 

procurement bears on the enforceability of the patent and thus implicates the public’s 

interest in ensuring that the grant of patent rights is legitimate. Mercantile Nat’l Bank v. 

Howmet Corp., 524 F.2d 1031, 1034 (7th Cir. 1975) (citing Precision Instruments, 324 

U.S. at 816). Asserting that a third party owns a particular patent, however, is a 

different matter. In that case, the enforceability of the patent is not challenged; the only 

question is one of ownership. See id. State law, not federal law, addresses such 

property ownership disputes. Accordingly, we affirm with respect to the cross-appeal. 

III 

On the merits, MyMail first argues that the district court wrongly construed the 

patent to require the NSP to perform authentication. Both parties agree that the term 

NSP is a coined term, without a meaning apart from the patent. As construed, all the 

asserted claims involve communicating with the ASP through a connection established 

by the NSP. We therefore look to the specification to determine what the NSP must do 

when establishing that communication link. See Phillips v. AWH Corp., 415 F.3d 1303, 

1316-17 (Fed. Cir. 2005) (en banc). 

An examination of the specification reveals that the invention requires the user to 

be authenticated before being given access to the internet. When describing the initial 

steps of the inventive method, the specification states that, “[t]o begin the process of the 

present invention,” the user is provided a telephone number, a user ID, and a password 
06-1147,-1172 7 

associated with an ISP to allow the user to gain access to the internet. ’290 patent, col. 

6, ll. 32-46. Additionally, much of the invention is concerned with giving users new IDs 

and passwords, items described as “necessary” to allow an ISP to grant access to a 

user. E.g., ’290 patent, col. 8, ll. 22-27; col. 7, ll. 55-59; col. 9, ll. 55-58. The IDs and 

passwords described would serve no function if the user did not have to be 

authenticated before being connected to the internet. 

The specification also indicates that the ISP (and therefore the NSP) is the entity 

performing the authentication. In addition to stating that the ID and password are “ISP 

specific,” ’290 patent, col. 2, ll. 21-24, the specification states that, “[u]pon receipt of the 

access information, the ISP ‘authenticates’ the user” and, if the access information is 

valid, the user is then connected to the internet. Id. col. 6, ll. 40-46, 66-67 & col. 7, ll. 

10-19 (figure references omitted). 

The specification shows that the ASP cannot perform the required authentication. 

Besides explicitly stating that the ISP performs the authentication, the specification 

describes the authentication and connection steps as being completed before the ASP 

becomes relevant. See ’290 patent, col. 7, ll. 32-33. With the exception of the 

unclaimed embodiment discussed below, nothing in the specification suggests that the 

ASP assists in the connection process. Moreover, part of the ASP’s function is to 

distribute the “necessary” IDs and passwords to users. E.g., id. col. 8, ll. 22-27; col. 7, 

ll. 55-59; col. 9, ll. 55-58. That distribution function would not be required if the ASP 

performed the authentication; one ID and password combination would suffice because 

only one entity would ever need to evaluate it. A major function of the claimed invention 

would thus be obviated if the ASP authenticated users for access to the internet. 
06-1147,-1172 8 

Accordingly, we interpret the specification as requiring the NSP to perform the 

authentication function. 

 MyMail argues that the specification discloses authentication by the ASP 

because the specification describes an embodiment in which it is required that “all user 

(client) authentication for all ISPs happens at the [ASP] (i.e., all authentication for all 

ISPs is centralized) or at a centrally located database point.” ’290 patent, col. 23, line 

67, through col. 24, line 4. That embodiment, however, is part of the so-called “multidial subfunction” embodiment that MyMail has conceded to be part of an unclaimed 

invention. 

In the multi-dial subfunction embodiment, authentication must be centralized to 

allow one user ID and password combination to be used for multiple ISPs. In that 

system, the user may be assigned to an ISP without requiring the user to disconnect 

and reconnect using new login information. ’290 patent, col. 24, ll. 7-16. No such 

functionality is contemplated in the claimed invention, however. In fact, the added 

functionality is disclosed as the advantage of the unclaimed embodiment over the 

claimed invention. See id. col. 24, ll. 14-17. Because the identity of the entity 

performing authentication was dictated by a functional improvement over the claimed 

invention, the multi-dial subfunction embodiment does not speak to which entity 

performs authentication in the claimed invention. See LG Elecs., Inc. v. Bizcom Elecs., 

Inc., 453 F.3d 1364, 1378 (Fed. Cir. 2006) (finding specification language relating to 

additional functionality in an unclaimed invention irrelevant to the claimed invention). 
06-1147,-1172 9 

Moreover, before the district court MyMail agreed that the patent contemplates 

that the NSP will perform the authentication function. During the Markman hearing, 

MyMail’s counsel stated the following: 

The Court asked a number of real-world questions of [defendants’ 

counsel] about how [the defendants do] authentication and where it 

happens and so forth. There is no dispute between the parties that it is 

part of what the NSP does to serve as an authentication gatekeeper. 

When the user dials into the network service provider, there has to be 

some authentication. That is one of the things that the network service 

provider [NSP] does. 

 The claims, however, do not address where the database for that 

authentication is maintained. . . . 

 So the specification tells us that the location of that database is not 

really important. It is important that the NSP has to do it, but it is clearly a 

remote database. 

The context makes clear that counsel’s statement refers to the scope of the claims; 

counsel acknowledged that under the patent the “NSP has to do [authentication]” but 

disagreed about whether a remote database would satisfy that requirement. 

Defendants’ counsel referenced that point later in the hearing, prompting the 

district court to ask about the extent of the parties’ disagreement as to the required 

function of the NSP. In response, MyMail’s counsel reviewed the proposed claim 

construction, which referred to “a provider of network services that authenticates users 

for access to its services based on user IDs and passwords.” MyMail’s counsel read 

the proposed language aloud, accepting or objecting to various portions as he went 

along. The following exchange occurred when he reached the authentication 

requirement: 

[MyMail’s counsel]: That authenticates user’s access to its service. 

Okay. Based on user ID and passwords those limitations are not 

contained in the claims. The specification makes it clear that it is log-in 

and authentication information not limited to user ID, not limited to 
06-1147,-1172 10 

password, and certainly not making appropriate the conjunctive “and” that 

you have to have both. 

The Court [addressing defendants’ counsel]: Do you have a 

problem . . . with taking out the part about the passwords and that part of 

the further definition of what authentication means? 

In that statement, as in the earlier one, MyMail’s counsel agreed as to the entity that 

had to perform authentication but disagreed as to the method of authentication, i.e., 

what information was employed to authenticate the user. Having agreed to that 

construction before the district court, MyMail “cannot now argue against that claim 

construction simply because it resulted in an adverse ruling on summary judgment.” 

LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1341 (Fed. Cir. 2005). In 

light of the specification’s teachings and MyMail’s admissions below, the district court’s 

claim construction must be affirmed. 

IV 

MyMail argues that even under the district court’s claim construction, the thirdparty modem banks in the defendants’ systems perform “authentication,” as the patent 

defines that term. Because there is no dispute regarding the operation of the accused 

systems, that issue reduces to a question of claim interpretation and is amenable to 

summary judgment. See Gen. Mills, Inc. v. Hunt-Wesson, Inc., 103 F.3d 978, 983 (Fed. 

Cir. 1997) (“Where the parties do not dispute any relevant facts regarding the accused 

product . . . but disagree over possible claim interpretations, the question of literal 

infringement collapses into claim construction and is amenable to summary judgment.”). 

As described in the patent and as conceded by MyMail, authentication is the 

process of determining the validity of a user’s ID and password. ’290 patent, col. 6, line 

62, through col. 7, line 2. Determining the validity of the ID and password requires that 
06-1147,-1172 11 

a definitive decision be made. If the user fails the authentication step, access is denied. 

If the user passes, access is granted. Id. col. 7, ll. 7-16. Neither of the processes 

asserted by MyMail satisfies those requirements.1

 

MyMail argues that the realm string comparison satisfies the authentication 

requirement. However, the process of realm string checking does not determine the 

validity of the user’s ID and password. At most, realm string checking can deny access 

to some subset of unauthorized users; it cannot be used to determine that a user is 

authorized to access the internet, as required by the patent. Accordingly, realm string 

comparison does not satisfy the authentication requirement. 

MyMail also contends that the act of asking the defendants to perform the 

database comparison and then allowing or denying access to the user based on the 

defendants’ answer satisfies the authentication requirement. While asking another 

party to do the database lookup is, in a general sense, checking to see whether the ID 

and password are valid, the patent contemplates that the entity performing the database 

comparison is the party that performs the validation. The requester merely forwards 

requests and then follows orders. In the defendants’ systems, the third-party modem 

banks (which MyMail refers to as the NSPs of the patent) do not determine whether the 

ID and password are valid; that task is performed by the defendants (which MyMail 

refers to as the ASPs of the patent). The NSPs of the claimed method therefore do not 

 

1

 When arguing against summary judgment in the district court, MyMail 

submitted a declaration and report from its expert, Dr. Jeffrey Smith, who stated that in 

his opinion the defendants satisfied the authentication requirement. Dr. Smith’s opinion 

was based on a definition of authentication that does not require a definitive decision 

concerning the user and that allows the ASP to perform the database query. Because 

those assumptions are contradicted by the specification, Dr. Smith’s evidence does not 

create a genuine issue of material fact. 
06-1147,-1172 12 

perform authentication as that term is used in the patent. Accordingly, we affirm the 

district court’s grant of summary judgment of noninfringement. 

Each party shall bear its own costs for this appeal and cross-appeal. 

AFFIRMED.