Tuesday, February 20, 2007

Specification, Admissions Vitiate Infringement

MyMail, Ltd. v. America Online et al. (06-1147) February 20, 2007

MyMail appealed a grant of Summary Judgment by the E.D. Tex., finding that 8 Internet service providers did not infringe MyMail's patent (6,571,290). Claim 1 of the patent reads as follows:

1. A method of connecting a use to a given NSP (Network Service Provider) comprising the steps of:

providing a network device user with an initial use set of log-in information for initially communicating with an access [service provider] via an available NSP;

storing in a database of the network device a hidden time shared set of log-in information supplied by said access service for accessing said given NSP; and

causing the network device to reestablish communication with the network via said given NSP using the hidden set of log-in information.

Generally speaking, the 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. During the Markman hearing, the court construed the term NSP as "a party that provides a connection to the network and authenticates users for access to the network."

MyMail's theory of infringement claimed that third-party modem banks associated with the defendants served as the NSP, and the service providers (i.e., AOL) served as the access service provider, and together they infringed. However, under the district court's interpretation of the claims, only the third-party modems performed authentication, and not the service providers. Thus, summary judgment of noninfringement was granted.

MyMail argued that the authentication did not have to occur at the NSP, but could also be performed by the access service provider. For support, MyMail pointed out an unclaimed embodiment disclosed in the specification.

The CAFC dismissed this argument, and pointed out portions of the specification the defined "the invention," where NSP authentication was "necessary" to allow an ISP to grant access to a user. Regarding the unclaimed embodiment, the CAFC found that the embodiment had no effect on the scope of the claimed subject matter. Furthermore, admissions made by MyMail's counsel made clear that the NSP had to perform the authentication:
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."

Fraud in Obtaining Ownership of Patent: The CAFC also considered arguments from the defendants alleging that MyMail fraudulently obtained ownership of the patent. The CAFC noted:
While it is true that later-discovered 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 . . . 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 . . . State law, not federal law, addresses such property ownership disputes.

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