Date: 02-21-2007

Case Style: Mymail, Ltd. v. America Online, Inc.

Case Number: 06-1147,-1172

Judge: Bryson

Court: United States Court of Appeals for the Federal Circuit on appeal from the Eastern District of Texas (Harrison County)

Plaintiff's Attorney:

Doug Cawley, McKool Smith, P.C., of Dallas, Texas, argued for plaintiff-appellant. With him on the brief were Theodore Stevenson, III, David Sochia, Christopher T. Bovenkamp, Charles W. Miller, and Bradley Wayne Caldwell.

Defendant's Attorney:

Woody Jameson, Duane Morris LLP, of Atlanta, Georgia, argued for defendants-appellees and defendants/cross-appellants, Earthlink, Inc. With him on the brief were Matt Gaudet and Claus 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.

Bill Robinson and Ron Coslick, Foley & Lardner, LLP, of Los Angeles, California, for defendants-cross appellants, Netzero, Inc., et al.

Description:

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 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 third-party 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 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 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.

* * *

Outcome: Affirmed

Plaintiff's Experts: Unavailable

Defendant's Experts: Unavailable

Comments: None