• MyMail, Ltd. v. America Online, Inc.
  • February 21, 2007 | Author: Lawrence M. Sung
  • Law Firm: Nixon Peabody LLP - Washington Office
  • On February 20, 2007, the Federal Circuit affirmed the district court’s summary judgment that eight internet service providers (ISPs) -- AOL, NetZero, Juno, Netbrands, Earthlink, Southwestern Bell, Prodigy, and SBC -- did not infringe U.S. Patent No. 6,571,290, which related to remote network access. The Federal Circuit stated:

    MyMail first argues that the district court wrongly construed the patent to require the NSP [(Network Service Provider)] 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 [(internet service provider access service)] 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.

    [T]he specification reveals that the invention requires the user to be authenticated before being given access to the internet. [M]uch 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. 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. . . . 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. . . . A major function of the claimed invention would thus be obviated if the ASP authenticated users for access to the internet.

    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.” That embodiment, however, is part of the so-called “multi-dial 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. 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. 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.

    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 . . . 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 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.” In light of the specification’s teachings and MyMail’s admissions below, the district court’s claim construction must be affirmed.