Federal Circuit Uses Un-Claimed Embodiment to Narrowly Define Claim Term “Authentication”

In MyMail Ltd. v. America Online Inc., 81 USPQ2d 1832 (Fed. Cir. February 20, 2007), MyMail, Ltd. brought a patent infringement action in the US District Court for the Eastern District of Texas, charging eight internet service providers with infringing U.S. Patent No. 6,571,290. U.S. Patent No. 6,571,290 is drawn to allowing a user who is away from home to dial an 800 number to find out a local phone number for his internet access.  Specifically, a customer at a remote location uses contact and login information to access the internet through an internet service provider (ISP) or through a third-party modem bank affiliated with that ISP (referred to generally as an NSP).  The NSP performs authentication of the user and allows an internet connection to 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.

Under the defendant’s system, the user calls a third-party phone bank and provides the ID and password to the phone bank.  The phone bank (after a check to see if the login id is applicable) sends the id/password to the defendant.  The defendant then sends the result back to the modem bank.  The modem bank then allows or denies internet service.  As such, the defendants asserted non-infringement since their systems correspond to the ASP and perform authentication such that there was no element corresponding to the NSP performing authentication.  The District Court agreed with the defendants, and granted summary judgment on the issue of authentication not being performed at a provider corresponding to the recited NSP.

On appeal, the Federal Circuit reviewed the specification in order to determine the proper scope of the claimed “authentication” as described in the intrinsic record. The specification required the modem banks/ISP to perform the authentication step, but did not describe the ASP as performing authentication.  Instead, the Federal Circuit found that the specification required a user to be authenticated before being given access to internet (i.e., prior to being connected to the ASP).  Moreover, if the ASP performed authentication instead of the ISP, the interpretation would obviate the need for distribution of the user and login for the new ISP, which is included in the claimed system.  Lastly, while an unclaimed embodiment described the ASP performing authentication, since that embodiment is admittedly not claimed, it is not relevant to defining which entity performs authentication according to the claimed invention.  As such, the Federal Circuit affirmed the District Court’s holding that the defendant’s system, performed the authentication at the ASP, not the modem bank/ISP and therefore the claimed method is not infringed.

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