Claim Construction Must be Resolved Before Making Eligibility Determinations

August 19, 2019
Post by Blog Staff

On August 16, 2019, in MyMail, Ltd. v. ooVoo, LLC, the United States Court of Appeals for the Federal Circuit (CAFC) vacated and remanded a decision made by the U.S. District Court for the Northern District of California because the court failed to resolve a claim construction dispute before making a patent eligibility determination at the judgment on the pleadings stage.

MyMail owns two patents it asserted against ooVoo and IAC Search & Media, Inc. (IAC), who is also a party. IAC and ooVoo filed identical motions for judgment on the pleadings, arguing that MyMail’s patents are directed to patent-ineligible subject matter. The district court granted ooVoo and IAC’s motions, holding that MyMail’s patents were invalid for lack of patentable subject matter. MyMail appealed the decision and the CAFC consolidated the two cases.

The two MyMail patents “are directed to methods of modifying toolbars that are displayed on Internet-connected devices such as personal computers.” At the district court, MyMail, ooVoo, and IAC argued about how to construe the term “toolbar” in the claims. The CAFC wrote that when a motion for judgment on the pleadings is filed in district court asserting patent claim invalidity due to subject ineligibility and there is a claim construction dispute between the parties, the district court must “either adopt the non-moving party’s constructions or resolve the dispute to whatever extent is needed to conduct the § 101 analysis.” Here, the district court failed to address the parties’ claim construction dispute and failed to adopt the non-moving party’s construction of the disputed terms before making an eligibility determination. Therefore, the district court erred.

The CAFC held that the district court erred “by failing to address the parties’ claim construction dispute before concluding, on a Rule 12(c) motion, that the MyMail patents are directed to patent-ineligible subject matter under § 101.” When a motion for judgment on the pleadings is filed to invalidate patent claims for subject ineligibility, claim construction must be resolved before making an eligibility determination.


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