A District Court May Not Ignore a Claim Construction Dispute Raised During a Section 101 Challenge

MYMAIL, LTD. v. OOVOO, LLC
Before Lourie, O’Malley and Reyna. Appeal from the United States District Court for the Northern District of California.

Summary: If the parties litigating a § 101 challenge at the pleading stage raise a claim construction dispute, the district court must either adopt the non-moving party’s construction or resolve the dispute to whatever extent is needed to conduct the § 101 analysis.

MyMail sued ooVoo and IAC Search & Media (collectively, “Defendants”) for patent infringement. The asserted patent claims covered methods of modifying toolbars that are displayed on Internet-connected devices.  Defendants each filed a motion for judgment on the pleadings, asserting that MyMail’s patents are directed to patent-ineligible subject matter under § 101.  MyMail opposed both motions, arguing that the claimed inventions are patent-eligible based in part on a construction of the term “toolbar” rendered in an earlier proceeding involving one of the same patents.  Defendants opposed that construction.  The district court did not construe “toolbar” or otherwise address the parties’ claim construction dispute.  Instead, the court granted the motions, holding the MyMail patents invalid under § 101.

The Federal Circuit found that the district court erred by declining to address the parties’ claim construction dispute before adjudicating patent eligibility.  The Federal Circuit explained that “[d]etermining patent eligibility requires a full understanding of the basic character of the claimed subject matter” and “[i]f the parties raise a claim construction dispute at the Rule 12(c) stage, the district court must either adopt the non-moving party’s constructions or resolve the dispute to the extent needed to conduct the § 101 analysis.”  The Federal Circuit therefore vacated and remanded the case for further proceedings.

Judge Lourie dissented, arguing that the MyMail patent claims are abstract regardless of claim construction and that the Federal Circuit should therefore affirm the district court’s decision.

Editor: Paul Stewart