Federal Circuit - Claim Construction Required Before Patent Eligibility Decision
On August 16, 2019, the Federal Circuit Court of Appeals issued an opinion that district courts mush construe patent claims first before ruling on Section 101 patent eligibility in MyMail, Ltd. v. OoVoo, LLC. Buether Joe & Carpenter represents the appellant MyMail, Ltd.
Relevant portions of the opinion are provided below.
The MyMail patents are directed to methods of modifying toolbars that are displayed on Internet-connected devices such as personal computers.
In concluding that the MyMail patent claims are patent ineligible under 35 U.S.C. § 101, the district court for the Northern District of California determined that the claims fail both steps of the Supreme Court’s Alice test. See MYMAIL, LTD. v. OOVOO, LLC 7 Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216–18 (2014). The district court performed this analysis without construing the claims or addressing the parties’ claim construction dispute.
Determining patent eligibility requires a full understanding of the basic character of the claimed subject matter. Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1273–74 (Fed. Cir. 2012). As a result, if 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 whatever extent is needed to conduct the § 101 analysis. See Aatrix, 882 F.3d at 1125.
Before the district court, the parties disputed the construction of “toolbar,” a claim term present in the claims of both MyMail patents. MyMail directed the district court to a construction of “toolbar” rendered in another case involving the MyMail patents, MyMail, Ltd. v. Yahoo! Inc., No. 2:16-cv-01000 (E.D. Tex. 2017). J.A. 733, J.A. 734 n.8, J.A. 740,2 J.A. 750–82.
In Yahoo!, the court construed “toolbar” based on “definitional” language in the specification that describes “the [t]oolbar of the present invention” as capable of being “dynamically changed or updated via a Pinger process or a MOT script.” J.A. 764 (emphasis omitted) (quoting ’070 patent col. 10 ll. 24–26). The Yahoo! court found that the “toolbar” recited in the claims is “not a generic toolbar,” and quoted the following definition of the “Pinger process”: As defined in this application . . . a Pinger process comprises an entity that acts transparently as a “services” coordinator to provide and/or administer the following: 1. Heartbeat service to help maintain network connectivity with a client. 2. Authentication services that securely authenticate client access to email, commerce, and other public and private network servers and services. 3. Update services that can perform client software, database, and maintenance services during periods of inactivity. J.A. 764 (quoting ’070 patent col. 10 ll. 16–26). Ultimately, the Yahoo! court construed “toolbar” to mean a “button bar that can be dynamically changed or updated via a Pinger process or a MOT script” (the “Yahoo! construction”). J.A. 766.
The district court never addressed the parties’ claim construction dispute. Nor did the district court construe “toolbar” or adopt MyMail’s proposed construction of “toolbar” for purposes of deciding ooVoo’s and IAC’s Rule MYMAIL, LTD. v. OOVOO, LLC 11 12(c) motions. See Appellee Br. 39 (“[T]he district court’s order on appeal sets forth no findings or conclusions regarding the precise construction of the [toolbar] term.”). We note that Aatrix issued after the parties briefed ooVoo’s and IAC’s Rule 12(c) motions, but before the district court granted the motions. The district court did not cite Aatrix in its decision. Nevertheless, the district court’s failure to address the parties’ claim construction dispute is error under Aatrix. See 882 F.3d at 1125