CAFC Vacates Pre-Markman Invalidity Ruling

Last week, a split panel of the United States Court of Appeals for the Federal Circuit issued an opinion in MyMail Ltd. v. ooVoo, LLC, et al., No. 2018-1758 (August 16, 2019), vacating a district court’s judgment of invalidity, granted before claim construction, under Alice v. CLS Bank for claiming abstract ideas.

MyMail is the assignee of two patents “directed to methods of modifying toolbars” displayed on internet-connected personal computers and other devices without user intervention. It sued ooVoo, LLC, a now-defunct video chat service, and IAC Search & Media, Inc., the owner of, alleging they infringed its patents by offering toolbars that automatically updated. Defendants moved for judgment on the pleadings, asserting the patents were invalid as directed to patent-ineligible subject matter under 35 U.S.C. § 101. MyMail opposed the motion. It argued the construction of the term “toolbar” in another case involving one of the patents, if adopted, would be dispositive of the § 101 question, “confirm[ing] that the claims … are directed to a particular technological process for improving an exclusively computer-oriented device.” The defendants disagreed, arguing that earlier construction was “erroneous” and “improper.” Without resolving the parties’ claim construction dispute, the district court held the patent claims invalid under § 101. MyMail appealed.

The Federal Circuit vacated and remanded. The Court, citing Aatrix Software v. Green Shades Software, explained that patent eligibility may be determined on a Rule 12(c) motion only when there are no underlying fact disputes. In this case, the Court determined the parties’ dispute over the proper construction of “toolbar” required the trial court to either adopt the construction most favorable to plaintiff for purposes of the 12(c) motion or resolve the claim construction dispute. Because the trial court did neither, its decision on patent eligibility was error. The Court further determined the error was not harmless, and declined to construe the disputed claim term and determine patent eligibility in the first instance on appeal: “The determination of patent eligibility may involve subsidiary fact questions, including whether ‘the claim elements or the claimed combination are well-understood, routine, [or] conventional.’”

Judge Lourie dissented. He would have affirmed, concluding that the claim construction dispute compelling the majority’s decision was “little more than a mirage.” “[T]he claims at issue are clearly abstract,” he wrote, “regardless of claim construction.”

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