Addressing patent eligibility under 35 USC § 101, the US Court of Appeals for the Federal Circuit vacated and remanded a district court’s decision for failure to address the parties’ claim construction dispute before ruling on a Fed. R. Civ. P. Rule 12(c) motion. MyMail LTD. v. ooVoo, LLC, IAC Search & Media, Inc., Case Nos. 18-1758, -1759 (Fed. Cir. Aug. 16, 2019) (Reyna, J) (Lourie, J, dissenting).
MyMail filed two lawsuits in the Eastern District of Texas against ooVoo and IAC for infringement of MyMail patents that describe methods of modifying toolbars displayed on internet-connected devices. After ooVoo and IAC moved to dismiss the cases for improper venue, pursuant to TC Heartland, the parties agreed to transfer the lawsuits to the Northern District of California. Shortly after the suits were transferred, ooVoo and IAC filed identical motions on the pleadings, asserting that the MyMail patents were directed to patent-ineligible subject matter under § 101. MyMail opposed the motions, arguing that the inventions were patent eligible based on claim construction by the Eastern District of Texas in an earlier proceeding involving the same patent.
The Northern District analyzed the § 101 eligibility issue under the Alice test without construing the claims or addressing the parties’ claim construction dispute. At Alice step one, the district court determined that the MyMail patent claims were “directed to a process for updating toolbar software over a network without user invention.” The district court found the claims to be directed to an abstract idea because:
They fell within the category of gathering and processing information. They recited a process composed of transmitting, analyzing and generating a response to transmitted data. They related to using communications networks to update software on computers.
At Alice step two, the district court concluded that the claims failed to provide an inventive concept sufficient to save the claims. The district court determined that the claims recited generic, conventional components, such as internet-connected computers and servers, and that the addition or changing of a button on a toolbar, based on data stored in a database, was routine and conventional. Without construing any of the patent claims or addressing the parties’ claim construction dispute, the district court granted defendants’ motion for judgment on the pleadings and held that the MyMail patents were directed to patent-ineligible subject matter under § 101. MyMail appealed.
The Federal Circuit addressed two issues on appeal: first, whether the district court erred by failing to construe the patent claims before ruling on the FRCP 12(c) motion, and second, whether the district court erred by finding the patent claims ineligible under § 101. On the first issue, the Court noted that “patent eligibility may be determined on a Rule 12(c) motion, but only when there are no factual allegations that, if taken as true, prevent resolving the eligibility question as a matter of law,” citing Aatrix Software v. Green Shades Software (IP Update, Vol. 21, No. 3). The Court noted that under Aatrix, “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 necessary to conduct the § 101 analysis.”
In this case, MyMail sought to have the district court adopt the Eastern District of Texas’s construction of the term “toolbar” to mean a “button bar that can be dynamically changed or updated via a Pinger process or a MOT script.” OoVoo and IAC argued that the prior construction was “erroneous” and “improper.” The district court, however, never addressed the parties’ claim construction dispute, nor did it construe the disputed term.
The Federal Circuit ruled that the district court’s failure to adopt MyMail’s construction or to construe the term itself was an error under Aatrix. The Federal Circuit declined to construe the term, noting that doing so could conflate “de novo review with an independent analysis.” Instead, the Federal Circuit remanded the case back to the district court for further proceedings.
Judge Lourie, writing in dissent, opined that the claims at issue were clearly abstract, regardless of claim construction. Specifically, Judge Lourie found that the patent claims’ breadth illustrated their abstract nature where they covered any toolbar modification, on any type of internet-connected device, using generic servers and internet functionality. He would have found the patents ineligible and affirmed the district court’s holding.