Early Dismissal on § 101 Grounds Is Improper When Claims Need Construction
The U.S. Court of Appeals for the Federal Circuit ruled in MyMail v. ooVoo, No. 2018-1758, 2019 U.S. App. LEXIS 24430 (Fed. Cir. Aug. 15, 2019), that a court must adopt a non-moving party’s claim constructions or otherwise resolve claim construction disputes before conducting a § 101 analysis on a motion to dismiss. MyMail had sued ooVoo for allegedly infringing two patents relating to techniques for modifying toolbars displayed on Internet-networked devices. ooVoo moved to dismiss on grounds that the patents were directed to subject matter ineligible for patent protection. The Nothern District of California had found that the claims were directed to a patent-ineligible abstract idea because they only recited gathering, processing, and displaying information. It also stated that the addition of a general-purpose computer did not render the claims significantly more than the abstract idea.
The Federal Circuit panel re-emphasized that providing a ruling on a motion to dismiss is inappropriate when the patentee raises a legitimate, unresolved dispute regarding the meaning of claim terms. Here, MyMail had pointed to a claim interpretation of the term “toolbar” from a case where the same patents had been asserted against Yahoo! That definition required that the toolbar be capable of dynamic changes and updates via a Pinger process or MOT script. MyMail argued that this functionality represented a particular technological improvement over conventional toolbar operation, which rendered its claims significantly more than an abstract idea. The District Court did not address the meaning of the term “toolbar” or adopt MyMail’s proposed construction when granting the motion to dismiss.
The Federal Circuit held that the District Court’s failure to resolve the dispute about the meaning of the term “toolbar” before ruling on the motion to dismiss constituted reversible error. The Court declined to construe the claims itself and to find that the claims were patent-eligible under the patentee’s proposed construction. The panel reasoned that it was an appellate court, and the kinds of factual issues underpinning claim construction and patent-eligibility were reserved for the lower courts. Making these kinds of determinations for the first time on appeal, without the benefit of a fully developed record, would have been improper. As a result, the Federal Circuit vacated the District Court’s grant of the motion to dismiss and remanded for the District Court to resolve the issues.
This case reemphasizes the importance of developing factual issues potentially relevant to subject-matter eligibility early when asserting claims for patent infringement. When these issues have been raised, it is much more difficult for a defendant to secure early dismissal of the complaint for lack of subject-matter eligibility.
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Author: James Watson