Federal Circuit Required Resolution of Claim Construction Dispute Before Ruling on Patent Eligibility at Rule 12(c) Stage

In MyMail, Ltd., v. ooVoo, LLC IAC Search & Media, Inc., Nos. 2018-1758, 2018-1759 (Fed. Cir. Aug. 16, 2019), the Court vacated and remanded a determination regarding patent eligibility under 35 U.S.C. § 101 because the district court failed to first resolve the parties’ claim construction dispute.

After successfully transferring venue from the Eastern District of Texas, the defendants moved for judgment on the pleadings, asserting that the MyMail patents were directed to patent-ineligible subject matter. The parties disputed the proper construction of the term “toolbar.” But the court declined to construe the term, and it held the claims were directed to patent ineligible subject matter.

On appeal, the Federal Circuit held the district court erred by failing to first resolve the claim construction dispute. The Court reiterated that eligibility may be determined on a Rule 12(c) motion only when there are no factual allegations that, when taken as true, prevent resolving the eligibility questions as a matter of law.  And here, because the parties submitted a claim construction dispute, the district court had an obligation to either adopt the non-moving party’s construction or resolve the dispute to the extent necessary to conduct the § 101 analysis.

Judge Lourie dissented and would have found the patents ineligible under § 101. For the claim construction issue, Judge Lourie stated that the specification was enough to evaluate the claims and determine they are directed to an unpatentable abstract idea.