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MyMail, Ltd. v. ooVoo, LLC

Failure to Resolve Construction Dispute Leads to Vacatur of § 101 Ineligibility Determination

MyMail, Ltd. v. ooVoo, LLC, __ F.3d __, 2019 WL ___ (Fed. Cir. Aug. 16, 2019) (Lourie (dissenting), O’Malley, REYNA) (N.D. Cal.: Koh) (3 of 5 stars)

Fed Cir vacates judgment on the pleadings of patent-ineligible subject matter. MyMail’s patents related to methods of modifying toolbars on personal computer interfaces via network updates. The district court erred by declining to address, in its order, the parties’ dispute over whether the construction of “toolbar” in a prior district court case (the E.D. Tex. Case MyMail v. Yahoo!) was or was not correct. MyMail had contended that, if adopted, the Yahoo! construction confirmed that the claims were directed to technology for improving the operation of computers (e.g., as in Enfish). Per Aatrix, 882 F.3d 1121 (Fed. Cir. 2018), “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.” Op. at 9. The opinion declines to construe the claims in the first instance on appeal, reasoning that the available record was insufficient to enable construction and noting the possibility of subsidiary fact questions in the § 101 inquiry.

Dissent: Judge Lourie views the claim construction issue as “a mirage”: “In my view, the claims at issue are clearly abstract, regardless of claim construction.” Dissent at 1. He generally approves of the district court’s patent eligibility analysis.

KEYWORDS: SUBJECT-MATTER ELIGIBILITY; CLAIM CONSTRUCTION