Mymail, Ltd. v. Oovoo, LLC
934 F.3d 1373
| Fed. Cir. | 2019Background
- MyMail owns two related patents ('863 and '070) claiming methods for automatically updating and displaying toolbars on Internet-connected devices.
- MyMail sued ooVoo and IAC for patent infringement; cases were transferred to the Northern District of California and consolidated on appeal.
- Defendants moved for judgment on the pleadings under Fed. R. Civ. P. 12(c), arguing the asserted claims are patent-ineligible under 35 U.S.C. § 101 (Alice framework).
- Parties disputed construction of the term "toolbar"; MyMail relied on an Eastern District of Texas construction (the "Yahoo! construction") that defined toolbar as dynamically updatable via a "Pinger process" or MOT script.
- The district court granted defendants' motions without construing disputed claim terms, finding the claims directed to an abstract idea and lacking an "inventive concept." MyMail appealed.
- The Federal Circuit vacated and remanded, holding the district court erred by failing to resolve the claim-construction dispute (per Aatrix) before deciding § 101 on a Rule 12(c) record; a dissent would have affirmed eligibility ruling.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the district court erred by not construing claims before ruling on Rule 12(c) § 101 motions | MyMail: Court should adopt the earlier Yahoo! construction of "toolbar," which shows the claims are directed to a specific technological improvement | ooVoo/IAC: Yahoo! construction is erroneous and unnecessary; construction wouldn't affect Alice analysis | Vacated and remanded — district court must address or adopt claim construction disputes before resolving § 101 on Rule 12(c) (Aatrix governs) |
| Whether the MyMail claims are patent-eligible under § 101 | MyMail: Claims recite a particular technological process improving computer-oriented devices (per Yahoo! construction) | ooVoo/IAC: Claims are directed to abstract ideas (gathering/transmitting/updating data) and add only conventional computer components | Not decided on appeal — remanded for § 101 analysis after appropriate claim construction; dissent would have affirmed ineligibility |
Key Cases Cited
- Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014) (two-step test for patent-eligibility under § 101)
- Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018) (district court must resolve claim-construction disputes before deciding § 101 at Rule 12 stage if dispute affects eligibility)
- Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) (collecting precedent that collection, analysis, and display of information are abstract ideas)
- Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) (specification is the primary guide to claim-term meaning)