Courts Must Settle Claims Construction Dispute Pre-Dismissal
Written August 20, 2019
The US Court of Appeals for the Federal Circuit on August 16, 2019, held that the District Court for the Northern District of California erred when it dismissed a patent infringement case based on patent ineligibility without first settling a claim construction dispute. MyMail, Ltd. v. ooVoo, LLC, Fed. Cir., No. 2018-1758, 8/16/19.
MyMail sued ooVoo and IAC Search & Media Inc. for infringing U.S. Patent Nos. 8,275,863 and 9,021,070, covering methods of modifying PC toolbars. IAC and ooVoo moved for a judgment on the pleadings, arguing that the patents were invalid because they covered abstract ideas. MyMail argued that its patents were valid based on the Eastern District’s construction of the ‘070 patent term “toolbar” in a related case. The term is present in the ‘863 patent as well. The California district court dismissed the case without construing “toolbar” or responding to the construction dispute.
The Federal Circuit said that dismissal for patent ineligibility at an early stage can occur only if there aren’t any outstanding “factual allegations” like claim construction disputes. Because the district court should have resolved the dispute before dismissing the case, the Federal Circuit vacated and remanded the case.
MyMail sued ooVoo and IAC Search & Media Inc. for infringing U.S. Patent Nos. 8,275,863 and 9,021,070, covering methods of modifying PC toolbars. IAC and ooVoo moved for a judgment on the pleadings, arguing that the patents were invalid because they covered abstract ideas. MyMail argued that its patents were valid based on the Eastern District’s construction of the ‘070 patent term “toolbar” in a related case. The term is present in the ‘863 patent as well. The California district court dismissed the case without construing “toolbar” or responding to the construction dispute.
The Federal Circuit said that dismissal for patent ineligibility at an early stage can occur only if there aren’t any outstanding “factual allegations” like claim construction disputes. Because the district court should have resolved the dispute before dismissing the case, the Federal Circuit vacated and remanded the case.