The Software IP Report

Determining Patent-Eligibility Requires Claim Construction!(?)

By Charles Bieneman

Categories: Patent Eligibility, The Software IP Report

In a decision that Judge Lourie in dissent described as “based on a claim construction issue that is little more than a mirage,” a Federal Circuit panel vacated and remanded a district court’s Rule 12(c) judgment on the pleadings of patent-ineligibility, under the Alice test and 35 U.S.C. § 101, of claims directed to updating Internet toolbars. MyMail, Ltd. v. ooVoo, LLC, Nos. 2018-1758, 2018-1759 (Fed. Cir. Aug. 16, 2019) (precedential). Judge Reyna’s majority opinion, joined by Judge O’Malley, found error in the district court’s decision not “to resolve the parties’ claim construction dispute before adjudging patent eligibility.”

The patents-in-suit were US 8,275,863 and 9,021,070, the ’070 patent being a continuation of the ’863 patent. I will not reproduce the lengthy claims here – they can be found at the above links – suffice it to day that the claims of both patents were all about updating Internet toolbars.

Majority Opinion

The patent owner, and now Appellant, had argued to the district court that the construction of “toolbar” in another case, MyMail, Ltd. v. Yahoo!, Inc., No. 2:2016cv01000 (E.D. Tex. Sept. 9, 2017), should be adopted, and supported patent-eligibility. The Yahoo! court construed “toolbar” as “not generic” but rather “button bar that can be dynamically changed or updated via a Pinger process or a MOT script [an old kind of database script].” The Appellees argued that adopting this construction would have had no impact on claim scope or the patent-eligibility analysis because the “pinger” was simply redundant of other claim terms.

The majority here disagreed, saying that the claim terms would have to be construed. Furtherthe court declined to make its own construction because “[w]e are generally hesitant to construe patent claims in the first instance on appeal, “ the intention being “to avoid conflating de novo review with an independent analysis.” The district court had made no construction, and there was no “record sufficiently developed to enable construction.” Further, citing Aatrix Software, Inc. v. Green Shades Software, Inc. (Fed. Cir. 2018), the majority said that patent-eligibility can require resolving “subsidiary fact questions,” and that “[i]t is improper for us to determine factual issues in the first instance on appeal.”


Judge Lourie in dissent thought that this case could have been easily resolved under Electric Power Group, LLC v. Alstom S.A. (Fed. Cir. 2016), because the claims here simply applied generic computing technology; under Electric Power Group “the analysis, transmission, and display of information are, in themselves, abstract ideas.”

The need for claim construction was a red herring said Judge Lourie (without using that phrase). Here, the specification and file history were “clear that neither the unclaimed pinger process nor the unclaimed MOT script can be the inventive concept.” In fact, the pinger process was not part of the invention but rather was described in the specification as presumably available from a service provider. So why, said Judge Lourie, approvingly quoting Cleveland Clinic Foundation v. True Health Diagnostics LLC (Fed. Cir. 2019), should the appellate court “task the district court with finding an inventive concept that the specification and prosecution history concede does not exist?”

In sum, Judge Lourie explained

the pinger process consists of the idea of programming a generic computer to send certain data (the user’s current toolbar software version) to a predetermined server at regular intervals in a conventional manner, and then having the server return certain data (updated toolbar software) in a conventional manner, when the server determines the user’s toolbar version is out of date. The pinger process is, as the Appellees argued, more or less exactly what is claimed, and also undeniably an abstract idea under this court’s precedent.

Editorial Comment

I heartily agree with Judge Lourie in at least one aspect. Did this case really warrant remand? Wouldn’t many patent litigators disagree with the majority’s statement that de novo review and “independent analysis” cannot be conflated? I think Judge Lourie is right – the issues here are purely questions of law that do not require consideration of complicated or controversial subsidiary facts. The effect of this precedential decision can only be to create more uncertainty in – and, by effectively requiring more claim construction when Rule 12 patent-eligibility motions are brought, complexify and prolong – patent suits. An area of the law that needs to be simplified keeps getting murkier.