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MyMail, Ltd. v. ooVoo, LLC

United States Court of Appeals for the Federal Circuit

August 16, 2019, Decided

2018-1758, 2018-1759


 [*1375]  Reyna, Circuit Judge.

MyMail, Ltd. appeals the decision of the United States District Court for the Northern District of California grant-ing ooVoo, LLC's and IAC Search & Media, Inc.'s motions for judgment on the pleadings. Because we determine that the district court erred by declining to resolve the parties' claim construction dispute before adjudging patent eligibil-ity, we vacate and remand.

 [*1376]  Background

MyMail, Ltd. ("MyMail") is the assignee of U.S. Patent Nos. 8,275,863 ("the '863 patent") and 9,021,070 ("the '070 patent") (collectively, the "MyMail patents"). On Novem-ber 18, 2016, MyMail filed suit against ooVoo, LLC [**2]  ("ooVoo") in the United States District Court for the East-ern District of Texas for infringement of the MyMail pa-tents. About a month later, MyMail asserted its patents against IAC Search & Media, Inc. ("IAC"), also in the East-ern District of Texas. ooVoo and IAC each moved to dis-miss their respective actions for improper venue. After the Supreme Court's opinion in TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514, 197 L. Ed. 2d 816 (2017), all par-ties agreed to transfer the lawsuits to the Northern District of California. On July 12, 2017, both cases were trans-ferred.

On October 31, 2017, ooVoo and IAC each filed identi-cal motions for judgment on the pleadings, asserting that the MyMail patents are directed to patent-ineligible sub-ject matter under 35 U.S.C. § 101. MyMail opposed both motions, arguing that the claimed inventions are patent el-igible, as evidenced in part by a construction of the term "toolbar" rendered by the Eastern District of Texas in an earlier proceeding involving the '070 patent. MyMail en-couraged the court to adopt the Eastern District of Texas's construction of "toolbar" as part of its § 101 analysis. ooVoo and IAC opposed the adoption of that construction. But the district court in this case did not construe "toolbar" or any other terms of the MyMail [**3]  patent claims. Nor did the court address the parties' dispute. Instead, on March 16, 2018, the district court issued orders granting ooVoo's and IAC's motions for judgment on the pleadings, holding the MyMail patents invalid under § 101. MyMail timely appealed both orders and this court consolidated the appeals.

I. The MyMail Patents

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934 F.3d 1373 *; 2019 U.S. App. LEXIS 24430 **; 2019 U.S.P.Q.2D (BNA) 305789; 2019 WL 3850614

MYMAIL, LTD., Plaintiff-Appellant v. OOVOO, LLC, IAC SEARCH & MEDIA, INC., Defendants-Appellees

Subsequent History: Patent interpreted by MyMail, Ltd. v. IAC Search & Media, Inc., 2020 U.S. Dist. LEXIS 38533 (N.D. Cal., Mar. 4, 2020)

Prior History:  [**1] Appeals from the United States District Court for the Northern District of California in Nos. 5:17-cv-04487-LHK, 5:17-cv-04488-LHK, Judge Lucy H. Koh.

MyMail, Ltd. v. ooVoo, LLC, 313 F. Supp. 3d 1095, 2018 U.S. Dist. LEXIS 44715 (N.D. Cal., Mar. 16, 2018)


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Civil Procedure, Appeals, Standards of Review, De Novo Review, Evidence, Judicial Notice, Adjudicative Facts, Public Records, Judgments, Pretrial Judgments, Judgment on Pleadings, Patent Law, Jurisdiction & Review, Subject Matter, Infringement Actions, Claim Interpretation, Standards of Review