On August 19, 2019, Chris Loh was quoted in Law360 regarding a Federal Circuit decision in MyMail, Ltd. v. ooVoo, LLC. The court held that because the parties in a suit over computer toolbar patents disputed the meaning of a key claim term, the district judge should have resolved that issue before granting judgment on the pleadings that the patents cover patent-ineligible subject matter under Section 101 of the Patent Act.
According to the article, so many patents have been invalidated as ineligible early in cases on motions for dismissal or summary judgment, that patent owners may latch onto any decision that could help forestall such a fate.
"If you are a patent owner in this situation, certainly claim construction presents an opportunity to raise an additional obstacle to summary 101 determination at the start of the case," said Loh.
However, attempts by patent owners to head off an early invalidity decision by raising a claim construction issue are far from a slam dunk. The situation in this case, where there was a dispute over claim construction that the judge didn't address at all, is fairly unusual and unlikely to recur, given the Federal Circuit's holding.
"I don't think most district courts would bypass that step, and if they did have that inclination before, certainly this sends a clear message not to do so in the future," Loh said.