A Key Claim Construction Dispute Must Be Resolved Before Making a Patent Ineligibility Finding

The Federal Circuit vacated a Section 101 patent ineligibility finding because the “district court erred by declining to resolve the parties’ claim construction dispute before adjudging patent eligibility.” The patents related to “methods of modifying toolbars that are displayed on Internet-connected devices such as personal computers.”

The district court found the patent claims ineligible upon consideration of a motion for judgment on the pleadings. The patent owner argued that, under a proper claim construction for certain terms, the claims are directed to a patent-eligible “particular technological process for improving an exclusively computer-oriented device.” The district court did not address the disputed claim construction proposals in its opinion.

The Federal Circuit reversed, stating that “patent eligibility requires a full understanding of the basic character of the claimed subject matter.” Thus, “if the parties raise a claim construction dispute at the Rule 12(c) stage, the district court must either adopt the non-moving party’s constructions or resolve the dispute to whatever extent is needed to conduct the § 101 analysis.” Here, the district court did neither and was reversed.

Judge Lourie dissented, stating the “claims at issue are clearly abstract, regardless of claim construction.” In Judge Lourie’s view, the challenged claims are similar to other claims found patent-ineligible for reciting “off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information.”