Conclusory Legal Opinions of Patentee’s Expert Not Enough to Prevent 12(b)(6) Dismissal

Several weeks ago, the Court of Appeals for the Federal Circuit issued a nonprecedential decision in Glasswall Solutions Limited v. Clearswift Ltd., affirming a district court’s findings that claims from two patents that were asserted in an infringement case filed by Glasswall were directed to unpatentable subject matter under 35 U.S.C. § 101. The Federal Circuit panel of Circuit Judges Alan Lourie, Richard Linn and Richard Taranto found that the Western District of Washington court did not err in determining the challenged claims were invalid under the Alice/Mayo framework, and that dismissal of the case under Federal Rule of Civil Procedure 12(b)(6) was appropriate.

Facts Not Conclusions

The two patents-at-issue in this case are:

• U.S. Patent No. 8869283, titled Resisting the Spread of Unwanted Code and Data. It claims a method for processing an electronic file containing only allowable content data by receiving an electronic file, determining the data format, parsing the content data to determine if it conforms to the data format and regenerating the parsed data if it does conform.
• U.S. Patent No. 9516045, same title as the ‘283 patent. It discloses a method of resisting spread of unwanted code and data without scanning incoming electronic files for unwanted code and data in a way that provides virus detection for computing devices without the large data files used by conventional antivirus programs while reducing the amount of time required to protect against unwanted code.

The district court had found that all asserted claims of the ‘283 and ‘045 patents were directed to the filtering of electronic data and files and the Federal Circuit agreed with the district court’s conclusion that such filtering represented an abstract concept.

Although the Federal Circuit has made it more difficult for defendants to achieve a dismissal based upon patent ineligibility after Aatrix Software v. Green Shades Software, 882 F.3d 1121 (2018), a dismissal is still achievable. Here the Federal Circuit distinguished Aatrix. In Aatrix, the Federal Circuit gave the plaintiff leave to file a second amended complaint which, if its allegations were factually correct, would have established patentability of the invention. In Glasswall, the Federal Circuit found that testimony offered by an expert witness for Glasswall didn’t preclude a dismissal on the pleadings as the alleged factual assertions in that testimony weren’t actually factual in nature but, rather, were conclusory legal arguments the district court wasn’t bound to accept as true.

Abstract Idea Without Significantly More

“The claims at issue in both patents do not purport to claim how the invention receives an electronic file, how it determines the file type, how it determines allowable content,” Judge Linn’s opinion reads. “Instead, the claims are framed in wholly functional terms, with no indication that any of these steps are implemented in anything but a conventional way.”

The panel found the claims in this case to be similar to those found invalid in the Federal Circuit’s 2016 decision in Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016). In that case, the Federal Circuit held that the invalidated claims were directed to methods of screening emails and other data files for unwanted content. Thus, those claims were directed to an abstract idea as filtering mail and email according to known characteristics was a long-prevalent practice. “The claims in this case do no more,” Judge Linn wrote, finding that the invalidated claims in the present case only required the conventional manipulation of information by a computer.

The Federal Circuit further found that the invalidated Glasswall claims were unlike the claims found patent-eligible in the Court’s 2018 decision in Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (2018), where the claimed invention used a new kind of file enabling new functionality in a computer security system. Unlike Finjan, where there was a pioneering invention that filtered based on behavior, the Glasswall claims filtered based upon the information content of the file.

After first finding that the claims were directed to an abstract idea under Alice/Mayo step one, the Federal Circuit found that “the claims fare no better under Alice step two” as they didn’t amount to anything more than the application of the abstract idea implemented through generic steps.

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Copyright: William Perry