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

Conclusory Opinions of Expert Not Enough to Prevent DismissalSeveral weeks ago, the Court of Appeals for the Federal Circuit issued a nonprecedential decision in Glasswall Solutions Limited v. Clearswift Ltd., affirming a district court’s findings that claims from two patents that were asserted in an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


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Join the Discussion

13 comments so far.

  • [Avatar for LazyCubicleMonkey]
    January 30, 2019 10:23 pm

    There’s an efficient infringer problem because many (software) patents aren’t all that innovative and multiple parties come up with the same solution(s) independently. Hard to compete against a government-enforced monopoly (yes, you disagreed with this description previously, but you didn’t actually offer any evidence to the contrary – but here’s some history: (yes, it’s copyright and not patent, but I’m using this as the historical underpinning for intellectual property law in general. If you have an equivalent historical article regarding patents, I’d love to read it).

    So what you call efficient infringers, I call software developers that came up with an “infringing” solution because the patent should’ve never been issued. (You’re probably making the assumption that any patent that’s issued is valid & good (beneficial?), an assumption I do NOT share. Without this common starting point, you’re arguments regarding efficient infringers doesn’t have a solid base to stand on.) You’ll find very few (if any) coders trolling the patent archives for inspiration to write their software. As such, they end up coming up their solutions independently (how novel are these patented solutions if multiple parties come up with them independently? I’d love a serious answer), and they’re the ones that have to spend money on lawyers to defend themselves against junk patents. As such, Joe public loses out on healthy competition that would normally bring down the prices and spur further competition between the competing parties.

    Just look at the plethora of software patents that have been issued that just do a routine task, but on a computer. After lengthy litigation, many of those patents do end up being invalidated, but not before the “infringers” spend all their money on lawyers to protect themselves from frivolous suits by patent trolls (or NPE’s if you prefer).

  • [Avatar for Anon]
    January 28, 2019 07:51 am

    You again show that you have over-imbibed in the anti-patent Kool-Aid, LCM.

    The mantra of “money spent on lawyers” with YOUR answer apparently blaming those who spend money to protect their intellectual property squarely MISplaces the blame.

    Stronger patent laws with swifter and more hefty penalties to eliminate the Efficient Infringers are what is needed. You continue to operate in some type of vacuum, mindless of the actual real world effects all around you, spouting the canned jibberish that you have imbibed.

    Money “spent on innovators rather than lawyers” will NOT get you where you think it will get you precisely because of the Efficient Infringer problem.

    The answer to the problem of lacking respect for innovation is NOT “more lack of respect.”

    The answer is to provide a bigger stick and make infringement inefficient.

    As to “grasping your point” – you show that you do NOT grasp my counter point as to what innovation may or may not be. Read again my post please.

  • [Avatar for LazyCubicleMonkey]
    January 27, 2019 01:22 pm

    Obviously, one is not required to obtain a patent. If that’s what you came away from my post, then we’re obviously talking past each other.

    Thankfully, you’ve grasped my next point – are companies/competitors *REALLY* innovating if they came up with the same (more or less) answer to the same problem? I ask you to pose the same question to the ‘283 patent. Multiple quality developers would come up with the same solution as outlined in this patent. So is it *really innovating*?

    If you’re agenda is to really protect innovation, then money would be far better spend on innovators than lawyers. A million dollars will get you far more software innovation if you hire developers than if you hire lawyers to sue developers/coders/actual innovators. Every money spent on legal is a money not spent on software.

    My agenda is to allow actual innovators (in the software field) write code for which they won’t later be sued. Code that multiple coders would come up with independently precisely because software isn’t *REALLY* innovative and deserving of patent protection.

  • [Avatar for Anon]
    January 27, 2019 11:51 am

    I’m actually working on systems that are far more complicated involved than the one shown in this patent – and none of it is patented.


    Again, you post as if you just do not understand the subject of patent law.

    NO ONE is forced to attempt to obtain a patent – no matter how simple (elegant) or how complex (inelegant or not capable of elegance) an item may be.

    If, as you say, several competitors are coming up with the same answer (again, no matter how complex an issue being dealt with), then are you REALLY innovating at all?

    You seem to confuse “difficulty” (or perhaps more to the point, since difficulty IS NOT part of what you present, “complexity”) with innovation.

    That is not what innovation pertain to.

    and better results for our collective customers

    An unprovable assertion – and that on top of the likelihood that you are not even innovating to begin with.

    My agenda is to protect innovation and to strengthen innovation protection systems. Indeed, that MAY be the opposite of your agenda.

    My agenda is informed from a life-long admiration of innovation spanning careers in three different modes (engineer, manager, attorney) and reaches throughout the various degrees that have enabled these career paths.

    I am avoiding NO question – leastwise no cogent or material question. Please stop projecting an answer that you WANT to have and listen to the answer that you DO have.

  • [Avatar for LazyCubicleMonkey]
    January 27, 2019 09:04 am

    I’m actually working on systems that are far more complicated involved than the one shown in this patent – and none of it is patented. In fact, several other companies in my sector have independently come up with a similar solution. And yet, here we are with no patent, more competition, and better results for our collective customers.

    I may have an agenda (as do you – it’s just the opposite of mine) but you’re still avoiding the question. That’s not an honest debate – that’s just weaseling out of questions you don’t want to be forced to answer because you don’t like the result.

  • [Avatar for Anon]
    January 26, 2019 09:58 am

    Your questions are solely based in hindsight analysis. You are wrong from the get-go because of the way that you are looking at things.

    And even if this particular patent is one that is invalid because the claimed advance would fail to meet 102/103, you STILL miss the point of the danger of hindsight view in regards to what the patent system is for.

    Sorry LCM, but you have an agenda and post only to advance that agenda. Your past attempts to actually engage in conversations are no longer being attempted, and your posts will be met with the shorter “you are wrong” because you ARE wrong, and have stopped trying to actually learn from the exchanges.

  • [Avatar for LazyCubicleMonkey]
    January 25, 2019 09:41 pm

    After reading that patent application, there’s really nothing novel in there from a software developer perspective. Give any half-decent coder the business requirement outlined in that patent, and you get the results found in the patent. But continue believing that the patent in question comes up with something novel. And it does. But only from the perspective of a non-coder.

    If you really believe it’s something that’s non-obvious, than what % of decent coders do you think would come up with a functionality equivalent solution given the requirements? Would you place a wager on that?

    And yet, you somehow think this patent is still a benefit to productivity/society? Why?

    (P.S. Instead of saying how wrong I am and how I don’t understand anything, why not try answering my questions?)

  • [Avatar for Anon]
    January 24, 2019 08:48 am


    You appear to be engaging in the very worst of hindsight reconstruction.

    ..and you bring your drum of Kool-Aid with you (the potential legal hindrance angle).

  • [Avatar for LazyCubicleMonkey]
    January 23, 2019 11:57 pm

    Reading the first patent application, there’s nothing special that any semi-decent developer c/wouldn’t have come up with, if given the requirements of the patent (result of the patent?).

    So how would such a patent benefit society? All I see is a potential legal hindrance that would drag down productivity by money going to lawyers instead of the core business.

  • [Avatar for Anon]
    January 19, 2019 02:31 pm



  • [Avatar for Mike]
    January 19, 2019 12:42 pm


    Hence the need for Congress to create something “more reliable” than USPTO-issued guidance that will bind the courts.

  • [Avatar for Night Writer]
    Night Writer
    January 19, 2019 11:22 am

    Lourie needs to retire. Taranto is a judicial activist anti-patent zealot. He has many opinions that are nakedly anti-patent.

  • [Avatar for Anon]
    January 18, 2019 09:11 am

    Who wants to point out that these claims pass the new Executive branch dictates as to how to examine for patent eligibility?

    Can you say “generates no reliance”…?

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