{"id":104627,"date":"2019-01-18T06:15:58","date_gmt":"2019-01-18T11:15:58","guid":{"rendered":"https:\/\/ipwatchdog.com\/?p=104627"},"modified":"2019-01-15T16:36:54","modified_gmt":"2019-01-15T21:36:54","slug":"conclusory-legal-opinions-patentees-expert","status":"publish","type":"post","link":"https:\/\/ipwatchdog.com\/2019\/01\/18\/conclusory-legal-opinions-patentees-expert\/id=104627\/","title":{"rendered":"Conclusory Legal Opinions of Patentee’s Expert Not Enough to Prevent 12(b)(6) Dismissal"},"content":{"rendered":"
<\/a>Several weeks ago, the Court of Appeals for the Federal Circuit issued a nonprecedential decision in <\/span>Glasswall Solutions Limited v. Clearswift Ltd.<\/span><\/i><\/a>, affirming a district court\u2019s 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. \u00a7 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 <\/span>Alice\/Mayo<\/span><\/i> framework, and that dismissal of the case under Federal Rule of Civil Procedure 12(b)(6) was appropriate.<\/span><\/p>\n The two patents-at-issue in this case are:<\/span><\/p>\n The district court had found that all asserted claims of the \u2018283 and \u2018045 patents were directed to the filtering of electronic data and files and the Federal Circuit agreed with the district court\u2019s conclusion that such filtering represented an abstract concept. <\/span><\/p>\n 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<\/a>, <\/em>882 F.3d 1121 (2018), a dismissal is still achievable. Here the Federal Circuit distinguished Aatrix. <\/em>In Aatrix<\/i>, 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<\/i>, the Federal Circuit found that testimony offered by an expert witness for Glasswall didn\u2019t preclude a dismissal on the pleadings as the alleged factual assertions in that testimony weren\u2019t actually factual in nature but, rather, were conclusory legal arguments the district court wasn\u2019t bound to accept as true.<\/p>\n \u201cThe claims at issue in both patents do not purport to claim <\/span>how<\/span><\/i> the invention receives an electronic file, <\/span>how<\/span><\/i> it determines the file type, <\/span>how<\/span><\/i> it determines allowable content,\u201d Judge Linn\u2019s opinion reads. \u201cInstead, the claims are framed in wholly functional terms, with no indication that any of these steps are implemented in anything but a conventional way.\u201d<\/span><\/p>\n The panel found the claims in this case to be similar to those found invalid in the Federal Circuit\u2019s 2016 decision in <\/span>Intellectual Ventures I LLC v. Symantec Corp<\/span><\/i>.<\/span><\/i><\/a>,\u00a0838 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. \u201cThe claims in this case do no more,\u201d Judge Linn wrote, finding that the invalidated claims in the present case only required the conventional manipulation of information by a computer. <\/span><\/p>\nFacts Not Conclusions<\/h2>\n
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Abstract Idea Without Significantly More<\/h2>\n