On November 20, 2018, Chief Judge Lynn entered an Order in Electro Scientific Industries v. Fossil Group (available here) deferring consideration of Defendants’ motion to dismiss the complaint for failure to state a claim under Rule 12(b)(6) until after claim construction. Defendants had sought dismissal under Rule 12(b)(6) based on the argument that the patents-in-suit failed to claim patentable subject matter under 35 U.S.C. § 101 (i.e., lodged an Alice challenge). The Court stated:
Whether a claim recites patent eligible subject matter is a question of law which may contain disputes over underlying facts.” Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). The Federal Circuit has cautioned that dismissal for lack of patentable subject matter at the pleading stage should be “the exception, not the rule.” Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1339 (Fed. Cir. 2013) (explaining that dismissal under Rule 12(b)(6) for lack of patentable subject matter is warranted when “the only plausible reading of the patent must be that there is clear and convincing evidence of ineligibility.”).
After reviewing the pleadings and parties’ arguments, the Court denied the motion to dismiss without prejudice to Defendants re-asserting their arguments following claim construction.
On November 29, 2018, Chief Judge Lynn entered a nearly identical Order (available here) in Secure Cam v. Revo America Corporation. And, on February 25, 2019, Chief Judge Lynn issued another Order (in Magnacross v. A.P.B. International, available here) denying an Alice Rule 12(b)(6) motion without prejudice to the defendant arguing after claim construction that the patent is not directed to patent-eligible subject matter.
(Judge Kinkeade also recently issued a similar opinion (available here) in Lennon Image Technologies v. Mary Kay.)