“Plaintiffs opposing a Section 101 Motion to Dismiss should … incorporate an expert’s findings into their complaints, pled as factual allegations. While this may lead to voluminous complaints, the alternative … risks a court striking the annexed declaration.”
Patent eligibility challenges under 35 U.S.C. § 101 have been effective tools at the pleading stage for parties defending allegations of patent infringement. Defendants often attempt to avoid the costs of litigation by filing a motion to dismiss under Federal Rule of Civil Procedure (“FRCP”) 12(b)(6), seeking to invalidate the asserted patent(s) on the grounds that the claims are directed to ineligible subject matter — such as an “abstract idea.” Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208 (2014).
Previously, a key tactic for plaintiffs to overcome such “Section 101 motions” was by amending the complaint and annexing an expert declaration. The expert declaration would bolster the plaintiff’s position by analyzing patent eligibility issues such as the state-of-art at the time of the patent filing, problems therewith, and the advantages provided by the claimed invention. Recently, however, this strategy has been called into question due to a recent decision in Marble VOIP Partners LLC v. Zoom Video Communications, Inc., 2-22-cv-02247 (DKS Apr. 24, 2023) (Julie A. Robinson) ( “Marble v. Zoom”).
The Marble v. Zoom Decision
In Marble v. Zoom, plaintiff, Marble VoIP Partners LLC, filed a lawsuit against Zoom Video Communications alleging infringement of United States Patent No. 7,376,129 entitled “Enabling Collaborative Applications Using Session Initiation Protocol (SIP) based Voice over Internet Protocol Networks (VOIP)” (“the ’129 Patent”).
Defendant Zoom filed a 12(b)(6) Motion to Dismiss on the grounds that the claims of the ’129 Patent were invalid for claiming ineligible subject matter under 35 U.S.C. § 101. Judge Robinson of the District Court of Kansas denied the motion, finding plausible factual allegations that the claims of the ’129 Patent were not directed to an abstract idea. However, in reaching this decision, the court specifically declined to consider the expert declaration submitted by plaintiff in opposition. Specifically, the court held that the declaration was not a “written instrument” under FRCP 10(c) and, therefore, it would be improper to consider such a document in deciding the motion to dismiss:
“?While the analysis in this case requires consideration of some highly technical concepts, the Federal Circuit has recognized that ‘patent eligibility can be determined at the Rule 12(b)(6) stage without the aid of expert testimony.’ . . . Nor does the . . . Declaration qualify as the sort of material a court would be permitted to consider when ruling on a Rule 12(b)(6) motion to dismiss. While the Tenth Circuit has not specifically addressed this issue, other Circuit Courts of Appeal and district courts in this Circuit have held that an expert declaration is not a ‘written instrument’ within the meaning of Rule 10(c). The Court finds these holdings to be persuasive[.]?” Marble VOIP Partners LLC v. Zoom Video Communications, Inc., 2-22-cv-02247 (DKS Apr. 24, 2023) (Julie A. Robinson)
Rule 10(c), entitled, “Form of Pleadings” states that “[a] copy of a written instrument that is an exhibit to a pleading is part of the pleading for all purposes.” FRCP 10(c). The presiding case law has interpreted a “written instrument” to mean a document that “evidences legal rights” or “sets forth the legal basis for a plaintiff’s claims.” See e.g. Smith v. Hogan, 794 F.3d 249, 254 (2nd Cir. 2015). For instance, courts have found documents such as contracts, notes, and other writings on which a party’s action or defense is based to be qualified as a “written instrument.” Murphy v. Cadillac Rubber & Plastics, Inc., 946 F. Supp. 1108, 1115 (W.D.N.Y. 1996). On the other hand, photographs of an accident scene or affidavits annexed to negligence complaints have been deemed improper “written instruments,” largely because they are unnecessary since allegations within a complaint are already presumed true. See, Allen v. Wal-Mart Stores, Inc., No. 19-cv-03594, 2020 WL 3000957, at *2 (D. Colo. June 3, 2020).
Other Courts on 10(c)
Until Judge Robinson’s recent decision in the Marble v. Zoom case, just one (1) other federal district court case had specifically addressed Rule 10(c) in the patent context. In Univ. of Fla. Rsch. Found., Inc. v. Gen. Elec. Co., No. 17CV171, 2017 WL5502940 (N.D. Fla. Nov. 6, 2017), the Florida district court considered the expert declarations attached to the patent infringement complaint “to the extent that the declarations…are not conclusory.” Id. Although the Marble v. Zoom court found the Univ. of Fla. Rsch Found, Inc. case to be unpersuasive, that case nevertheless found, under Eleventh Circuit law, that the supporting affidavits discussing patent eligibility were properly considered at the motion to dismiss stage under Rule 10(c).
The Marble v. Zoom decision raises interesting issues for plaintiffs hoping to ward off Section 101 Motions to Dismiss. Patent matters are uniquely technical; the Section 101 inquiry at the pleadings stage requires the court to analyze the claims as one of ordinary skill in the art before any expert discovery is conducted. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). Presumably, courts would benefit from an expert declaration at the pleadings stage discussing the state of the art, problems, and innovations – i.e., the factual underpinnings used to decide the ultimate legal question of patent eligibility. However, as is often the case, it appears that whether an expert declaration will be deemed a “written instrument” will depend on the jurisdiction of the action. Indeed, the Second, Third, Fifth, Sixth and Ninth Circuits have all found, on varying facts, that documents such as affidavits, photographs and other supporting materials are inappropriate exhibits to a pleading. See, e.g., Smith v. Hogan, 794 F.3d 249, 254 (2nd Cir. 2015); Rose v. Bartle, 871 F.2d 331, 339 n.3 (3rd Cir.1989); Fin. Acquisition Partners LP v. Blackwell, 440 F.3d 278, 286 (5th Cir. 2006); Benzon v. Morgan Stanley Distributors, Inc., No. 03-cv-0159, 2004 WL 62747, at *2–3 (M.D. Tenn. Jan. 8, 2004), aff’d, 420 F.3d 598 (6th Cir. 2005); Stuart v. Cadbury Adams USA, LLC, No. 09-cv-6295, 2010 WL 1407303, at *4 (C.D. Cal. Apr. 5, 2010), aff’d, 458 F. App’x 689 (9th Cir. 2011). While the Tenth Circuit, of which the District of Kansas is a part, has not yet specifically addressed this issue, the Marble v. Zoom case will certainly be persuasive case law in that jurisdiction, should the issue arise again.
Minimize the Risk
In the remaining Circuits, whether the court may properly consider an expert declaration at the pleading stage remains unclear. Plaintiffs seeking to maximize the likelihood that a district court will consider an attached declaration as part of the pleading should set forth only the factual underpinnings upon which patent eligibility will be based and avoid conclusory assertions or opinions of law in the declaration.
Ultimately, to avoid potential 10(c) issues in any federal court, plaintiffs opposing a Section 101 Motion to Dismiss should simply incorporate an expert’s findings into their complaints, pled as factual allegations. While this may lead to voluminous complaints, the alternative, as in the Marble v. Zoom case, risks a court striking the annexed declaration and considering only what is alleged in the four corners of the complaint.
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