In the recent decision of Miller Mendel, Inc. v. City of Anna, Texas, 2024 U.S. App. LEXIS 17637 (Fed. Cir. July 18, 2024), the Federal Circuit upheld the district court’s grant of a motion for judgment on the pleadings under 35 U.S.C. § 101.  This case provides interesting insights into the evidence that may be considered in evaluating the eligibility of software-based patent claims at the Rule 12 stage under the Alice/Mayo framework.

Miller Mendel sued the City of Anna for infringing U.S. Patent No. 10,043,188, relating to a software system designed for managing pre-employment background investigations.  The district court granted the City of Anna’s Rule 12(c) motion to dismiss, concluding that the asserted claims did not recite patent-eligible subject matter under §101.

On appeal, the Federal Circuit first considered whether the district court erred in relying upon portions of the motion that in turn relied upon a declaration submitted by City of Anna in support of the motion.  The Federal Circuit held that the district court referred to the declaration’s summary of the parties’ arguments and that the district court did not rely on the declaration for its §101 analysis:

Although the declaration here is outside the pleadings, the district court explained that the declaration was not relevant to its analysis because it neither relied on it for its § 101 analysis nor would it have altered its conclusions.  Specifically, the district court only referred to the section of City’s brief that cited a declaration attached to the Rule 12(c) motion in summarizing the parties’ arguments.  Id. at *5.

The Federal Circuit therefore concluded that any reliance on the declaration, which was evidence outside the pleadings, was harmless error:

Moreover, even if the district court erred by not explicitly excluding the declaration, any such error is harmless because the district court also explained that it would have “reach[ed] the same conclusions and result, both when it does and when it does not consider the declarations or exhibits attached to the City’s motion.” …  The Fifth Circuit has held that error in considering evidence outside of the pleadings is harmless when “[a]ccepting the facts as pled, all claims still fail” (citations omitted). Id.

Miller Mendel illustrates a growing trend of patent challengers submitting declarations in support of Rule 12(c) motions.  See, e.g., VoIP-Pal.com, Inc. v. Huawei Techs. Co., 2024 U.S. Dist. LEXIS 78355, at *6-8 (N.D. Tex. Apr. 30, 2024).  Although the Federal Circuit deemed the district court’s consideration of the declaration in Miller Mendel harmless error, questions remain as to when extrinsic facts introduced in support of Rule 12 ineligibility challenges cross the line.

With respect to ineligibility, the Federal Circuit relied extensively on the specification of the ’188 patent in finding that the claims failed to recite patent-eligible subject matter under the Alice/Mayo two-step test.  Under step one, the Federal Circuit considered whether the claims focused on a specific asserted improvement in computer capabilities or, instead, on an abstract idea for which computers are invoked merely as a tool.  Miller Mendel, 2024 U.S. App. LEXIS 17637 at *9.  The Federal Circuit determined that the claims were directed to the abstract idea of performing a background check.  Id.  The Federal Circuit then examined the specification and concluded that the specification confirmed that the invention automated the majority of the tasks of a common preemployment investigation and that the problem facing the inventor was the abstract idea of performing background investigations more efficiently and effectively, not an improvement to computer technology.  Id. at *10-*11.

Under step two, the Federal Circuit concluded that the asserted claims called for a computing device with a processor and a system memory where none of the limitations recited in the claims required anything other than a conventional computer and network components operating according to their ordinary function.  Id. at *13.  The Federal Circuit then moved beyond the claim language finding supporting specification passages: (1) that describe the steps may be performed in any random order and the claimed process is not defined by the illustrative order disclosed in the specification; (2) that describe no more than “already available computers” performing “already available basic functions” such as a computing device, processors, system memory, and computer storage media; and (3) that describe the invention as “automat[ing] the majority of the tasks of common pre-employment background investigation.”  Id. at *13-*15.

The Federal Circuit’s fairly straight forward eligibility analysis highlights the importance of the intrinsic record in the analysis at the Rule 12 stage.  Although the Federal Circuit did not fault the district court for not excluding the patent challenger’s extrinsic evidence, it will be interesting to see if after Miller Mendel whether the Federal Circuit maintains a strict adherence to intrinsic evidence in its Rule 12 eligibility determinations.