Federal Circuit Summaries

Before Moore, Reyna, and Taranto. Appeal from the District Court for the Middle District of Florida.

Summary: Allegations in the complaint about how the claimed invention solved problems in the prior art can present factual disputes sufficient to survive a Rule 12(b)(6) motion under §101.

Aatrix sued Green Shades for infringement of two patents directed to systems and methods for designing, creating, and importing data into a viewable form on a computer. Green Shades moved to dismiss under § 101. The district court granted the motion and denied leave to file a proposed amended complaint. Aatrix appealed to the Federal Circuit.

The Federal Circuit held that the allegations in the proposed amended complaint raised factual disputes sufficient to survive a motion to dismiss based on Alice/Mayo. The Alice/Mayo test involves subsidiary fact questions, including whether the claimed elements were well-understood, routine, or conventional. Here, Aatrix’s proposed amended complaint contained allegations describing the development of the patented invention, problems present in the prior art, and how the patented invention solved those problems. The Federal Circuit remanded because those allegations presented a factual issue that cannot be resolved on a motion to dismiss.

Judge Reyna concurred with the majority’s disposition, but dissented from much of the majority’s analysis. Judge Reyna argued that the majority’s analysis put too much emphasis on subsidiary factual questions underlying the legal § 101 question. Judge Reyna also argued the Federal Circuit should have remanded without discussing, in the first instance, whether the proposed amended complaint was sufficient under Rule 12(b)(6) to survive a § 101 challenge.