Court Need Not Consider Expert Evidence in Deciding § 101 Challenge at the Pleading Stage

The court overruled plaintiff's objection to the magistrate judge's recommendation to grant defendant's motion to dismiss for lack of patentable subject matter and rejected plaintiff's argument that the magistrate should have converted the motion to one of summary judgment. "Plaintiff objects to the fact that the Magistrate Judge declined to consider the declarations of [its expert], which Plaintiff submitted along with its responsive briefing. Plaintiff maintains the Magistrate Judge 'assumed facts outside the pleadings' about the capabilities of the claimed devices that are 'in stark contrast' to [the expert's] declarations, for example by 'reaching the conclusion that the claimed invention amounts to "two computers communicating over a network."' . . . The Magistrate Judge’s finding here is not only fully supported by the plain language of the [patent-in-suit’s] claims, but also wholly consistent with Plaintiff’s own description of the claimed invention. . . . A court ordinarily does not look beyond the pleadings in ruling on a 12(b)(6) motion. In particular, when patent claims on their face are plainly directed to an abstract idea, a court may properly assess patent-eligibility under §101 at the pleading stage."

Rothschild Location Technologies LLC v. Geotab USA, Inc., 6-15-cv-00682 (TXED May 16, 2016, Order) (Schroeder, J.)