Michael J. Barresi and Michael A. Siem, partners in Goldberg Segalla’s Intellectual Property practice group, analyzed a recent case decision in which use of an annexed expert declaration in ruling on patent eligibility was refused.
“Patent eligibility challenges under 35 U.S.C. § 101 have been effective tools at the pleading stage for parties defending allegations of patent infringement,” the attorneys explained, adding defendants often file a motion to dismiss.
Further, they went on to describe that a main tactic to overcome this “101 motion” has been by amending the complaint to annex an expert declaration which supported patent eligibility for the plaintiff.
However, the article discusses that in the case of Marble VOIP Partners LLC v Zoom Video Communications Inc., it was ruled under Rule 10(c) of the FRCP, that the annexed expert declaration was not a “written instrument.” Therefore, it could not be considered in opposition to a motion to dismiss. This was the first time in a patent litigation context that a court had expressly refused to consider an annexed expert declaration in ruling on patent eligibility.
“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,” they said. “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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READ THE FULL ARTICLE: “Expert Declaration Opposing Section 101 Motion to Dismiss for Patent Invalidity Deemed Not a Written Instrument,” IPWatchdog, July 23, 2023