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Michael J. Barresi and Michael A. Siem Delve into Expert Declaration in IPWatchdog


Michael J. Barresi and Michael A. Siem Delve into Expert Declaration in IPWatchdog

July 28, 2023

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.”


The Intellectual Property practice group protects the ideas, innovations, inventions, imagery, and creative compositions that propel successful business ventures and create strong brands.

Led by a highly experienced U.S. patent attorney, our intellectual property team draws from a broad range of Goldberg Segalla’s litigation and transactional practices, resulting in collective experience solving IP problems that involve a vast array of academic disciplines, cutting-edge innovations, and industry sectors. The GS IP team blends its members’ real-world work in scientific and high-tech disciplines with exceptional business acumen and deep experience handling patents, trade secrets, copyrights, trademarks, and other IP matters. The result is a tech-savvy and efficient team dedicated to helping clients develop practical business strategies that maximize the return on their investments and innovations.

READ THE FULL ARTICLE: Expert Declaration Opposing Section 101 Motion to Dismiss for Patent Invalidity Deemed Not a Written Instrument,” IPWatchdog, July 23, 2023