Rule 12(b)(6) Motion to Dismiss Brief (Section 101) (Computer Technology)

Summary

This template is for a brief in support of a motion to dismiss a patent infringement claim for lack of subject matter eligibility under 35 U.S.C. § 101. The template includes practical guidance and drafting notes. This brief supports a motion to dismiss a patent infringement claim in the field of computer technology under the standard for patent subject matter eligibility set forth by the Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208 (2014). This template assumes that you are moving to dismiss the complaint in its entirety (i.e., that your motion, if granted, would dispose of the entire case). However, you should adapt this template to the factual background and legal arguments in your case. Also, check local rules and your judge's rules to ensure that you comply with all local requirements for briefs, including formatting requirements and restrictions on the length of the brief. Under Fed. R. Civ. P. 12, you may raise the defense of failure to state a claim in a pre-answer motion under Rule 12(b)(6) or, after the close of the pleadings, in a Rule 12(c) motion for judgment on the pleadings. See Motion to Dismiss for Failure to State a Claim: Making the Motion (Federal) for a discussion of the pros and cons of each type of motion. The test under Rule 12(b)(6) is whether, assuming all the well-pleaded facts are true, the patent owner has asserted a plausible claim for relief. Before deciding to seek early dismissal of asserted patent claims under Section 101, research how your judge has ruled on such motions in other patent cases. Some judges are less inclined than others to grant early dismissal on these grounds, particularly if granting the motion would not fully dispose of the case or when there are disputed claim construction issues that could impact the court's subject matter eligibility analysis. In considering whether to file a motion under Rule 12(b)(6) or Rule 12(c) challenging subject matter eligibility, note that, as illustrated in the chart below, in cases terminating in 2023, subject matter ineligibility was the most frequent reason for invalidating a patent, most often by judgment on the pleadings. Patent Invalidity Reasons in Federal District Court Cases Terminating in 2024 Source: Lex Machina® (current as of 2/22/2025). For more information on Lex Machina and to sign up for a live demo, click here. Before deciding to point out the deficiencies of the asserted patent claims in a Rule 12(b)(6) motion, consider whether the patent owner may try to correct the deficiencies in an amended complaint by supplementing its allegations to explain the asserted patent claims in more detail. Courts will usually allow a patent owner at least one opportunity to amend its complaint in response to a motion to dismiss. To defend a motion to dismiss for lack of patent-eligible subject matter, the patent owner may, for example, seek to supplement the complaint to explain why the asserted patent claims are not directed to an abstract idea or why certain claim limitations amount to more than well-understood, routine, conventional activity in the field. For a template that you may use to draft your motion and notice of motion, see Motion and Notice of Motion for a Rule 12(b)(6) Motion to Dismiss (Section 101). For a proposed order to file with your motion, see Proposed Order Granting a Rule 12(b)(6) Motion to Dismiss (Section 101). For statements of law on subject matter eligibility that you may use in your brief, see Patent-Eligible Subject Matter (Section 101) Statements of Law. For an extensive discussion of the law regarding patent-eligible subject matter, see Chisum on Patents CHAPTER 1.syn.