Hawk Technology Systems, LLC v. Castle Retail, LLC ( 2023 )

Case: 22-1222 Document: 30 Page: 1 Filed: 02/17/2023
United States Court of Appeals
for the Federal Circuit
______________________
HAWK TECHNOLOGY SYSTEMS, LLC,
Plaintiff-Appellant
v.
CASTLE RETAIL, LLC,
Defendant-Appellee
______________________
2022-1222
______________________
Appeal from the United States District Court for the
Western District of Tennessee in No. 2:20-cv-02766-JPM-
tmp, Chief Judge Jon P. McCalla.
______________________
Decided: February 17, 2023
______________________
F. CHRISTOPHER AUSTIN, Weide & Miller, Ltd., Las Ve-
gas, NV, for plaintiff-appellant.
JUSTIN JAMES HASFORD, Finnegan, Henderson,
Farabow, Garrett & Dunner, LLP, Washington, DC, for de-
fendant-appellee. Also represented by STEFAN OCHIANA;
ROBERT MARK FIELD, Evans Petree PC, Memphis, TN.
______________________
Before REYNA, HUGHES, and CUNNINGHAM, Circuit Judges.
REYNA, Circuit Judge.
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2 HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC
Appellant Hawk Technology Systems, LLC sued Appel-
lee Castle Retail, LLC in the Western District of Tennessee
for patent infringement based on Castle Retail’s use of se-
curity surveillance video operations in its grocery stores.
Castle Retail moved to dismiss under Federal Rule of Civil
Procedure 12(b)(6) for failure to state a claim. It argued
that the asserted patent claims were directed to ineligible
subject matter and therefore invalid under 35 U.S.C. § 101.
The district court granted the motion. It found that the
patent claims were directed to the abstract idea of storing
and displaying video and failed to provide an inventive step
that transformed that abstract idea into a patent-eligible
invention. The district court entered judgment dismissing
Hawk’s case.
Hawk appeals. For the reasons below, we affirm.
BACKGROUND
A. Technical Background
Hawk is the owner of U.S. Patent No. 10,499,091 (the
“’091 patent”). The ’091 patent is titled “high-quality, re-
duced data rate streaming video product and monitoring
system.” ’091 patent, at [54]. The underlying patent appli-
cation was filed on June 5, 2017, and issued as the ’091 pa-
tent on December 3, 2019, claiming priority back to
September 17, 2002. Id. The ’091 patent relates to a
method of viewing multiple simultaneously displayed and
stored video images on a remote viewing device of a video
surveillance system. Id. at 8:31–33. Figure 3 of the patent
shows a video surveillance system “in accordance with the
invention” that has multiple cameras 302, broadband con-
nection 310, a server 312, and a monitor control system
314:
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HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC 3
Id. at 3:1–3, 5:26–38. The patent explains that, in this con-
figuration, the signals from the cameras are transmitted as
streaming sources at relatively low data rates and variable
frame rates via a broadband connection. Id. at 5:28–50.
This, it says, results in reduced costs to the user, lower
memory storage requirements, and the ability to handle a
larger monitoring application (due to bandwidth effi-
ciency). Id. This configuration, the patent notes, uses “ex-
isting broadband infrastructures” and a “generic PC-based
server.” Id. at 5:39–45.
The ’091 patent concludes with six claims. 1 Claim 1
recites:
1 Because Hawk does not meaningfully argue that
there is any distinctive significance between the six claims
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4 HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC
1. A method of viewing, on a remote viewing device
of a video surveillance system, multiple
simultaneously displayed and stored video images,
comprising the steps of:
receiving video images at a personal
computer based system from a plurality of
video sources, wherein each of the plurality
of video sources comprises a camera of the
video surveillance system;
digitizing any of the images not already in
digital form using an analog-to-digital
converter;
displaying one or more of the digitized
images in separate windows on a personal
computer based display device, using a first
set of temporal and spatial parameters
associated with each image in each
window;
converting one or more of the video source
images into a selected video format in a
particular resolution, using a second set of
temporal and spatial parameters
associated with each image;
contemporaneously storing at least a
subset of the converted images in a storage
device in a network environment;
for eligibility purposes, we treat claim 1 as representative
and refer generally to the ’091 patent “claims.” See Berk-
heimer v. HP Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018)
(claims may be treated as “representative” if a patentee
makes no “meaningful argument for the distinctive signif-
icance of any claim limitations not found in the representa-
tive claim”).
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HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC 5
providing a communications link to allow
an external viewing device to access the
storage device;
receiving, from a remote viewing device
remoted located remotely from the video
surveillance system, a request to receive
one or more specific streams of the video
images;
transmitting, either directly from one or
more of the plurality of video sources or
from the storage device over the
communication link to the remote viewing
device, and in the selected video format in
the particular resolution, the selected video
format being a progressive video format
which has a frame rate of less than
substantially 24 frames per second using a
third set of temporal and spatial
parameters associated with each image, a
version or versions of one or more of the
video images to the remote viewing device,
wherein the communication link traverses
an external broadband connection between
the remote computing device and the
network environment; and
displaying only the one or more requested
specific streams of the video images on the
remote computing device.
Id. at claim 1.
B. Castle Retail’s Rule 12(b)(6) Motion to Dismiss
In October 2020, Hawk sued Castle Retail for infring-
ing the ’091 patent based on the security surveillance video
operations used by Castle Retail in its grocery stores. J.A.
269–276; J.A. 275 ¶ 23. Hawk alleged that “[t]he ’091 Pa-
tent provides solutions for the problem of more and more
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6 HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC
users demanding higher and higher quality video content
for viewing, creating, and editing (which requires addi-
tional data) while the physical infrastructure for data-
transmission remains as it has been for decades.” J.A. 274
¶ 17. According to the complaint, the ’091 patent claims
“teach methods for generating, transmitting, receiving,
and viewing high-quality video[—]including on a remote
device such as a smart phone[—]with the innovation of sig-
nificantly reducing the data-transmission burden.” Id.
¶ 18.
In December 2020, Castle Retail moved to dismiss un-
der Rule 12(b)(6) based on its assertion that the ’091 patent
was invalid under 35 U.S.C. § 101. J.A. 314–338. It argued
that the ’091 patent claims failed the two-step analysis set
forth in Alice Corp. v. CLS Bank International, 573 U.S.
208 (2014). J.A. 318. The claims, it asserted, failed Alice
step one because they are directed to the “abstract concept”
of “collecting, manipulating, displaying, and storing infor-
mation,” J.A. 326, and failed Alice step two because they
provide “conventional components” that “provide no in-
ventive concept,” J.A. 328–329. Castle Retail attached to
its motion “independent evidence” (the “Palmer” and
“Washino” references) that “confirms that the steps in the
’091 patent claims merely involve ‘well-understood, rou-
tine, conventional activity.’” J.A. 332–337 (citation omit-
ted).
Hawk opposed the motion to dismiss in February 2021.
J.A. 436–456. It argued that Castle Retail was “prema-
turely seek[ing] to dispose of the case when material facts
are in dispute” and that no claim terms had been con-
strued. J.A. 436. And it contended that the ’091 patent
claims passed both Alice steps. J.A. 439–448. As for Castle
Retail’s reliance on Palmer and Washino, Hawk asserted
that it was “both premature and substantively improper at
the motion to dismiss stage and is actually not relevant (be-
ing instead highly confusing and misleading) for Section
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HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC 7
101 analysis.” J.A. 450–451. Castle Retail replied on
March 2, 2021. J.A. 459–470.
On March 10, 2021, the district court held what it
called a “technology briefing and Patent Scheduling Con-
ference” (“technical briefing”). J.A. 30 (Dkt. 36), 472–550.
According to the district court, it conducts a technical brief-
ing “in each patent case typically.” J.A. 474. Attorneys for
both parties and Castle Retail’s CEO, Rick James, at-
tended the technical briefing. J.A. 30 (Dkt. 36). There,
Hawk “gave an overview of patent technology as related to
’091 Patent technology”; Castle Retail “presented sche-
matic outline of ’091 Patent technology with timeline of de-
velopment of related technologies and with limitations of
patent application”; and “[s]tatements [were] heard as to
abstraction and Alice two-step analysis.” Id. The district
court also explained at the technical briefing that it had the
Palmer and Washino references “that were filed . . . in sup-
port of the memorandum in connection with the motion un-
der 12(b)(6),” and that it had “looked through those.” J.A.
477. Castle Retail’s counsel also discussed at the technical
briefing other references—including “Hendricks” and “Al-
len”—and referenced them in its schematic PowerPoint
outline. J.A. 492–497; J.A. 551–573.
Hawk states that it “sought and was granted an oppor-
tunity by the trial court to provide its own written technical
report to further describe the patented invention at issue”
and that it did so on March 18, 2021. Appellant’s Br. 7
(citing J.A. 574–583). This 10-page document is described
as a “declaration” from one of the ’091 patent’s named in-
ventors, Barry H. Schwab. J.A. 574–583.
C. The District Court’s Decision
On September 15, 2021, the district court granted Cas-
tle Retail’s motion to dismiss. Hawk Tech. Sys., LLC v.
Castle Retail, LLC, No. 2:20-cv-02766-JPM-tmp, 2021 WL
5832793, at *1 (W.D. Tenn. Sept. 15, 2021) (Decision). It
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8 HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC
found that the ’091 patent claims failed the two-part Alice
test. Id. at *6.
As for Alice step one, the district court explained that
the ’091 patent “essentially discloses a method of display-
ing and storing digital video taken from multiple cameras.”
Id. at *1. It noted that Hawk contended that the patent
provides a solution that allows for “conserving bandwidth
while preserving quality” and that the claims implement
that solution. Id. at *4. It found, though, that “even using
Hawk’s description of the limitations, it is not clear how the
claims do more than take video surveillance and digitize it
for display and storage in a conventional computer sys-
tem.” Id. And it explained that surveillance monitoring
“has been a part of business practices since video cameras
have been available.” Id.It also explained that, although Hawk identified the
“temporal and spatial parameters” as the inventive concept
and argued that “converting the data using” those “param-
eters” changes the nature of the data, neither the claims
nor the specification “explain what those parameters are or
how they should be manipulated.” Id. And any manipula-
tion, it continued, “without additional concrete guidance
would be a claim directed to an abstract idea.” Id. The
court thus found that the ’091 patent is directed to an ab-
stract idea: “a method for storing and displaying video.” Id.
at *3 (heading) (capitalization altered). And it rejected
Hawk’s contention that claim construction issues pre-
vented that finding, as Hawk had neither identified any
such issues nor shown how claim construction would ren-
der the claims non-abstract. Id.As for Alice step two, the district court explained that
the claimed “analog-to-digital converter” and “personal
computer based system” “are not technological improve-
ments but rather generic computer elements” and that the
“parameters and frame rate, considering how they are de-
fined in the claims and specification, similarly, do not
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HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC 9
appear to be more than manipulating data (in this case,
images) in such a way that has been found to be abstract.”
Id. at *5. It also found that the claims, “read in light of the
specification, do not show a technological improvement in
video storage and display because the limitations can be
implemented using generic computer elements,” and the
“specification and claims do not explain or show how the
monitoring and storage is improved, except by using al-
ready existing computer and camera technology.” Id.The district court further rejected what it viewed as
“Hawk’s attempt to create a factual dispute” over what was
routine and conventional, explaining that, because the pa-
tent fails to disclose how to achieve the end result, a skilled
artisan must be able to use routine and conventional meth-
ods to do so. Id. at *6. According to the court, “[n]othing in
the claims, understood in light of the specification, requires
anything other than off-the-shelf, conventional computer,
network, and display technology gathering, sending, and
presenting the desired information.” Id. (quoting Elec.
Power Grp., LLC v. Alstom SA, 830 F.3d 1350, 1355
(Fed. Cir. 2016)).
The district court granted Castle Retail’s motion to dis-
miss and entered judgment against Hawk. J.A. 13. Hawk
appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(1).
DISCUSSION
We review the grant of a Rule 12(b)(6) motion to dis-
miss under the law of the applicable regional circuit—here,
the Sixth Circuit. Universal Secure Registry LLC v. Apple,
Inc., 10 F.4th 1342, 1345–46 (Fed. Cir. 2021). The Sixth
Circuit reviews Rule 12(b)(6) dismissals de novo, “constru-
ing the complaint in the light most favorable to the plain-
tiffs, accepting their well-pleaded factual allegations as
true, and drawing all reasonable inferences in their favor.”
Allied Erecting & Dismantling Co. v. Genesis Equip. &
Mfg., Inc., 805 F.3d 701, 707 (6th Cir. 2015) (citation omit-
ted). “[W]e need not accept as true legal conclusions or
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10 HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC
unwarranted factual inferences.” DirecTV, Inc. v. Treesh,
487 F.3d 471, 476 (6th Cir. 2007) (citation omitted). And
“[c]onclusory allegations or legal conclusions masquerad-
ing as factual allegations will not suffice.” Bishop v. Lucent
Techs., Inc., 520 F.3d 516, 519 (6th Cir. 2008).
Section 101 of the Patent Act states: “Whoever invents
or discovers any new and useful process, machine, manu-
facture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.” 35 U.S.C.
§ 101. But § 101 “contains an important implicit exception:
Laws of nature, natural phenomena, and abstract ideas are
not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014) (citations omitted). The Supreme Court
has articulated a two-step test for examining patent eligi-
bility when a patent claim allegedly involves such patent
ineligible subject matter. Id. at 217–18. Under this “Alice”
test, a claim falls outside § 101 if (1) it is directed to a pa-
tent-ineligible concept like an abstract idea, and (2) it lacks
elements sufficient to transform the claim into a patent-
eligible application. SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1166–67 (Fed. Cir. 2018).
We review § 101 patent eligibility under Federal Cir-
cuit law. Smart Sys. Innovations, LLC v. Chi. Transit
Auth., 873 F.3d 1364, 1367 (Fed. Cir. 2017). Patent eligi-
bility is ultimately a question of law that may be based on
underlying factual findings. Berkheimer v. HP Inc.,
881 F.3d 1360, 1365 (Fed. Cir. 2018). Patent eligibility
may be resolved on a Rule 12(b)(6) motion “where the un-
disputed facts, considered under the standards required by
that Rule, require a holding of ineligibility under the sub-
stantive standards of law.” SAP Am., 898 F.3d at 1166.
A.
The district court found that the ’091 patent claims are
directed to an abstract idea and that they do not include
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HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC 11
inventive concepts that could transform the subject matter
into an eligible application of the abstract idea. We agree.
1. Alice step one
In this case, under Alice step one, we consider whether
the claim is directed to an abstract idea. Among other
things, we examine “what the patent asserts to be the focus
of the claimed advance over the prior art.” Solutran, Inc.
v. Elavon, Inc., 931 F.3d 1161, 1168 (Fed. Cir. 2019)
(cleaned up). In doing so, we focus on the language of the
asserted claims, considered in light of the specification. Yu
v. Apple, 1 F.4th 1040, 1043 (Fed. Cir. 2021).
Here, the district court concluded that the ’091 patent
claims are directed to the abstract idea of “storing and dis-
playing video.” Decision, at *3; see also id. at *5 (“[T]he
’091 Patent is directed to the abstract idea of video storage
and display . . . .”). We agree.
The claims are directed to a method of receiving, dis-
playing, converting, storing, and transmitting digital video
“using result-based functional language.” Two-Way Media
Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1337
(Fed. Cir. 2017). They require the functional results of “re-
ceiving video images,” “digitizing any of the images not al-
ready in digital form,” “displaying one or more of the
digitized images,” “converting one or more of the video
source images into a selected video format,” “storing at
least a subset of the converted images,” “providing a com-
munications link,” “receiving . . . a request to receive one or
more specific streams of the video images,” “transmitting
. . . a version of one or more of the video images,” and “dis-
playing only the one or more requested specific streams of
the video images.” ’091 patent at claim 1.
The claims are similar to those we have found to be di-
rected to abstract ideas. For example, we have held that
“encoding and decoding image data and . . . converting for-
mats, including when data is received from one medium
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12 HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC
and sent along through another, are by themselves ab-
stract ideas.” Adaptive Streaming Inc. v. Netflix, Inc., 836
F. App’x 900, 903 (Fed. Cir. 2020) (collecting cases). The
’091 patent claims are directed to those same general ab-
stract ideas—displaying images, converting them into a
format, transmitting them, and so on.
Hawk argues that the ’091 patent claims are directed
not to an abstract idea but to “a solution to a technical prob-
lem, specifically a multi-format digital video product sys-
tem capable of maintaining full-bandwidth resolution
while providing professional quality editing and manipula-
tion of images.” Appellant’s Br. 19–20 (cleaned up). It as-
serts that the technical problem is “conserving bandwidth
while preserving data” and that this solution is a “specific
implementation,” which can be achieved “by performing
special data conversion of the video streams” and by digit-
izing and converting data to “change the nature of the
data.” Id. at 20, 27–28. The claims, Hawk concludes,
therefore are not abstract but are directed to eligible sub-
ject matter. Id. at 28 (citing TecSec, Inc. v. Adobe Inc., 978
F.3d 1278 (Fed. Cir. 2020); Koninklijke KPN N.V. v. Ge-
malto M2M GmbH, 942 F.3d 1143 (Fed. Cir. 2019)).
Hawk’s arguments fail. The analysis at step one “must
focus on” the claim language. ChargePoint, Inc. v. Sema-
Connect, Inc., 920 F.3d 759, 769 (Fed. Cir. 2019) (“Even a
specification full of technical details about a physical in-
vention may nonetheless conclude with claims that claim
nothing more than the broad law or abstract idea underly-
ing the claims.”). Here, the claims themselves do not dis-
close performing any “special data conversion” or otherwise
describe how the alleged goal of “conserving bandwidth
while preserving data” is achieved. Nor, as the district
court found, do the claims (or the specification) explain
“what th[e] [claimed] parameters are or how they should be
manipulated.” Decision, at *4. And again, converting in-
formation from one format to another—including changing
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HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC 13
the format of video data or compressing it—is an abstract
idea. Adaptive Streaming, 836 F. App’x at 903.
Nor are the claims here like those we found eligible in
TecSec and Koninklijke. The claims in TecSec, for example,
provided a specific solution for computer data networks
and required specific features like “accessing an ‘object-ori-
ented key manager’ and specified uses of a ‘label’ as well as
encryption for the access management.” 978 F.3d at
1295–96 (citation omitted). The claims in Koninklijke pro-
vided a specific, concrete solution for catching previously
undetectable systematic errors in data transmission sys-
tems—“by varying the way check data is generated by mod-
ifying the permutation applied to different data blocks.”
942 F.3d at 1151 (citations omitted). In both cases, the
claims “sufficiently capture[d] the inventors’ asserted tech-
nical contribution to the prior art by reciting how the solu-
tion specifically improves the function of prior art.” Id.
The claims here simply do not do that: They fail to re-
cite a specific solution to make the alleged improve-
ment—conserving bandwidth while preserving
quality—“concrete” and at most recite abstract data ma-
nipulation. Id. at 1152. Stated otherwise, the ’091 patent
claims lack “sufficient recitation of how the purported in-
vention improve[s] the functionality” of video surveillance
systems and are “recited at such a level of result-oriented
generality that those claims amount[] to a mere implemen-
tation of an abstract idea.” Id. (citation omitted).
Because the claims of the ’091 patent are directed to an
abstract idea, we proceed to Alice step two to determine if
the claims are transformed into subject matter beyond the
abstract idea itself.
2. Alice step two
At Alice step two, we consider the claim elements—in-
dividually and as an ordered combination—“to assess
whether [they] transform the nature of the claim into a
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14 HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC
patent-eligible application of the abstract idea.” Two-Way
Media, 874 F.3d at 1338 (citation omitted).
The district court found that the claims, “read in light
of the specification, do not show a technological improve-
ment in video storage and display because the limitations
can be implemented using generic computer elements,” and
that the “specification and claims do not explain or show
how the monitoring and storage is improved, except by us-
ing already existing computer and camera technology.” De-
cision, at *5. It thus found that the claims failed Alice step
two. We agree.
Hawk argues that the claims recite an inventive solu-
tion—one “that achieves . . . the benefit of transmitting the
same digital image to different devices for different and
perhaps divergent purposes, while using the same band-
width,” and that “reference[s] specific tools (such as an an-
alog-to-digital converter, where necessary), specific
parameters (such as three different sets of temporal and
spatial parameters), and even specific frame rates (such as
24 frames per second).” Appellant’s Br. 31–32 (citing ’091
patent at claim 1 and claim 6). But even if the claims
achieved this purported solution, they “only use[] generic
functional language to” do so and require nothing “other
than conventional computer and network components op-
erating according to their ordinary functions” (e.g., a “per-
sonal computer,” “storage device,” “external viewing
device,” etc.). Two-Way Media, 874 F.3d at 1339 (citation
omitted).
We recognize that the claims include “parameters.”
But the claims fail to specify precisely what the parameters
are and the parameters at most concern abstract data ma-
nipulation—image formatting and compression. Hawk
does not dispute that the claims recite conventional compo-
nents—a “personal computer,” “video sources,” an “analog-
to-digital converter,” a “storage device,” an “external view-
ing device,” a “communications link,” a “remote viewing
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HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC 15
device,” and a “remote computing device”—to perform the
method. See Appellant’s Br. 46 & n.10 (explaining that the
’091 patent’s solution uses “existing commercial hardware
(computer and camera) devices”); Appellant’s Reply Br. 17
n.8. The ’091 patent itself confirms that the invention is
meant to “utiliz[e] existing broadband media and other con-
ventional technologies.” ’091 patent at 1:64–2:2; see also
id. at 2:15–20, 5:39–45, 7:14–26. Simply stated, “[n]othing
in the claims, understood in light of the specification, re-
quires anything other than off-the-shelf, conventional com-
puter, network, and display technology for gathering,
sending, and presenting the desired information.” Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed.
Cir. 2016).
Nor do we see—nor has Hawk pointed to—anything in-
ventive in the ordered combination of the claim limitations.
Indeed, “merely reciting an abstract idea performed on a
set of generic computer components, as [the claims] do[]
here, would ‘not contain an inventive concept.’” Two-Way
Media, 874 F.3d at 1339 (quoting BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350
(Fed. Cir. 2016)).
We therefore find that the ’091 patent claims fail to
transform the abstract idea into something more and thus
fail Alice step two.
We hold that the ’091 patent is patent ineligible be-
cause its claims are directed to an abstract idea and fail to
transform that abstract idea into patent-eligible subject
matter.
B.
Hawk asserts that the district court erred in its deci-
sion to grant Castle Retail’s motion to dismiss because the
motion was procedurally premature under Rule 12. Appel-
lant’s Br. 6–11. According to Hawk, the district court con-
sidered testimony and evidence—Castle Retail’s cited
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16 HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC
references, Castle Retail’s schematic PowerPoint, Castle
Retail’s CEO’s statements at the technical briefing, and
Hawk’s post-technical briefing report—in deciding the mo-
tion. Id. at 7–9. Hawk contends that under Rule 12(d), the
district court was required to convert the motion to a Rule
56 motion for summary judgment. Id. at 9–10 (relying on
CODA Dev. S.R.O. v. Goodyear Tire & Rubber Co., 916 F.3d
1350 (Fed. Cir. 2019)). Hawk argues that we must reverse
or vacate the district court’s decision so that the parties
may take discovery to fully develop the evidence, including
expert testimony and reports. Id. at 10–11. We disagree.
Because this is a procedural issue not unique to patent
law, we look to the law of the applicable regional circuit—
here, the Sixth Circuit. See Athena Diagnostics, Inc. v.
Mayo Collaborative Servs., LLC, 915 F.3d 743, 755–56
(Fed. Cir. 2019) (applying First Circuit law to determine
whether the district court erred in dismissing under Rule
12(b)(6) when the defendant had included an expert decla-
ration with its opposition). Under Sixth Circuit law, a mo-
tion to dismiss must ordinarily be decided without resort to
matters outside the pleadings. Gavitt v. Born, 835 F.3d
623, 640 (6th Cir. 2016). Under Rule 12(d), if “matters out-
side the pleadings are presented to and not excluded by the
court, the motion must be treated as one for summary judg-
ment under Rule 56.” Fed. R. Civ. P. 12(d) (emphasis
added). “[A] district court’s failure to expressly reject evi-
dence attached to the briefs triggers its duty to treat the
motion as one for summary judgment.” Bates v. Green
Farms Condo. Ass’n, 958 F.3d 470, 484 (6th Cir. 2020).
As explained above, Castle Retail attached the Palmer
and Washino references to its motion and presented and
submitted a schematic PowerPoint that discussed those
and other references. Hawk also alleges that it submitted
a “declaration” or “report” after the technical briefing. Be-
cause matters outside the pleadings were presented to the
district court, under Sixth Circuit law, the district court
should have either (1) expressly rejected those matters or
Case: 22-1222 Document: 30 Page: 17 Filed: 02/17/2023
HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC 17
(2) converted the motion to one for summary judgment and
notified the parties that it planned to convert the motion
and give them a reasonable opportunity to present all the
pertinent material. Bates, 958 F.3d at 484. Here, the court
erred when it did not expressly reject the outside matters
or treat the motion as one for summary judgment under
Rule 56. But we hold that the district court’s error was
harmless.
The Sixth Circuit has “held that the failure to convert
the motion to a motion for summary judgment is not re-
versible error if the court’s ‘rationale’ in no way ‘hinged on
the additional information provided there.’” Id. (quoting
Yeary v. Goodwill Indus.-Knoxville, Inc., 107 F.3d 443, 445
(6th Cir. 1997)). In other words, if the appellate court can
justify the dismissal without reference to any extraneous
matters, it can treat the error as harmless. Id. (citing 5C
CHARLES ALAN WRIGHT ET AL., Fed. Prac. and Proc. § 1364,
at 63 (3d ed. Supp. 2019)).
Our review of the district court’s opinion here indicates
that the district court’s analysis did not hinge on the addi-
tional information provided. Yeary, 107 F.3d at 445; Bates,
958 F.3d at 484. Although the record does not reflect that
the district court expressly rejected these materials, the
district court does not discuss these materials in its deci-
sion. Hawk argues that the district court’s opinion
“draw[s] upon” the technical briefing, pointing out that the
opinion notes that the district court held a technical brief-
ing and references statements that Hawk’s counsel made
at the technical briefing. Appellant’s Br. 9 (citing Decision,
at *2, 4). But Hawk does not establish that the district
court’s decision hinged on any attorney statements that
raise new facts that constitute matter beyond the plead-
ings. Further, that the district court held a technical brief-
ing is simply a procedural fact. To be sure, where a district
court holds a technical briefing, e.g., a technical tutorial,
and no matters outside the pleading are presented, it need
Case: 22-1222 Document: 30 Page: 18 Filed: 02/17/2023
18 HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC
not convert the motion to one for summary judgment under
Rule 56.
Hawk also argues that Castle Retail’s CEO was a wit-
ness at the technical briefing; that his statements at the
technical briefing prompted the district court to discuss
“off-the-shelf components”; and that the district court then
relied on this exchange when it used the phrase “off-the-
shelf” in its decision granting the motion to dismiss. Ap-
pellant’s Br. 8. This misconstrues the record. In using the
phrase “off-the-shelf” in its opinion, the district court was
plainly referencing case law. 2
Hawk does not point to any support in the record to
suggest that the district court in any way hinged its deci-
sion on extraneous materials. Hawk claims support in our
decision in CODA Dev. S.R.O. v. Goodyear Tire & Rubber
Co., 916 F.3d 1350 (Fed. Cir. 2019). But CODA is distin-
guishable from this case. In CODA, the district court had
extensively relied on outside material—an article—in its
analysis supporting its decision to dismiss a complaint for
correction of patent inventorship and trade secret misap-
propriation. 916 F.3d at 1356, 1360 (explaining that “the
bulk of the [district] court’s prior-art analysis rested on the
Hrabal article” and that the court “used the Hrabal article
to ‘determine whether it was a 2008 public disclosure of
something Coda now claims was secret when disclosed to
Goodyear in 2009’”). We find no such reliance in this case.
We also note that the district court here “expressly
stated that it was ruling under 12(b)(6), and its analysis
was based wholly on the legal sufficiency, vel non, of the
plaintiff’s claim.” Yeary, 107 F.3d at 445. And, as shown
above, the dismissal here can be justified without reference
to any extraneous matters. Bates, 958 F.3d at 484. Nor,
2 And as Castle Retail notes, the ’091 patent itself
uses the phrase “off-the-shelf.” ’091 Patent at 4:4.
Case: 22-1222 Document: 30 Page: 19 Filed: 02/17/2023
HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC 19
we observe, does Hawk meaningfully argue that its outside
“report” from the named inventor raises any specific fac-
tual issues. That is unsurprising: Again, the practices of
displaying images, converting them, and transmitting
them, “with nothing more, are practices whose implicit ex-
clusion from § 101 undergirds the information-based cate-
gory of abstract ideas.” FairWarning IP, LLC v. Iatric Sys.,
Inc., 839 F.3d 1089, 1097–98 (Fed. Cir. 2016) (cleaned up)
(rejecting argument that the district court wrongly found
facts outside the pleadings).
Finally, we note that Hawk’s opposition brief never as-
serted that the district court was required to treat the mo-
tion as a motion for summary judgment. See Bates, 958
F.3d at 485. To be sure, Hawk argued that the motion was
“premature,” J.A. 436, and that Castle Retail’s reliance on
the references was “premature and substantively im-
proper,” J.A. 450. But it failed to argue as it now does that
Rule 12(d) applied; it failed to cite the CODA case it now
relies on; and it failed to move the district court to convert
the motion into one for summary judgment under Rule 56
and deny the motion so that Hawk could conduct full dis-
covery. And although Hawk did ask the district court to
“alternative[ly]” “afford . . . Hawk the opportunity to amend
its Complaint,” J.A. 455, Hawk did so in a single conclusory
sentence at the end of its opposition and without explaining
how it proposed amending the complaint and what differ-
ence the amendment would make. The record also does not
show that Hawk ever moved to amend.
In short, we are not persuaded to fault the district court
under these circumstances, and we thus treat its error in
failing to convert the motion to dismiss into a motion for
summary judgment as harmless. See Bates, 958 F.3d at
485.
CONCLUSION
We have considered Hawk’s other arguments but find
them unpersuasive. For the above reasons, we affirm the
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20 HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC
district court’s grant of Castle Retail’s Rule 12(b)(6) motion
to dismiss based on subject-matter ineligibility under
§ 101.
AFFIRMED
COSTS
No costs.