Miller Mendel, Inc. v. City of Anna, Texas

United States Court of Appeals
for the Federal Circuit
______________________
MILLER MENDEL, INC.,
Plaintiff-Appellant
v.
CITY OF ANNA, TEXAS,
Defendant-Cross-Appellant
______________________
2022-1753, 2022-1999
______________________
Appeals from the United States District Court for the
Eastern District of Texas in No. 2:21-cv-00445-JRG, Chief
Judge J. Rodney Gilstrap.
______________________
Decided: July 18, 2024
______________________
K URT M. RYLANDER, Rylander & Associates, PC, Van-
couver, WA, argued for plaintiff-appellant.
EVAN W. T ALLEY , Ryan Whaley, PLLC, OK, argued for
defendant-cross-appellant. Also represented by D OUGLAS
SOROCCO, Dunlap Codding, PC, Oklahoma City, OK.
______________________
Before M OORE, Chief Judge, STOLL and CUNNINGHAM ,
Circuit Judges.
CUNNINGHAM , Circuit Judge.
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MILLER MENDEL, INC. v. CITY OF ANNA, TEXAS 2
Miller Mendel, Inc. (“Miller Mendel”) sued the City of
Anna, Texas (“City”) for infringement of certain patent
claims relating to a software system for managing pre-em-
ployment background investigations. The United States
District Court for the Eastern District of Texas granted
City’s motion for judgment on the pleadings, concluding
that the asserted claims1 do not claim patent-eligible sub-
ject matter under 35 U.S.C. § 101. Miller Mendel, Inc. v.
City of Anna, 598 F. Supp. 3d 486, 499 (E.D. Tex. 2022)
(“Rule 12(c) Decision”). The district court also denied City’s
motion for attorneys’ fees. Miller Mendel, Inc. v. City of
Anna, No. 2:21-CV-00445-JRG, 2022 WL 2704790 (E.D.
Tex. June 13, 2022) (“Attorneys’ Fees Order”). For the rea-
sons below, we affirm.
I. BACKGROUND
On December 2, 2021, Miller Mendel sued City, alleg-
ing that the City police department’s use of the Guardian
Alliance Technologies (“GAT”) software platform infringes
“at least Claims 1, 5, and 15” of U.S. Patent No. 10,043,188.
Rule 12(c) Decision at 488; J.A. 468–69 ¶ 12 (Amended
Complaint). The ’188 patent is directed to a “software sys-
tem for managing the process of performing pre-employ-
ment background investigations.” ’188 patent col. 3 l. 66 to
col. 4 l. 2. Miller Mendel and City agree that claim 1 of the
’188 patent is representative of all asserted claims, Rule
12(c) Decision at 489 n.2, and it recites:
1. A method for a computing device with a proces-
sor and a system memory to assist an investigator
in conducting a background investigation of an
1 The asserted claims are claims 1, 5, and 15 of U.S.
Patent No. 10,043,188. See, e.g., Miller Mendel, Inc. v. City
of Anna, No. 2:21-CV-00445-JRG, 2022 WL 2700334, at *1–
3 (E.D. Tex. June 9, 2022) (“Reconsideration Order”).
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MILLER MENDEL, INC. v. CITY OF ANNA, TEXAS 3
applicant for a position within a first organization,
comprising the steps of:
receiving a first set of program data com-
prising information identifying the appli-
cant, the position, the first organization,
and the investigator;
storing a new applicant entry in the system
memory, the new applicant entry associ-
ated with the first set of program data;
transmitting an applicant hyperlink to an
applicant email address associated with
the applicant, the applicant hyperlink for
viewing an applicant set of electronic docu-
ments;
receiving an applicant electronic response
with a reference set of program data,
wherein the reference set of program data
comprises information regarding a refer-
ence source, wherein the reference source
is a person, the program data including a
reference email address associated with
the reference source;
determining a reference class of the refer-
ence source based on the reference set of
program data;
selecting a reference set of electronic docu-
ments based on the reference class of the
reference source;
transmitting a reference hyperlink to the
reference email address, the reference hy-
perlink for viewing the reference set of elec-
tronic documents;
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MILLER MENDEL, INC. v. CITY OF ANNA, TEXAS 4
receiving a reference electronic response to
the reference set of electronic documents
from the reference source;
storing the reference electronic response in
the system memory, associating the refer-
ence electronic response with the new ap-
plicant entry; and
generating a suggested reference list of one
or more law enforcement agencies based on
an applicant residential address.
’188 patent col. 15 l. 52 to col. 16 l. 19.
On February 15, 2022, City moved for judgment on the
pleadings, alleging that the claims of the ’188 patent are
ineligible for patent protection under 35 U.S.C. § 101. Rule
12(c) Decision at 488; J.A. 136; see also J.A. 127–60 (Rule
12(c) motion opening brief). The district court granted
City’s Rule 12(c) motion, dismissing the case with preju-
dice. Rule 12(c) Decision at 499. The district court also
rejected Miller Mendel’s argument that City’s motion went
beyond the pleadings allowed under Rule 12(c). Id. at 497
n.4.
Miller Mendel filed a motion for reconsideration, argu-
ing that the district court lacked subject matter jurisdiction
over unasserted patent claims and thus could not invali-
date all claims of the ’188 patent. On June 9, 2022, the
district court denied Miller Mendel’s motion for reconsider-
ation. Reconsideration Order at *2; see J.A. 753–56. How-
ever, the district court clarified that its Rule 12(c) decision
only invalidated claims 1, 5, and 15, rather than invalidat-
ing all claims of the ’188 patent. Reconsideration Order at
*1–3.
City also filed a motion for attorneys’ fees pursuant to
35 U.S.C. § 285. Attorneys’ Fees Order at *1–2; see also J.A.
796, 799–800. On June 13, 2022, the district court denied
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MILLER MENDEL, INC. v. CITY OF ANNA, TEXAS 5
City’s motion for attorneys’ fees, finding that the case was
not exceptional. Attorneys’ Fees Order at *6.
Miller Mendel appealed and City cross-appealed. We
have jurisdiction under 28 U.S.C. § 1295(a)(1).
II. STANDARD OF REVIEW
We review procedural aspects of the grant of judgment
on the pleadings based on the law of the regional circuit.
Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC,
874 F.3d 1329, 1336 (Fed. Cir. 2017). Under Fifth Circuit
law, we review a judgment on the pleadings de novo. See
Templeton v. Jarmillo, 28 F.4th 618, 620 (5th Cir. 2022).
“The standard for dismissing a complaint under Rule 12(c)
is the same as a dismissal for failure to state a claim under
[Rule] 12(b)(6).” Id. at 621. “The standard requires the
complaint to ‘contain sufficient factual matter, accepted as
true, to state a claim to relief that is plausible on its face.’”
Id. (quoting Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)).
“We review the district court’s ultimate patent-eligibil-
ity conclusion de novo.” PersonalWeb Techs. LLC v. Google
LLC, 8 F.4th 1310, 1315 (Fed. Cir. 2021). “Patent eligibil-
ity is a question of law that may involve underlying ques-
tions of fact.” Id. at 1314 (citation omitted). The inquiry
on patent eligibility “may be, and frequently has been, re-
solved on a Rule 12(b)(6) or (c) motion where the undis-
puted facts, considered under the standards required by
that Rule, require a holding of ineligibility under the sub-
stantive standards of law.” Id. (citation omitted).
“We review all aspects of a district court’s § 285 deter-
mination for an abuse of discretion, including its excep-
tional case determination.” Rothschild Connected Devices
Innovations, LLC v. Guardian Prot. Servs., Inc., 858 F.3d
1383, 1387 (Fed. Cir. 2017) (cleaned up). “An abuse of dis-
cretion occurs when, inter alia, the district court ‘bases its
ruling on an erroneous view of the law or on a clearly erro-
neous assessment of the evidence.’” Id. (quoting Highmark
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MILLER MENDEL, INC. v. CITY OF ANNA, TEXAS 6
Inc. v. Allcare Health Mgmt. Sys., Inc., 572 U.S. 559, 563
n.2 (2014)).
III. D ISCUSSION
Miller Mendel appeals the district court’s grant of
City’s Rule 12(c) motion, arguing that (1) the district court
did not follow the requirements of Federal Rule of Civil
Procedure 12(d), Appellant’s Br. 14; see also id. at 15–19;
and (2) the district court erred in finding the asserted
claims of the ’188 patent invalid for lack of patentable sub-
ject matter. Id. at 19–20; see also id. at 21–41. City cross-
appeals (1) the district court’s decision that its invalidity
findings pertained only to claims 1, 5, and 15, Cross-Appel-
lant’s Principal & Resp. Br. 42–44; see also id. at 45–50;
and (2) the district court’s finding that the case was not ex-
ceptional in denying City’s attorneys’ fees motion. Id. at
50–51; see also id. at 52–68. We address each argument in
turn.
A.
As an initial matter, Miller Mendel argues that the dis-
trict court erred by relying on and citing parts of City’s Rule
12(c) motion, which in turn relied on a declaration that was
not part of the pleadings. See Appellant’s Br. 14–16; see
also id. at 17–19. We are not persuaded that the district
court’s analysis requires reversal.
In considering a Rule 12(c) motion, “the court is gener-
ally limited to the contents of the pleadings, including at-
tachments thereto.” Bosarge v. Miss. Bureau of Narcotics,
796 F.3d 435, 440 (5th Cir. 2015) (cleaned up). “The ‘plead-
ings’ include the complaint, answer to the complaint, and
‘if the court orders one, a reply to an answer.’” Id. (quoting
Fed. R. Civ. P. 7(a)). “If, on a motion under Rule 12(b)(6)
or 12(c), matters outside the pleadings are presented to and
not excluded by the court, the motion must be treated as
one for summary judgment under Rule 56.” Fed. R. Civ. P.
12(d).
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MILLER MENDEL, INC. v. CITY OF ANNA, TEXAS 7
Although the declaration here is outside the pleadings,
the district court explained that the declaration was not
relevant to its analysis because it neither relied on it for its
§ 101 analysis nor would it have altered its conclusions.
Specifically, the district court only referred to the section
of City’s brief that cited a declaration attached to the Rule
12(c) motion in summarizing the parties’ arguments. Rule
12(c) Decision at 496–97 (citing J.A. 157–59). In its patent
eligibility analysis, the district court did not rely on any
materials outside of the pleadings or sections of City’s brief
discussing materials outside of the pleadings. Id. at 498–
99; see also Reconsideration Order at *5 (“The Court did not
rely on evidence outside of the ’188 Patent to find that it
was directed to an abstract idea because the language in-
trinsic to the ’188 Patent itself demands such a conclu-
sion.”).
Moreover, even if the district court erred by not explic-
itly excluding the declaration, any such error is harmless
because the district court also explained that it would have
“reach[ed] the same conclusions and result, both when it
does and when it does not consider the declarations or ex-
hibits attached to the City’s motion.” Rule 12(c) Decision
at 497 n.4. The Fifth Circuit has held that error in consid-
ering evidence outside of the pleadings is harmless when
“[a]ccepting the facts as pled, all claims still fail.” Whitaker
v. Collier, 862 F.3d 490, 501 (5th Cir. 2017) (quoting Wood
v. Collier, 836 F.3d 534, 542 (5th Cir. 2016)); see also 11
Charles A. Wright & Arthur R. Miller, Federal Practice and
Procedure § 1364 (3d ed. 2022) (noting failure to convert
Rule 12(c) motions under circumstances indicated in Rule
12(d) can be treated as a harmless error “if the dismissal
can be justified without reference to any extraneous mat-
ters”); Hawk Tech. Sys., LLC v. Castle Retail, LLC, 60 F.4th
1349, 1360–61 (Fed. Cir. 2023) (applying Sixth Circuit law
and finding harmless error in failing to convert a motion to
dismiss into a motion for summary judgment because the
dismissal can be justified without reference to any matters
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MILLER MENDEL, INC. v. CITY OF ANNA, TEXAS 8
outside the pleadings). Accordingly, we reject Miller Men-
del’s argument on this issue.
B.
Miller Mendel argues that the district court erred in
finding the ’188 patent’s asserted claims patent ineligible.
Appellant’s Br. 19; see also id. at 20–41. We disagree.
i.
At Alice/Mayo step one, we “determine whether the
claims at issue are directed to one of those patent-ineligible
concepts,” such as an abstract idea. Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 217 (2014). The asserted claims
of the ’188 patent are directed to the abstract idea of per-
forming a background check.
To determine whether a claim is “directed to” a patent
ineligible concept, “we look to whether the claims ‘focus on
a specific means or method that improves the relevant
technology or are instead directed to a result or effect that
itself is the abstract idea and merely invoke generic pro-
cesses and machinery.’” CardioNet, LLC v. InfoBionic,
Inc., 955 F.3d 1358, 1368 (Fed. Cir. 2020) (quoting McRO,
Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299,
1314 (Fed. Cir. 2016)). For software-based inventions, Al-
ice/Mayo step one “often turns on whether the claims focus
on the specific asserted improvement in computer capabil-
ities or, instead, on a process that qualifies as an abstract
idea for which computers are invoked merely as a tool.” In
re Killian, 45 F.4th 1373, 1382 (Fed. Cir. 2022) (cleaned
up).
Here, the claim language shows that the claimed in-
vention is directed to the abstract idea of performing a
background check. Representative claim 1 recites a
“method for a computing device with a processor and a sys-
tem memory to assist an investigator in conducting a back-
ground investigation of an applicant for a position within a
first organization.” ’188 patent col. 15 ll. 52–55 (emphasis
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MILLER MENDEL, INC. v. CITY OF ANNA, TEXAS 9
added). The claim also recites several steps that the com-
puter system performs to assist the investigator with con-
ducting a background investigation. Id. col. 15 l. 56 to col.
16 l. 19. These steps demonstrate that the claims are di-
rected to receiving, storing, transmitting, determining, se-
lecting, and generating information, which place them in
the “familiar class of claims directed to a patent-ineligible
concept.” Trinity Info Media, LLC v. Covalent, Inc., 72
F.4th 1355, 1362 (Fed. Cir. 2023) (cleaned up) (finding “col-
lecting information, analyzing it, and displaying certain re-
sults” abstract); see also Elec. Commc’n Techs., LLC v.
ShoppersChoice.com, LLC, 958 F.3d 1178, 1182 (Fed. Cir.
2020) (finding “gathering, storing, and transmitting infor-
mation” abstract).
The patent specification confirms that the asserted
claims are directed to an abstract idea. The ’188 patent
states that the problem addressed by the invention is “to
help a background investigator more efficiently and effec-
tively conduct a background investigation.” ’188 patent col.
1 ll. 38–40. It refers to the subject matter of the invention
as “a web based software system for managing the process
of performing pre-employment background investigations.”
Id. col. 3 l. 67 to col. 4 l. 2; see also id. Abstract. The speci-
fication characterizes the steps performed by the system as
“automat[ing] the majority of the tasks of a common pre-
employment background investigation so that fewer hard-
copy documents are necessary, thus creating more efficient
management of individual background investigations.” Id.
col. 4. ll. 12–16. In short, the problem facing the inventor
was the abstract idea of performing background investiga-
tions more efficiently and effectively, not an improvement
to computer technology. See, e.g., Trinity, 72 F.4th at 1363
(explaining that the specification’s discussion of “the prob-
lem facing the inventor” was how to perform an abstract
idea, rather than an improvement to computer technology);
ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 768
(Fed. Cir. 2019) (“[L]ooking at the problem identified in the
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MILLER MENDEL, INC. v. CITY OF ANNA, TEXAS 10
patent, as well as the way the patent describes the inven-
tion, the specification suggests that the invention of the pa-
tent is nothing more than the abstract idea of
communication over a network for interacting with a de-
vice, applied to the context of electric vehicle charging sta-
tions.”).
Miller Mendel argues that the method of claim 1 can-
not be directed to an abstract idea because certain limita-
tions, such as the transmitting hyperlinks via email steps
and generating a suggested reference list steps, cannot be
done in the mind or by pen and paper. See Appellant’s Br.
27–30. We are not persuaded that claim 1 cannot be di-
rected to an abstract idea even if certain steps cannot be
completed in the mind or by pen and paper. “[T]he inability
for the human mind to perform each claim step does not
alone confer patentability.” FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). Moreover,
requiring the use of a computer alone does not change the
focus of a claim directed towards an abstract idea into one
directed towards “a specific improvement to computer func-
tionality.” In re TLI Commc’ns LLC Pat. Litig., 823 F.3d
607, 612 (Fed. Cir. 2016).
Miller Mendel relies on Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1337–38 (Fed. Cir. 2016), arguing that the
district court overlooked clear improvements offered by the
asserted claims. Appellant’s Br. 29–30. This argument is
also unpersuasive. In Enfish, the claims were directed to
“a specific type of data structure designed to improve the
way a computer stores and retrieves data in memory.”
822 F.3d at 1339. Because the asserted claims of the ’188
patent are not directed to an improvement in computer
technology, Enfish is distinguishable. In sum, at Al-
ice/Mayo step one, the asserted claims are directed to an
abstract idea.
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MILLER MENDEL, INC. v. CITY OF ANNA, TEXAS 11
ii.
At Alice/Mayo step two, we find the asserted claims do
not contain additional elements that “transform the nature
of the claim into a patent-eligible application.” Alice,
573 U.S. at 217 (internal quotation marks omitted). “[W]e
undertake ‘a search for an inventive concept—i.e., an ele-
ment or combination of elements that is sufficient to ensure
that the patent in practice amounts to significantly more
than a patent upon the ineligible concept itself.’” Person-
alWeb, 8 F.4th at 1318 (quoting Alice, 573 U.S. at 217–18).
Here, when viewing the limitations of representative claim
1 individually or as an ordered combination, the limitations
“merely recite well-understood, routine, conventional ac-
tivities, either by requiring conventional computer activi-
ties or routine data-gathering steps.” OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
(cleaned up).
Claim 1 recites well-understood, routine, and conven-
tional computer components. Claim 1 recites a method per-
formed by a “computing device with a processor and a
system memory.” ’188 patent col. 15 l. 52–53. None of the
limitations recited in the claim “requires anything other
than conventional computer and network components op-
erating according to their ordinary function.” Two-Way
Media, 874 F.3d at 1339; ’188 patent col. 15 l. 52 to col. 16
l. 19. Nor is the ordered combination of these steps in-
ventive. For example, the patent specification explains
that “it should be appreciated that these steps may be per-
formed in any random order and the process 800 is not de-
fined by this particular illustrative order.” ’188 patent col.
14 ll. 21–24 (emphases added). Considered individually or
as an ordered combination, the claim limitations fail to
transform the claimed abstract idea into a patent-eligible
application.
The lack of inventive concept is further confirmed by
other parts of the specification, which describe no more
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MILLER MENDEL, INC. v. CITY OF ANNA, TEXAS 12
than “already available computers” performing “already
available basic functions.” SAP Am., Inc. v. InvestPic, LLC,
898 F.3d 1161, 1169–70 (Fed. Cir. 2018); see, e.g., Trinity,
72 F.4th at 1367 (analyzing patent specification under Al-
ice/Mayo step two). The ’188 patent’s use of generic com-
puter components, such as a “computing device,”
“processors,” “system memory,” and “computer storage me-
dia,” confirms that these components do not provide an in-
ventive concept. ’188 patent col. 12 ll. 46–50, col. 13 ll. 40–
41; see Trinity,72 F.4th at 1367. For example, the specifi-
cation teaches one embodiment with “a very basic configu-
ration 701, [where] computing device 700 typically includes
one or more processors 710 and system memory 720.” ’188
patent col. 12 ll. 46–48. The specification further states
that “the system memory 720 can be of any type” and that
“[a]ny such computer storage media can be part of device
700.” Id. col. 12. ll. 64–65, col. 13 ll. 40–41 (emphases
added).
Miller Mendel argues that there is no evidence in the
record that the additional elements of “transmitting an ap-
plicant hyperlink to an applicant e-mail address” and “gen-
erating a suggested reference list of one or more law
enforcement agencies based on an applicant residential ad-
dress” were well-understood, routine, and conventional in
the industry. Appellant’s Br. 33–36. We disagree. Indeed,
the specification itself describes the invention as “auto-
mat[ing] the majority of the tasks of a common pre-employ-
ment background investigation,” thereby acknowledging
that such tasks were routine prior to the date of the inven-
tion. ’188 patent col. 4 ll. 12–16; see id. col. 1 ll. 38–40; id.
Abstract.
Lastly, Miller Mendel faults the district court for not
allowing factual development for Miller Mendel to present
contrary evidence. Appellant’s Br. 36, see also id. at 40.
But Miller Mendel fails to identify any specific facts that
would change our analysis. See Appellant’s Br. 36.
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MILLER MENDEL, INC. v. CITY OF ANNA, TEXAS 13
Therefore, judgment on the pleadings is appropriate. See
Trinity, 72 F.4th at 1361.
C.
On cross-appeal, City argues that the district court
erred by clarifying in its Reconsideration Order that its in-
validity findings pertained only to claims 1, 5, and 15.
Cross-Appellant’s Principal & Resp. Br. 42–44; see also id.
at 45–50. City urges us to find claim 9 directed to patent
ineligible subject matter as well, or otherwise remand to
the district court to make such a finding. Id. at 50. We
decline to do so.
At the outset, the parties dispute the standard of re-
view. See Cross-Appellant’s Principal & Resp. Br. 42; Ap-
pellant’s Resp. & Reply Br. 28–29. The crux of the issue is
whether claims other than claims 1, 5, and 15 of the ’188
patent are at dispute in this litigation—i.e., whether a case
or controversy existed regarding these other claims. There-
fore, we find this issue regarding our jurisdiction to be sub-
ject to de novo review under Federal Circuit law. Sanofi-
Aventis U.S., LLC v. Dr. Reddy’s Laby’s, Inc., 933 F.3d
1367, 1372 (Fed. Cir. 2019) (“We review de novo whether a
case or controversy existed . . . and apply Federal Circuit
law.”) (citations omitted).
The district court did not have jurisdiction over claims
2–4 and 6–14 of the ’188 patent. See, e.g., Fox Grp., Inc. v.
Cree, Inc., 700 F.3d 1300, 1307 (Fed. Cir. 2012) (“In patent
cases, the existence of a case or controversy must be evalu-
ated on a claim-by-claim basis.”) (cleaned up). Our deci-
sions in Streck, Inc. v. Research & Diagnostic Systems, Inc.,
665 F.3d 1269 (Fed. Cir. 2012) and Fox are illustrative. In
Streck, we held that the district court did not have jurisdic-
tion over patentee’s unasserted claims even though the pa-
tentee’s complaint alleged infringement of “one or more
claims” of the patents-in-suit. 665 F.3d at 1284. We ex-
plained that the patentee had “narrowed the scope of
claims at issue” by serving preliminary infringement
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MILLER MENDEL, INC. v. CITY OF ANNA, TEXAS 14
contentions, further narrowed the asserted claims to only
nine claims, and that “the parties knew precisely which
claims were at issue well before the court ruled on the par-
ties’ summary judgment motions or conducted trial.” Id.
Similarly, in Fox, the patentee’s complaint “alleged in-
fringement of ‘one or more claims,’ but [the patentee] sub-
sequently narrowed the scope of its asserted claims before
the court ruled on the parties’ summary judgment mo-
tions.” 700 F.3d at 1308. Therefore, we found no jurisdic-
tion over the unasserted claims. Id.
The facts here are analogous. On February 22, 2022,
Miller Mendel amended its complaint to assert that the
Guardian Platform “infringes one or more claims of the ’188
patent, including at least Claims 1, 5, and 15,” J.A. 468
¶ 12. On March 1, 2022, Miller Mendel subsequently nar-
rowed the asserted claims to claims 1, 5, and 15 in its re-
sponse to City’s Rule 12(c) motion. J.A. 486. By March 2,
2022, Miller Mendel again confirmed in its infringement
contentions that it asserted only claims 1, 5, and 15. J.A.
771–72; see also J.A. 754. The district court’s decision
granting City’s Rule 12(c) motion issued on April 14, 2022.
Rule 12(c) Decision at 488, 499. Because Miller Mendel
narrowed the scope of claims at issue to claims 1, 5, and 15
and both parties knew which claims were at issue before
the court ruled on the motion for judgment on the plead-
ings, the district court had no jurisdiction over the unas-
serted claims in the ’188 patent. Streck, 665 F.3d at 1284;
see Fox, 700 F.3d at 1308; Reconsideration Order at *2–3.
City argues that Miller Mendel should have provided
some indication of the withdrawal of claims to City prior to
City’s Rule 12(c) motion. Cross-Appellant’s Principal &
Resp. Br. 48. But City does not explain why Miller Mendel
should have provided notice before the filing date of the
motion for judgment on the pleadings. Like in Streck, with-
drawal of claims occurred here before the district court
ruled on the dispositive Rule 12(c) motion. See Streck, 665
F.3d at 1284; Fox, 700 F.3d at 1308.
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MILLER MENDEL, INC. v. CITY OF ANNA, TEXAS 15
City also argues that Miller Mendel’s infringement con-
tentions did not clearly and unambiguously narrow the
scope of the claims being asserted, citing Voter Verified,
Inc. v. Premier Election Solutions, Inc., 698 F.3d 1374, 1382
(Fed. Cir. 2012). Cross-Appellant’s Principal & Resp. Br.
47; Cross-Appellant’s Reply Br. 7. But in Voter Verified,
the alleged infringers “kept any ‘unasserted’ claims before
the district court by maintaining their respective counter-
claims that alleged invalidity of ‘[e]ach claim of the [as-
serted patent].’” 698 F.3d at 1382 (first alteration in
original). Here, City never even asserted a counterclaim of
invalidity. See J.A. 505–28. Thus, Voter Verified is inap-
posite.
Accordingly, the district court did not err in holding
that its § 101 invalidity decision only applies to claims 1, 5,
and 15.
D.
City challenges the district court’s denial of its attor-
neys’ fees motion under § 285. See Cross-Appellant’s Prin-
cipal & Resp. Br. 50; see also id. at 51–68. We also are not
persuaded that the district court abused its discretion in
denying this motion.
City argues that the district court erred as a matter of
law by giving weight to the absence of litigation miscon-
duct. See Cross-Appellant’s Principal & Resp. Br. 52. The
district court mentioned the absence of litigation miscon-
duct in its “Legal Standard” section but did not rely on the
absence of misconduct in its “Analysis” section. Compare
Attorneys’ Fees Order at *2, with id. at *6. While a court
may award attorneys’ fees to the prevailing party in an ex-
ceptional case, a case is “exceptional” if it “stands out from
others with respect to the substantive strength of a party’s
litigating position (considering both the governing law and
the facts of the case) or the unreasonable manner in which
the case was litigated.” Energy Heating, LLC v. Heat On-
The-Fly, LLC, 15 F.4th 1378, 1382 (Fed. Cir. 2021) (citation
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MILLER MENDEL, INC. v. CITY OF ANNA, TEXAS 16
omitted); see also 35 U.S.C. § 285. Energy Heating sup-
ports the proposition that the district court was not re-
quired to affirmatively weigh the absence of litigation
misconduct. 15 F.4th at 1383–84.
City also contends that the district court should have
given more weight to Miller Mendel’s “exceptionally weak”
invalidity position. See Cross-Appellant’s Principal &
Resp. Br. 55; see id. at 56–61. We disagree. Under the spe-
cific facts of this case, the district court acted within its dis-
cretion in finding that “Miller Mendel was entitled to
believe that the ’188 Patent was valid after it was exam-
ined and allowed by the USPTO” and thereafter exercise
its patent rights. Attorneys’ Fees Order at *6. The district
court also reasonably found that although Miller Mendel’s
opposition to City’s Rule 12(c) motion “was not compel-
ling . . . , it did not rise to the level of unreasonable or vex-
atious.” Attorneys’ Fees Order at *6.
Lastly, City argues that the district court abused its
discretion in finding the case not exceptional in light of Mil-
ler Mendel’s unreasonable litigation conduct, including fil-
ing lawsuits to “unduly pressure existing and potential
customers” of the allegedly infringing software GAT and
“misrepresent[ing] the status and events in the various lit-
igations to the industry.” Cross-Appellant’s Principal &
Resp. Br. 61–62, 66; see also id. at 63–65, 67–68. We again
disagree. Regarding undue pressure, the district court did
not abuse its discretion by concluding that a case was not
exceptional when Miller Mendel asserted its patent rights
against other alleged infringers. See Attorneys’ Fees Order
at *6; see Checkpoint Sys., Inc. v. All-Tag Sec. S.A., 858
F.3d 1371, 1375 (Fed. Cir. 2017) (“Enforcement of [a pa-
tent] right is not an ‘exceptional case’ under the patent
law.”). Regarding alleged misrepresentations, the district
court did not abuse its discretion in rejecting this argument
and concluding that the grant of City’s § 101 motion “does
not open the door to an award of fees outside the case at
hand before this [c]ourt.” Attorneys’ Fees Order at *6.
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MILLER MENDEL, INC. v. CITY OF ANNA, TEXAS 17
Considering the totality of the circumstances, we do not
find the district court abused its discretion in finding the
case not exceptional.
IV. CONCLUSION
We have considered both parties’ remaining arguments
and find them unpersuasive. For the reasons discussed
above, we affirm the district court’s judgment and the dis-
trict court’s denial of attorneys’ fees.
AFFIRMED
COSTS
No costs.
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