Failure to Convert Dismissal Into Summary Judgment Deemed Harmless

Written by: Justin K. Theam & Jeremy Anapol

HAWKS TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC

Before Reyna, Hughes, and Cunningham.  Appeal from the United States District Court for the Western District of Tennessee.

Summary: A court’s failure to exclude extraneous evidence submitted with a motion to dismiss was harmless error where the evidence was immaterial to the court’s invalidity ruling under 35 U.S.C. § 101.

Hawks sued Castle for patent infringement.  The patent at issue described a method of simultaneously displaying multiple high-quality videos that have been captured and stored from a remote surveillance system.  Castle moved to dismiss under Rule 12(b)(6) for failure to state a claim because the patent claims were invalid under 35 U.S.C. § 101.  Castle’s submissions to the court included evidence outside of the pleadings.  The district court granted Castle’s motion to dismiss, finding that the patent claims were invalid under § 101.  While the district court did not rely on Castle’s extraneous evidence, it did not expressly reject it either.  Hawks appealed the dismissal, challenging the invalidity ruling on the merits and arguing that the district court should have converted the motion to dismiss into a motion for summary judgment due to the evidence outside the pleadings.

The Federal Circuit held the patent claims invalid under § 101.  Regarding the failure to convert from dismissal to summary judgment, the Federal Circuit held that the district court erred but the error was harmless because neither the district court’s dismissal nor the Federal Circuit’s affirmance relied on any evidence outside the pleadings.  Thus, the Federal Circuit affirmed the dismissal.

Editor: Paul Stewart