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

• Court: Court of Appeals for the Federal Circuit
• Decided: July 18, 2024
• Docket: 22-1753
• Status: Published

Opinion

Case: 22-1753 Document: 73 Page: 1 Filed: 07/18/2024

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 ______________________

KURT M. RYLANDER, Rylander & Associates, PC, Van- couver, WA, argued for plaintiff-appellant.

EVAN W. TALLEY, Ryan Whaley, PLLC, OK, argued for defendant-cross-appellant. Also represented by DOUGLAS SOROCCO, Dunlap Codding, PC, Oklahoma City, OK. ______________________

Before MOORE, Chief Judge, STOLL and CUNNINGHAM, Circuit Judges. CUNNINGHAM, Circuit Judge. Case: 22-1753 Document: 73 Page: 2 Filed: 07/18/2024

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 claims 1 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”). Case: 22-1753 Document: 73 Page: 3 Filed: 07/18/2024

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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; Case: 22-1753 Document: 73 Page: 4 Filed: 07/18/2024

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 Case: 22-1753 Document: 73 Page: 5 Filed: 07/18/2024

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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 Case: 22-1753 Document: 73 Page: 6 Filed: 07/18/2024

Inc. v. Allcare Health Mgmt. Sys., Inc., 572 U.S. 559, 563 n.2 (2014)). III. DISCUSSION 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). Case: 22-1753 Document: 73 Page: 7 Filed: 07/18/2024

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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 Case: 22-1753 Document: 73 Page: 8 Filed: 07/18/2024

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 Case: 22-1753 Document: 73 Page: 9 Filed: 07/18/2024

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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 Case: 22-1753 Document: 73 Page: 10 Filed: 07/18/2024

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. Case: 22-1753 Document: 73 Page: 11 Filed: 07/18/2024

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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 Case: 22-1753 Document: 73 Page: 12 Filed: 07/18/2024

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. Case: 22-1753 Document: 73 Page: 13 Filed: 07/18/2024

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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 Case: 22-1753 Document: 73 Page: 14 Filed: 07/18/2024

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. Case: 22-1753 Document: 73 Page: 15 Filed: 07/18/2024

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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 Case: 22-1753 Document: 73 Page: 16 Filed: 07/18/2024

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. Case: 22-1753 Document: 73 Page: 17 Filed: 07/18/2024

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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.