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, Vancouver, 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: 1 Filed: 07/18/2024
2 MILLER MENDEL, INC. v. CITY OF ANNA, TEXAS

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-employment 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 subject 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 reasons below, we affirm. 

I. BACKGROUND

On December 2, 2021, Miller Mendel sued City, alleging 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 system for managing the process of performing pre-employment 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 processor 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 comprising information identifying the applicant, the position, the first organization, 

and the investigator;

storing a new applicant entry in the system 

memory, the new applicant entry associated 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 documents;

receiving an applicant electronic response 

with a reference set of program data, 

wherein the reference set of program data 

comprises information regarding a reference 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 reference source based on the reference set of 

program data;

selecting a reference set of electronic documents based on the reference class of the 

reference source;

transmitting a reference hyperlink to the 

reference email address, the reference hyperlink for viewing the reference set of electronic documents;

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4 MILLER MENDEL, INC. v. CITY OF ANNA, TEXAS

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 reference electronic response with the new applicant 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 prejudice. 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, arguing that the district court lacked subject matter jurisdiction

over unasserted patent claims and thus could not invalidate all claims of the ’188 patent. On June 9, 2022, the 

district court denied Miller Mendel’s motion for reconsideration. Reconsideration Order at *2; see J.A. 753–56. However, the district court clarified that its Rule 12(c) decision

only invalidated claims 1, 5, and 15, rather than invalidating 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-eligibility conclusion de novo.” PersonalWeb Techs. LLC v. Google 

LLC, 8 F.4th 1310, 1315 (Fed. Cir. 2021). “Patent eligibility is a question of law that may involve underlying questions of fact.” Id. at 1314 (citation omitted). The inquiry 

on patent eligibility “may be, and frequently has been, resolved on a Rule 12(b)(6) or (c) motion where the undisputed facts, considered under the standards required by 

that Rule, require a holding of ineligibility under the substantive standards of law.” Id. (citation omitted). 

“We review all aspects of a district court’s § 285 determination for an abuse of discretion, including its exceptional 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 discretion occurs when, inter alia, the district court ‘bases its 

ruling on an erroneous view of the law or on a clearly erroneous assessment of the evidence.’” Id. (quoting Highmark 

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6 MILLER MENDEL, INC. v. CITY OF ANNA, TEXAS

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 subject matter. Id. at 19–20; see also id. at 21–41. City crossappeals (1) the district court’s decision that its invalidity 

findings pertained only to claims 1, 5, and 15, Cross-Appellant’s Principal & Resp. Br. 42–44; see also id. at 45–50; 

and (2) the district court’s finding that the case was not exceptional 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 district 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 generally limited to the contents of the pleadings, including attachments thereto.” Bosarge v. Miss. Bureau of Narcotics, 

796 F.3d 435, 440 (5th Cir. 2015) (cleaned up). “The ‘pleadings’ 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 intrinsic to the ’188 Patent itself demands such a conclusion.”). 

Moreover, even if the district court erred by not explicitly 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 exhibits attached to the City’s motion.” Rule 12(c) Decision

at 497 n.4. The Fifth Circuit has held that error in considering 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 matters”); 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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8 MILLER MENDEL, INC. v. CITY OF ANNA, TEXAS

outside the pleadings). Accordingly, we reject Miller Mendel’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 performing 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 processes 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, Alice/Mayo step one “often turns on whether the claims focus 

on the specific asserted improvement in computer capabilities 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 invention 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 system memory to assist an investigator in conducting a background 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 computer system performs to assist the investigator with conducting a background investigation. Id. col. 15 l. 56 to col. 

16 l. 19. These steps demonstrate that the claims are directed to receiving, storing, transmitting, determining, selecting, 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 “collecting information, analyzing it, and displaying certain results” 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 information” 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 effectively 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 specification characterizes the steps performed by the system as 

“automat[ing] the majority of the tasks of a common preemployment background investigation so that fewer hardcopy 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 investigations 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 problem 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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10 MILLER MENDEL, INC. v. CITY OF ANNA, TEXAS

patent, as well as the way the patent describes the invention, the specification suggests that the invention of the patent is nothing more than the abstract idea of 

communication over a network for interacting with a device, applied to the context of electric vehicle charging stations.”). 

Miller Mendel argues that the method of claim 1 cannot be directed to an abstract idea because certain limitations, 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 directed 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 functionality.” 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 Alice/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 element 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.’” PersonalWeb, 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 activities, either by requiring conventional computer activities 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 conventional computer components. Claim 1 recites a method performed 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 operating 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 inventive. For example, the patent specification explains 

that “it should be appreciated that these steps may be performed in any random order and the process 800 is not defined 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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12 MILLER MENDEL, INC. v. CITY OF ANNA, TEXAS

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 Alice/Mayo step two). The ’188 patent’s use of generic computer components, such as a “computing device,” 

“processors,” “system memory,” and “computer storage media,” confirms that these components do not provide an inventive concept. ’188 patent col. 12 ll. 46–50, col. 13 ll. 40–

41; see Trinity,72 F.4th at 1367. For example, the specification teaches one embodiment with “a very basic configuration 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 applicant hyperlink to an applicant e-mail address” and “generating a suggested reference list of one or more law 

enforcement agencies based on an applicant residential address” were well-understood, routine, and conventional in 

the industry. Appellant’s Br. 33–36. We disagree. Indeed, 

the specification itself describes the invention as “automat[ing] the majority of the tasks of a common pre-employment background investigation,” thereby acknowledging 

that such tasks were routine prior to the date of the invention. ’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 invalidity 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 review. See Cross-Appellant’s Principal & Resp. Br. 42; Appellant’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. Therefore, we find this issue regarding our jurisdiction to be subject to de novo review under Federal Circuit law. SanofiAventis 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 evaluated on a claim-by-claim basis.”) (cleaned up). Our decisions 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 jurisdiction over patentee’s unasserted claims even though the patentee’s complaint alleged infringement of “one or more 

claims” of the patents-in-suit. 665 F.3d at 1284. We explained that the patentee had “narrowed the scope of 

claims at issue” by serving preliminary infringement 

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14 MILLER MENDEL, INC. v. CITY OF ANNA, TEXAS

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 parties’ summary judgment motions or conducted trial.” Id. 

Similarly, in Fox, the patentee’s complaint “alleged infringement of ‘one or more claims,’ but [the patentee] subsequently narrowed the scope of its asserted claims before 

the court ruled on the parties’ summary judgment motions.” 700 F.3d at 1308. Therefore, we found no jurisdiction 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 narrowed the asserted claims to claims 1, 5, and 15 in its response 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 pleadings, the district court had no jurisdiction over the unasserted 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, withdrawal 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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City also argues that Miller Mendel’s infringement contentions 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 counterclaims that alleged invalidity of ‘[e]ach claim of the [asserted 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 inapposite. 

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 attorneys’ fees motion under § 285. See Cross-Appellant’s Principal & 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 misconduct. See Cross-Appellant’s Principal & Resp. Br. 52. The 

district court mentioned the absence of litigation misconduct 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 exceptional 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 OnThe-Fly, LLC, 15 F.4th 1378, 1382 (Fed. Cir. 2021) (citation 

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16 MILLER MENDEL, INC. v. CITY OF ANNA, TEXAS

omitted); see also 35 U.S.C. § 285. Energy Heating supports the proposition that the district court was not required 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 specific facts of this case, the district court acted within its discretion in finding that “Miller Mendel was entitled to 

believe that the ’188 Patent was valid after it was examined 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 compelling . . . , it did not rise to the level of unreasonable or vexatious.” Attorneys’ Fees Order at *6. 

Lastly, City argues that the district court abused its 

discretion in finding the case not exceptional in light of Miller Mendel’s unreasonable litigation conduct, including filing lawsuits to “unduly pressure existing and potential 

customers” of the allegedly infringing software GAT and 

“misrepresent[ing] the status and events in the various litigations 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 patent] 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: 16 Filed: 07/18/2024
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 district court’s denial of attorneys’ fees. 

AFFIRMED

COSTS

No costs. 

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