United States Court of Appeals 

for the Federal Circuit ______________________ 

HAWK TECHNOLOGY SYSTEMS, LLC,

Plaintiff-Appellant

v.

CASTLE RETAIL, LLC,

Defendant-Appellee

______________________ 

2022-1222

______________________ 

Appeal from the United States District Court for the 

Western District of Tennessee in No. 2:20-cv-02766-JPMtmp, Chief Judge Jon P. McCalla.

______________________ 

Decided: February 17, 2023

______________________ 

F. CHRISTOPHER AUSTIN, Weide & Miller, Ltd., Las Vegas, NV, for plaintiff-appellant.

 JUSTIN JAMES HASFORD, Finnegan, Henderson, 

Farabow, Garrett & Dunner, LLP, Washington, DC, for defendant-appellee. Also represented by STEFAN OCHIANA; 

ROBERT MARK FIELD, Evans Petree PC, Memphis, TN.

______________________ 

Before REYNA, HUGHES, and CUNNINGHAM, Circuit Judges.

REYNA, Circuit Judge.

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2 HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC

Appellant Hawk Technology Systems, LLC sued Appellee Castle Retail, LLC in the Western District of Tennessee 

for patent infringement based on Castle Retail’s use of security surveillance video operations in its grocery stores. 

Castle Retail moved to dismiss under Federal Rule of Civil 

Procedure 12(b)(6) for failure to state a claim. It argued

that the asserted patent claims were directed to ineligible 

subject matter and therefore invalid under 35 U.S.C. § 101. 

The district court granted the motion. It found that the 

patent claims were directed to the abstract idea of storing 

and displaying video and failed to provide an inventive step

that transformed that abstract idea into a patent-eligible 

invention. The district court entered judgment dismissing 

Hawk’s case.

Hawk appeals. For the reasons below, we affirm. 

BACKGROUND

A. Technical Background

Hawk is the owner of U.S. Patent No. 10,499,091 (the 

“’091 patent”). The ’091 patent is titled “high-quality, reduced data rate streaming video product and monitoring 

system.” ’091 patent, at [54]. The underlying patent application was filed on June 5, 2017, and issued as the ’091 patent on December 3, 2019, claiming priority back to 

September 17, 2002. Id. The ’091 patent relates to a 

method of viewing multiple simultaneously displayed and 

stored video images on a remote viewing device of a video 

surveillance system. Id. at 8:31–33. Figure 3 of the patent 

shows a video surveillance system “in accordance with the 

invention” that has multiple cameras 302, broadband connection 310, a server 312, and a monitor control system

314: 

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HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC 3

Id. at 3:1–3, 5:26–38. The patent explains that, in this configuration, the signals from the cameras are transmitted as 

streaming sources at relatively low data rates and variable 

frame rates via a broadband connection. Id. at 5:28–50. 

This, it says, results in reduced costs to the user, lower 

memory storage requirements, and the ability to handle a 

larger monitoring application (due to bandwidth efficiency). Id. This configuration, the patent notes, uses “existing broadband infrastructures” and a “generic PC-based 

server.” Id. at 5:39–45. 

The ’091 patent concludes with six claims.1 Claim 1 

recites: 

1 Because Hawk does not meaningfully argue that 

there is any distinctive significance between the six claims 

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4 HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC

1. A method of viewing, on a remote viewing device 

of a video surveillance system, multiple 

simultaneously displayed and stored video images, 

comprising the steps of:

receiving video images at a personal 

computer based system from a plurality of 

video sources, wherein each of the plurality 

of video sources comprises a camera of the 

video surveillance system;

digitizing any of the images not already in 

digital form using an analog-to-digital 

converter;

displaying one or more of the digitized 

images in separate windows on a personal 

computer based display device, using a first 

set of temporal and spatial parameters 

associated with each image in each 

window;

converting one or more of the video source 

images into a selected video format in a 

particular resolution, using a second set of 

temporal and spatial parameters 

associated with each image; 

contemporaneously storing at least a 

subset of the converted images in a storage 

device in a network environment;

for eligibility purposes, we treat claim 1 as representative 

and refer generally to the ’091 patent “claims.” See Berkheimer v. HP Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018)

(claims may be treated as “representative” if a patentee 

makes no “meaningful argument for the distinctive significance of any claim limitations not found in the representative claim”).

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providing a communications link to allow 

an external viewing device to access the 

storage device;

receiving, from a remote viewing device 

remoted located remotely from the video 

surveillance system, a request to receive 

one or more specific streams of the video 

images;

transmitting, either directly from one or 

more of the plurality of video sources or 

from the storage device over the 

communication link to the remote viewing 

device, and in the selected video format in 

the particular resolution, the selected video 

format being a progressive video format 

which has a frame rate of less than 

substantially 24 frames per second using a 

third set of temporal and spatial 

parameters associated with each image, a 

version or versions of one or more of the 

video images to the remote viewing device, 

wherein the communication link traverses 

an external broadband connection between 

the remote computing device and the 

network environment; and

displaying only the one or more requested 

specific streams of the video images on the 

remote computing device.

Id. at claim 1. 

B. Castle Retail’s Rule 12(b)(6) Motion to Dismiss

In October 2020, Hawk sued Castle Retail for infringing the ’091 patent based on the security surveillance video 

operations used by Castle Retail in its grocery stores. J.A. 

269–276; J.A. 275 ¶ 23. Hawk alleged that “[t]he ’091 Patent provides solutions for the problem of more and more 

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6 HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC

users demanding higher and higher quality video content 

for viewing, creating, and editing (which requires additional data) while the physical infrastructure for datatransmission remains as it has been for decades.” J.A. 274 

¶ 17. According to the complaint, the ’091 patent claims

“teach methods for generating, transmitting, receiving, 

and viewing high-quality video[—]including on a remote 

device such as a smart phone[—]with the innovation of significantly reducing the data-transmission burden.” Id. 

¶ 18.

In December 2020, Castle Retail moved to dismiss under Rule 12(b)(6) based on its assertion that the ’091 patent 

was invalid under 35 U.S.C. § 101. J.A. 314–338. It argued 

that the ’091 patent claims failed the two-step analysis set 

forth in Alice Corp. v. CLS Bank International, 573 U.S. 

208 (2014). J.A. 318. The claims, it asserted, failed Alice

step one because they are directed to the “abstract concept” 

of “collecting, manipulating, displaying, and storing information,” J.A. 326, and failed Alice step two because they 

provide “conventional components” that “provide no inventive concept,” J.A. 328–329. Castle Retail attached to 

its motion “independent evidence” (the “Palmer” and 

“Washino” references) that “confirms that the steps in the 

’091 patent claims merely involve ‘well-understood, routine, conventional activity.’” J.A. 332–337 (citation omitted). 

Hawk opposed the motion to dismiss in February 2021. 

J.A. 436–456. It argued that Castle Retail was “prematurely seek[ing] to dispose of the case when material facts 

are in dispute” and that no claim terms had been construed. J.A. 436. And it contended that the ’091 patent 

claims passed both Alice steps. J.A. 439–448. As for Castle 

Retail’s reliance on Palmer and Washino, Hawk asserted 

that it was “both premature and substantively improper at 

the motion to dismiss stage and is actually not relevant (being instead highly confusing and misleading) for Section 

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HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC 7

101 analysis.” J.A. 450–451. Castle Retail replied on 

March 2, 2021. J.A. 459–470. 

On March 10, 2021, the district court held what it 

called a “technology briefing and Patent Scheduling Conference” (“technical briefing”). J.A. 30 (Dkt. 36), 472–550. 

According to the district court, it conducts a technical briefing “in each patent case typically.” J.A. 474. Attorneys for 

both parties and Castle Retail’s CEO, Rick James, attended the technical briefing. J.A. 30 (Dkt. 36). There, 

Hawk “gave an overview of patent technology as related to 

’091 Patent technology”; Castle Retail “presented schematic outline of ’091 Patent technology with timeline of development of related technologies and with limitations of 

patent application”; and “[s]tatements [were] heard as to 

abstraction and Alice two-step analysis.” Id. The district 

court also explained at the technical briefing that it had the 

Palmer and Washino references “that were filed . . . in support of the memorandum in connection with the motion under 12(b)(6),” and that it had “looked through those.” J.A. 

477. Castle Retail’s counsel also discussed at the technical 

briefing other references—including “Hendricks” and “Allen”—and referenced them in its schematic PowerPoint 

outline. J.A. 492–497; J.A. 551–573. 

Hawk states that it “sought and was granted an opportunity by the trial court to provide its own written technical 

report to further describe the patented invention at issue”

and that it did so on March 18, 2021. Appellant’s Br. 7 

(citing J.A. 574–583). This 10-page document is described 

as a “declaration” from one of the ’091 patent’s named inventors, Barry H. Schwab. J.A. 574–583. 

C. The District Court’s Decision

On September 15, 2021, the district court granted Castle Retail’s motion to dismiss. Hawk Tech. Sys., LLC v. 

Castle Retail, LLC, No. 2:20-cv-02766-JPM-tmp, 2021 WL 

5832793, at *1 (W.D. Tenn. Sept. 15, 2021) (Decision). It 

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8 HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC

found that the ’091 patent claims failed the two-part Alice

test. Id. at *6.

As for Alice step one, the district court explained that 

the ’091 patent “essentially discloses a method of displaying and storing digital video taken from multiple cameras.” 

Id. at *1. It noted that Hawk contended that the patent

provides a solution that allows for “conserving bandwidth 

while preserving quality” and that the claims implement 

that solution. Id. at *4. It found, though, that “even using 

Hawk’s description of the limitations, it is not clear how the 

claims do more than take video surveillance and digitize it 

for display and storage in a conventional computer system.” Id. And it explained that surveillance monitoring

“has been a part of business practices since video cameras 

have been available.” Id. 

It also explained that, although Hawk identified the 

“temporal and spatial parameters” as the inventive concept 

and argued that “converting the data using” those “parameters” changes the nature of the data, neither the claims 

nor the specification “explain what those parameters are or 

how they should be manipulated.” Id. And any manipulation, it continued, “without additional concrete guidance 

would be a claim directed to an abstract idea.” Id. The 

court thus found that the ’091 patent is directed to an abstract idea: “a method for storing and displaying video.” Id. 

at *3 (heading) (capitalization altered). And it rejected 

Hawk’s contention that claim construction issues prevented that finding, as Hawk had neither identified any 

such issues nor shown how claim construction would render the claims non-abstract. Id. 

As for Alice step two, the district court explained that

the claimed “analog-to-digital converter” and “personal 

computer based system” “are not technological improvements but rather generic computer elements” and that the 

“parameters and frame rate, considering how they are defined in the claims and specification, similarly, do not 

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HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC 9

appear to be more than manipulating data (in this case, 

images) in such a way that has been found to be abstract.” 

Id. at *5. It also found that the claims, “read in light of the 

specification, do not show a technological improvement in 

video storage and display because the limitations can be 

implemented using generic computer elements,” and the 

“specification and claims do not explain or show how the 

monitoring and storage is improved, except by using already existing computer and camera technology.” Id. 

The district court further rejected what it viewed as 

“Hawk’s attempt to create a factual dispute” over what was 

routine and conventional, explaining that, because the patent fails to disclose how to achieve the end result, a skilled 

artisan must be able to use routine and conventional methods to do so. Id. at *6. According to the court, “[n]othing in 

the claims, understood in light of the specification, requires 

anything other than off-the-shelf, conventional computer, 

network, and display technology gathering, sending, and 

presenting the desired information.” Id. (quoting Elec. 

Power Grp., LLC v. Alstom SA, 830 F.3d 1350, 1355 

(Fed. Cir. 2016)). 

The district court granted Castle Retail’s motion to dismiss and entered judgment against Hawk. J.A. 13. Hawk 

appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

DISCUSSION

We review the grant of a Rule 12(b)(6) motion to dismiss under the law of the applicable regional circuit—here, 

the Sixth Circuit. Universal Secure Registry LLC v. Apple, 

Inc., 10 F.4th 1342, 1345–46 (Fed. Cir. 2021). The Sixth 

Circuit reviews Rule 12(b)(6) dismissals de novo, “construing the complaint in the light most favorable to the plaintiffs, accepting their well-pleaded factual allegations as 

true, and drawing all reasonable inferences in their favor.” 

Allied Erecting & Dismantling Co. v. Genesis Equip. & 

Mfg., Inc., 805 F.3d 701, 707 (6th Cir. 2015) (citation omitted). “[W]e need not accept as true legal conclusions or 

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10 HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC

unwarranted factual inferences.” DirecTV, Inc. v. Treesh, 

487 F.3d 471, 476 (6th Cir. 2007) (citation omitted). And 

“[c]onclusory allegations or legal conclusions masquerading as factual allegations will not suffice.” Bishop v. Lucent 

Techs., Inc., 520 F.3d 516, 519 (6th Cir. 2008).

Section 101 of the Patent Act states: “Whoever invents 

or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful 

improvement thereof, may obtain a patent therefor, subject 

to the conditions and requirements of this title.” 35 U.S.C. 

§ 101. But § 101 “contains an important implicit exception: 

Laws of nature, natural phenomena, and abstract ideas are 

not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 

208, 216 (2014) (citations omitted). The Supreme Court

has articulated a two-step test for examining patent eligibility when a patent claim allegedly involves such patent

ineligible subject matter. Id. at 217–18. Under this “Alice” 

test, a claim falls outside § 101 if (1) it is directed to a patent-ineligible concept like an abstract idea, and (2) it lacks 

elements sufficient to transform the claim into a patenteligible application. SAP Am., Inc. v. InvestPic, LLC, 898 

F.3d 1161, 1166–67 (Fed. Cir. 2018). 

We review § 101 patent eligibility under Federal Circuit law. Smart Sys. Innovations, LLC v. Chi. Transit 

Auth., 873 F.3d 1364, 1367 (Fed. Cir. 2017). Patent eligibility is ultimately a question of law that may be based on 

underlying factual findings. Berkheimer v. HP Inc., 

881 F.3d 1360, 1365 (Fed. Cir. 2018). Patent eligibility

may be resolved on a Rule 12(b)(6) motion “where the undisputed facts, considered under the standards required by 

that Rule, require a holding of ineligibility under the substantive standards of law.” SAP Am., 898 F.3d at 1166. 

A.

The district court found that the ’091 patent claims are 

directed to an abstract idea and that they do not include 

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inventive concepts that could transform the subject matter 

into an eligible application of the abstract idea. We agree.

1. Alice step one

In this case, under Alice step one, we consider whether 

the claim is directed to an abstract idea. Among other 

things, we examine “what the patent asserts to be the focus 

of the claimed advance over the prior art.” Solutran, Inc. 

v. Elavon, Inc., 931 F.3d 1161, 1168 (Fed. Cir. 2019) 

(cleaned up). In doing so, we focus on the language of the 

asserted claims, considered in light of the specification. Yu 

v. Apple, 1 F.4th 1040, 1043 (Fed. Cir. 2021). 

Here, the district court concluded that the ’091 patent

claims are directed to the abstract idea of “storing and displaying video.” Decision, at *3; see also id. at *5 (“[T]he 

’091 Patent is directed to the abstract idea of video storage 

and display . . . .”). We agree. 

The claims are directed to a method of receiving, displaying, converting, storing, and transmitting digital video 

“using result-based functional language.” Two-Way Media 

Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1337 

(Fed. Cir. 2017). They require the functional results of “receiving video images,” “digitizing any of the images not already in digital form,” “displaying one or more of the 

digitized images,” “converting one or more of the video 

source images into a selected video format,” “storing at 

least a subset of the converted images,” “providing a communications link,” “receiving . . . a request to receive one or 

more specific streams of the video images,” “transmitting

. . . a version of one or more of the video images,” and “displaying only the one or more requested specific streams of 

the video images.” ’091 patent at claim 1. 

The claims are similar to those we have found to be directed to abstract ideas. For example, we have held that 

“encoding and decoding image data and . . . converting formats, including when data is received from one medium 

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12 HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC

and sent along through another, are by themselves abstract ideas.” Adaptive Streaming Inc. v. Netflix, Inc., 836 

F. App’x 900, 903 (Fed. Cir. 2020) (collecting cases). The

’091 patent claims are directed to those same general abstract ideas—displaying images, converting them into a

format, transmitting them, and so on. 

Hawk argues that the ’091 patent claims are directed 

not to an abstract idea but to “a solution to a technical problem, specifically a multi-format digital video product system capable of maintaining full-bandwidth resolution 

while providing professional quality editing and manipulation of images.” Appellant’s Br. 19–20 (cleaned up). It asserts that the technical problem is “conserving bandwidth 

while preserving data” and that this solution is a “specific 

implementation,” which can be achieved “by performing 

special data conversion of the video streams” and by digitizing and converting data to “change the nature of the 

data.” Id. at 20, 27–28. The claims, Hawk concludes, 

therefore are not abstract but are directed to eligible subject matter. Id. at 28 (citing TecSec, Inc. v. Adobe Inc., 978 

F.3d 1278 (Fed. Cir. 2020); Koninklijke KPN N.V. v. Gemalto M2M GmbH, 942 F.3d 1143 (Fed. Cir. 2019)). 

Hawk’s arguments fail. The analysis at step one “must 

focus on” the claim language. ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 769 (Fed. Cir. 2019) (“Even a 

specification full of technical details about a physical invention may nonetheless conclude with claims that claim 

nothing more than the broad law or abstract idea underlying the claims.”). Here, the claims themselves do not disclose performing any “special data conversion” or otherwise 

describe how the alleged goal of “conserving bandwidth 

while preserving data” is achieved. Nor, as the district 

court found, do the claims (or the specification) explain 

“what th[e] [claimed] parameters are or how they should be 

manipulated.” Decision, at *4. And again, converting information from one format to another—including changing 

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the format of video data or compressing it—is an abstract 

idea. Adaptive Streaming, 836 F. App’x at 903. 

Nor are the claims here like those we found eligible in 

TecSec and Koninklijke. The claims in TecSec, for example,

provided a specific solution for computer data networks

and required specific features like “accessing an ‘object-oriented key manager’ and specified uses of a ‘label’ as well as 

encryption for the access management.” 978 F.3d at 

1295–96 (citation omitted). The claims in Koninklijke provided a specific, concrete solution for catching previously 

undetectable systematic errors in data transmission systems—“by varying the way check data is generated by modifying the permutation applied to different data blocks.” 

942 F.3d at 1151 (citations omitted). In both cases, the 

claims “sufficiently capture[d] the inventors’ asserted technical contribution to the prior art by reciting how the solution specifically improves the function of prior art.” Id. 

The claims here simply do not do that: They fail to recite a specific solution to make the alleged improvement—conserving bandwidth while preserving 

quality—“concrete” and at most recite abstract data manipulation. Id. at 1152. Stated otherwise, the ’091 patent

claims lack “sufficient recitation of how the purported invention improve[s] the functionality” of video surveillance 

systems and are “recited at such a level of result-oriented 

generality that those claims amount[] to a mere implementation of an abstract idea.” Id. (citation omitted).

Because the claims of the ’091 patent are directed to an 

abstract idea, we proceed to Alice step two to determine if

the claims are transformed into subject matter beyond the 

abstract idea itself. 

2. Alice step two

At Alice step two, we consider the claim elements—individually and as an ordered combination—“to assess 

whether [they] transform the nature of the claim into a 

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14 HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC

patent-eligible application of the abstract idea.” Two-Way 

Media, 874 F.3d at 1338 (citation omitted). 

The district court found that the claims, “read in light 

of the specification, do not show a technological improvement in video storage and display because the limitations 

can be implemented using generic computer elements,” and 

that the “specification and claims do not explain or show 

how the monitoring and storage is improved, except by using already existing computer and camera technology.” Decision, at *5. It thus found that the claims failed Alice step 

two. We agree. 

Hawk argues that the claims recite an inventive solution—one “that achieves . . . the benefit of transmitting the 

same digital image to different devices for different and 

perhaps divergent purposes, while using the same bandwidth,” and that “reference[s] specific tools (such as an analog-to-digital converter, where necessary), specific

parameters (such as three different sets of temporal and 

spatial parameters), and even specific frame rates (such as 

24 frames per second).” Appellant’s Br. 31–32 (citing ’091 

patent at claim 1 and claim 6). But even if the claims 

achieved this purported solution, they “only use[] generic 

functional language to” do so and require nothing “other 

than conventional computer and network components operating according to their ordinary functions” (e.g., a “personal computer,” “storage device,” “external viewing 

device,” etc.). Two-Way Media, 874 F.3d at 1339 (citation 

omitted). 

We recognize that the claims include “parameters.” 

But the claims fail to specify precisely what the parameters 

are and the parameters at most concern abstract data manipulation—image formatting and compression. Hawk 

does not dispute that the claims recite conventional components—a “personal computer,” “video sources,” an “analogto-digital converter,” a “storage device,” an “external viewing device,” a “communications link,” a “remote viewing 

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device,” and a “remote computing device”—to perform the 

method. See Appellant’s Br. 46 & n.10 (explaining that the

’091 patent’s solution uses “existing commercial hardware 

(computer and camera) devices”); Appellant’s Reply Br. 17 

n.8. The ’091 patent itself confirms that the invention is 

meant to “utiliz[e] existing broadband media and other conventional technologies.” ’091 patent at 1:64–2:2; see also

id. at 2:15–20, 5:39–45, 7:14–26. Simply stated, “[n]othing 

in the claims, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, 

sending, and presenting the desired information.” Elec. 

Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. 

Cir. 2016).

Nor do we see—nor has Hawk pointed to—anything inventive in the ordered combination of the claim limitations. 

Indeed, “merely reciting an abstract idea performed on a 

set of generic computer components, as [the claims] do[]

here, would ‘not contain an inventive concept.’” Two-Way 

Media, 874 F.3d at 1339 (quoting BASCOM Glob. Internet 

Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 

(Fed. Cir. 2016)). 

We therefore find that the ’091 patent claims fail to 

transform the abstract idea into something more and thus 

fail Alice step two. 

We hold that the ’091 patent is patent ineligible because its claims are directed to an abstract idea and fail to 

transform that abstract idea into patent-eligible subject 

matter. 

B. 

Hawk asserts that the district court erred in its decision to grant Castle Retail’s motion to dismiss because the 

motion was procedurally premature under Rule 12. Appellant’s Br. 6–11. According to Hawk, the district court considered testimony and evidence—Castle Retail’s cited 

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16 HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC

references, Castle Retail’s schematic PowerPoint, Castle 

Retail’s CEO’s statements at the technical briefing, and 

Hawk’s post-technical briefing report—in deciding the motion. Id. at 7–9. Hawk contends that under Rule 12(d), the 

district court was required to convert the motion to a Rule 

56 motion for summary judgment. Id. at 9–10 (relying on 

CODA Dev. S.R.O. v. Goodyear Tire & Rubber Co., 916 F.3d 

1350 (Fed. Cir. 2019)). Hawk argues that we must reverse 

or vacate the district court’s decision so that the parties 

may take discovery to fully develop the evidence, including 

expert testimony and reports. Id. at 10–11. We disagree. 

Because this is a procedural issue not unique to patent 

law, we look to the law of the applicable regional circuit—

here, the Sixth Circuit. See Athena Diagnostics, Inc. v. 

Mayo Collaborative Servs., LLC, 915 F.3d 743, 755–56

(Fed. Cir. 2019) (applying First Circuit law to determine 

whether the district court erred in dismissing under Rule 

12(b)(6) when the defendant had included an expert declaration with its opposition). Under Sixth Circuit law, a motion to dismiss must ordinarily be decided without resort to 

matters outside the pleadings. Gavitt v. Born, 835 F.3d 

623, 640 (6th Cir. 2016). Under Rule 12(d), if “matters 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) (emphasis 

added). “[A] district court’s failure to expressly reject evidence attached to the briefs triggers its duty to treat the 

motion as one for summary judgment.” Bates v. Green 

Farms Condo. Ass’n, 958 F.3d 470, 484 (6th Cir. 2020). 

As explained above, Castle Retail attached the Palmer 

and Washino references to its motion and presented and 

submitted a schematic PowerPoint that discussed those 

and other references. Hawk also alleges that it submitted 

a “declaration” or “report” after the technical briefing. Because matters outside the pleadings were presented to the 

district court, under Sixth Circuit law, the district court

should have either (1) expressly rejected those matters or 

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(2) converted the motion to one for summary judgment and 

notified the parties that it planned to convert the motion 

and give them a reasonable opportunity to present all the 

pertinent material. Bates, 958 F.3d at 484. Here, the court 

erred when it did not expressly reject the outside matters 

or treat the motion as one for summary judgment under 

Rule 56. But we hold that the district court’s error was 

harmless.

The Sixth Circuit has “held that the failure to convert 

the motion to a motion for summary judgment is not reversible error if the court’s ‘rationale’ in no way ‘hinged on 

the additional information provided there.’” Id. (quoting 

Yeary v. Goodwill Indus.-Knoxville, Inc., 107 F.3d 443, 445 

(6th Cir. 1997)). In other words, if the appellate court can 

justify the dismissal without reference to any extraneous 

matters, it can treat the error as harmless. Id. (citing 5C 

CHARLES ALAN WRIGHT ET AL., Fed. Prac. and Proc. § 1364, 

at 63 (3d ed. Supp. 2019)). 

Our review of the district court’s opinion here indicates

that the district court’s analysis did not hinge on the additional information provided. Yeary, 107 F.3d at 445; Bates, 

958 F.3d at 484. Although the record does not reflect that 

the district court expressly rejected these materials, the 

district court does not discuss these materials in its decision. Hawk argues that the district court’s opinion 

“draw[s] upon” the technical briefing, pointing out that the 

opinion notes that the district court held a technical briefing and references statements that Hawk’s counsel made 

at the technical briefing. Appellant’s Br. 9 (citing Decision, 

at *2, 4). But Hawk does not establish that the district 

court’s decision hinged on any attorney statements that 

raise new facts that constitute matter beyond the pleadings. Further, that the district court held a technical briefing is simply a procedural fact. To be sure, where a district 

court holds a technical briefing, e.g., a technical tutorial, 

and no matters outside the pleading are presented, it need 

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18 HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC

not convert the motion to one for summary judgment under 

Rule 56. 

Hawk also argues that Castle Retail’s CEO was a witness at the technical briefing; that his statements at the 

technical briefing prompted the district court to discuss 

“off-the-shelf components”; and that the district court then 

relied on this exchange when it used the phrase “off-theshelf” in its decision granting the motion to dismiss. Appellant’s Br. 8. This misconstrues the record. In using the 

phrase “off-the-shelf” in its opinion, the district court was 

plainly referencing case law.2 

Hawk does not point to any support in the record to 

suggest that the district court in any way hinged its decision on extraneous materials. Hawk claims support in our 

decision in CODA Dev. S.R.O. v. Goodyear Tire & Rubber 

Co., 916 F.3d 1350 (Fed. Cir. 2019). But CODA is distinguishable from this case. In CODA, the district court had 

extensively relied on outside material—an article—in its 

analysis supporting its decision to dismiss a complaint for 

correction of patent inventorship and trade secret misappropriation. 916 F.3d at 1356, 1360 (explaining that “the 

bulk of the [district] court’s prior-art analysis rested on the 

Hrabal article” and that the court “used the Hrabal article 

to ‘determine whether it was a 2008 public disclosure of 

something Coda now claims was secret when disclosed to 

Goodyear in 2009’”). We find no such reliance in this case. 

We also note that the district court here “expressly 

stated that it was ruling under 12(b)(6), and its analysis 

was based wholly on the legal sufficiency, vel non, of the 

plaintiff’s claim.” Yeary, 107 F.3d at 445. And, as shown

above, the dismissal here can be justified without reference 

to any extraneous matters. Bates, 958 F.3d at 484. Nor, 

2 And as Castle Retail notes, the ’091 patent itself 

uses the phrase “off-the-shelf.” ’091 Patent at 4:4.

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HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC 19

we observe, does Hawk meaningfully argue that its outside

“report” from the named inventor raises any specific factual issues. That is unsurprising: Again, the practices of 

displaying images, converting them, and transmitting 

them, “with nothing more, are practices whose implicit exclusion from § 101 undergirds the information-based category of abstract ideas.” FairWarning IP, LLC v. Iatric Sys., 

Inc., 839 F.3d 1089, 1097–98 (Fed. Cir. 2016) (cleaned up) 

(rejecting argument that the district court wrongly found 

facts outside the pleadings). 

Finally, we note that Hawk’s opposition brief never asserted that the district court was required to treat the motion as a motion for summary judgment. See Bates, 958 

F.3d at 485. To be sure, Hawk argued that the motion was 

“premature,” J.A. 436, and that Castle Retail’s reliance on 

the references was “premature and substantively improper,” J.A. 450. But it failed to argue as it now does that 

Rule 12(d) applied; it failed to cite the CODA case it now 

relies on; and it failed to move the district court to convert 

the motion into one for summary judgment under Rule 56 

and deny the motion so that Hawk could conduct full discovery. And although Hawk did ask the district court to 

“alternative[ly]” “afford . . . Hawk the opportunity to amend 

its Complaint,” J.A. 455, Hawk did so in a single conclusory 

sentence at the end of its opposition and without explaining 

how it proposed amending the complaint and what difference the amendment would make. The record also does not 

show that Hawk ever moved to amend. 

In short, we are not persuaded to fault the district court 

under these circumstances, and we thus treat its error in 

failing to convert the motion to dismiss into a motion for

summary judgment as harmless. See Bates, 958 F.3d at 

485. 

CONCLUSION

We have considered Hawk’s other arguments but find 

them unpersuasive. For the above reasons, we affirm the 

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20 HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC

district court’s grant of Castle Retail’s Rule 12(b)(6) motion 

to dismiss based on subject-matter ineligibility under 

§ 101.

AFFIRMED

COSTS

No costs.

Case: 22-1222 Document: 30 Page: 20 Filed: 02/17/2023