Holding: At the motion‑to‑dismiss stage, a court may construe claim terms when the parties are given proper notice and a chance to argue their positions. Absent that process, the court must apply the construction advanced by the non‑moving party if a term’s meaning is uncertain.
Adnexus owns US Patent No. 8,719,101 which claims a system and method of online advertising. Adnexus sued Meta for infringement of at least claim 1 of the ‘101 Patent, which among other limitations, recites a method of online advertising that includes retrieving a user profile from a visitor information data base that “comprises at least delivery method preferences and demographic information.” After Meta told Adnexus of its plan to file a Rule 12(b)(6) motion to dismiss for failure to state a claim, Adnexus filed an amended complaint including a claim chart and preliminary infringement contentions mapping the limitations of claim 1 to Meta’s Lead Ads product.
Meta moved to dismiss Adnexus’s amended complaint, maintaining its argument that Adnexus had failed to state an adequate claim of direct infringement. In particular, Meta argued that Adnexus failed to adequately allege that Meta’s Lead Ads product required retrieval of a user profile including delivery method preferences as recited in claim 1 of the ‘101 Patent. The district court granted Meta’s motion to dismiss, holding that Adnexus made no allegation that Lead Ads retrieved a user profile that included delivery method preferences.
The Federal Circuit reviews dismissal pursuant to Rule 12(b)(6) using the law of the regional circuit. For this case, the applicable regional circuit was the Fifth Circuit. When evaluating a motion to dismiss in the Fifth Circuit, all allegations in the complaint are liberally construed and all reasonable inferences must be viewed in the light most favorable to the plaintiff. To survive a motion to dismiss, a complaint must state a claim for relief that is plausible.
Although Lead Ads included user contact information, the district court found that contact information is sufficiently distinct from delivery method preferences, and therefore could not satisfy the delivery method preferences limitation of claim 1 of the ‘101 Patent. The district court further held that the finding did not require claim construction. However, the Meta only prevailed on its motion to dismiss for lack of plausibility based on the district court’s implicit construction that the terms “delivery method preferences” and the term “contact information” are construed to be distinct.
If a person of ordinary skill in the art would understand the terms “delivery method preferences” and “contact information” to have any overlap, then Adnexus’s claim of infringement would be plausible. However, the district court’s decision depended on its particular construction of these terms to find Adnexus’s claims of infringement implausible. The Federal Circuit found this to be error.
A district court may engage in claim construction at the motion to dismiss stage, if the parties are given proper notice and allowed to present arguments regarding construction. As an alternative option, the district court may adopt the construction of the non-moving party for the purpose of evaluating the motion to dismiss. In this case, since the district court adopted a construction that favored Meta, the moving party, Adnexus should have been given the opportunity to present arguments as to its preferred construction.
The Federal Circuit also found that Adnexus adequately pled the its claim in its amended complaint. Although not required for adequate pleading, Adnexus provided claim charts that clearly mapped each claim limitation to the accused product. At the motion to dismiss stage, these allegations must be accepted as true. Since they state a plausible basis on which Meta’s Lead Ads product could infringe the ‘101 Patent, the motion to dismiss should have been denied.
Federal Circuit Precedential 
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