It's well known that, in evaluating a motion to dismiss, the Court is limited on what it can consider to, e.g. the four corners of the complaint, documents incorporated therein, and things the Court can take judicial notice of.
Rule 12 recognizes sets out that a Court can convert a motion to dismiss to an SJ motion if it wants to consider matters outside of the pleadings:
Result of Presenting Matters Outside the Pleadings. 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. All parties must be given a reasonable opportunity to present all the material that is pertinent to the motion.
FRCP 12(d).
Most judges don't like to convert 12(b)(6) or 12(c) motions to summary judgment motions. I imagine that's in part because summary judgment motions don't make a lot of sense early in the case, when 12(b)(6) and 12(c) motions are typically filed, and before fact discovery has concluded. In fact, most or maybe all of our judges preclude summary judgment motions early in the case
Last week, Judge Andrews took a different path. In Glanta Ltd. v. Soapy Care Ltd., C.A. No. 24-365-RGA (D. Del.), the defendant filed a motion to dismiss on § 101 grounds, and the plaintiff responded by attaching a lengthy declaration describing how the patents were not abstract:
Plaintiff's arguments in its answering brief (D.I. 25) rely almost entirely upon the concurrently submitted Declaration of Dr. Gerard Lacey and its accompanying exhibits. . . . There is no indication that Dr. Lacey's Declaration falls within the band of enumerated exceptions, and I will thus not consider Dr. Lacey's Declaration in ruling upon this Motion to Dismiss.
Glanta Ltd. v. Soapy Care Ltd., C.A. No. 24-365-RGA, at 1-2 (D. Del. Mar. 26, 2026).
This declaration was so intertwined with the arguments that the Court felt it couldn't consider the motion without the declaration—but it also couldn't consider the declaration:
This leads, however, to a big problem. Plaintiff's arguments in its Answering Brief are so thoroughly intertwined with its reliance upon Dr. Lacey's Declaration that it is impossible to cleanly partition which of Plaintiff's arguments I should or should not be able to address at the motion to dismiss stage. . . . This pattern of reliance upon Dr. Lacey's Declaration for each of Plaintiff's arguments repeats continuously throughout the brief. As such, I think Plaintiff has effectively failed to respond adequately to Defendants' various arguments, absent reliance upon the improperly filed Declaration. Moreover, my refusal to consider Plaintiff's brief with Dr. Lacey's improperly submitted Declaration is no mere legal technicality. If I were to consider Plaintiff's arguments in connection with Dr. Lacey's arguments and evidence as laid out in his Declaration, I would effectively be "consider[ing] extraneous evidence submitted by [Plaintiff]" in its Answering Brief without "afford[ing] [Defendants] an opportunity to respond" adequately to this new evidence. . . .
Id. at 2-3.
The Court resolved this by granting the motion to dismiss without prejudice, and granting leave to file a motion to amend:
I think Plaintiff should be allowed to file a motion seeking leave to amend its complaint. Thus, I will dismiss Plaintiff's complaint without prejudice and grant Plaintiff leave to file a motion seeking leave to amend its complaint with such additional facts as it deems requisite to support its claim of patent eligibility.
For the forgoing reason, Defendants' Motion to Dismiss (D.I. 22) is GRANTED. The First Amended Complaint is DISMISSED without prejudice. Plaintiff is granted LEAVE TO FILE A MOTION SEEKING LEAVE TO AMEND its complaint within fourteen (14) days of entrance of this order.
Id. at 4-5.
The Court dismissed with leave to file a motion to amend, rather than simply granting leave to amend. This is a fine distinction but it can make a meaningful difference.
It has the practical effect of giving the defendant some control over the briefing on the § 101 issue. The defendant can oppose the amendment on futility grounds, raising their § 101 issue that way. Or they could stipulate to the amendment, and then file a new motion to dismiss. This second option has the advantage of essentially granting a free short stay while the timer for the motion to dismiss runs, plus they will get two briefs on the § 101 issue (opening and reply) rather than one (answering).
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