Last week, Judge Robinson issued a short memorandum order in Eidos Communications v. Skype Tech. SA, C.A. No. 09-234-SLR (D. Del. Nov. 9, 2010), denying a Rule 12(b)(6) motion to dismiss. The motion sought dismissal based on an attached affidavit, which stated that certain steps of an asserted method claim take place only on servers in “Luxembourg, Ireland and the Netherlands.” Id. at 6. Thus, the method is not practiced “within the United States” as required by 35 U.S.C. § 271.
Judge Robinson, however, declined to consider the affidavit, holding that it did not “fall within the narrow category of documents considered on a motion to dismiss under Rule 12(b)(6).” Id. at 6 (citing Ricoh Co. v. Oki Data Corp., Civ. No. 09-694-SLR, 2010 WL 3908603 (D. Del. Sept. 30, 2010)). That narrow category includes, among other things, documents attached to the complaint that form the basis of the plaintiff’s claims. Eidos, C.A. No. 09-234-SLR, at 3. Without the benefit of the affidavit, the 12(b)(6) motion was denied.
Judge Robinson also refused to convert the motion into a Rule 56 motion for summary judgment, because “there has been no opportunity for reasonable discovery by either party.” Id. at 7.