We noted last year how Judge Noreika has sometimes denied § 101 motions to dismiss that challenge large numbers of claims, holding that it is more efficient to deal with such motions at the SJ stage (where, presumably, the case would be narrowed).
This week, the Court addressed a § 101 motion in Global Tel*Link Corporation v. JACS Solutions, Inc., C.A. No. 23-500-MN (D. Del.). The motion seeks a § 101 ineligibility finding for 5 claims across 5 asserted patents—i.e., one claim per patent. That's all the plaintiff asserted in the complaint. Id., D.I. 20.
In response, the plaintiff (wisely) argued that deciding the motion now would be a waste of time:
JACS requests dismissal of ViaPath’s complaint based on an analysis of just a single claim of each patent. But ViaPath’s complaint is not limited to those claims, and JACS has not shown that the claims are representative of the patents’ 110 claims. At the very least, it would be a waste of judicial resources to address JACS’s merits arguments at this juncture when some of the challenged claims might not even be asserted at trial.
Id., D.I. 22 at 2. That puts the defendant in a bit of a catch 22 in light of Judge Noreika's previous orders: either the motion doesn't address all claims, or it addresses too many claims.
In response, the Court ordered the plaintiff to identify the asserted claims:
ORAL ORDER re 19 MOTION to Dismiss - Defendant has filed a motion to dismiss for failure to state a claim, arguing that five claims across the five patents identified in the First Amended Complaint are all directed to ineligible subject matter under 35 U.S.C. § 101. In its opposition, Plaintiff asserts that Defendant is attempting to "invalidate not just one or two of the asserted patents, but all five (containing 110 claims)." (D.I. 22 at 10). Contrary to Plaintiff's assertion, Defendant's § 101 motion does appear limited to just the five claims identified in the First Amended Complaint. That being said, although Plaintiff has yet to serve any initial infringement contentions here, the Court is concerned that more of those 110 claims will ultimately be asserted in this case beyond the five identified in the First Amended Complaint. Given that Defendant's § 101 motion may be impacted by a disparity in the claims asserted in Plaintiff's contentions as compared to the operative pleading, IT IS HEREBY ORDERED that, on or before October 27, 2023, Plaintiff shall notify the Court whether it will assert any additional claims beyond those identified in the First Amended Complaint.
Id., D.I. 29.
There are a few ways plaintiff could respond here—e.g., "yes," or "plaintiff will assert claims x, y, and z." But I imagine any response will involve the assertion of at least a few more claims, likely many more. It will be interesting to see how the Court treats the motion following the response. It may issue an order denying the motion, similar to the orders we discussed last year. Or it may ask the parties for further briefing on the additional claims. We'll have to wait and see.
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