Its not often I got to throw out a reference to A Critique of Pure Reason, so this one goes out to whatever liberal arts majors find themselves reading the blog for some reason.
As the aforementioned liberal artists among you may have gathered, today's post deals with the question of representative claims in the 101 analysis. In particular, to what extent can the few exemplary claims listed in the complaint stand in for the larger, inchoate, collection of claims that may ultimately be asserted when deciding a motion to dismiss.
In Redwood Techs., LLC v. Netgear Inc., C.A. No. 22-1272-GBW, D.I. 27 (Oct. 28, 2024), Judge Williams drew the hardest (most Kantian?) line on the issue that I have seen in recent years.
The operative complaint followed the common tactic of accusing the defendant's products of accusing "one or more claims" of several patents and then describing the alleged infringement of one claim per patent "for example." Id., D.I. 14 (Amended complaint).
Defendant moved to dismiss, discussing only those representative claims. Plaintiff opposed, arguing that the defendant "did not meet its burden of demonstrating representativeness," and noting that it "will be asserting additional claims of infringement." Id., D.I. 21 at 1.
Judge Williams was unpersuaded by this potential assertion of as-yet-unidentified claims and treated each of the claims referenced in the patent as representative:
The Court rejects Redwood's attempt to insert new patent claims through its opposition brief, as Redwood put forward only a skeletal argument and "did not file a motion for leave to amend [its] [Operative] Complaint." Redwood "may not amend [its] claims via [its] opposition to the motion[] to dismiss." "[T]he Court will consider only the claim[s] asserted in [Redwood's] [Operative] Complaint."
Thus, as Redwood fails to specifically identify a single, disputed claim left unaddressed by Netgear's motion, there are no "disputes over representativeness" for this Court to resolve.
Id., D.I. 21 at 5 (internal citations omitted).
Given the "skeletal" (spooky!) nature of the Redwood's briefing on this issue, it's not clear if the representativeness argument was doomed by the failure to specifically seek leave to amend, or if it could have passed muster with some additional detail. As an example, I sometimes see briefs that actually say something like "claim 39, which we definitely will be asserting, is totally different for the purposes of this analysis because it also claims a novel perpetual motion machine."
A possible answer lies in the Court's discussion of whether the invalidated infringement patent infringement claim (the court dismissed one of the patents but denied the motion as to two others) should be dismissed with or without prejudice:
With respect to claim 43 of the '754 patent, the Court rejects Redwood's request "to amend its FAC to address any deficiencies the Court may find." Sometimes a "party can attempt to re-plead by adding additional factual allegations." However, Redwood's request was "raised in passing," as opposed to being "squarely argued," and thus it is forfeited. . Moreover, Redwood has not identified any "new allegations [that] are sufficient to preclude dismissal." In fact, with respect to the '754 patent [the ineligible patent], Redwood's opposition provided no reasons for why leave to amend should be granted.
Id. at 27 (internal citations omitted).
The Court ultimately dismissed Count 2 of the operative complaint -- which as discussed above and argued by the plaintiff accused the defendant of infringing an inchoate collection of claims of the '754 patent -- with prejudice.
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