How many 101 motions are too many? How many are too few?
There's a limit to the number of claims you can reasonably brief, especially if there's no agreement on representative claims. Moreover, if you're accused of infringing 2076 claims at the start of case, you can be fairly sure that most of them will drop out of the case naturally as the case progresses. So it might make sense to just eat the elephant bite by bite -- challenge 1 or 2 claims that are both vulnerable and likely to stay in the case.
On the other hand, dismissing just one or two patents might not do much to make your life easier going forward -- especially If the remaining patents are all directed to the same technology and implicate roughly the same products. So, maybe its better to shoot for the moon and see if you can stop the case in its tracks with a concerted onslaught of motion practice at the pleading stage.
And what then of the middle ground - a motion dismiss that disposes of 1/3 to 1/2 of the asserted claims -- a Goldilocks solution? A recent opinion by Judge Noreika suggests that it might be the worst of all possible options.
In Teladoc Health, Inc. v. American Well Corp.., C.A. No. 20-1377-MN, D.I. 30 (D. Del. May 7, 2021), the defendant was faced with just such a situation. Accused of infringing nine patents, American Well ("AmWell") moved to dismiss 3 (comprising 36 asserted claims between them) under section 101. They further noted in their briefing that while "all of Teladoc’s asserted patents are similar and thus infirm under Section 101 for similar reasons, Amwell focuses on these three at the outset to conserve the Court’s and parties’ resources." Id.
Judge Noreika denied the motion without addressing the merits, noting:
[I]t is not an efficient use of the Court’s time to address the patent eligibility of more than thirty claims from some (but not all) of the asserted patents – even with purportedly representative groupings – at the motion to dismiss stage, particularly where the parties dispute whether those claims are representative and where it appears that Defendant intends to challenge other patents under § 101 at some unspecified later stage.
At least in this instance, a more minimalist or maximalist approach might have fared better.
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