A Blog About Intellectual Property Litigation and the District of Delaware

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Judge Noreika issued an interesting order yesterday denying a § 101 motion to dismiss. According to the docket, shortly after the defendant filed its motion to dismiss—and contrary to what we found when we last looked at this—the Court directed the parties to meet-and-confer on a proposed schedule.

While the motion to dismiss was pending, the Court held a scheduling conference and issued a scheduling order. In it, the parties agreed to a real case narrowing proposal (without court intervention!), with plaintiff to initially cut back to 20 asserted claims per patent and 50 total by initial contentions, and then further cut back to 25 total just before final contentions.

After the Court entered the schedule, it addressed the defendant's § 101 motion to dismiss. It denied the motion to dismiss, citing the case narrowing language as showing that the plaintiff could assert more claims in the future:

ORAL ORDER DENYING 12 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 Complaint are directed to ineligible subject matter under 35 U.S.C. § 101. The Court is concerned that more claims will ultimately be asserted in this case beyond the five identified in the Complaint. Indeed, although Plaintiff has yet to provide its infringement contentions, the Scheduling Order in this case references assertion of up to 50 claims across the patents (to be later dropped to 20 claims). Given that Defendant's § 101 motion may require the Court to address claims that may not ultimately be asserted and appears to require the Court to address eligibility multiple times, IT IS HEREBY ORDERED that Defendant's motion to dismiss is DENIED. ORDERED by Judge Maryellen Noreika on 5/9/2024.

10X Genomics, Inc. v. Curio Bioscience, Inc., C.A. No. 23-1375, D.I. 34 (D. Del. May 9, 2024).

Judge Noreika has done something similar in the past, denying § 101 motions that address too many claims without reaching the merits. In some ways, this order does the reverse: it denies a § 101 motion without meeting the merits because it doesn't address all of the potential asserted claims.

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