Accused infringers often get hung up on the issue of representative claims in § 101 motions. Typically, a patent complaint will assert infringement of a patent, and offer specific details of how at least one claim from the patent is infringed. In the District of Delaware, at least, the patentee is free to later assert additional claims, or drop the original claim, without amending the complaint.
This can cause problems for accused infringers when they move to dismiss the entire complaint on § 101 grounds. Sometimes patents have a lot of claims, and the Court may not want to address the full scope of the claims one-by-one, when some of them—or, more likely, most of them—will never be asserted at trial.
Instead, accused infringers often try to argue that some subset of the claims (ideally a single one) is representative of the rest. Sometimes it works, and sometimes it doesn't.
Yesterday, the Court issued an opinion on a § 101 motion to dismiss where the accused infringer took a different tack. Instead of arguing that any of the claims were representative, it argued that the patentee had only asserted one specific claim in the complaint, and that that claim was invalid:
Rather than tackle the sometimes-sticky issue of how to select a representative claim or otherwise address an assortment of claims, Whatfix’s motion attacks only claim 1 of each patent. Whatfix argues that the complaint is limited to only claim 1 of each patent because it uses only those claims as examples for infringement allegations and then makes immaterial general allegations of infringement such as “one or more claims,” “at least claim 1,” “at least one claim,” and the like.
Partner One Acquisitions Inc. v. Whatfix Private Limited, C.A. No. 25-209, at 1 (D. Del. Jan. 27, 2026).
The Court actually granted the motion in part and held ineligible the one specific claim that the patentee addressed. But it denied the motion as to the remaining claims:
Whatfix’s gambit might work for a different complaint, but here, [patentee] Assima’s complaint clearly puts all claims of the 007 patent on the table. Thus, only claim 1 of the 007 patent is dismissed, and the rest of the patent’s claims stay in the case.
* * *
[W]e are not persuaded that Assima alleges infringement of only claim 1 of the asserted patents in its complaint. Though Assima certainly focuses upon claim 1 of the [two asserted] patents, it expressly notes that those claims are examples of Whatfix’s alleged infringement — rather than the sole bases for infringement. . . . Assima also specifically alleges that “[i]ndependent claims 21-23 and 27 of the 007 patent also recite unconventional technological advancements over the prior art that are similar to the unconventional technological advancements recited in independent claim one.”
Id. at 1, 30-31. Thus, the case will proceed as to both asserted patents.
Could This Have Worked?
It's interesting to game out how this might have worked even if the argument had gone the accused infringer's way. If the Court found that the complaint asserted only a single claim, and that claim was valid, would it have granted the motion to dismiss?
It tend to think that yes, it would have. While the generally-applied rule in D. Del. is that the complaint only has to allege infringement of one valid claim, it still has to allege infringement of one claim. If that single claim has been held to be invalid, I tend to think the Court would grant the motion.
But I don't see any reason why the Court would preclude the patentee from later amending to add more claims. As the Court notes in the opinion here, the Third Circuit standard for amending a complaint is very liberal.
So, could this have worked? Not really. Even if the defendant won the motion to dismiss based on the single claim, the patentee would almost certainly be able to amend to assert one or all of the remaining claims. At that point, the parties are back where they started, with the defendant likely filing another motion to dismiss that, this time, addresses all of the claims.
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