Patent lawsuits often involve multiple patents and dozens of
asserted patent claims. When asserting these claims lack patentable
subject matter, it can be more convenient to describe the asserted
claims in one representative form, or as some courts require,
establish a "representative claim" that is generic to all
claims and whose patent-eligibility can be imputed to all asserted
claims. The District of Delaware recently denied a motion to
dismiss for lack of patentable subject matter because the defendant
failed to establish a representative claim.
In JSDQ Mesh Technologies LLC v. Fluidmesh Networks,
LLC, Case No. 16-cv-212-GMS (D. Del. Sept. 6, 2016), Fluidmesh
argued the asserted claims lacked patentable subject matter under
the Alice/Mayo framework. Rather than analyze
patent-eligibility on the merits, the court first asked whether it
was proper to do so by determining (1) whether a representative
claim had been established; (2) whether claim construction would
impact the court's section 101 analysis; and (3) whether any
set of facts could exist that would render the claims
The court focused on the representative claim issue, holding
Fluidmesh had failed to carry its burden, as the moving party, of
establishing a representative claim. Among the four patents,
Fluidmesh identified one claim that it felt was representative, but
JSDQ noted several other features in the other claims that would
affect a section 101 analysis. The court agreed with JDSQ and found
Fluidmesh's discussion of the representative claim to be
"conclusory" and without proper analysis.
The court then turned to the next two factors, whether claim
construction or facts could exist that would affect patent
eligibility. Again citing a lack of analysis in Fluidmesh's
position on these issues, the court found there
could be some claim construction or facts
that would impact its analysis, and that Fluidmesh did not prove
Patent infringement cases can involve so many claims and patents
that a short cut is often the only way to conduct a claim analysis
in any meaningful way. Here, the defendant could have bolstered its
position by focusing more on the preliminary analysis that would
allow the court to reach the question of patent-eligibility, and
specifically, establishing a representative claim that can be
analyzed to determine patent-eligibility of all claims.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
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