Heightened Pleading Requirement for Direct Patent Infringement Action Effective December 1, 2015

On December 1, 2015, revised Federal Rule Civil Procedures went into effect and changed pleading requirements for patent cases. The new rules were adopted by the Supreme Court on April 29, 2015, based on recommendations of the Judicial Conference of the United States and will eliminate Form 18.

Form 18 set for a bare bones requirement for patent infringement complaint and merely required the plaintiff to provide notice of its claims. Form 18 simply required: (1) an allegation of jurisdiction; (2) a statement that plaintiff owns the patents; (3) a statement that defendant has been infringing the patent by making, selling and using the device embodying the patent; (4) a statement that plaintiff has given the defendant notice of its infringement; and (5) a demand for injunction and/or damages.

With the elimination of Form 18, all direct patent infringement allegations will be subject to general pleading requirements under Ashcroft v. Iqbal, 556 U.S. 662 (2009) and Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) (“Iqbal/Twombly”). Under Iqbal/Twombly, a complaint must recite “enough facts to state a claim to relief that is plausible on its face.” Thus, plaintiff is required to demonstrate that their claims are plausible, rather than just put defendant on notice of their claims.

However, while it is clear that the new rules will require a heightened pleading, additional guidance is needed as to specific requirements. Based on pending legislation, it is possible that these new requirements will at least require plaintiffs to: (1) identify specific claims that are alleged to be infringed, and (2) specifically identify accused products. Further, these rules may require some specificity as to how the asserted claims are infringed by the accused products.

Pleading requirements for indirect patent infringement, which were already subject to Iqbal/Twombly standard, remain unchanged. Gibbons P.C. will continue to monitor patent litigation activity and report any changes in pleading requirements for direct patent infringement.

Christopher H. Strate is a Director in the Gibbons Intellectual Property Department.
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