Monthly Archives: April 2013

Proper Pleading Standard Under Twombly for Patent Infringing Complaints–K-Tech Telecommunications

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

Federal CircuitOn April 18, 2013, the Federal Circuit issued another decision in which it analyzed the interplay between the standard form patent complaint in Form 18 of the Federal Rules of Civil Procedure and the Supreme Court’s decisions in Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009). Form 18 suggests that a plaintiff can satisfy the pleading standards for alleging direct patent infringement with relatively minimal allegations. The Federal Circuit determined that the Supreme Court’s decisions in Twombly and Iqbal did not pre-empt the appropriateness of Form 18. This decision follows a prior one (R+L Carriers, Inc. v. DriverTech LLC, (In re Bill of Lading Transmission & Processing System Patent Litigation), 681 F.3d 1323 (Fed. Cir. 2012)), in which the Federal Circuit considered the same question (and ruled in the same way).

The Federal Circuit noted that Form 18 requires that a plaintiff make:

(1) an allegation of jurisdiction; (2) a statement that the plaintiff owns the patent; (3) a statement that defendant has been infringing the patent ‘by making, selling, and using [the device] embodying the patent’; (4) a statement that the plaintiff has given the defendant notice of its infringement; and (5) a demand for an injunction and damages.

The Federal Circuit further noted that “Federal Rule of Civil Procedure 84 states that ‘the forms in the Appendix suffice under these rules and illustrate the simplicity and brevity that these rules contemplate’” and that  the Advisory Committee Notes “make[] clear that a proper use of a form contained in the Appendix of Forms effectively immunizes a claimant from attack regarding the sufficiency of the pleading.”

The question the Court next considered was whether Twombly and Iqbal pre-empted Form 18 and Rule 84. It determined that “as we made clear in R+L Carriers, to the extent any conflict exists between Twombly (and its progeny) and the Forms regarding pleadings requirements, the Forms control.”

In addressing the sufficiency of the complaint, the Court noted that it is generally not necessary for a plaintiff to identify the precise product being infringed, especially in instances where that information is within the control of the defendant and not publicly available.

Having said that, the Court then back-tracked somewhat about the detail required to meet the pleading standards, indicating that the bare allegations required in Form 18 might not be sufficient, depending on the complexity of the case and what would be required to give a defendant sufficient notice of the claims being brought against it.

A complaint containing just enough information to satisfy a governing form may well be sufficient under Twombly and Iqbal. R+L Carriers, 681 F.3d at 1334 n.6. “Resolution of that question will depend upon the level of specificity required by the particular form, the element of the cause of action as to which the facts plead are allegedly inadequate, and the phrasing of the complaint being challenged.” Id. (citing Twombly, 550 U.S. at 564 n.10 (noting that forms governing claims for negligence require sufficient detail to permit a defendant to “know what to answer”)). And we think it clear that an implausible claim for patent infringement rightly should be dismissed.

Form 18 in no way relaxes the clear principle of Rule 8, that a potential infringer be placed on notice of what activity or device is being accused of infringement.

Moreover, the Court cautioned that mere compliance with Form 18 may not be sufficient to meet the ethical requirements for filing a patent infringement action—plaintiffs must still conduct the required due diligence under Rule 11.

Satisfaction of Form 18 does not guarantee compliance with Rule 11 of the Federal Rules of Civil Procedure. That a complaint alleges a plausible claim for patent infringement on its face and satisfies Form 18 does not immunize a plaintiff who fails to identify easily ascertainable evidence of noninfringement through appropriate pre-suit investigation.

It appears that the Federal Circuit felt constrained by the Rules of Civil Procedure and the pre-Twombly/Iqbal forms. Had Form 18 not existed, the Federal Circuit may have decided differently. That being said, until Form 18 is changed, litigants must consider the appropriateness of pleadings in the context of Form 18, and not just the Twombly and Iqbal standards. Providing sufficient particularity to provide notice to the accused infringer of the patents raised and the acts of alleged infringement is still the ultimate touchstone.

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Patent Prosecution Law Firms Beware . . .

By: Joe Carnicella, intellectual property attorney with Picadio Sneath Miller & Norton, P.C.

On April 15, Thomson Reuters published a very interesting article that should be read by attorneys who represent clients in preparing and filing patent applications.  The article can be found here.  The article reports that at least three cases have been filed by publishers and copyright holders of scientific, technology and medical journals (American Institute of Physics and John Wiley & Sons Ltd.) against law firms for using copyrighted materials as part of the patent application process.  The law firms have been accused of “wrongly using copyrighted works to promote their business interests.”  In particular, the article reports that the plaintiffs are not complaining about copies being submitted to the USPTO, but rather, they are objecting to the fact that law firms made and kept additional copies of the copyrighted materials.  The law firms have responded by arguing that, inter alia, copies made during the course of the representation constitute fair use.  We will continue to monitor these cases.

Are Human Genes Patentable?–Association for Molecular Pathology v. Myriad Genetics

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

Supreme CourtYesterday, the United States Supreme Court heard oral argument on a key patent issue—are human genes patentable subject matter? In the Association for Molecular Pathology v. Myriad Genetics, Inc., (No. 12-398), the Supreme Court granted certiorari to decide this issue, which will have a profound impact on the medical research and pharmaceutical industries. (For a complete list of the issues presented, see here). This post follows up on our earlier post discussing the Court’s decision to grant cert.

In this case, Myriad Genetics identified and isolated a human gene that could be used to help predict a patient’s genetic predisposition to breast and ovarian cancers. Myriad then obtained a patent on, among other things, cDNA molecules associated with the relevant genes, as well as the use of the molecule to  probe a patient’s DNA and to prime the production of the patient’s DNA in the laboratory. (The parties’ briefs explaining the details of the patented claims can be found here). Myriad then created a test that could be used on patients to help assess whether they were more likely to be predisposed to certain kinds of breast and ovarian cancers.

After creating the tests and obtaining the patent, Myriad sent letters to various researchers, informing them of the patent rights and requesting that they refrain from infringing. As a result, numerous researchers ceased working in this area. A number of researchers and institutions filed a declaratory judgment action, seeking a determination, among other things, that the patents were invalid.

The Federal Circuit, in a split decision with each Judge writing separately, held that human genes are patentable subject matter. The Association filed a writ of certiorari challenging this decision, which the Supreme Court granted. Oral arguments were held on April 15, 2013, and a transcript can be found here.

While it is always difficult to predict how the Supreme Court will rule, there are some aspects that appeared to concern the Court more than others.  First, the Justices probed the parties for where and how lines should be drawn about what is a product of nature that should not be patented and what is the result of human intervention. This is the heart of the question presented and what they were struggling to define. Ultimately, the Court seemed more inclined to uphold the patent claims associated with the cDNA, as they involved more human intervention, but we will have to wait to see what they actually do.

Second, the Court  questioned whether striking these kinds of patents  would eliminate the incentives for inventors to invest the time and money in developing these kinds of tests and treatments. There was some concern that eliminating these kinds of patents could hinder innovation. On the other hand, counsel for the Association argued that allowing these kinds of patents actually creates a disincentive, as many researchers and companies will not invest any time and money for fear of being sued (which is what happened here).

The transcript of the oral argument makes for a fascinating read. What will be more interesting is reading the ruling. We expect a decision sometime later this summer.

For more analysis on the oral arguments, see here.