Patent Complaint Does Not Have to Identify Infringing Activity
By Christina M. Jordan, Litigation News Associate Editor – July 3, 2013

The proper use of a sample complaint form is sufficient for pleading patent infringement, according to the U.S. Court of Appeals for the Federal Circuit. The court noted that the form complaint does not require the plaintiff to identify the infringing device to successfully state a claim for patent infringement when the plaintiff does not have the ability to identify the infringing device or activity. K-Tech Telecommunications Inc. v. Time Warner Cable Inc. [PDF].

Standard for Pleading Patent Infringement
In K-Tech, the plaintiff K-Tech filed complaints for patent infringement against DirecTV and Time Warner Cable (Time Warner). The complaints alleged that Time Warner and DirecTV infringed K-Tech’s patents directed to identifying systems and methods for modifying a major channel number, a minor channel number, and/or a carrier frequency to identify a television program. The FCC requires that all digital television signals define the major channel number, minor channel number, and a carrier frequency included in a digital television signal. Time Warner and DirecTV identify programs broadcast over their cable or satellite systems with a channel number in accordance with the FCC requirements. K-Tech alleged that Time Warner and DirecTV utilize the methods and systems protected by the K-Tech patents to update the digital signals they receive.

Defendants moved to dismiss the complaints on the grounds that they lacked sufficient specificity to state a cause of action for direct patent infringement. The district court dismissed the complaints, stating that K-Tech failed to identify the devices and the methods the defendants were using that were protected by the asserted patents. K-Tech appealed to the Federal Circuit for review. K-Tech contended that the complaints complied with Form 18 of the Appendix of Forms to the Federal Rules of Civil Procedure, the sample complaint for direct patent infringement.

The Federal Circuit analyzed whether Form 18 satisfies the standards set forth in Rules 8 and 12(b)(6) in the Federal Rules of Civil Procedure. The Civil Rules require “only a plausible ‘short and plain’ statement of the plaintiff’s claim.” The court, citing the 2007 decision, Bell Atlantic Corp. v. Twombly [PDF], noted that the plausibility standard is met where “the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Citing the 2009 decision, Ashcroft v. Iqbal [PDF], the court noted that “specific facts are not necessary; the statement need only ‘give the defendant fair notice of what the . . .  claim is and the grounds upon which it rests.’”

Form 18 Satisfies Standard for Pleading
The court ultimately found that Form 18 is sufficient under the Federal Rules of Civil Procedure, and that proper use of Form 18 “effectively immunizes a claimant from attack regarding the sufficiency of the pleading.” The court stated that “to the extent any conflict exists between Twombly (and its progeny) and the forms regarding pleadings requirements, the forms control.” The court noted that the Form 18 satisfies the requirements set forth in Twombly and Iqbal that the complaint states a plausible claim for patent infringement and places the potential infringer on notice of the allegedly infringing actions.

K-Tech’s Complaint Satisfies Form 18
DirectTV and Time Warner argued that K-Tech did not satisfy its obligations under Form 18 because it failed to specifically identify an infringing device or activity. K-Tech countered that both DirectTV and Time Warner operate in secrecy, and that a fair inference of the infringing activity can be drawn from the allegations in the complaints. The court found that K-Tech’s allegations were adequate to satisfy the pleading standards of notice and plausibility under Form 18.

Operating in secrecy does not shield a defendant from a complaint for patent infringement. “In such a situation where one’s ability to determine direct infringement is made impossible because it takes place internally, respected by the secrets of the company, the courts can be more lenient in terms of allowing the complaint to go forward,” says Robert M. Asher, Boston, cochair of the Patent Subcommittee of the ABA Section of Litigation’s Intellectual Property Litigation Committee.

“The plaintiff was not able to specify precisely where the infringement was in this case, primarily because the allegedly infringing activity takes place in secrecy,” says Bill Sigler, Washington, D.C., cochair of the Patent Subcommittee of the Section of Litigation’s Intellectual Property Litigation Committee. “The court analyzed whether the particular facts here were sufficient in terms of notice of plausibility, and held they were,” he adds. Sigler notes that “the opinion indicates that there is still some level of particularity that will have to be pled in order to satisfy Form 18.”

Form 18 Requirements and Plausibility Standards Are Reconcilable
The concurring opinion “disagree[d] with the dictum that ‘the forms control’ over the Supreme Court’s plausibility standard set forth in Iqbal and Twombly.” It noted that plausibility is required to survive a motion to dismiss, and that Form 18 illustrates the simple requirements sufficient for stating a plausible claim of patent infringement. The requirements of Form 18 and the standards set forth in Iqbal and Twombly are consistent.

Although the majority stated that the form controls, “they analyzed the facts under the plausibility standard as well,” notes Sigler. “The basis of the concurring opinion was that the Form 18 standard and the plausibility standards are reconcilable, and thus, it was unnecessary for the majority to pronounce that the form controls over the plausibility standards.”

Keywords: intellectual property, patent, civil procedure, complaint, pleading, infringement, plausibility

 
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