United States: Pleading Patent Infringement In The United States: Evolving Standards

In Short

The Situation: Federal Rule of Civil Procedure 84, which permitted U.S. patent-infringement lawsuits to proceed on very general allegations, was withdrawn three years ago. Subsequent court decisions have considered how much detail is required.

The Outcome: Under recent decisions, complaints must now clearly identify the defendant's product or activity that is accused of infringement. For complex technologies (but not simple ones), the complaint must detail how the accused product/activity violates at least one of the patent's claims.

Looking Ahead: Future decisions will likely continue to refine the details a complaint must include in order to proceed past the pleading stage.

The Background

Historically, complaints initiating U.S. patent lawsuits were required to state only very general allegations. Under Official Form 18, a patent complaint could simply state that the defendant sold products (e.g., "electric motors") that "embody the patented invention." Federal Rule of Civil Procedure 84 stated that this bare-bones approach "suffice[d] under these rules."

For decades, this led to lawsuits alleging direct infringement based on complaints that did not provide a clear basis for discovery, summary-judgment motions, and trial. Accordingly, Rule 84 and Form 18 were withdrawn in December 2015 so that patent cases would no longer be immunized from pre-existing U.S. Supreme Court decisions that required more detail. Under the Supreme Court's decisions, lawsuits can be dismissed at their outset if "fair notice" is not given of a "plausible" claim. (Bell Atlantic v. Twombly—2007; Ashcroft v. Iqbal—2009).

The Issues

The rule change in 2015 raised two questions about what complaints must allege in order for a claim for direct patent infringement to proceed. First, what details must the complaint include? That is, which products or activities are alleged to infringe? Which claims of the patent are allegedly infringed? How does the product/activity infringe the claims? Second, if adequate details are provided, is the alleged infringement claim sufficiently "plausible"?

The Developing Answers

Recent court decisions partly answer these questions. In February and May 2018, the U.S. Court of Appeals for the Federal Circuit issued three such decisions: Nalco v. Chem-Mod, Disc Disease Solutions v. VGH Solutions, and Artrip v. Ball Corp. (nonprecedential). About a dozen subsequent trial-court decisions elaborate. Although these decisions state that "fair notice" and "plausibility" are distinct questions, the courts tend to blur the issues of whether the complaint explains how the accused product or activity infringes and whether that explanation is plausible.

Which Products Are Accused. As to the need to specify the product/activity involved, the answer is straightforward: The complaint must clearly identify the accused product/activity. Referring generally to "one or more machines" at a particular factory (as in Artrip) will not suffice; identifying products by name and attaching photos (as in Disc Disease Solutions) will.

Which Patent Claims Are Infringed. More pleading leeway is afforded concerning the patent claims that are infringed. Trial-court decisions have usually required at least one patent claim to be identified. However, in Disc Disease, a case involving a "simple technology," the Federal Circuit ruled the complaint adequate without specifying a particular claim.

How the Products Infringe. Decisions have been less clear about what complaints must do to explain how the accused product or activity infringes the patent claim. Under Disc Disease, for simple technologies, details are not required. But for complex technologies, trial courts have required moderately specific explanations that provide notice of the rationale. This allows the court to scrutinize whether the allegations are plausible enough for the lawsuit to proceed under the Supreme Court's Twombly and Iqbal decisions.

For example, a Delaware decision, Modern Telecom v. TCL—2017, rejected a complaint that relied only on: (i) a conclusory allegation that all limitations of a patent claim were met by a smartphone; and (ii) a statement that the smartphone operated according to an industry standard governing Wi-Fi without explaining why that meant the patent claim's limitations were satisfied. (A recent Texas ruling in Lexington Luminance LLC v. Service Lighting & Elec. Supp., Inc. is similar.)

But courts have refused to extend the plausibility requirement to dismiss claims based on fairly contested arguments about how the patent claims should be interpreted. As the Federal Circuit held in Nalco, the plausibility requirement does not make objections to a plaintiff's proposed claim construction a "suitable" ground for a motion to dismiss. Instead, the lawsuit was allowed to proceed until claim construction could be more thoroughly considered at a later stage.

Three Key Takeaways

  1. Now that Federal Rule of Civil Procedure 84 and Form 18 have been withdrawn, defendants can move to dismiss complaints alleging direct patent infringement on the basis of lack of fair notice.
  2. On the basis of recent decisions, patent owners must reasonably identify the accused products in a claim for direct infringement, but when the patent involves a simple technology, more detail is not required. For patents directed to more complex technologies, the patent owner must identify an infringed patent claim and provide a cogent explanation of how that claim is plausibly infringed.
  3. When the court dismisses a complaint for direct patent infringement for failure to plead with the requisite specificity, however, the court will typically allow the patent owner a chance to amend its complaint to provide the required details.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions