By Matthew D'Amore

It used to be that a complaint for patent infringement would survive a motion to dismiss if it included: "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." McZeal v. Sprint Nextel Corp., 501 F.3d 1354, 1356-57 (Fed. Cir. 2007). So long as you followed these elements set forth in Form 18 found in the Federal Rules of Civil Procedure, your complaint was likely to pass muster. See Id.; K-Tech Telecomms, Inc. v. Time Warner Cable, 714 F.3d 1277, 1283 (Fed. Cir. 2013), cert. denied, 134 S. Ct. 1026 (2014).

But the December 2015 amendments to the Federal Rules of Civil Procedure "abrogated" the forms in their entirety. What does that mean for you? Read on.

Below, we'll give a bit of history on how we got here, and then offer some practical tips depending on which side of the "v" you're on.

A. Patent Cases Are (Now) Just Like Every Other Case

Rule 84 of the Federal Rules of Civil Procedure introduced a series of forms that became part of the rulebook. It provided that "[t]he forms in the Appendix suffice[d] under these rules and illustrate[d] the simplicity and brevity that these rules contemplate." Fed. R. Civ. P. 84 (2007) (emphasis added). Form 18 (previously Form 16) identified the short set of five simple allegations for pleading patent infringement set out above. See McZeal, 501 F.3d at 1356-57.

Of course, in 2007 and 2009, the Supreme Court set out new standards for what a federal court complaint must contain. See Ashcroft v. Iqbal, 556 U.S. 662, 129 S. Ct. 1937 (2009); Bell Atl. Corp. v. Twombly, 550 U.S. 544, 127 S. Ct. 1955 (2007). Under Iqbal:

To survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to "state a claim to relief that is plausible on its face." A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.

Iqbal, 556 U.S. at 678 (citing and quoting Twombly). The Court also made clear that "[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice." Id.

It would not be a stretch to call the allegations of Form 18 "threadbare," as they fill all of four paragraphs. In a trio of decisions between 2007 and 2013, however, the Federal Circuit confirmed that it would continue to look to the form for what sufficed to state a claim. See K-Tech, 714 F.3d at 1283 ("[A] proper use of a form contained in the Appendix of Forms effectively immunizes a claimant from attack regarding the sufficiency of the pleading... [T]o the extent any conflict exists between Twombly (and its progeny) and the Forms regarding pleadings requirements, the Forms control."); R+L Carriers, Inc. v. DriverTech LLC (In re Bill of Lading Transmission and Processing Sys. Patent Litig.), 681 F.3d 1323 (Fed. Cir. 2012) ("R+L Carriers"); McZeal, 501 F.3d at 1356-57.

Eliminating the form removes the foundation from these decisions. The question then is whether they stand on their own. Here's what the Advisory Committee Notes say about the deletion of Rule 84, which included the forms:

Rule 84 was adopted when the Civil Rules were established in 1938 "to indicate, subject to the provisions of these rules, the simplicity and brevity of statement which the rules contemplate." The purpose of providing illustrations for the rules, although useful when the rules were adopted, has been fulfilled. Accordingly, recognizing that there are many excellent alternative sources for forms, including the website of the Administrative Office of the United States Courts, the websites of many district courts, and local law libraries that contain many commercially published forms, Rule 84 and the Appendix of Forms are no longer necessary and have been abrogated. The abrogation of Rule 84 does not alter existing pleading standards or otherwise change the requirements of Civil Rule 8.

Fed. R. Civ. P. 84 (Committee Notes on Rules – 2015 Amendment). Interestingly, the committee notes ignore the part of the rule stating that the forms "suffice under these rules," on which the Federal Circuit had relied. As a result, the notes give zero guidance to patent litigants suddenly bereft of the safe harbor cited by the appellate court.

So, now what?

B. Tips for Getting in the Door and Staying There

1. Signs that Point the Way

Judge Dyk's partial dissent in McZeal provides one interpretation of what Twombly and Iqbal might require in patent cases. Seemingly prepared to tear up the form based on Twombly, Judge Dyk argued that "[t]he form fails to state which claims are asserted and which features of the accused device are alleged to infringe the limitations of those claims." 501 F.3d at 1360 (Dyk, J., dissenting in part). And for a claim under the doctrine of equivalents, Judge Dyk also argued that a complaint would need to "specify which limitations are literally infringed and which are infringed by equivalent [and], as to the limitations alleged to be infringed by the doctrine of equivalents, how the accused product is insubstantially different from the patented devices." Id.

R+L Carriers also provided guidance on what is needed for a claim of contributory and induced infringement, and this sheds light on direct infringement as well. According to the Federal Circuit, "[t]o state a claim for contributory infringement, therefore, a plaintiff must, among other things, plead facts that allow an inference that the components sold or offered for sale have no substantial non-infringing uses." 681 F.3d at 1337. The R+L plaintiff, unfortunately, filed complaints that "actually make clear on their face that [the accused] products do have substantial non-infringing uses" and so pleaded itself out of court on that count. Id. at 1339.

Similarly, for induced infringement, the Federal Circuit held that "complaints must contain facts plausibly showing that [the defendants] specifically intended their customers to infringe the [] patent and knew that the customer's acts constituted infringement." Id. As the court observed:

This determination is, of course, case specific. In some circumstances, failure to allege facts that plausibly suggest a specific element or elements of a claim have been practiced may be fatal in the context of a motion to dismiss. Or, as with R + L's contributory infringement claims, facts may be pled affirmatively which defeat a claim on its face. But, there is no requirement that the facts alleged mimic the precise language used in a claim; what is necessary is that facts, when considered in their entirety and in context, lead to the common sense conclusion that a patented method is being practiced.

Id. at 1342-43. These points equally apply to pleading a claim of direct infringement without the benefit of the form and suggest a flexible, fact-dependent approach.

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Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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