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Changing Pleading Standards in Patent Infringement Cases after Form 18 (Part 1)

Evolving Standards under the amended Federal Rules

When the newest amendments to the Federal Rules of Civil Procedure went into effect on December 1, 2015, the Appendix of Forms was removed from the Rules. This included Form 18, the template form for patent infringement cases. Form 18 provided simple language for a patent infringement claim, language that appeared to many not to satisfy the pleading standards of Ashcroft v .Iqbal .

Since the removal of Form 18, it has been unclear what pleading standard applies in patent infringement claims, and non-infringement counterclaims. While several courts have noted the removal of the Form, until recently no court has made a firm ruling on the applicability of the Form 18 standard. In a recent opinion and order in Tannerite v. Jerent (6:15-cv-00180-AA) Judge Aiken of the District of Oregon granted a motion to dismiss on the grounds that Form 18 no longer applied.  Judge Aiken went further and laid out the policy grounds for an across-the-board elevation of patent infringement and non-infringement claims to the Iqbal standard.

In Part 1 we discuss the unsettled state of pleading standards before Judge Aiken's decision.

Background: Pleading Standards before the Rule Change

The effect of the removal of Form 18 would have been clearer had there been consensus on what pleading standard applied before removal. While there was some agreement regarding direct infringement claims, there was none for indirect infringement or non-infringement claims. This confusion stems from longstanding Federal Circuit doctrine.

In K-tech Telecom. Inc v. Time Warner Cable, the Federal Circuit found that “to the extent any conflict exists between Twombly(and its progeny[Iqbal]) and the forms regarding pleadings requirements, the forms control.” 714 F.3d 1277 (Fed. Cir. 2013). However, the court crucially also reiterated a long-standing position of the Federal Circuit that “purely procedural” issues, including this one, are decided by the law of the regional circuits. Id at 1282. It is this classification of the pleading standard as a “purely procedural” issue that has caused so much uncertainty.

While K-Tech arguably controls, the Federal Circuit's choice of law doctrine, describing pleading standards as a procedural question to be decided by the regional circuits, has allowed district courts to disregard it at times. This is especially so when addressing ancillary questions, such as whether Form 18 would apply to non-infringement counterclaims. Some district courts have waited for clarification from their regional circuits on this issue.

However, the regional circuits will not and cannot clarify the issue. Even though the Federal Circuit in K-tech stated that procedural matters were for the regional circuits, the Federal Circuit has exclusive jurisdiction over patent litigation under 28 U.S.C. §1295. Thus, the regional circuits are procedurally barred from hearing patent cases, even ones that address"purely procedural" issues.  This results in discontinuity in pleading standards throughout district courts, that could not be resolved by the regional circuits, and would not be resolved by the Federal Circuit.  Thus, no district court judge could easily rely on precedent.

The Abrogation of the Appendix of Forms and further confusion

Removing Form 18 from the Federal Rules should have clarified the law without need for further interpretation. It did not.

The Amended Federal Rules of Civil Procedure took effect on December 1, 2015. The relevant change removed Rule 84, including its appendix, which contained Form 18. However, the Advisory Committee note on the amendment states "[t]he abrogation of Rule 84 does not alter the existing pleading standards or otherwise change the requirements of Civil Rule 8."

As early as January of 15, 2016, less than two months after the adoption of the new rules, a district court held that Form 18 still applied after its death. In Hologram USA, Inc. v. Pulse Evolution Corp., the District Court of Nevada wrote:

"Twombly and its progeny "address[ed] the civil pleading standards in a variety of civil contexts," none of which "address[ed] the sufficiency of a complaint alleging patent infringement or causes of action for which there is a sample complaint in the Appendix of Forms"

The Hologram court also expressly invoked the Advisory Committee note to hold that the standard created by Form 18 were still in effect. Thus, the death of Form 18 did not render it inactive, and the pleading standard for patent infringement cases became even more ambiguous.

 

Part 2 will discuss Judge Aiken's opinion and the path forward.

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