Patent Case Pleading, Discovery Changes Set for Dec. 1

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By Tony Dutra

Nov. 20 — Standards for pleading new patent infringement cases and requesting discovery in existing cases, subject to new rules effective Dec. 1, could still reflect current differences among district courts as to how pro-patentee they are, practitioners told Bloomberg BNA Nov. 20.

The new rules require patent owners to provide sufficient factual detail to show that the claim is “plausible”— instead of the bare minimum complaint possible today.

“It is likely that different courts—and possibly even different panels on the Federal Circuit—will have differing views about how much detail will be necessary to make a claim ‘plausible',” Christian E. Mammen of Hogan Lovells, San Francisco, said.

Also, district court judges will be rejecting overbroad discovery requests based on a “proportionality” judgment of how much is at stake.

But how courts determine what a patent holder is entitled to in a proportionality-based discovery decision is likely to be “about the same as it is today,” and reflective of current differences, Matthew G. Berkowitz of Shearman & Sterling, New York, predicted. How the two rules play out in court opinions should be apparent in as little as two or three months, he added.

Heightened Pleading

The Supreme Court adopted on April 29 recommendations of the Judicial Conference of the United States that included making all patent infringement allegations subject to general pleading standards, under Ashcroft v. Iqbal, 556 U.S. 662 (2009), and Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007). The patent-specific Form 18 will no longer suffice. The “plausible” complaint standard comes from Twombly and Iqbal.

In an e-mail, Mammen cited two possible “benchmarks” for practitioners to use as a starting point. First, Section 3(a) of the Innovation Act—currently stalled in Congress—includes a list of particular allegations that a patent owner might use that would certainly pass the test.

Second, he said, the Federal Circuit has held that “Form 18 applies only to allegations of direct infringement, and has therefore applied the Twombly /Iqbal standard to allegations of indirect (e.g. induced or contributory) infringement.”

In fact, the appeals court's decisions in two recent cases on indirect infringement pleading featured contrasting opinions about heightened pleading for direct infringement, too. K-Tech Telecommunications Inc. v. Time Warner Cable Inc., 714 F.3d 1277, 106 U.S.P.Q.2d 1462 (Fed. Cir. 2013); and R+L Carriers Inc. v. DriverTech L.L.C. (In re Bill of Lading Transmission and Processing System Patent Litigation), 681 F.3d 1323, 103 U.S.P.Q.2d 1045 (Fed. Cir. 2012).

Berkowitz agreed with Mammen on the merits of comparing pleading in those cases. And he made “guesses” as to what courts will require, at minimum, going forward—“actually specifying the claims infringed and/or components of the accused devices.”

Proportional, Earlier Discovery

Berkowitz added that the heightened pleadings will likely be relevant to the second major change, in discovery.

The Dec. 1 rules change Federal Rule of Civil Procedure 26(b)(1) to say that discovery requests must be “relevant to any party's claim or defense” and “proportional to the needs of the case.”

A court may try to determine “proportionality” based on a clearer idea of the allegedly infringing articles, Berkowitz said.

However, he said, “I suspect there will be differences in every court.” He said that relatively pro-patentee districts are just as likely to continue deciding that patent owners are entitled to more discovery than other districts.

Mammen also cited the change in the scope of discovery, from “reasonably calculated to lead to the discovery of admissible evidence” to “relevant to any party's claim or defense.”

“It is possible, and seems to be the [Judiciary Conference's] Advisory Committee's intent, that parties won't be able to take discovery in order to gather information about possible additional claims or defenses that are not already pled,” Mammen said. “Combined with a robust application of Twombly /Iqbal, this could limit the expansion of both claims and defenses through discovery and subsequent amendment.”

Finally, Mammen also noted changes to Rule 34 on the timing and sequence of discovery.

“The new provision for early Requests for Production under Rule 34 could have the effect of moving discovery along more quickly,” he said. “And there are new rules about responses and objections to document requests that could further front-load the burdens of document discovery, but should also facilitate earlier and clearer negotiations about the scope of document discovery.”

To contact the reporter on this story: Tony Dutra in Washington at

To contact the editor responsible for this story: Mike Wilczek in Washington at

For More Information 
Full Dec. 1 rules change package at


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