Drafting and Attacking Pleadings Under the New Standards16th Annual SV Advanced Patent Law Institute
Michael Hendershot, Paul Hastings LLPRichard Hung, Morrison & Foerster LLPChristian E. Mammen, Hogan Lovells LLP
December 10, 2015
www.hoganlovells.com
• How will the new pleading standards impact pre-filing investigations and initial preparation for all cases?
• With Form 18 gone, what must be included in a patent infringement complaint?
• Do Alice and its progeny impact how you should draft a complaint?
• What are the pleading standards for affirmative defenses?• What is the procedure to attack a claim or defense as
insufficiently pled?• Will the amendments to the Federal Rules limit discovery
into possible or proposed claims or defenses?• Will forum selection be more important than ever?
2
www.hoganlovells.com 3
Previous Rule 84: Forms in the Appendix of FRCP illustrated the simplicity and brevity that the rules contemplated.
Committee Note explains that the “purpose of providing illustrations for the rules, although useful when the rules were adopted, has been fulfilled.”● Given alternative sources for forms it is no longer needed.● Abrogation does not alter existing pleading standards.
4
What is the impact on prefiling investigations?
www.hoganlovells.com
• Antonious v. Spalding & Evenflo (2002) – Rule 11 requires that attorney conduct a prefiling infringement
analysis, including an independent claim analysis and nonfrivolous claim interpretation, and not merely rely on client
• Rule 11 procedure– Serve Rule 11 motion, 21 day safe harbor to withdraw
offending filing
• Practical challenges of procedurally teeing up a Rule 11 motion
• With Form 18 gone, is the practical landscape different?
5
6
What must be included in a patent infringement complaint?
www.hoganlovells.com
• Innovation Act (HR 9) standard– As drafted– As reported out of committee
• PATENT Act (S 1137) standard
• Twombly/Iqbal standard– Sufficient facts to demonstrate that the claim is “plausible”
7
www.hoganlovells.com
• All asserted claims vs representative claim?• All accused products vs representative product?• Claim charts?• Litigation history of patent?• Whether patent is standards-essential?• Status of patent owner?
8
www.hoganlovells.com 9
0
50
100
150
200
250
20142015
10
Does Alice impact how you should draft a complaint?
www.hoganlovells.com
Rule 12 Standard• Well-pleaded factual allegations are assumed to be
true and viewed in light most favorable to plaintiff.• Assumption is inapplicable to legal conclusions.
Section 101 Eligibility • Patent eligibility is ultimately a legal question.• Courts have therefore viewed it as appropriate to
address under Rule 12.
11
www.hoganlovells.com
Are there relevant factual allegations under Alice?• A legal question, but based on underlying inquiries.• Conventional? Scope of preemption?
Technological improvement? Pen and paper?
FRCP Amendments • Form 18 led to complaints without detailed factual
allegations.• Focus on more robust complaints with well-pleaded
facts could make Rule 12 dismissals more difficult. 12
13
Pleading standards for affirmative defenses
www.hoganlovells.com
• Background– Rule 11 and duty to investigate before asserting a defense– Level of detail required for pleading affirmative defenses
• Must have enough specificity or factual particularity to give “fair notice” of the defense
• District courts are split on whether Iqbal and Twombly apply
• Do the FRCP amendments change anything?– Elimination of the Appendix of Forms…
• Form 18 – direct infringement• Form 30 – affirmative defenses
14
15
What is the procedure to attack a claim or defense as insufficiently pled?
www.hoganlovells.com
• Attacking a Complaint– Rule 12(b)(6) motion for failure to state a claim, invoking
Rule 8 (defining requirements to state a claim for relief)
• Attacking a Defense– Rule 12(f) motion to strike an insufficient defense
16
17
Will the amendments limit discovery into possible or proposed claims or defenses?
www.hoganlovells.com 18
Committee Note: the old phrase had been used “incorrectly, to define the scope of discovery.”
NEW RULE: must be non-privileged, proportional and“relevant to any party’s claim or defense,” but “need not be admissible”
“reasonably calculatedto lead to the discoveryof admissible evidence”
www.hoganlovells.com 19
20
How important is forum selection under the new rules?
www.hoganlovells.com 21Source: LexMachina
www.hoganlovells.com 22
0
50
100
150
200
250
20142015
www.hoganlovells.com
• 178 (84%) of the 212 new patent cases filed that day were filed in ED Tex
23
www.hoganlovells.com
Shorter Time for Service: (Rule 4(m))120 days 90 days
Quicker Scheduling Order: (Rule 16)120 days after service 90 days, OR 90 days after appearance 60 days
ESI Preservation: (Rule 16(b))Can now be in scheduling order
24
www.hoganlovells.com 25