Petition for Inter Partes Review by Research In Motion Corporation, IPR2013-00036 (PTAB March 7, 2014, Order) (Lee, APJ)
Compliance with Form 18 Insufficient to Plead Infringement
The court granted defendant's motion to dismiss and rejected the argument that compliance with Form 18 was sufficient to state a claim for direct infringement. "[Plaintiff] . . . assert[s] that its case is only for direct infringement and that complaints presenting such claims . . . need only comply with Form 18 . . . [T]o exempt patent complaints from the requirements of [Bell Atlantic v. Twombly, 550 U.S. 544 (2007)] and [Ashcroft v. Iqbal, 556 U.S. 662 (2009)] is to ignore a fundamental rationale that underpins those decisions. . . . [B]efore filing a complaint, counsel must ascertain exactly what claims should alleged to be infringed and how they are infringed. That can be done with brevity and clarity if counsel know at the outset their theories of infringement and what can, and cannot, be said about allegedly infringing conduct. . . . Indeed, it is high time that counsel in patent cases do all of that work before filing a complaint. . . . The current practice is to file a Form 18 complaint and then, using claim charts, prior art charts, discovery, and motions, to pare claims that ought not to have been brought or that cannot withstand careful scrutiny. That process has proven to be an increasingly expensive proposition for the parties and one that takes a tremendous toll on already strained judicial resources."
Macronix International Co., Ltd. v. Spansion, Inc. et al, 3-13-cv-00679 (VAED March 10, 2014, Order) (Payne, J.)