The Software IP Report

Pleading Patent Infringement Remains a Low Bar

By Charles Bieneman

Categories: Patent Civil Procedure, The Software IP Report

Here is a small reminder that, even after the demise of Form 18 of the Federal Rules of Civil Procedure, pleading requirements for patent infringement are still loose enough for plaintiffs to embark on discovery fishing expeditions.  In a very brief opinion in Network Managing Solutions, LLC v. AT&T, Inc., No. 16-cv-295-299(RGA) (D. Del. Feb 3, 2017), the court dismissed (without prejudice) the plaintiff’s claim of direct infringement – but in so doing seemed to say that, once the plaintiff made a proper pleading, it could embark on a discovery fishing expedition.

The plaintiff had plead “on information and belief” that the defendant’s products incorporated certain standards, and that those standards “incorporate the technologies covered by the patents.”  The complaint was dismissed because the standards were public, and the court reasoned that the plaintiff knew whether the standards were covered by its patents.  The pleading “on information and belief” was “insufficient to plausibly allege that to practice the standard necessarily means that a defendant also practices the patent.”

Fair enough. Presumably the plaintiff will amend it complaint to make the necessary allegations about the standards being covered by its patents, and the case will go forward.

But what deserves a little thought is the court’s comment concerning the plaintiff’s allegation “on information and belief that Defendants adopted the 3GPP standards.”  This allegation was sufficient because “Plaintiff cannot be expected to allege more about Defendants’ use of the patented technology as Defendants keep information about their own technology secret and Defendants do not offer some public product that can be reverse engineered.”

In other words, the plaintiffs can bring a lawsuit on the probability that the defendants’ products incorporate the allegedly infringing standard, and then determine through discovery whether this is so.

Lessons for Practice

Some cases have suggested that the demise of Rule 18, and adherence to the Iqbal and Twombley cases, has raised the bar for patent infringement plaintiffs.  And probably so.  Yet if you’ve ever counseled a client to consider the issue of detectability – i.e., could a party’s infringement be detected – in deciding whether to file a patent application as opposed to maintaining a trade secret, consider the court’s comments here.