Franklin Kang of Sidley Austin Brown & Wood LLP writes in the Winter 2006 issue of the ABA's IPL Newsletter (see page 25) about whether Form 16 is sufficient in all circumstances for pleading patent infringement claims. He writes:
Virtually every patent litigator has, at one point or another, pled and/or responded to a complaint for patent infringement that uses Form 16 (Complaint for Infringement of Patent) from the Appendix of Forms attached to the Federal Rules of Civil Procedure.
Generally speaking, although reliance on Form 16 does not appear to relieve lawyers of their obligations under Rule 11 of the Federal Rules of Civil Procedure, it is still unclear whether the obligations of Rule 11 necessarily require the plaintiff to plead the identify [sic] of the specific products and/or claims of the patent/s at issue. The Federal Circuit, in View Engineering, Inc. v. Robotic Vision Systems, Inc., has explained that lawyers representing a plaintiff in patent infringement cases are required to “apply the claims of each and every patent that is being brought into the lawsuit to [each accused product] and conclude that there is a reasonable basis for a finding of infringement,” suggesting that identifying the specific claims of the patent-in-suit may be required under Rule 11. Yet the Federal Circuit in the same year, in Phonometrics, has held that a plaintiff need not identify in its complaint the specific claims of the patent/s at issue.
This holding in Phonometrics appears inconsistent with the requirement under Rule 11 that counsel for the plaintiff is required to investigate each and every claim of the patent prior to filing suit and should know and be able to specify in the plaintiff’s complaint which patents, which claims, and which products are at issue against a given defendant. Although there seems to be an apparent incongruity between the obligations under Rule 11 and the holding in Phonometrics, this incongruity may be explained in part by the fact that in analyzing compliance with Rule 11, “[t]he focus . . . is not on the facial sufficiency of the complaint, but on the factual basis upon which [the plaintiff’s] counsel relied in signing and filing the complaint.”
Nevertheless, this tension between the requirements of Rule 11 and the policy of liberal pleadings was manifested in Gen-Probe, for instance, where the court explained that “[t]he requirements of Rule 11 further buttress [the] conclusion” that the plaintiff should be required to specify the accused products and nature of infringement as to each defendant, stating that “Rule 11’s requirement of certification of the well-foundedness of the factual contentions of the complaint would be meaningless unless Rule 8(a)(2) required some minimum allegations of fact to support the claim. Similarly, the requirement that the defendant investigate and certify its denials of the plaintiff’s factual contentions would be meaningless if the plaintiff were not required to make any factual contentions in its complaint. In short, the purpose and design of Rule 11 compel the conclusion that Rule 8(a)(2) requires more than empty boilerplate.”
In sum, there are various discrepancies among the courts concerning whether reliance on Form 16 will suffice for all purposes, and further judicial and/or legislative clarification on this issue is necessary. In the meanwhile, until such further clarification, lawyers drafting a complaint for patent infringement should take caution in relying blanketlike on Form 16 in every case without adding greater specificity in (1) the identification of the accused products or services where there are potentially numerous accused products or services, and (2) in some jurisdictions, the identification of specific claims of the patent-in-suit alleged to have been infringed where only some out of numerous (e.g., hundreds of) claims of the patent/s-in-suit are implicated. At the same time, where a plaintiff has relied solely on Form 16 in pleading a complaint for patent infringement, defendants should consider the viability of a potential motion to dismiss under Rule 12(b)(6) or a motion for a more definite statement under Rule 12(e), especially where the case involves multiple patents, numerous potentially accused products or services, numerous but not all claims of the patent/s-in-suit potentially at issue, and/or other facts increasing the complexity of the suit.
Read the entire article here.