Drafting and Attacking Pleadings Under the New Standards · Drafting and Attacking Pleadings Under the New Standards 16 th Annual SV Advanced Patent Law Institute ... • A legal

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?

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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.

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What is the impact on prefiling investigations?


• 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?

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What must be included in a patent infringement complaint?


• 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”

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• 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?

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Does Alice impact how you should draft a complaint?


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.

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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

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Pleading standards for affirmative defenses


• 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

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What is the procedure to attack a claim or defense as insufficiently pled?


• 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

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Will the amendments limit discovery into possible or proposed claims or defenses?


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”

Presenter

Presentation Notes

Rule 26(b)(1) on scope of discovery currently provides that: “Relevant information need not be admissible at trial if the discovery appears reasonably calculated to lead to the discovery of admissible evidence.” Modified Rule going into effect on December 1 continues to provide that “information within” the scope of discovery “need not be admissible in evidence to be discovery” However, the common phrase ”reasonable calculated to lead to the discovery of admissible evidence”—which you may have learned in law school as providing an outer limit of permissible discovery—has been struck from the Rule Committee Note: this phrase had been used incorrectly, to define the scope of discovery


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How important is forum selection under the new rules?

www.hoganlovells.com 21Source: LexMachina


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• 178 (84%) of the 212 new patent cases filed that day were filed in ED Tex

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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

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Drafting and Attacking Pleadings Under the New Standards · Drafting and Attacking Pleadings Under the New Standards 16 th Annual SV Advanced Patent Law Institute ... • A legal