Drafting and Attacking Pleadings Under the New Standards

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1 Drafting and Attacking Pleadings Under the New Standards 16 th Annual SV Advanced Patent Law Institute Michael Hendershot, Paul Hastings LLP Richard Hung, Morrison & Foerster LLP Christian E. Mammen, Hogan Lovells LLP December 10, 2015

2 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

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. 3

4 What is the impact on prefiling investigations? 4

5 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? 6

7 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

8 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

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10 Does Alice impact how you should draft a complaint? 10

11 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 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 13

14 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? 15

16 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? 17

18 reasonably calculated to lead to the discovery of admissible evidence Committee Note: the old phrase had been used incorrectly, to define the scope of discovery. NEW RULE: must be nonprivileged, proportional and relevant to any party s claim or defense, but need not be admissible 18

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20 How important is forum selection under the new rules? 20

21 Source: LexMachina 21

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23 178 (84%) of the 212 new patent cases filed that day were filed in ED Tex 23

24 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

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