W.D. Wis.: "A Few Examples" Of Allegedly Infringing Products is Insufficient Notice

Taurus IP, LLC v. Ford Motor Company, Western District of Wisconsin, Case 3:07-cv-481, February 4, 2008

Taurus launched a patent infringement suit against 3 car companies, alleging infringement of their patent relating to a computer system for managing sales information. The complaint alleged that the defendants were infringing the patent by

[M]aking, using, offering products for sale, and/or selling products and/or services including, without limitation, products that are available for configuration at [list of 6 public websites] and, upon information and belief, internal websites and dealer portals.

Defendants objected to the vagueness of the allegations, noting that the complaint “provides little specificity as to which products or services available at the identified websites are accused of infringement” and “provides no specificity or guidance as to which internal websites and dealer portals” are accused of infringement. As such, they requested that plaintiffs provide a statement including either (1) a list of allegedly infringing products or (2) plaintiff’s working criteria by which it believes defendants’ products are infringing.

Looking at the websites, the court noted that they "contain links to thousands of products, parts, services and other websites that contain many more links." Finding that the complaint only gave "clues" or "examples" of potentially infringing products, the court found that such pleadings were insufficient to satisfy the notice provisions of Fed. R. Civ. P. 8 and 12(e) :

By listing some examples of allegedly infringing products and specifying the patent alleged to be infringed, plaintiff has given some clues to defendants as to the scope of its claim. But plaintiff must do more than give clues to meet even the broad Rule 8 notice requirements . . . “[i]n the context of alleged patent infringement, [notice] means at least that the plaintiff must tell the defendant which products allegedly infringe the plaintiff’s patent. Failing to identify the infringing product in a patent case is akin to failing to identify the retaliatory action in a civil rights case.” . . . Moreover . . . a party’s failure to specify which claims of a patent allegedly infringe may run up against the same notice problems . . . At the very least, a plaintiff’s failure to specify which claims it believes are infringed by a defendant’s products places an undue burden on the defendant, who must wade through all the claims in a patent and determine which claims might apply to its products to give a complete response. A plaintiff’s failure to specify patent claims hinders the defendant’s ability to prepare a defense.

The court concluded:

To the extent further infringed claims or accused products are identified during discovery, plaintiff is expected to amend the original complaint to specify each claim and each accused device by the deadline for submitting amended complaints. Plaintiff will not be allowed to assert a claim or accuse a device that is not specifically identified in the pleadings.

Read download the opinion here (link)