Tuesday, March 02, 2010

Vaguely Identified Devices in Patent Complaint Fails Twombly

Bender v Motorola Inc., No. 09-1245 (N.D. Cal., February 26, 2010, order)

Rule 8 of the Federal Rules of Civil Procedure requires that a complaint contain a “short and plain statement of the claim showing that the pleader is entitled to relief.” If a complaint fails to satisfy Rule 8, it “must be dismissed” under Rule 12(b)(6) for failure to state a claim upon which relief can be granted. Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). To survive a motion to dismiss, the plaintiff must allege “enough facts to state a claim to relief that is plausible on its face.”

Bender filed an Amended Complaint accusing Motorola of infringing a patent directed to a “Buffered Transconductance Amplifier.”  The Complaint did not specify any particular accused devices, and instead, simply alleged that broad categories products were infringing, where the allegedly infringing devices were identified as

products [including], without limitation, cell phones, computers, network drivers, high definition television sets, ultrasound machines, MRI machines, lab equipment, arbitrary waveform generators, audio amplifiers, video amplifiers, hard disc drives, ADC/DAC converters, DVD-RW players, DSL modems, CCD cameras, satellite communication technology, and other products where high performance, high speed analog circuits are used, and/or components thereof.

Motorola filed a motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6) on the ground that the Complaint failed to identify any particular accused devices.  The district court granted the motion.
Here, the Amended Complaint is too conclusory to provide “fair notice” of the basis of Plaintiff’s claim that Defendant infringed the ‘188 Patent. Nowhere in the Amended Complaint does Plaintiff identify, with the requisite level of factual detail, the particular product or line of products, that allegedly infringe the ‘188 Patent. Instead, Plaintiff merely claims that the infringing “products include, without limitation, cell phones, computers . . . and other products where high performance, high speed analog circuits are used, and/or components thereof.” [P]laintiff has done nothing more than recite a laundry list of electronic devices. These cursory allegations are insufficient to give the Defendant fair notice of the claims being alleged against it.

Plaintiff argues that his Amended Complaint provides all the information required in Form 18. This contention lacks merit. The form contemplates that the pleader identify the accused device with some semblance of specificity to alert the alleged infringer which device is at issue. It does not contemplate that the accused device or devices be described in terms of a multiplicity of generically-described product lines such as “satellite communications technology” and “audio amplifiers,” as Plaintiff has done here.

Read/download the order here (link)

Source: Docket Navigator

5 Comentários:

Anonymous said...

I don't do a lot of patent litigation, so I would be curious to hear opinions on what best practices would be here. How should the complaint have been worded? Rather than saying "audio amplifiers" should they have said the "Model ... audio amplifier, for example"? Alternatively, should they identify specific claims that are infringed? It seems that you don't want to show your hand too much, so I'm curious what other folks do.

Unknown said...

Anonymous asked "how should the complaint have been worded".
I, also, don't have a lot of patent litigation experience, but I have lots of engineering experience.
With a corporation as large as Motorola, any 'generic' description is likely to include hundreds (or at least dozens) of different product lines.
By wording the complaint as Bender did, Bender effectively tried to turn the burden of proof to Motorola to show that *each and every one* of their products in the identified fields did not infringe.
Can you imagine the cost of doing such an infringement analysis on each and every product in these fields in a corporation as large as Motorola?
It's up to Bender to identify at least one Motorola product that is claimed to infringe, so that Motorola is given a fair opportunity to address whether or not that particular product infringes the specifically identified claims of Bender.
Bender can choose to find more than one Motorola product to accuse of infringement, to better their odds of success, but however you look at it, it's up to Bender to provide the specific evidence of infringement by specifically identified Motorola products. Anything else would amount to unreasonable costs to a [presumed innocent] accused infringer.

Anonymous said...


"By wording the complaint as Bender did, Bender effectively tried to turn the burden of proof to Motorola to show that *each and every one* of their products in the identified fields did not infringe."

That statement is simply incorrect, but, then again you admit that you don't have a lot of patent litigation experience.

The burden of proof would have remained on Bender, who would have been forced to provide more and more detail on the accused products through the discovery process. particularly in the NDCA, where they have patent local rules that require detailed preliminary infringement contentions. Indeed, Bender was required to provide those very preliminary infringement contentions within 14 days of the order, so one would think that Judge Armstrong was a little overzealous in her application of Rule 8.

What Bender was attempting to do (and should have been allowed to do) was throw the net wide to start with the broadest scope of discovery possible. If they had only specified one product, Motorola would have argued, perhaps successfully, that Bender was entitled to discovery only on that product, whether or not Motorola made other similar products unbeknownst to Bender. Infringers should not be allowed to "hide the ball" because a plaintiff did not fully comprehend the scope of infringement at an early pleading stage.

In terms of best practices going forward, a hybrid approach is probably in order: cast your net wide but include a specific exemplary product or product line. That's probably what this guy has done (Bender should have filed his second amended complaint by now).

Anonymous said...

great comments

My question is:
will the judge allow proper discovery if the initial complaint only states the fact of infringement by certain identified product line but does not contain specifics like claim mapping etc. ?

Another question: will the judge allow amending initial complaint if in the process of discovery it becomes clear that the scale of infringement is much bigger or patentee will have to file another unrelated patent lawsuit, perhaps in a different jurisdiction ?

Unknown said...

I note that Bender has filed similar broadly worded infringement actions against other manufacturers.
Although I may have mistakenly used the term 'burden of proof', I believe that the principle of 'who needs to do what to support a claim of infringement' is nicely addressed in the dismissal of Bender's case against LG electronics:

"Defendants contend that an analysis of the plausibility of Bender’s claims of patent infringement is impossible without identification of the allegedly infringing product(s). See, e.g., Sharp’s MTD 8:20-9:10. Defendants argue the complaint lacks sufficient factual context, such as the “means by which” infringement is alleged, to “allow[] the court to draw the reasonable inference that the defendant is liable.

By pointing to broad categories of products with respect to which he has a “good faith belief” in the “very substantial likelihood of infringement,” Bender simply does not state a “plausible claim for relief.” See Pl.’s Opp’n to MTD, 8:23-25. Common sense requires more specific identification of the products in any given product category that are allegedly infringing.

As discussed herein, Bender must do more than allege conclusorily the means by which Defendants are infringing on his ’188 Patent and provide fair notice to Defendants of the specific infringements alleged. Sufficient allegations would include, at a minimum, a brief description of what the patent at issue does, and an allegation that certain named and specifically identified products or product components also do what the patent does, thereby raising a plausible claim that the named products are infringing. Without varying significantly from the rubric of Form 18, and without placing a heightened pleading burden on the plaintiff or requiring the plaintiff to plead every detail of his infringement claim, such allegations would provide enough specificity for the defendant to formulate a response."
Rob McDermott

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