Understanding 2015 Patent Reform: Part 2 - Pleading Requirements

This is a post in a series about 2015 patent reform.

Pleading Requirements

Below is a redlined list of changes between the P.A.T.E.N.T. Act and the Innovation Act. As you can see, the P.A.T.E.N.T. Act is indicated as an insertion because it is advancing faster and getting more attention from special interest groups.

NOTE: The redlined PATENT Act includes changes introduced in a Manager's Amendment.

Bill text is publicly available from the Government Printing Office. I'd like to take this opportunity to remind you that my blog is not legal advice, and that for legal advice, I can be retained for a fee.

Brief Analysis


There are some big things the bills have in common in their Pleading Requirements sections. Many of the commonalities are verbatim and many of the redlinings are phrasing differences, which should not be surprising.

Substantive Differences

The P.A.T.E.N.T. Act requires the Elimination of Form 18. There were some concerns expressed by interested parties about the fact that this is tiptoeing the line between Article I and Article III constitutional authority and brings up some separation of powers issues; the courts ostensibly have the right to set their own rules, so instructing them to eliminate a form is pretty mandatory language that may not go over well.

The P.A.T.E.N.T. Act authorizes the use of a "Representative Model Number" in the pleading to identify the accused product. This is probably a good thing, because most of the criticism of the P.A.T.E.N.T. Act has come from people afraid of the stringent pleading standards and possible motion practice, so emphasizing substance over form is key.

The P.A.T.E.N.T. Act uses less stringent requirements in identifying how the device infringes on the underlying patent. Again, this moves towards a substance over form argument, but also seeks to protect plaintiffs for whom discovery of infringement is more difficult. We don't want to foreclose on valid patent owners who can't necessarily allege with the stringent specificity of the Innovation Act, but they can still point in a general direction and give a sufficient allegation that something over there is infringing and why they believe that.

The P.A.T.E.N.T. Act establishes Dismissal, very real statutory consequences for failure to properly plead. This prevents the courts from having a lot of flexibility to say that something is "good enough" if it doesn't meet the stringent standards. This is a legitimate criticism of the Innovation Act. You can have all the strict requirements you want, but if there's no teeth, the problem of forum shopping among patent trolls may get even worse.

The P.A.T.E.N.T. Act also provides for amendment of pleadings. This cuts two ways; on one hand, it slightly complicates the ending of frivolous and abusive litigation, but it also helps to protect technologies with hard-to-discover infringement.

Redlined Text

3.Pleading requirements for patentPatent infringement actions

(a) Elimination of Form 18 Not later than 1 month after the date of enactment of this Act, the Supreme Court, using existing
resources, shall eliminate Form 18 in the Appendix to the Federal Rules of Civil Procedure (Complaint for Patent Infringement).

(b) Pleading requirements

(1) Amendment Chapter 29 of title 35, United States Code, is amended by inserting after section 281 the following:

281A. Pleading requirements for patent infringement actions

(a) Pleading requirements

Except as provided in subsection (b), Iin a civil action in which a party asserts a claim for relief arising under any Act of Congress relating to patents, a party alleging infringement shall include in athe initial complaint, counterclaim, or cross-claim for patent infringement, except as provided in subsection (c)unless the information is not reasonably accessible to such party, the following:

(1) An identification of each patent allegedly infringed.

(2) An identification of each claim of each patent identified under paragraph (1) that is allegedly infringed.

(3) For each claim identified under paragraph (2), an identification of each accused process, machine, manufacture, or composition of matter (referred to in this section as “an accused instrumentality”) alleged to infringe the claim.

(4) For each accused instrumentality identified under paragraph (3), an identification with particularity, if known, of—

(A) the name or model number (or a representative model number) of each accused instrumentality; or

(B) if there is no name or model number, a description of each accused instrumentality.

(5) For each claim accused instrumentality identified under paragraph (23), a description of the elements thereof that are alleged to be infringed by the accused instrumentality and how the accused instrumentality is alleged to infringe those elements.clear and concise statement of—

(A) where each element of each claim identified under paragraph (2) is found within the accused
instrumentality; and

(B) with detailed specificity, how each limitation of each claim identified under paragraph (2) is met by the accused instrumentality.

(6) For each claim of indirect infringement, a description of the acts of the alleged indirect infringer that are alleged to contribute to or induceare inducing the direct infringement.

(7) A description of the authority of the party alleging infringement to assert each patent identified under paragraph (1) and of the grounds for the court’s jurisdiction.

(8) A clear and concise description of the principal business, if any, of the party alleging infringement.

(9) A list of each complaint filed, of which the party alleging infringement has knowledge, that asserts or asserted any of the patents identified under paragraph (1).

(10) For each patent identified under paragraph (1), whether a standard-setting body has specifically declared such patent to be essential, potentially essential, or having potential to become essential to that standard-setting body, and whether the United States Government or a foreign government has imposed specific licensing requirements with respect to such patent.

(b) Dismissal for failure To meet pleading requirements

The court shall, on the motion of any party, dismiss any count or counts of the complaint, counterclaim, or cross-claim for patent infringement if the requirements of paragraphs (1) through (6) of subsection (a) are not met with respect to such count or counts. The fact that a party pleads in accordance with subsection (c) shall not be a basis for dismissal if the party nonetheless states a plausible claim for relief sufficient under the Federal Rules of Civil Procedure.

(c) Information not readily accessible

If some subset of information required to comply withbe disclosed under subsection (a) is not readily accessible to a party after an inquiry reasonable under the circumstances, consistent with rule 11 of the Federal Rules of Civil Procedure, an allegation requiring that information may be based upon a general description of that information, that information may instead be generally described, along with an explanation of why thesuch undisclosed information is was not readily accessible, and of any efforts made by such party to access such information.

(d) Amendment of pleadings

Nothing in this provision shall be construed to affect a party's leave to amend pleadings as specified in the Federal Rules of Civil Procedure. Amendments permitted by the court are subject to the pleading requirements set forth in this section.

(e) Confidential information
A party required to disclose information described under subsection (a) may file, under seal,
information believed to be confidential under seal, with a motion setting forth good cause for such sealing. If such motion is denied by the court, the party may seek to file an amended

(d)(f) Exemption

Subsection (a) shall not apply to a A civil action that includes a claim for relief arising under section 271(e)(2) shall not be subject to the requirements of subsection (a).

(2) Conforming amendment

The table of sections for chapter 29 of title 35, United States Code, is amended by inserting after the item relating to section 281 the following new item:

281A. Pleading requirements for patent infringement actions.

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