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A Good Form of Reform

A Good Form of Reform

An earlier post dealt with the question “What form Reform?” We now have at least a partial answer to that question. A series of amendments to the Federal Rules of Civil Procedure took effect on December 1, 2015. A number of these changes will influence patent litigation.
The first, and perhaps most dramatic,change is that Rule 84 was eliminated. Rule 84 used to say “…the forms in the appendix suffice under
pleadings1these rule
s.“ Under Rule 84, completion of Form 18 was  sufficient for filing of an infringement suit.Elimination of Rule 84 leaves rule 8(a)(2) in control. Rule 8(a)(2) requires that a complaint must contain a “short and plain statement of the claim showing that the pleader is entitled to relief.”The Supreme Court has interpreted rule 8(a)(2) in Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009). Neither of these cases is a patent infringement case.In Iqbal the Court summarized the requirements of sufficiency of pleadings that it had set forth earlier in Twombly (emphases added):

Two working principles underlie our decision in Twombly. First, the tenet that a court must accept as true all of the allegations contained in a complaint is inapplicable to legal conclusions. … Second, only a complaint that states a plausible claim for relief survives a motion to dismiss. Determining whether a complaint states a plausible claim for relief will, as the Court of Appeals observed, be a context-specific task that requires the reviewing court to draw on its judicial experience and common sense. In keeping with these principles a court considering a motion to dismiss can choose to begin by identifying pleadings that, because they are no more than conclusions, are not entitled to the assumption of truth. While legal conclusions can provide the framework of a complaint, they must be supported by factual allegations. When there are well-pleaded factual allegations, a court should assume their veracity and then determine whether they plausibly give rise to an entitlement to relief. Our decision in Twombly illustrates the two-pronged approach.


In the context of patent litigation the old Rule 84 created a dichotomy between “judicial experience” and “common sense”. Elimination of Rule 84 opens the door to common sense, amd the Supreme court has defined this term to some extent by requiring “factual allegations” which must be “well pleaded”.  It is not yet clear how high the bar will be for a claim to survive a motion to dismiss, but it will undoubtedly be higher than the bar set by the old form 18.


Raising the bar for filing a patent infringement complaint may do more to curb dubious patent suits than all of the proposed “patent reform” bills that congress has been considering over the last few years would have done if they had all been voted into law. This is a welcome change because it will be applied to all players in the game, whether they are practicing entities or not.The second change is that procedures will move faster. The new versions of rules 4(m), 16, and 26(f) mean that due dates for various pre-trial events will be 30 to 60 days earlier. This may work to the advantage of patentees because they can get their materials ready in advance, before filing the complaint. Accused infringers will have less time to get organized to respond. discovery 2



The third change deals with the scope of discovery. Rule 26(b)(1) now limits discovery to material which  “is relevant to any party’s claim or defense and proportional to the needs of the case” (amended text in italics). Under old rule 26(b)(2) proportionality limitations only applied if there was a court order to that effect. Now they are the default.


The proportionality analysis considers: 

  1. a) the importance of the issues at stake; 
  2. b) the amount in controversy; 
  3. c) the parties’ relative access to relevant information; 
  4. d) the parties’ resources; 
  5. e) the importance of the discovery in resolving the issues; and 
  6. f) whether the burden or expense of the proposed discovery outweighs its likely benefit.


The new version of Rule 26(c)(1)(B) provides that “the allocation of expenses” can be included in a protective order. This means that the court can allocate the cost of discovery, or portions of the discovery, to one of the parties in the suit.


The net effect of these changes to the discovery rules may be more modest discovery requests and/or more judicial limitation of sweeping discovery requests.


In summary, the new rules seem to offer significant protection against abuse of the system by wealthy players enforcing patents with vague claims against large numbers of alleged infringers. It remains to be seen whether these measures will dampen the public outcry to “fix” the patent system.


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