Pleading Infringement, Pre-Suit Investigation, and a New Ruling

As you know, it used to be you could file a complaint for patent infringement using Form 18, which barely said anything beyond “Plaintiff owns a patent, and you infringe it.”  Nowadays, patent infringement complaints, like all others, must comply with Iqbal and Twombly, which require pleading factual material that, if taken as true, plausibly states a claim upon which relief can be granted.

A while back, I wrote about how this is going to be difficult to do in some cases: how do you gather a Rule 11 basis to plead plausible facts when, for example, the claimed method is practiced by a corporation inside its well-guarded factory?

A recent decision, Harvard v. Micron (17-11249, D. Mass. Jan. 31, 2017) (available here), gives a real world example of this.  The original complaint alleged that the patented method was commonly used to perform the accused process.  The defendant moved to dismiss, asserting that this was not enough to make it “plausible” that, in fact, the defendant used the method.

The district court granted the motion, and the plaintiff re-pled. The defendant moved to dismiss again, saying the amendment was futile because it still failed to show plausibility.  The judge denied the motion:

Harvard admitted there are multiple methods of achieving the film found on Micron’s chips, and Harvard had no way of demonstrating Micron used the patented “common” method and not one of the other procedures. Tr. Mot. Dismiss 5:13-6:16. Hence, all Harvard plausibly could argue with regard to Micron is that Micron’s chips possessed a film (which itself is not patented), and Harvard’s patented method is one of a number of possible ways to create that film. That is, Harvard suggested that it is possible that Micron uses Harvard’s patented precursors without rendering it plausible that Micron does so.

A complaint that merely argues it is possible the defendant infringes is insufficient under the Twombly standard. See Garcia-Catalan 734 F.3d at 104-05. In its amended complaint, however, Harvard does more than simply state that Micron might use the patented method because it is common. Harvard alleges that Micron has publicly contemplated using the patented precursors, as evidenced by Micron’s own patents. Am. Compl. ~ 44. In the ‘725 Patent, Micron suggests using alkylamides as an ALD precursor. Def.’s Opp’n, Ex. B, ‘725 Patent col.S, 11.24-30, ECF No. 39-3. Alkylamides are amongst the precursors encompassed by claim 24 of Harvard’s ‘539 Patent. Compl., Ex. B, ‘539 Patent col.32, 11.17-22. This explicit identification of a patented precursor makes it plausible to believe that Micron infringed upon the ‘539 Patent, and that plausibility is all that is needed to survive a motion to dismiss, see Twombly, 550 U.S. at 559-60. Because the amended complaint survives the Twombly standard, its filing would not be futile.

While all well and good, the problem is that often this evidence will not be available, allowing infringement to go unchecked.  Further, this pleading problem means that patent drafters should think of ways to claim the method in such was as to avoid the problem.  That may not always be possible, of course.