Pleading Infringement: Twombly does not Require Element-by-Element Infringement Pleading

by Dennis Crouch

BOT M8 v. Sony (Fed. Cir. 2021)

Pleading Standards: The starting point of a civil lawsuit is the filing of the complaint that makes a claim for relief.  FRCP 3.  In order to properly state a claim, the rules require “a short and plain statement of the claim showing that the pleader is entitled to relief.” FRCP 8.  For many years, the rules included an Appendix of Form Complaints deemed legally sufficient to satisfy R. 8. Form 18 focused on patent infringement and included a bare-bones set of allegations that (1) the plaintiff owns a particular patent and (2) the defendant has infringed that patent. (Image of Form 18 below).   In general, Form 18 was plaintiff friendly, making it easy to file a patent infringement lawsuit without providing any details beyond the patent number at issue.  That approach was in place for a number of years and only began to crumble with the Supreme Court’s decision in  Bell v. Twombly, 550 U.S. 544 (2007), followed by Ashcroft v. Iqbal, 556 U.S. 662 (2009).  Those cases interpreted the “short and plain statement” requirement as requiring “facial plausibility” that can be satisfied by the inclusion of factual allegations that lead to a reasonable inference of liability.  Still, even after Iqbal, the form-pleading-sufficiency rule was still in place in a way that forestalled complete implementation of the Iqbal regime. In 2015, Form 18 was removed and the transformation complete.

Element-by-Element Claim Analysis in Pleadings: Post-Iqbal, the courts have struggled with line-drawing-what quality of factual allegations are sufficient to survive the plausibility test.  In patent cases, one question is whether then plaintiff needs to provide an element-by-element analysis of how the accused activity practices each element of the asserted claims.   Here, the Federal Circuit holds (again) that element-by-element analysis is not a pleading requirement:

To the extent this district court and others have adopted a blanket element-by-element pleading standard for patent infringement, that approach is unsupported and goes beyond the standard the Supreme Court articulated in Iqbal and Twombly.

Slip Op.

In Bot M8 v. Sony, the district court dismissed Bot M8’s infringement claims against Sony’s PlayStation 4 (PS4). (Dismissing claims stemming from four patents).   On appeal, the Federal Circuit has reversed-in-part.  While plausibility is required, the court repeated its prior statement that the plaintiff “need not prove its case at the pleading stage.” Bill of Lading (Fed. Cir. 2012).

Regarding infringement, the court found that a complaint may be sufficient without an element-by-element infringement analysis. “A plaintiff is not required to plead infringement on an element-by-element basis.”  Rather, the focus of complaint sufficiency is notice — a complaint needs to provide fair notice of what activities by the defendant constitute infringement.

The court then tried to draw some lines:

  • Insufficient: merely alleging an entitlement to relief (as was done in Form 18)
  • Insufficient: reciting claim elements and “merely concluding that the accused product has those elements.”
  • Sufficient: providing factual allegations that, when taken as true, articulate why it is plausible that the accused product infringes.

Again, the focus is on fair notice to the defendant and “specific facts are not necessary” when the general allegations are sufficient.

Although the district court required too much by demanding element-by-element analysis in the complaint, the Federal Circuit still affirmed the dismissal with regard to two of the four patents.  For those two patents, the court concluded that allegations found in the complaint actually disprove infringement.  The complaint “contains too much rather than too little, to the point that Bot M8 has essentially pleaded itself out of court.”  In particular, Bot M8 alleges that the “authentication program” is stored on the motherboard, but the claims require the program to be stored on a separate board. “That allegation renders Bot M8’s infringement claim not even possible, much less plausible. While claim 1 requires that the game program and authentication program be stored together, separately from the motherboard, the [complaint] alleges that the authentication program is located on the PS4 motherboard itself.”

The conclusion here warns against a “kitchen sink” approach to infringement assertions within a patent complaint. In particular, patentees will need to be cautious when alleging infringement of alternative claim language such as below.

  1. A system comprising an authentication program stored in a first memory and a motherboard…
  2. The system of claim 1 where the first memory is located on the motherboard.
  3. The system of claim 1 where the first memory is not located on the motherboard.

Barring unusual claim construction, an accused system cannot infringe both claims 2 and 3 since they are claimed in the alternative.  It turns out that you might not know at the time of filing the exact location of the motherboard.  Although some amount of pre-filing investigation is required, the rules allow for plaintiffs to rely upon  potential discoverable evidence when making the complaint. In Bot M8, plaintiff’s counsel argued that it “had not previously reverse engineered the PS4 to support the prior pleadings because ‘jailbreaking’ the PS4 is illegal under the Digital Millennium Copyright Act (“DMCA”) and other anti-hacking statutes.”  In this particular case, the district court did not rule on the merits of the of the excuse, but ruled that that the concern had been raised too late in the litigation to be viable. “Because Bot M8 did not raise any concerns about its ability to reverse engineer the PS4 until after the district court issued its decision on Sony’s motion to dismiss, the court found that Bot M8 was not diligent.”

An easy solution here is to “plead in the alternative.” The FRCP permits parties to set out two different statements of a claim “alternatively or hypothetically . . . A party may state as many separate claims or defenses as it has, regardless of consistency.” FRCP 8(d).  One difficulty though is that each alternative pathway must meet the plausibility standard. The difficulty for Bot M8 is that it did not plead in the alternative. “Notably, Bot M8’s allegations were not pled in the alternative.” Slip Op. at Note 3.  Rather, Bot M8 told one story that effectively disproved infringement for two of the asserted patents.

= = = =

Claim 1 of another asserted patent had also been determined invalid as ineligible. On appeal, the Federal Circuit affirmed that the asserted claim 1 “recites the abstract idea of increasing or decreasing the risk-to-reward ratio, or more broadly the difficulty, of a multiplayer game based upon previous aggregate results. But the claim leaves open how to accomplish this, and the specification provides hardly any more direction.”  Slip Op. (quoting district court and affirming on the same reasoning).

= = = =

  • US 8,078,540: Dismissal affirmed, claims contradict factual assertions in claim (memory location)
  • US 8,095,990: Dismissal affirmed, claims contradict factual assertions in claim (memory location)
  • US 7,664,988: Dismissal reversed, element-by-element infringement analysis not required in the complaint.
  • US 8,112,670: Dismissal reversed, element-by-element infringement analysis not required in the complaint.
  • US 7,338,363: Dismissal affirmed, claims lack eligibility.

27 thoughts on “Pleading Infringement: Twombly does not Require Element-by-Element Infringement Pleading

  1. 6

    bruhs I need good leftist advice. I was just out on an evening stroll, and I did notice 3x dudes of darker complexion climbing over a fence into a luxury apt swimming pool area (likely to swim I would guess). Now, the question is, is it MORE RA C IS T to call the popo, or is it less, if we presume that at least one black girl might be victimized in said apt?

    1. 6.1

      Dennis’ beloved maggot brains doin what they do best!

      So thankful there is no possibility of any “perception of bias”, though. Gotta keep them rightwing skermbags placated else the next thing you know …

      1. 6.1.1

        What are you on about?

        What are you on?

        1. 6.1.1.1

          “The Poopie Diaper” seems to screaming and whining as much as he did a year ago. I suspect he needs a change.

      2. 6.1.2

        What man, je sus, this was a real life problem I faced the other night. I for real needed good ol leftist advice. If you leftists are incapable of doing the leftist math without a mind master there to hold your hand you can just say so.

    2. 6.2

      if we presume

      This

  2. 5

    I ran this through my eligibility determining device and, yup, it’s ineligible. I got the same result after I turned up the sensitivity on the eligibility determination double checking device. The error detection device detected no errors, even after i customized the machine with seven more error detection sensors.

    1. 5.1

      What are the odds that your device is “abstract” (and you don’t recognize the irony)….?

      1. 5.1.1

        The greatest irony is that under the CAFC case law, a machine that performs the functions of a CAFC judge is ineligible for patentability.

        The judges on the CAFC are a national disgrace.

        1. 5.1.1.1

          Judging court cases or applying case law to facts isn’t eligible for patenting and no sane person wants it any other way so … where is the “irony” exactly?

          1. 5.1.1.1.1

            Quiet “The Poopie Diaper.”

  3. 4

    While “an element-by-element analysis of how the accused activity practices each element of the asserted claims” [aka an infringement “claim chart”] is not required in a complaint, it can be, and is, required by local rules in certain District Courts [like ND CA] to be provided at some time after the complaint is filed.* [Presumably after a defendant product discovery opportunity, but patent owners are supposed to have done some infringement investigation themselves before filing an infringement complaint.] Also, early Markman judicial claim interpretations can desirably flush out non-infringements. A bare bones complaint with no indication of which claims are asserted against which products, and no claim definition or claim scope determination is unfair to defendants and leads to unrestrained costly discovery burdens against a company with numerous different or changing products and product elements or features.
    [To see examples of the possible consequences for attorneys filing complaints with baseless conjectural fact allegations, follow the ongoing judicial sanctions, disciplinary proceedings and defamation suits against some of the attorneys who signed several of the 40-odd alleged vote fraud lawsuit complaints.]
    *[Invalidity assertions can also have claim chart requirements, including those for IPRs.]

    1. 4.1

      While “an element-by-element analysis of how the accused activity practices each element of the asserted claims” [aka an infringement “claim chart”] is not required in a complaint, it can be, and is, required by local rules in certain District Courts…

      Right, and this precedential opinion calls that requirement “unsupported” (slip op. at 13, “To the extent this district court and others have adopted a blanket element-by-element pleading standard for patent infringement, that approach is unsupported and goes beyond the standard the Supreme Court articulated in Iqbal and Twombly”).

      A bare bones complaint with no indication of which claims are asserted against which products, and no claim definition or claim scope determination is unfair to defendants and leads to unrestrained costly discovery burdens against a company with numerous different or changing products and product elements or features.

      Agreed. Anyone who reads infringement pleadings knows this from experience. The FRCP should be amended to require claim charts in patent infringement suits. Nevertheless, the court here was correct to say that the FRCP do not presently require as much, and the district courts’ powers to promulgate local rules do not reach so far as to permit them to enforce enhanced pleading standards beyond what the SCOTUS has interpreted the FRCP to require.

      1. 4.1.1

        Greg, just to clarify, the D.C. local rules requirements for subsequent more specific information which I was referring to are not about what is “in the complaint” or “on the pleadings,” which is the subject and the situation in this case.

        1. 4.1.1.1

          Ah, good point. Still and all, I stand by the contention that the FRCP should require such detail of pleading in the complaint, although they do not at present.

          1. 4.1.1.1.1

            Greg, more detail would not require another FRCP change, just Fed. Cir. Twombly – Iqbal enforcement that defendants with multiple products, especially when sued on by more than one patent, would at least have the complaint identify at least one specific claim of each patent which is asserted infringed by at least one specific identified product. Taking into account that some claim infringements, such as those involving software or chemical processes, may not confirmable without litigation discovery. Also, that identifying every claim infringed by every product in advance of suit can be unduly burdensome on a patent owner and is often unnecessary for suit disposals or settlements.

  4. 3

    From the specification of 7,338,363:

    A player generally plays a game with a gaming machine by inserting a game medium such as a game ball, a medal, or the like into the gaming machine, and a certain amount of game media corresponding to the game result by the player are paid out for return to the game player.”

    Yeah, that totally sounds like a PS4.

    I bet the PS6 will be delayed because the brilliant minds behind this patent, having been denied their just rewards, will withhold their future inventions from the public. What a tragedy.

  5. 2

    And explain to me again how the Iqbal/Twombly standard regarding a 12b6 motion (i.e., a motion to dismiss for failure of the complaint to state a claim on which relief can be granted) involves invalidating a patent under 35 USC 101.

    Sufficient: providing factual allegations that, when taken as true, articulate why it is plausible that the accused product infringes.
    That’s what a 12b6 motion should look like in a patent context.

    1. 2.1

      Look, if you want real law, you have to go to another country.

      At this point we are a third-world country.

      1. 2.1.1

        Lol at this being what makes us a 3rd world country in a Gucci belt.

  6. 1

    Great — and correct — call by the Court on Twombly / Iqbal.

    Now about yet another junk 101 / eligibility decision . . .

    1. 1.1

      One of the claims from 7,338,363:

      1. A first gaming machine for transmitting/receiving data to/from a server, comprising: a specification value setting device for setting at least one specification value as a control condition for game control; a transmitting device for transmitting data of a game result to the server; a gaming machine determining device for determining a second gaming machine operated by a co-player; a total result data receiving device for receiving from the server data of a total game result achieved by the first gaming machine and the second gaming machine based on the data of the game result transmitted by the transmitting device; a specification value determining device for determining a specification value based on the data of the total game result received by the total result data receiving device; and a specification value renewing device for renewing to replace the specification value set by the specification value setting device with the specification value determined by the specification value determining device.

      Basically, this is a 112 rejection that uses Alice.

      1. 1.1.1

        Had the same thought BobM.

        “112?! 112!? Ha! We don’t need no stinkin’ 112 (or 102, or 103, either) . . . when we’ve got our facts-and-law-be-d.a.m.n.e.d, just-make-stuff-up-out-of-thin-air, what’s-a-constitution, best-bud Alice-Mayo in our innovation-killin’ bag-o-tricks!”

        “Inventors can jus’ go to . . . well; you know where. Is America great, or what!?”

        — CAFC

      2. 1.1.2

        What sort of 112 issue are you seeing?

      3. 1.1.3

        The value setter sets a value!

        Sounds like an ineligible grbge.

      4. 1.1.4

        Anyone else spot the huge error in the last clause of the claim? What a joke.

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