3 Potential Consequences Of Losing Rule 84 And The Forms
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3 Potential Consequences Of Losing Rule 84 And The Forms
Law360, New York (June 24, 2015, 10:17 AM ET) -- In December of this year, barring congressional action, practitioners will be bidding farewell to Federal Rule of Civil Procedure 84, as well as the Appendix of Forms to which it refers. For patent litigators, this change to the rules could be significant.
The abrogation of Rule 84 and the Appendix of Forms is part of a package of amendments to the rules, originally approved by the Judicial Conference in September 2014, that Chief Justice John Roberts sent to Congress for consideration less than two months ago.[1] Unless Congress intercedes, these amendments will become effective on Dec. 1. This article briefly previews the potential impact of the abrogation of Rule 84 and the forms on patent litigation.
Rule 84 And The Appendix of Forms
Rule 84 first came into effect in the late-1930s, when the original Federal Rules of Civil Procedure were enacted. The current rule provides that “[t]he forms in the Appendix suffice under these rules [i.e., the Federal Rules of Civil Procedure] and illustrate the simplicity and brevity that these rules contemplate.” In total, the appendix contains 36 examples of pleadings, such as a standard caption (Form 1), a complaint for negligence (Form 11), and a generic answer to a complaint (Form 30).
Form 18: Pleading Direct Infringement
The Appendix of Forms also includes Form 18, titled “Complaint for Patent Infringement.” According to Form 18, a complaint may state a claim for patent infringement with just four straightforward allegations:
As written, Form 18 provides only a bare outline of a patent infringement claim — it does not include, among other things, any allegations identifying any particular patent claim or any specific accused product, much less the allegedly infringing feature(s) of such a product. Despite Form 18’s relative lack of detail, until 2007 courts routinely held that the form met the so-called “notice pleading” standard of Rule 8(a).
That year, the U.S. Supreme Court issued its decision in Bell-Atlantic v. Twombly, which clarified the requirements for pleading under Rule 8. Under Twombly, a civil complaint must go beyond providing mere notice — it must contain “enough facts to state a claim to relief that is plausible on its face.”[2] Shortly after this decision, patent litigators began to ask whether this new “plausibility” standard spelled the end for Form 18 (which at the time was numbered Form 16). They soon found out it did not.
In McZeal v. Sprint Nextel Corp., decided only a few months after Twombly, the Federal Circuit reversed a dismissal of a complaint for patent infringement.[3] According to the majority of a divided panel of the Federal Circuit, the district court erred in dismissing the infringement claim because the plaintiff’s complaint met the requirements of Form 18 and Rule 8.[4]
Judge Timothy Dyk dissented-in-part, noting that in his view the Federal Circuit’s decision was “inconsistent with the Supreme Court’s recent decision in [Twombly].”[5] He agreed, however, “that under Rule 84 of the Federal Rules of Civil Procedure, we would be required to find that a bare allegation of literal infringement in accordance with [Form 18] would be sufficient.”[6] Foreshadowing the now-pending amendment, Judge Dyk remarked that “[o]ne can only hope that the rulemaking process will eventually result in eliminating the form.”[7]
In 2012, the Federal Circuit’s In re Bill of Lading Transmission decision further clarified Twombly’s applicability to patent infringement claims.[8] For direct infringement allegations, it held that Form 18 controls: “As long as the complaint in question contains sufficient factual allegations to meet the requirements of Form 18, the complaint has sufficiently pled direct infringement.”[9] For indirect infringement, however, it held that the Form does not suffice.[10] In other words, under Twombly and the current Rules, a complaint for patent infringement must plausibly allege indirect infringement but not direct infringement.
Abrogating Rule 84 and the Appendix of Forms
Before recommending that Rule 84 and the Appendix of Forms be abrogated, the Civil Rules Advisory Committee sought to determine whether the forms were helpful to litigants.[11] The committee found that “[m]any of the forms are out of date” because, for example, they do not reference certain newly created causes of action and do not account for modern procedural requirements, such as heightened pleading for fraud under Rule 9.[12] The committee also noted the availability of exemplary pleading forms on the Internet, which could provide useful examples.[13] The committee ultimately decided that, rather than amend the forms, it would be best to completely “get out of the forms business.”[14]
The Potential Impact of Eliminating Rule 84 and the Forms on Patent Litigators
For many general litigators, abrogating the forms will probably not have a significant impact on their practice;[15] for patent litigators, however, eliminating Form 18 could bring a shift in pleading practice. Specifically, because the Federal Circuit’s prior rationale for allowing mere notice pleading of direct infringement claims would no longer apply, district courts may begin requiring that litigants plausibly allege all types of patent infringement claims. Such an interpretation would raise the bar for pleading direct infringement claims, perhaps significantly so.
While it is difficult to predict how the patent litigation landscape may change if and when Rule 84 and the Appendix of Forms are abrogated, below we briefly discuss three potential consequences.
First, as Dec. 1 approaches, uncertainty about the implications of abrogating Form 18 may lead to increased filings of patent infringement complaints. Plaintiffs may seek to take advantage of Form 18 while the Appendix of Forms still exists by filing complaints before the proposed amendments become effective. By filing prior to Dec. 1, litigants may avoid being required to meet Twombly’s plausibility standard for pleading direct infringement. Of course, filing before Dec. 1 does not guarantee that compliance with Form 18 will suffice, as courts may retroactively apply the amended Federal Rules.[16]
Second, the incidence of defendants in patent infringement cases filing motions to dismiss under Rule 12(b)(6) may increase, as they seek to challenge complaints that arguably do not plausibly allege direct infringement. Should this happen, it will likely take courts within any given district some time to reach a consensus on what generally constitutes a plausible claim of direct infringement — i.e., a claim that survives a 12(b)(6) motion to dismiss. The precise contours of plausibility would likely turn on the particular facts of each case, and we would not be surprised if different courts (even in the same district) reach different conclusions, particularly early on.
Third, variations between different districts’ interpretation of plausibility may result in forum shopping by plaintiffs who seek to file their complaints in what they perceive to be more lenient venues. Some courts may, for example, interpret the Committee Note to Rule 84 — which states that the amendment “does not alter existing pleading standards or otherwise change the requirements of Civil Rule 8”[17] — as maintaining the current pleading requirements for direct infringement claims, even in the absence of Form 18. Plaintiffs with less access to facts about the alleged infringement may seek to file their complaints in these venues. Conversely, parties filing declaratory judgment actions may seek to file their cases in venues applying more stringent pleading standards.
Conclusion
If enacted, the proposed abrogation of Rule 84 and the Appendix of Forms may raise the bar for pleading direct patent infringement by requiring that complaints allege more facts, though how much more remains to be seen. As Dec. 1 approaches, prospective plaintiffs involved in patent disputes would do well to consider the pending changes to the rules when deciding when to file complaints and what to allege. Defendants should also consider these changes when deciding how to respond to patent infringement complaints.
—By Leeron Morad and Andrew J. Bramhall, Quinn Emanuel Urquhart & Sullivan LLP
The abrogation of Rule 84 and the Appendix of Forms is part of a package of amendments to the rules, originally approved by the Judicial Conference in September 2014, that Chief Justice John Roberts sent to Congress for consideration less than two months ago.[1] Unless Congress intercedes, these amendments will become effective on Dec. 1. This article briefly previews the potential impact of the abrogation of Rule 84 and the forms on patent litigation.
Rule 84 And The Appendix of Forms
Rule 84 first came into effect in the late-1930s, when the original Federal Rules of Civil Procedure were enacted. The current rule provides that “[t]he forms in the Appendix suffice under these rules [i.e., the Federal Rules of Civil Procedure] and illustrate the simplicity and brevity that these rules contemplate.” In total, the appendix contains 36 examples of pleadings, such as a standard caption (Form 1), a complaint for negligence (Form 11), and a generic answer to a complaint (Form 30).
Form 18: Pleading Direct Infringement
The Appendix of Forms also includes Form 18, titled “Complaint for Patent Infringement.” According to Form 18, a complaint may state a claim for patent infringement with just four straightforward allegations:
1. <Statement of Jurisdiction>
2. On <Date>, United States Letters Patent No. <___________> were issued to the plaintiff for an invention in an electric motor. The plaintiff owned the patent throughout the period of the defendant’s infringing acts and still owns the patent.
3. The defendant has infringed and is still infringing the Letters Patent by making, selling, and using electric motors that embody the patented invention, and the defendant will continue to do so unless enjoined by this court.
4. The plaintiff has complied with the statutory requirement of placing a notice of the Letters Patent on all electric motors it manufactures and sells and has given the defendant written notice of the infringement.
2. On <Date>, United States Letters Patent No. <___________> were issued to the plaintiff for an invention in an electric motor. The plaintiff owned the patent throughout the period of the defendant’s infringing acts and still owns the patent.
3. The defendant has infringed and is still infringing the Letters Patent by making, selling, and using electric motors that embody the patented invention, and the defendant will continue to do so unless enjoined by this court.
4. The plaintiff has complied with the statutory requirement of placing a notice of the Letters Patent on all electric motors it manufactures and sells and has given the defendant written notice of the infringement.
As written, Form 18 provides only a bare outline of a patent infringement claim — it does not include, among other things, any allegations identifying any particular patent claim or any specific accused product, much less the allegedly infringing feature(s) of such a product. Despite Form 18’s relative lack of detail, until 2007 courts routinely held that the form met the so-called “notice pleading” standard of Rule 8(a).
That year, the U.S. Supreme Court issued its decision in Bell-Atlantic v. Twombly, which clarified the requirements for pleading under Rule 8. Under Twombly, a civil complaint must go beyond providing mere notice — it must contain “enough facts to state a claim to relief that is plausible on its face.”[2] Shortly after this decision, patent litigators began to ask whether this new “plausibility” standard spelled the end for Form 18 (which at the time was numbered Form 16). They soon found out it did not.
In McZeal v. Sprint Nextel Corp., decided only a few months after Twombly, the Federal Circuit reversed a dismissal of a complaint for patent infringement.[3] According to the majority of a divided panel of the Federal Circuit, the district court erred in dismissing the infringement claim because the plaintiff’s complaint met the requirements of Form 18 and Rule 8.[4]
Judge Timothy Dyk dissented-in-part, noting that in his view the Federal Circuit’s decision was “inconsistent with the Supreme Court’s recent decision in [Twombly].”[5] He agreed, however, “that under Rule 84 of the Federal Rules of Civil Procedure, we would be required to find that a bare allegation of literal infringement in accordance with [Form 18] would be sufficient.”[6] Foreshadowing the now-pending amendment, Judge Dyk remarked that “[o]ne can only hope that the rulemaking process will eventually result in eliminating the form.”[7]
In 2012, the Federal Circuit’s In re Bill of Lading Transmission decision further clarified Twombly’s applicability to patent infringement claims.[8] For direct infringement allegations, it held that Form 18 controls: “As long as the complaint in question contains sufficient factual allegations to meet the requirements of Form 18, the complaint has sufficiently pled direct infringement.”[9] For indirect infringement, however, it held that the Form does not suffice.[10] In other words, under Twombly and the current Rules, a complaint for patent infringement must plausibly allege indirect infringement but not direct infringement.
Abrogating Rule 84 and the Appendix of Forms
Before recommending that Rule 84 and the Appendix of Forms be abrogated, the Civil Rules Advisory Committee sought to determine whether the forms were helpful to litigants.[11] The committee found that “[m]any of the forms are out of date” because, for example, they do not reference certain newly created causes of action and do not account for modern procedural requirements, such as heightened pleading for fraud under Rule 9.[12] The committee also noted the availability of exemplary pleading forms on the Internet, which could provide useful examples.[13] The committee ultimately decided that, rather than amend the forms, it would be best to completely “get out of the forms business.”[14]
The Potential Impact of Eliminating Rule 84 and the Forms on Patent Litigators
For many general litigators, abrogating the forms will probably not have a significant impact on their practice;[15] for patent litigators, however, eliminating Form 18 could bring a shift in pleading practice. Specifically, because the Federal Circuit’s prior rationale for allowing mere notice pleading of direct infringement claims would no longer apply, district courts may begin requiring that litigants plausibly allege all types of patent infringement claims. Such an interpretation would raise the bar for pleading direct infringement claims, perhaps significantly so.
While it is difficult to predict how the patent litigation landscape may change if and when Rule 84 and the Appendix of Forms are abrogated, below we briefly discuss three potential consequences.
First, as Dec. 1 approaches, uncertainty about the implications of abrogating Form 18 may lead to increased filings of patent infringement complaints. Plaintiffs may seek to take advantage of Form 18 while the Appendix of Forms still exists by filing complaints before the proposed amendments become effective. By filing prior to Dec. 1, litigants may avoid being required to meet Twombly’s plausibility standard for pleading direct infringement. Of course, filing before Dec. 1 does not guarantee that compliance with Form 18 will suffice, as courts may retroactively apply the amended Federal Rules.[16]
Second, the incidence of defendants in patent infringement cases filing motions to dismiss under Rule 12(b)(6) may increase, as they seek to challenge complaints that arguably do not plausibly allege direct infringement. Should this happen, it will likely take courts within any given district some time to reach a consensus on what generally constitutes a plausible claim of direct infringement — i.e., a claim that survives a 12(b)(6) motion to dismiss. The precise contours of plausibility would likely turn on the particular facts of each case, and we would not be surprised if different courts (even in the same district) reach different conclusions, particularly early on.
Third, variations between different districts’ interpretation of plausibility may result in forum shopping by plaintiffs who seek to file their complaints in what they perceive to be more lenient venues. Some courts may, for example, interpret the Committee Note to Rule 84 — which states that the amendment “does not alter existing pleading standards or otherwise change the requirements of Civil Rule 8”[17] — as maintaining the current pleading requirements for direct infringement claims, even in the absence of Form 18. Plaintiffs with less access to facts about the alleged infringement may seek to file their complaints in these venues. Conversely, parties filing declaratory judgment actions may seek to file their cases in venues applying more stringent pleading standards.
Conclusion
If enacted, the proposed abrogation of Rule 84 and the Appendix of Forms may raise the bar for pleading direct patent infringement by requiring that complaints allege more facts, though how much more remains to be seen. As Dec. 1 approaches, prospective plaintiffs involved in patent disputes would do well to consider the pending changes to the rules when deciding when to file complaints and what to allege. Defendants should also consider these changes when deciding how to respond to patent infringement complaints.
—By Leeron Morad and Andrew J. Bramhall, Quinn Emanuel Urquhart & Sullivan LLP
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