United States: File This Under Form 18: Approved!

Order Denying Motion to Dismiss, JDS Uniphase Corp., v. CoAdna Photonics, Inc., Case No. C 14-cv-01091 (Judge Jon Tigar)

Friedrich Nietzsche once observed that it was his ambition "to say in 10 sentences what others say in a whole book." A new opinion from Judge Tigar arguably embraces Nietzsche's philosophy in the context of patent infringement pleading requirements. Judge Tigar ruled that a plaintiff will ordinarily survive a motion to dismiss when it relies upon allegations of direct infringement in its complaint that, while skimpy, nonetheless comply with Form 18 of the Federal Rules of Civil Procedure. Nietzsche's 10 sentences may well be enough.

Defendant CoAdna moved to dismiss JDS Uniphase's complaint, which consisted of two counts of direct patent infringement. JDS's complaint was short, but it did identify CoAdna's Wavelength Selective Switch (WSS) products as allegedly infringing. Specifcially, JDS alleged that: (1) CoAdna's WSS products embodied and were covered by at least one claim of the patent-in-suit; (2) CoAdna directly infringed at least one claim by making, using, offering to sell, selling, and/or importing into the United States its WSS products; (3) CoAdna would continue to directly infringe the patent unless enjoined by the court; (4) JDS sustained damages as a result of CoAdna's infringing activities; (5) JDS would suffer and was suffering irreparable harm from Defendant's infringing activities so as to deserve an injunction; and (6) CoAdna's infringement of the patent. In so pleading, JDS largely tracked the minimalistic example of a patent infringement complaint set forth as Form 18 in the Federal Rules Appendix. Judge Tigar concluded this was enough to survive the motion to dismiss.

Judge Tigar noted that compliance with the forms in the Federal Rules Appendix, such as Form 18, "satisfy the federal pleading rules" and "illustrate the simplicity and brevity that these rules contemplate." That is so, because Rule 84 and the Advisory Committee notes to the 1946 amendment of Rule 84 make clear that "the proper use of a form contained in the Appendix of Forms effectively immunizes a claimant from attack regarding the sufficiency of the pleading." And Form 18 of the Federal Rules of Civil Procedure sets out a sample complaint for direct infringement, requiring only: (1) an allegation of jurisdiction; (2) a statement that the plaintiff owns the patent; (3) a statement that defendant has been infringing the patent by making, selling, and using the device embodying the patent; (4) a statement that the plaintiff has given the defendant notice of its infringement; and (5) a demand for an injunction and damages.

CoAdna did not dispute that JDS's complaint literally satisfied these five requirements of a model complaint. CoAdna nonetheless argued that even if JDS's complaint satisfied Form 18, it was still "implausible" under the Supreme Court's Twombly and Iqbal decisions. And CoAdna had support from the recent heavily publicized decision of the Eastern District of Virginia in Macronix Int'l Co., Ltd. v. Spansion, Inc., __ F. Supp. 2d __, No. 3:13-cv-679-REP, 2014 WL 93450, at *8-9 (E.D. Va. Mar. 10, 2014), which concluded that the pleading requirements of Twombly and Iqbal take precedence over Form 18.

Judge Tigar was not persuaded, however. He pointedly refused to follow the holding in Macronix, and found it to be inconsistent with controlling Federal Circuit precedent. He further concluded not only that JDS's complaint satisfied Form 18, but also that its patent infringement claims were not "implausible." Without deciding the issue, Judge Tigar in dicta did acknowledge that perhaps the Federal Circuit in a different context might hold that a complaint bringing an "implausible claim" to be non-compliant with Form 18, such that it would consider such a complaint to present an exception to the rule that Form 18-compliant complaints satisfy Rule 8. That was not the case here, though. Hence he denied CoAdna's motion to dismiss.

Whatever the theoretical interplay between Twombly and Form 18, it is clear that complying with Form 18 essentially immunizes a (plausible) claim of direct infringement from a motion to dismiss (at least before Judge Tigar). As Judge Tigar was careful to further note, however, Form 18 does not alter the plaintiff's duty to provide detailed infringement contentions under the District's Local Patent Rules. So, ultimately reliance upon Form 18 only delays, but does not dilute, the plaintiff's responsibility to give detailed infringement contentions.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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