To state a claim for patent infringement (or any other civil claim), a plaintiff must make a short plain statement of the claim under Fed. R. Civ. P. 8. Two relatively recent Supreme Court cases—Bell Atlantic v. Twombly (2007) and Ashcroft v. Iqbal (2009)—define what counts as a short plain statement of a claim.

At the same time, Fed. R. Civ. P. 84 tells a plaintiff that if he or she submits a complaint that follows one of the forms attached to the federal rules, that complaint is necessarily sufficient to state a claim. For patent litigants, that means Form 18, the bare–bones form that sets out the necessary elements of a patent complaint, is the golden key to federal court.

As courts and commentators (including the authors of this blog) have pointed out, it is highly questionable whether following Form 18 (written before World War II) to the letter would actually satisfy the Supreme Court’s test in Twombly and Iqbal (issued in the last five years). If Twombly and Iqbal suggest that a Form 18 complaint is inadequate, while Fed. R. Civ. P. 84 insists that a Form 18 complaint must be adequate, that contradiction puts district judges in a difficult spot. Although judges have attempted to limit the scope of Form 18 by confining its application to cases of direct infringement, they have by and large followed Rule 84 in concluding that a Form 18 complaint is good enough for the rules, even if it might not be good enough for the Supreme Court.

Fortunately, the Advisory Committee on Civil Rules, the body that proposes changes to the Federal Rules of Civil Procedure, sees the problem. In the report of their latest meeting (see pp. 41 and 625), the committee agreed to take up the question of what to do about the federal forms generally, and Form 18, which they note “has been excoriated,” in particular. These forms, which were drafted in the late 1930s to help lawyers follow the new pleading rules adopted at that time, have passed their expiration date.

We’ve made our own suggestion (addressed at page 650–51 and 671-80 of the committee report) for how to bring Form 18 into the modern era (and into compliance with Twombly and Iqbal), but whether or not the Committee takes up our suggestion, it is good news for patent litigants that the conflict highlighted here stands a chance of being resolved.

We comment on an interesting decision out of the Southern District of New York, concerning parties evidently engaged in patent litigation for a Dickens–esque amount of time. (“The little plaintiff or defendant who was promised a new rocking–horse when Jarndyce and Jarndyce should be settled has grown up, possessed himself of a real horse, and trotted away into the other world.” (Charles Dickens, Bleak House (1853)).  In ICOS Vision Systems, the court granted plaintiffs’ motion for summary judgment on a theory of implied license by legal estoppel. The patent in question was a continuation of certain patents the subject of a previous covenant not to sue between the parties. The patent holder argued that the covenant not to sue was not supported by consideration, and therefore that no implied license should follow. The court disagreed. “There is no consideration for the [covenant not to sue] given here; but [plaintiff] and its customers relied on [defendant’s] promise not to sue for infringement of the eight [covenant not to sue] Patents under the terms set forth in that agreement. . . . In reliance on the [covenant not to sue], [plaintiff] has expand its sales worldwide and has indemnified its customers against future suit.” The Court ultimately concluded that, where the covenant not to sue did not expressly exclude subsequent patents in the same chain, continuations would be impliedly licensed.

Good news for any defendant (or indemnifier) looking for peace of mind out of a license agreement.

Out of curiosity, we also visited the Administrative Office of the Court’s website, where statistics were available for the number of intellectual property cases filed between April 1, 2010 and March 31, 2011 (and prior years). While these figures obviously include copyright and trademark cases, as well as patent cases, during that particular 12–month interval, 297 IP cases were filed in Delaware, and 845 IP cases were filed in the Eastern District of Texas. This was an increase from 287 IP cases filed in Delaware between April 1, 2009 and March 31, 2010—and way up from the 299 IP cases filed in the Eastern District of Texas during that time frame. (Most likely due to the surge of so–called “false marking” cases).

We look forward to seeing more recent statistics, as to whether the District of Delaware is now seeing increased patent litigation, as well as the impact of the America Invents Act on case filings.

Once you’ve been sued for patent infringement by some feature of your website, plaintiffs are generally going to demand that you produce your source code to them for inspection—so they can look under the hood of your website to see where the (alleged) infringement is happening. So what do you do if a patent–owner has asked for “your” source code, and “your” source code originated with a third–party vendor? One approach is to produce what technical documents are in your possession, but decline to produce source code (or related documents) that belong to vendors on the ground that they are not in your possession, custody, or control. Indeed, ownership of source code may well be the subject of a vendor agreement that places limits on what users can do with the code, including to whom it can be shown.

The result is a dispute like the one between TQP Development and United Parcel Service recently decided in the Eastern District of Texas. UPS initially produced fewer than 4,000 pages of documents, and no source code, arguing that the source code wasn’t UPS’s. TQP complained about that production (and other issues), and UPS created and produced some 80,000 additional pages of documents in an effort at compromise. Unmollified, TQP took its complaints to the court. While the court did order UPS to produce other categories of documents that UPS had not previously produced—such as patent licenses, website sales revenues, and website metrics—the court did not require UPS to produce any additional technical documents.

The channel between a party’s discovery obligations and its obligations to third–party vendors may be narrow, but it can be navigated.

Hence In re Google, a short denial of mandamus by the Federal Circuit about a tall order: electronic discovery. It seems that Google recorded a final version of a potentially–incriminating email on its privilege log in a dispute with Oracle, but (presumably inadvertently) produced “autosaves” of the email as it was being drafted. After Oracle referenced the email’s substance at a hearing before the magistrate, Google sought to have Oracle return all versions of the email. In response, Oracle moved to compel disclosure of the email on grounds that, notwithstanding its direction to in–house counsel, they were not privileged. The court agreed.

Patently–O has commented that this ruling illuminates the consequences of the “dump–and–recall approach” of ediscovery in patent litigation. We tend to agree. “Claw back” provisions—under which one can always claim later that the document produced should not have been produced—cannot unring the bell. In other words, it is hard for Oracle to unsee what it had seen. Regardless of whether the email was in fact privileged or not, at the end of the day, had it been one of thousands of entries on Google’s privilege log, it is far less likely that that determination would ever have been made by a Court. While we obviously do not countenance spurious claims of privilege, this opinion serves as a reminder that big outcomes can swing on inadvertent missteps in the discovery process. At the same time, we are mindful that discovery can already be a time–consuming—and expensive—process. Seeking to make it error free as well is likely an impossible order.

On the merits, the majority followed the court’s earlier decision in CyberSource v. Retail Decisions in holding that just saying that a method is “computer aided” doesn’t aid the patentability of an abstract (unpatentable) idea: “The claims are silent as to how a computer aids the method, the extent to which a computer aids the method, or the significance of a computer to the performance of the method. The undefined phrase ‘computer aided’ is no less abstract than the idea of a clearinghouse itself.” Judgment of invalidity affirmed.

Just how much this case law has changed the pleading standards is open to debate—and likely varies by district. Ask any defense lawyer, however, and she or he will tell you that a major sticking point to a real change in patent pleading standards is the bare–bones minimum sample complaint set forth in Fed. R. Civ. P. Form 18, which was implicitly blessed by the Federal Circuit Court of Appeals in the post–Twombly decision of McZeal v. Sprint Nextel Corp. Despite the fact that Form 18 requires little to no detail to set forth a patent claim, relying on McZeal, some courts have found that compliance with Form 18 was sufficient to stake out a claim and skate by the reformed pleading standards.

In a short opinion out of the District of Delaware, however, Judge Baylson ruled that, with all due respect to McZeal, the pecking order required that deference be paid to Iqbal, which undermines McZeal. While not the first judge to conclude thusly (and rightly, in this author’s opinion), Judge Baylson’s opinion is nonetheless noteworthy, and perhaps constitutes another note in the drumbeat to update Form 18.

But Congress waived its legislative wand and united the country under a single rule, 35 U.S.C. § 299, a codification of the  majority rule that joinder of multiple, unrelated defendants could not be based simply on alleged infringement of the same patent. Congress noted that it was creating this new statute to resolve the dispute among the district courts over which rule applied. (For legislative history nuts, see America Invents Act Report, 112 Cong. Rept. 112–98, 54–55 & n.61 (June 1, 2011)). And the parties all litigated happily ever…well, okay, virtually no one litigates happily, but at least the rules of the game were clear.

But then, as highlighted by the invaluable Docket Navigator, the multi–defendant patent action would not succumb, and continues to divide courts dealing with cases filed before the effective date of the new rule (September 16, 2011). Thus, a federal court in the Central District of California can rule one day that claims of patent infringement against unrelated defendants cannot be joined together even if the defendants are alleged “to use the same or similar infringing technologies.” And the next day, a United States magistrate judge in the Eastern District of Texas can conclude that unrelated defendants that make and sell cell phones that “rely on the same technology” can be joined together in a single action.

Most interestingly (alarmingly?), the Texas magistrate judge further suggested that, although the newly enacted 35 U.S.C. § 299 did not apply to the case, the fact that the defendants “make similar products that use the same technology and in many instances the same sensor or processor” means that “Defendants in this case are not merely accused of making or selling similar products that infringe the same patents” (emphasis added).

To quote Gene Wilder in the title role in Young Frankenstein, “Alive…it’s alive…it’s alive.”

Golan v. Holder. The Supreme Court recently affirmed a lower court ruling that the Copyright Clause of the Constitution does not stand in the way to stop Congress from “restoring” copyright protection to thousands of foreign–authored works that had fallen into the public domain, in some cases, for decades before Congress stepped in. The case considered a 1994 law enacted to carry out an international convention, and would restore copyright protection to works ranging from C.S. Lewis books to Picasso paintings. Petitioners—publishers, musicians, and others formerly enjoying free access to the works removed from the public domain—argued (unsuccessfully) that Congress’s actions exceeded its authority under the Copyright Clause and transgressed First Amendment limitations.

SOPA. The Stop Online Piracy Act (House) and the Protect IP Act (Senate)—backed primarily by the movie and music industries to fight Internet piracy—continues to draw fire from Internet companies, which worry the proposed legislation would promote censorship and hobble the Web. Beyond traditional lobbying activities, however, websites are coming up with novel ways of registering protest. Wikipedia shut down its (English language version) website for 24 hours. Google decked out with a blacked–out logo, and led the charge with a message urging users to sign an anti–SOPA petition to Congress. Facebook’s Zuckerberg posted (of course) about the bills, and also provided a link to a page outlining the company’s opposition. So far the steamroller seems to have had an effect—former Congressional sponsors are withdrawing support right and left.

But what if the accusation is cyber–squatting? Can a plaintiff rope dozens of cyber–squatters into the same lawsuit? Coach, the leather goods company, filed a recent complaint against 356 alleged cyber–squatters, which posed that question and got two different answers (HT: Virginia IP Law blog). A magistrate judge initially ruled that Coach could not join hundreds of accused cyber–squatters in the same suit, arguing that the evidence was not sufficient to establish that claims against all of the defendants had sufficient commonality. (There were eleven defendants that the magistrate judge found to have been properly joined.) On review, the presiding district judge reversed field, overruled the magistrate judge, and required that all of the domain names be turned over to Coach. While the district judge did not specify his reason for overruling the magistrate judge’s decision, there appear to be some potentially relevant differences between the patent and cyber–squatting contexts. While patent infringement claims require comparing individual defendant’s systems with the language of the asserted patent claims, cyber–squatting claims simply require showing that someone acquired or used a domain name associated with a qualifying mark of the plaintiff. In the former case, the devil lies in the details of the defendants’ different accused systems, which will require a separate factually intensive investigation into each separate system. In the latter case, the differences among defendants are unlikely to be either so striking or so vast.