The Federal Circuit addressed the sufficiency of pleading infringement for the first time after the abrogation of Form 18 last year, in the decision Lyda v. CBS Corp., No. 2015-1923 (Fed. Cir. Sept. 30, 2016). The Court affirmed a district court’s dismissal of of a complaint under 12(b)(6) for an insufficient allegation of joint infringement by multiple parties.
The plaintiff in this case asserted infringement by four independent claims that the Court treated as method claims requiring the performance of multiple steps. The claims involved methods for “receiving and processing responses to a program.” The complaint at issue alleged that the operation of the television show Big Brother by CBS infringed by allowing television audience members to influence aspects of the show by voting via text message on their cellular phones. The text messages allegedly used codes identifying the sender and the sender’s vote selection.
In setting forth the claim for infringement, the Amended Complaint alleged ”the participation of people under the control or direction of an independent contractor engaged by the Defendant CBS Interactive to send votes using text messages.” CBS allegedly infringed by “operat[ing] the show Big Brother and us[ing] an independent contractor in conjunction with testing the system.” The independent contractor allegedly “tested the system’s capability to receive text message responses prior to using the system during live broadcasts.” These independent contractors, themselves, allegedly directed and controlled unnamed third parties to test the voting operations using “well known cell phones.”
The district court noted that the allegation regarding the independent contractor implicated a theory of joint infringement, where some steps would supposedly be performed by CBS Interactive and some steps performed by the contractor “acting under the direction or control of CBS Interactive.” The bare allegation that CBS “operat[ed] the show” but the contractor “test[ed] the system” made it “simply impossible to discern what actions, activities, services, or products are infringing Plaintiff’s patents.” The district court granted the motion to dismiss.
On appeal, the Court addressed the sufficiency of the pleading. It began by noting that Form 18 of the Federal Rules of Civil Procedure would apply, because the case was dismissed prior to the rule change in December 2015 abrogating Form 18 as an example complaint sufficient to allege direct infringement. But, importantly, it held that Form 18 does not satisfy an allegation of joint infringement because it requires additional elements not addressed by Form 18 related to direction or control or a joint enterprise.
The Court held that the Amended Complaint did not set forth any factual allegations in support of its assertion that CBS Interactive directed or controlled the independent contractors. Nor did the pleading contain factual allegations relating to how the independent contractors directed or controlled the unnamed third parties. Finally, the Amended Complaint did not allege any relationship between CBS and the unnamed third parties, who own or borrow cell phones allegedly used in testing. Thus there were no allegations that could form the basis of a reasonable inference that each claim step was performed by or should be attributed to Defendants.
Although this decision is focused on the sufficiency of pleading joint infringement, it can help understand how the Federal Circuit would generally view allegations of direct infringement following the abrogation of Form 18. Here, the district court and the panel on appeal both recognized that the Amended Complaint was unclear as to how the Defendant was responsible for the performance of each claim element. Even though the pleading alleged the involvement of third parties, it was not apparent how the Defendant was responsible for those parties performing any of the claim steps.
Similarly, in a general allegation of direct infringement, there may not be an apparent mapping of key claim elements to actions by the Defendant or aspects of the accused product. This may be especially true with software patents, where claims often recite multiple components using terms that do not have a common technical meaning. Plaintiffs will likely need to support their direct infringement claim in their pleading with an allegation that links what the Defendant does, or what the accused product has, to the elements of an asserted claim.
Defendants, on the other hand, could best attack an insufficient pleading in a motion to dismiss by focusing on the lack of allegations for a key disputed issue, rather complaining of a general lack of specificity. Here, the Defendants pointed out the deficiencies in the original complaint to the plaintiff, and the plaintiff filed an amended complaint to add more detail regarding direct infringement. It became apparent that the plaintiff could not assert that the Defendants practiced every step to support direct infringement, and the Defendant’s motion to dismiss was focused on the joint infringement allegations underlying assertions of direction or control.