This month's newsletter will address amendments to the Federal Rules of Civil Procedure (FRCP) and their effect on patent litigation. These new rules, which became effective on December 1, 2015 and apply to all actions pending as of that date, modify several key aspects of patent proceedings including the standards for pleadings and the procedural rules and scope of discovery. A summary of the amendments below is suggestive of the continuing trend in federal litigation toward identifying legitimate complaints and improving the general efficiency of the legal system.
. The Appendix of Forms under Rule 84 of FRCP have been repealed under the amendments. Specifically, Form 18, which allowed plaintiffs to initiate patent litigation with bare-bones claims, is no longer applicable. Form 18 enabled litigants to file standardized, minimally descriptive claims against multiple defendants with rudimentary information, including the details of the patent, the assertion that the defendant allegedly infringed on such patent and that the plaintiff incurred damages.
With the removal of Form 18 from FRCP, plaintiffs will be obligated to meet the enhanced pleading requirements set forth by the U.S. Supreme Court decisions in 2007 and 2009 (Bell Atl. Corp. v. Twombly and Ashcroft v. Iqbal). Under these rulings, the plaintiff must plead facts sufficient to demonstrate that he is entitled to relief under the law. This criteria entails a more substantive examination by the court including dismissing pleadings that are mere conclusions and determining whether properly plead claims reasonably merit relief. However, as the judiciary has not issued definitive pleadings rules, the degree of specificity differs considerably among various jurisdictions.
. Specific rules under FRCP have been amended to enhance the procedural efficacy of the litigation process. Under the amended Rule 16(b)(2), courts must issue an order to schedule the matter (including trial date, discovery deadlines etc.) within 90 days after the defendant has been served or within 60 days after the defendant has appeared before the court in connection with the litigation. A party may now serve discovery requests 21 days after service of the complaint and summons. The effect of this amendment is to allow requests to be issued before the first Rule 26(f) conference even takes place. Prior to this revision, discovery requests could not be served until the Rule 26(f) conference, which often occurred months after the complaint was filed. The 30 day window to respond to discovery requests begins at the time the conference takes place.
Thomas Connors, John J. Connors, Beth Ellison and Brady Connors
Scope of discovery
. The amended Rule 26(b)(1) abrogates the prior standard of discovery, which provided that it be "reasonably calculated to lead to the discovery of admissible evidence" and instead requires that discovery be "proportional to the needs of the case." As such, discovery requests and responses must be designed to be commensurate with the scope of the litigation by accounting for a number of factors. These include the issues presented by the dispute, the monetary value of the claim, the resources of the parties, the availability of information and the significance of the discovery. The drafters intended to reduce the expenses and time associated with the discovery process by providing a standard of "proportionality" for evaluating what is not discoverable in litigation.
The recent amendments to the Federal Rules of Civil Procedure will have a significant effect on the initiation and execution of patent infringement actions. The application of the plausibility standard for making a threshold pleading and the changes to discovery rules and procedures are intended to enhance both the specificity of the complaint and the outcome of discovery proceedings at the outset. Understanding and complying with these new rules, and increasing the efficiency of your litigation proceeding, requires the knowledge of a patent attorney with decades of experience in patent law. My office can provide thorough and current legal advice tailored to your specific legal concerns. Contact me at (951) 395-9910 or visit my website at