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With the minimal requirements of notice pleading in the federal court system, few attorneys scrutinize the words of their pleadings the way they might with a motion for summary judgment. However, as with everything else, attention to detail is always key. In the patent-infringement context, detail with regard to which claims of the patent are asserted in a pleading can make all the difference. In a worst-case scenario, failure to plead with particularity can lead to an invalid patent.

Pleading in patent-infringement cases, and the implications of a failure to plead properly, were explored by the Court of Appeals for the Federal Circuit (the exclusive appeals court for patent matters) as early as 1984 in Jervis B. Webb Co. v. Southern Systems Inc. Although Webb is nearly a quarter of a century old, many patent attorneys do not heed its guidance.

Subject-matter jurisdiction in patent cases is evaluated on a claim-by-claim basis. In other words, a patentee who files a complaint alleging infringement of certain patent claims (e.g., claims one through 10) initially limits the court’s jurisdiction to the plead claims. Alternatively, a patentee who files a complaint alleging patent infringement generally, or one that does not specify particular claims, necessarily gives the court jurisdiction to consider all the claims of the patent. This may seem like an insignificant difference at first blush, but consider the following scenario.

Company A owns a patent with claims one through 10, where claims one through five are “device” claims, and claims six through 10 are “method” claims. Company A files suit against Company B, and its complaint alleges that Company B has “infringed one or more claims of the patent.” Company B actually infringes the “method” claims, but not the “device” claims.

Company B counterclaims for a declaratory judgment of invalidity in its answer, alleging that Company A failed to disclose relevant prior art to the U.S. Patent Office regarding the “device” claims (an allegation of inequitable conduct). Because Company A was not specific in its complaint, Company B has standing to pursue its invalidity claims, even though its does not actually infringe the allegedly invalid claims.

Worse yet, Company B’s legal remedy for Company A’s failure to disclose relevant prior art is unenforceability of the entire patent (not just claims one through five). Alternatively, if Company A had alleged in its complaint that Company B has “infringed claims six through 10 of the patent,” then Company B would have no standing to challenge claims one through five, and little possibility of having the entire patent held unenforceable.

Based on the above example, the patentee must be careful in drafting the complaint so as not to create standing for the alleged infringer to attack patent claims that are not at issue. Standing is created by proof that there exists a “case or controversy” regarding the particular patent claims.

In Webb, the patentee plead infringement of three of its patent’s 12 claims. The alleged infringer counterclaimed for a declaratory judgment of invalidity and non-infringement for all 12 claims. The district court took jurisdiction of all claims, and held them all invalid. The patentee appealed to the Federal Circuit, which reversed the invalidity judgment with respect to the claims that were not plead by the patentee.

The Federal Circuit held that the alleged infringer failed to prove a case or controversy for the claims that were not plead because the alleged infringer neither produced, nor was prepared to produce, the claimed device of the unasserted claims. Thus, the patentee’s chosen complaint language, which limited its charge of infringement to three claims, shifted the burden of proving a case or controversy for the remaining claims to the alleged infringer – a burden the alleged infringer could not meet. Thus, the patent remained valid for the unasserted claims.

In Footnote 8 of Webb, the Federal Circuit cautioned that its opinion was only applicable to the specific factual situation where a complaint asserts something less than all of the patent claims. The court stated that the holding did not preclude declaratory judgment jurisdiction over all claims when a patentee makes general infringement accusations for the patent, or seeks to assert all of the claims of the patent (e.g., through broadly worded cease-and-desist letters); a patentee’s complaint asserts infringement of all claims; or an alleged infringer meets the case or controversy requirement independently. The Federal Circuit also noted that all claims of a patent can be held invalid if a court finds that standing exists, and the alleged infringer has pled a counterclaim that provides such a remedy (e.g., inequitable conduct). Each of these scenarios, and its likely outcome, will be discussed in detail below.

A patentee who asserts infringement generally enables a court to have jurisdiction over all of its patent’s claims. In Biacore v. Thermo Bioanalysis Corp., a patentee generally claimed infringement of its patent “by the manufacture, use and sale of biosensor systems embodying the claimed invention.” The alleged infringer counterclaimed for a declaratory judgment of invalidity and non-infringement of all claims. On the first day of trial, the patentee limited its infringement allegation to just two of the 15 claims of the patent, and argued that the court did not have jurisdiction over the remaining claims. The court rejected this argument and held that a case or controversy existed because there was no stipulation to non-infringement of the withdrawn claims; and the two asserted claims were dependent claims of withdrawn independent claims, which put the withdrawn independent claims at issue.

Likewise, a patentee who asserts infringement of all of the claims of a patent enables a court to have jurisdiction over all claims. In Fenton Golf Trust v. Cobra Golf, a patentee filed a complaint alleging infringement of all of its patent’s claims. The alleged infringer filed a declaratory judgment counterclaim for non-infringement and invalidity. In attempt to divest the court of jurisdiction over all claims, the patentee moved to unconditionally agree not to assert certain claims, and for leave to file an amended complaint to reflect the same.

The court rejected the patentee’s argument and held that the threat of future claims against the alleged infringer met the case or controversy requirement. Although not specifically addressed by the court, the patentee’s decision to file a complaint alleging infringement of all claims appears to have both formed a basis for a case or controversy requirement from the defendant’s perspective, and placed the burden of proving a lack of a case or controversy squarely on the patentee.

Despite the ruling in Fenton Golf, some patentees have successfully divested courts of jurisdiction over all claims after the pleading stage through stipulations not to sue. In Biogen Inc. v. Amgen Inc., the patentee alleged infringement of all the claims in three of its patents, and the alleged infringer counterclaimed for invalidity and non-infringement. In an effort to limit discovery and reduce the issues for trial, the patentee offered to stipulate that it would never sue the alleged infringer on certain claims. The court held that the patentee’s stipulation offer – which, interestingly enough, was never executed – eliminated jurisdiction over the withdrawn claims. Thus, even if a patentee initially falters by asserting claims it does not wish to pursue, remedial measures appear to be available to divest the court of jurisdiction. However, such remedial measures will likely foreclose future suit on the withdrawn claims, if the stipulation is broad enough to encompass future litigation.

In the same ways that patentees can divest courts of jurisdiction, alleged infringers can gain jurisdiction over claims that were not asserted in a patentee’s complaint if alleged infringers can prove that a case or controversy exists for such claims. In May v. Carriage Inc., a patentee alleged infringement of 15 of the 67 claims in its reissued patent. The alleged infringer counterclaimed for a declaratory judgment of non-infringement and invalidly with respect to the asserted claims, and 23 unasserted claims. The patentee claimed that the court did not have jurisdiction over the unasserted claims because they were not stated in the complaint. The court rejected this argument because the alleged infringer met the case or controversy requirement by showing that it had a reasonable apprehension of suit on the unasserted claims.

Moreover, a declaratory judgment plaintiff can maintain jurisdiction over patent claims even if a patentee later withdraws those claims from its infringement allegation. In Honeywell Int’l Inc. v. Universal Avionics Sys. Corp., a patentee claimed infringement of certain claims in five patents. After the alleged infringer argued invalidity of some of the asserted claims, the patentee withdrew its allegations of infringement for those claims and argued that no case or controversy existed for the withdrawn claims. The court rejected this argument. The court held that a case or controversy existed because there was no guarantee that the withdrawn claims would not resurface in future litigation; and litigation remained on dependent claims that depended on the withdrawn claims.

CONCLUSION

In sum, patentees should meticulously study the claims of their patents against infringing activity before filing a complaint, and should choose the words of their complaint carefully. The patentee should choose the claims that provide the best chance to obtain an infringement judgment, while keeping in mind potential issues such as invalidity and unenforceability. By asserting all of the claims of a patent irrespective of infringement concerns, the patentee runs the risk that certain marginal claims will jeopardize the chances of obtaining an infringement finding on the stronger claims.

Moreover, a patentee who files a complaint directed to specific claims limits the court’s jurisdiction, and helps to focus the court and the parties on the key issues at the outset. Most importantly, the patentee ensures that the unasserted claims remain valid and outside the Webb of inequitable conduct allegations.

DARIUS C. GAMBINO is a partner in the intellectualproperty department of DLA Piper. Hefocuses his practices in the areas of patent prosecutionand litigation (mechanical and electrical arts),trademark registration and enforcement, copyrightregistration and enforcement, trade secrets, licensing,opinions and due diligence investigations.

MICHAEL L. BURNS IV is an associate in theintellectual property department of DLA Piper. Hefocuses his practice in the areas of patent prosecutionand litigation (mechanical and electrical arts),trademark registration and enforcement, opinionsand due diligence investigations.

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