Categories: Civil Procedure Date: Nov 8, 2013 Title: K-Tech v. Time Warner: Interplay of FRCP Form 18 and Pleading Standards
|Title||K-Tech Telecommunications, Inc. v. Time Warner Cable Inc., No. 2012-1425 (Fed. Cir. Apr. 18, 2013).|
| “K-Tech contends that its First Amended Complaints comply with Form 18 and that the district court applied the incorrect standard in analyzing the sufficiency of each complaint.” K-Tech, at *8.|
| “The defendants [...] assert that the respective First Amended Complaints fail to meet either the plain language of Form 18 or the form interpreted through the lens of Twombly and Iqbal.” Id.|
| [I]t is clear the district court applied the wrong standard to K-Tech’s complaints in requiring that a plaintiff preemptively identify and rebut potential non-infringing alternatives to practicing the claims of an asserted patent. […] Form 18 includes no indication that a patent holder must prospectively anticipate such noninfringement arguments. For this reason alone, it is clear the rationale employed by the district court when dismissing K-Tech’s actions was erroneous.|
K-tech at *13 (internal citations omitted).
| [W]e find that K-Tech’s amended complaints in both actions satisfy [the Form 18] standards. DirecTV and TWC know what K-Tech’s patents claim, and they know what K-Tech asserts their systems do, and why. K-Tech has alleged that DirecTV and TWC must and do modify or “translate” digital signals they receive, and it has alleged that they do so using K-Tech’s patented methods and systems. We find these allegations adequate to satisfy Form 18 and, thus, to satisfy the pleading standards that govern these actions [because K-tech is not required to identify specific infringing devices by name if they are not discernible prior to discovery].|
Id. at *17 (text added).
|Procedural History||“K-Tech appeals the district court’s orders… dismissing K-Tech’s First Amended Complaints for patent infringement against TWC and DirecTV for failure to state a claim upon which relief can be granted.” K-Tech at *2.|
|Legal Reasoning (O’Malley, Moore and Wallach)|
|Form 18 Compliance|
|Form 18 Defined||[As part of the Appendix of the Federal Rules of Civil Procedure] Form 18 sets forth a sample complaint for direct patent infringement and requires: (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. McZeal v. Sprint Nextel Corp., 501 F.3d 1354, 1357 (Fed. Cir. 2007).|
K-tech at *10 (text added).
|Satisfaction of Form 18|
|No Obligation to Identify Name of Infringing Product if Not Discernible Prior to Discovery||We do not read Form 18 […] to require that a plaintiff identify an accused device by name. That K-Tech cannot point to the specific device or product within TWC’s or DirecTV’s systems that translates the digital television signals each receives—especially when the operation of those systems is not ascertainable without discovery—should not bar K-Tech’s filing of a com- plaint. A defendant cannot shield itself from a complaint for direct infringement by operating in such secrecy that the filing of a complaint itself is impossible. Nor is a defendant immune from a direct infringement claim because he does not make a “device” but, rather, infringes through a system or method.|
Id. at *17 (text added).
|“We reverse the district court’s judgments… dismissing K-Tech’s First Amended Complaints and remand for further proceedings in these cases. REVESED AND REMANDED.” K-Tech at *18.|
|WALLACH, Circuit Judge, Concurring. K-tech, Wallach Op., *2.|
|I disagree with the dictum that “the Forms control” over the Supreme Court’s plausibility standard set forth in Iqbal and Twombly. Majority Op. at 10. Rather, plausibility is always required to survive a Rule 12(b)(6) motion. The significance of Form 18 is that, pursuant to Rule 84, it illustrates the “simplicity and brevity” adequate to state a plausible claim for relief in cases alleging direct patent infringement.|
K-tech, Wallach Op., *2-3.