I want you to take a deep breath and imagine yourself in the heady days of 2015. Every night you enjoy the newly released Doritos' loco taco. Every morning you practice the harlem shake. Game of Thrones has so much promise. Life is good.
For the patent litigator (e.g., everyone reading this), the law is in an interesting place. Form 18 is about to be abolished, and there is a great deal of of hemming and hawing about how much detail will need to be included in a complaint for patent infringement. Yours truly even jumped on the hype train and wrote an article on it for Landslide (other than the Alice Cooper reference in the title, which I think went largely unnoticed, it bears little resemblance to the current blog).
For defendants, things were trickier still. The question of what level of detail was required for pleading the usual counterclaims of noninfringement and invalidity was even more up in the air. Several Delaware decisions even held that greater particularity was required for counterclaims than infringement claims. For instance, Judge Robinson made the following statement in dismissing invalidity counterclaims in Senju Pharm. Co. v. Apotex, Inc., 921 F. Supp. 2d 297, 302 (D. Del. 2013):
the fact that Form 18 (rather than Twombly and Iqbal) remains the standard for pleading infringement claims is an insufficient justification for deviating from Twombly and Iqbal for pleading other causes of action . . . Therefore, the court concludes that the pleading standards set forth in Twombly and Iqbal apply to counterclaims of invalidity.
Thankfully these seas have calmed quite a bit in the intervening years, helped in no small part by the abolition of Form 18. However, there is still a lingering overcast of uncertainty regarding the pleading of counterclaims of noninfringement. Thankfully, Judge Bryson released a decision last week in DSM IP Assets, B.V. et al v. Honeywell International, Inc., C.A. No. 23-675-WCB (D. Del. Feb. 15, 2024), that sheds a bit light on the issue.
The plaintiff there moved to dismiss Honeywell's non-infringement counterclaim on the grounds that it "consists of a 'mere conclusory statement' and a 'formulaic recitation' of the cause of action’s elements, which is insufficient to satisfy the 'plausibility' pleading standard set forth by the Supreme Court in Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009), and Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)." Id. at 2-3.
Judge Bryson denied the motion, finding that Honeywell's identification of unpracticed limitations was sufficient to survive a motion to dismiss. He then went on to explain in a footnote the relevant standard for determining the necessary amount of detail:
[T]he line between factual allegations and legal conclusions is not a sharp one. If Honeywell had asserted, for example, that it uses UHMWPE having an intrinsic viscosity lower than the 8 dl/g level recited in the asserted claims, that allegation would clearly be factual in nature. On the other hand, if Honeywell simply asserted that it did not infringe because its product did not satisfy the imitations of any of the asserted claims, that allegation would be deemed a legal conclusion. By identifying particular limitations that its products did not satisfy, Honeywell’s allegations fall between those extremes. Honeywell’s denial that its product contains certain identified features in the claim limitations, however, renders its allegations more factual than legal in nature. Honeywell’s allegations therefore satisfied the requirement that its pleading identify “factual allegations [sufficient] to raise a right to relief above the speculative level,” Twombly, 550 U.S. at 555, and that the pleading contain “sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face,’” Iqbal, 556 U.S. at 678 (quoting Twombly, 550 U.S. at 570).
Id. at 6 n.1
Maybe there's another long form article in it for someone out there. I bequeath it to you budding academics, whilst I dream of tacos, and of dance.
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