Back in 2021 the Federal Circuit issued an opinion in Bot M8 LLC v. Sony Corp. of Am. that raised the standard for granting a motion to dismiss in a patent action. C.A. No. 2020-2218, 2021 U.S. App. LEXIS 20624 (Fed. Cir. July 13, 2021). The Federal Circuit held that "[a] plaintiff is not required to plead infringement on an element-by-element basis"—which was news to the patent practitioners who had filed (and won) motions on that basis.
We haven't written much about that decision in the time since, but it's still out there, and it's something to keep in mind as you weigh your options in response to a patent infringement complaint.
Last month, during our break, Judge Hall issued a short order easily disposing of a motion to dismiss in a patent action, citing Bot M8. The defendant had moved to dismiss on the grounds that the included claim charts didn't cover all of the claim elements as to any one accused product. The Court denied the motion and held, citing Bot M8, that simply including a claim chart with pictures and alleging that the product meets the elements is enough:
WHEREAS, the Complaint (D.I. 1) identifies at least one accused product, includes a claim chart with photographs of accused products, and alleges that the accused products meet all elements of the ’095 patent claims, and the Complaint sufficiently puts the moving defendants on notice of what is being accused of infringement;
NOW, THEREFORE, IT IS HEREBY ORDERED that the Motion to Dismiss (D.I. 15) is DENIED.
Jerry DeWayne Washington Jr. v. Air Water Inc., C.A. No. 24-715-JLH, D.I. 27 (D. Del. Dec. 23, 2024).
That's an awfully low bar. But is this the final word on all 12(b)(6) motions in patent actions? No. The Bot M8 court recognized that some factual information is required:
[A] plaintiff cannot assert a plausible claim for infringement under the Iqbal/Twombly standard by reciting the claim elements and merely concluding that the accused product has those elements.
Bot M8 LLC v. Sony Corp. of Am., 4 F.4th 1342, 1353 (Fed. Cir. 2021).
And not all complaints clear even just that bar. See Alexander v. BMW of N. Am. LLC, C.A. No. 22-1488-CFC, 2023 U.S. Dist. LEXIS 165087, at *4 (D. Del. Sep. 18, 2023) (dismissing complaint, and stating that “Because the Complaint does not allege factual allegations beyond the identities of the Defendants and the accused vehicles and the conclusory assertion that the HUD systems in those vehicles infringe claim 1 of the [asserted] patent, it does not plausibly allege infringement.”).
Still, it's good to keep in mind that you may have an uphill battle if you move to dismiss that an otherwise detailed complaint because it fails to include specific allegations for a single claim element.
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