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Archived updates for Tuesday, September 18, 2007

Low Bar for Pro Se Litigants on Failure to State Infringement Claim

In McZeal, Jr. v. Sprint Nextel Corporation (September 14, 2007), the Federal Circuit held that McZeal met the low bar for pro se litigants to avoid dismissal of its complaint alleging patent and trademark infringement on the basis of Fed. R. Civ. P. 12(b)(6), where a claim may be dismissed when a plaintiff fails to allege any set of facts in support of his claim which would entitle him to relief.

According to the opinion by Senoir Circuit Judge Archer,

Here, McZeal asserted ownership of the ’226 patent, Compl. at 13; named Sprint Nextel as described the means by which Sprint Nextel as defendants, Compl. at 15-16; cited the ’226 patent as allegedly infringed, Compl. at 14; described the means by which Sprint Nextel allegedly infringes ("[t]he defendant’s basic elements contained in the patent claims of the plaintiff and further infringes under patent law invoked ("35 U.S.C. § 271," Compl. at 5).

More specifically, McZeal’s defendants, which claims to be an ‘International Walkie Talkie Machine’ and which purports to provide ‘INTERNTAIONAL WALKIE TALKIE®’ service or global wireless Voice Over Internet Protocol (VoIP) communications" infringes his patent. Compl. at 14. McZeal further asserts: defendants, Compl. at 15-16; cited the ’226 patent as allegedly infringed, Compl. at 14; INTERNATIONAL WALKIE TALKIE machine physically have [sic] or perform all of the the doctrine of equivalents," Compl. at 14, 56; and pointed to the specific parts of the complaint alleges that the "[Motorola i930] manufactured and distributed by the defendants, which claims to be an ‘International Walkie Talkie Machine’ and which purports to provide ‘INTERNTAIONAL WALKIE TALKIE®’ service or global wireless Voice Over Internet Protocol (VoIP) communications" infringes his patent. Compl. at 14. McZeal further asserts:

The technology cell phone product line called Motorola i930 "INTERNATIONAL WALKIE TALKIE" offered by the defendants, falls within the scope of one or more claims of the patented World Wide Walkie Talkie/International Walkie Talkie invention. Plaintiff further asserts herein that the infringing MOTOROLA i930 and line of wireless VoIP roducts are logically equivalent, performs [sic] in essence the same utility as the plaintiff’s WORLDWIDE WALKIE TALKIE®/INTERNATIONAL WALKIE TALKIE® invention and infringes [sic] on the plaintiff’s issued patent . . . .

Compl. at 28. [FOOTNOTE 5. McZeal also explains that the Motorola i930 telephone: When used as any wireless apparatus over the internet or data network telephone infringes plaintiff’s patent via the Doctrine of Equivalents because the elements of the infringing device is [sic] the equivalent on [sic] the plaintiff’s patented invention and because it performs the same function, in the same way using a cellular telephone to achieve the same result, and/or the role of the infringing device element is substantially the same as that of plaintiff’s invention.] Accordingly, McZeal’s complaint contains enough detail to allow the defendants to answer and thus meets the notice pleading required to survive a Rule 12(b)(6) motion. See Conley, 355 U.S. 47-48; Phonometrics, 203 F.3d at 794. Nothing more is required.

During the hearing, the trial court noted that McZeal had "conceded that [he] didn’t know what device, what mechanism or what means Nextel uses to transmit and connect its telephone customers to the rest of the world." At this stage in the litigation, all McZeal has access to is Sprint Nextel’s public statements and advertisements. From this information he has fashioned his complaint. In this case, the specifics of how Sprint Nextel’s purportedly infringing device works is something to be determined through discovery.

. . . By ruling in McZeal’s favor, we do not condone his method of pleading. McZeal is no stranger to legal proceedings, having filed numerous complaints in the past and having many dismissed for failure to state a claim. In this case, as noted previously, McZeal filed a voluminous complaint with multiple counts, many of which are baseless and frivolous. The remand will provide an opportunity for the district court to require McZeal to delineate his patent and trademark infringement claims and the evidence supporting these claims. The court can then construe the claims, Markman v. Westview Instr., 516 U.S. 370 (1996), and entertain summary judgment motions.

In dissenting from the majority’s decision to vacate the dismissal of the claim of patent infringement under the doctrine of equivalents, Circuit Judge Dyk added:

Under the majority opinion it is now sufficient to simply allege in the complaint that the patent is infringed by the defendant’s sale of a particular product without even specifying which specific claims are alleged to be infringed or the features of the accused device that satisfy the limitations of these claims. . . .

Without specifying which claims of the 12 claims were infringed, McZeal alleged simply that

As previously stated in this Complaint the defendants SPRINT NEXTEL CORPORATION and agents manufacturers or distributes a product called "INTERNATIONAL WALKIE TALKIE" or Motorola i930 cellular device which infringes on one or more of plaintiff's patent claims and on the plaintiff's issued patent, and this infringement is willful, and done with full knowledge.

Defendants [sic] INTERNATIONAL WALKIE TALKIE infringes plaintiff [sic] patent via the doctrine of equivalents because the elements of the infringing device when used in cellular telephones, are the equivalent o[f] the plaintiff’s patented invention, because it performs basically the same function in the same way using a cellular telephone to achieve the same result as plaintiff’s . . . invention.

(Compl. at 51). McZeal also had a lengthy opportunity at the hearing on the motion to dismiss to explain his contentions. Despite this opportunity, McZeal failed to explain how the accused device infringed under the doctrine of equivalents. In fact, as the district court noted, McZeal conceded that he did not know "what mechanism Nextel uses to transmit and connect its telephone customers to the rest of the world." J.A. 160.

Federal Rule of Civil Procedure 8(a) requires litigants to set forth "a short and plain statement of the claim showing that the pleader is entitled to relief," and the complaint must "be so construed as to do substantial justice." Fed. R. Civ. P. 8(f). Form 16, entitled "Complaint for Infringement of Patent," provides the following example of a sufficient pleading in a patent infringement suit:

  1. Allegation of jurisdiction.

  2. On May 16, 1934, United States Letters Patent No. ___ were duly and legally issued to plaintiff for an invention in an electric motor; and since that date plaintiff has been and still is the owner of those Letters Patent.

  3. Defendant has for a long time past been and still is infringing those Letters Patent by making, selling, and using electric motors embodying the patented invention, and will continue to do so unless enjoined by this court.

  4. Plaintiff has placed the required statutory notice on all electric motors manufactured and sold by him under said Letters Patent, and has given written notice to defendant of his said infringement.

In my view, a bare allegation of literal infringement using the form is inadequate to provide sufficient notice to an accused infringer under a theory of literal infringement. The form fails to state which claims are asserted and which features of the accused device are alleged to infringe the limitations of those claims.

[FOOTNOTE 3. To some extent, the problem with the brevity of the form has been ameliorated by some local rules which "require[e] both the plaintiff and the defendant in patent cases to provide early notice of their infringement and invalidity contentions, and to proceed with diligence in amending those contentions when new information comes to light in the course of discovery." O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1365-66 (Fed. Cir. 2006) (discussing the local rules for the Northern District of California). But these the local rules do nothing to require an adequate statement of the claim before discovery commences.]

In alleging that the "electric motors embod[y] the patented invention" the form fails to recognize that a patent is only infringed when the accused product satisfies all of the limitations of the claims. However, I agree that under Rule 84 of the Federal Rules of Civil Procedure, we would be required to find that a bare allegation of literal infringement in accordance with Form 16 would be sufficient under Rule 8 to state a claim. [FOOTNOTE 4. Federal Rule of Civil Procedure 84 provides that "[t]he forms contained in the Appendix of Forms are sufficient under the rules and are intended to indicate the simplicity and brevity of statement which the rules contemplate."] One can only hope that the rulemaking process will eventually result in eliminating the form, or at least in revising it to require allegations specifying which claims are infringed, and the features of the accused device that correspond to the claim limitations.

The pertinent question here, however, is whether Form 16 should be read to apply to claims under the doctrine of equivalents. . . . McZeal’s complaint utterly fails to provide any meaningful notice as to how Sprint has infringed the claims under the doctrine of equivalents. It fails to specify which limitations are literally infringed and which are infringed by equivalents, or, as to the limitations alleged to be infringed by the doctrine of equivalents, how the accused product is insubstantially different from the patented devices.

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