September 30, 2016

Even Prior to Abrogation Form 18, Joint Infringement Pleadings Had to Meet Iqbal and Twombly

By Bryan K. Wheelock, Principal

In Lyda v. CBS Corporation, [2015-1923] (September 30, 2016), the Federal Circuit affirmed the dismissal under FRCP 12(b)(6) of the Complaint for infringement of U.S. Patent Nos. 7,434,243 and 7,730,506, directed to methods and systems for obtaining real time responses to remote programming.

Making the case a historic artifact, the Federal Circuit found that because the Amended Complaint was filed in 2014, and the case was terminated when the complaint was dismissed in July 2015, the repeal of Form 18 did not apply to this case.  Until the abrogation of Form 18, compliance with Form 18 was sufficient to plead direct infringement, but because allegations of induced or contributory infringement have additional elements than direct infringement, they are not governed by Form 18.

The Federal Circuit said that to prove joint infringement where multiple actors are involved in practicing the claim steps, the patent owner must show that the acts of one party are attributable to the other such that a single entity is responsible for the infringement.  According to the Federal Circuit, an entity will be responsible for others’ performance of method steps in two circumstances: (1) where that entity directs or controls others’ performance; and (2) where the actors form a joint enterprise.  The Federal Circuit noted that allegations of joint infringement require elements beyond those for act of direct infringement, and concluded that Form 18 is not sufficient for claims of joint infringement, and that pleadings of joint infringement must be measured by the Iqbal and Twombly standard.  The Federal Circuit instructed:

A claim of joint infringement thus requires pleading facts sufficient to allow a reasonable inference that all steps of the claimed method are performed and either (1) one party exercises the requisite “direction or control” over the others’ performance, or (2) the actors form a joint enterprise such that performance of every step is attributable to the controlling party.

The Federal Circuit found that Lyda was claiming joint infringement, and by his own admission did not plead in compliance with Iqbal and Twombly, and thus the case was properly dismissed.