John B. Pegram Fish & Richardson P.C. U.S. Federal Court Rule Changes 1 © AIPLA 2015

2 Disclaimer The purpose of this presentation is to provide educational and informational content, and is not intended to provide legal services or advice. The opinions, views and other statements expressed by the presenter are solely those of the presenter, and do not necessarily represent those of his employer, clients, AIPLA or AIPPI-US.

All patent and copyright cases, and most important trademark cases are filed in U.S. District Courts The principal procedural rules are the Federal Rules of Civil Procedure (F.R.Civ.P.)  Original version – 1938  Latest proposed revisions – in progress Guidance & interpretation by Courts  Supreme Court U.S. Court Rules – In General © AIPLA

Rule Drafting & Approval Steps:  Advisory Committee on Civil Rules - √  Committee on Rules - √  Judicial Conference - √  Supreme Court - √ (April 29, 2015)  Congress – Option to intervene (28 U.S.C. §§ ) Current Rule Proposals – Status © AIPLA

The amendments:  “shall take effect on December 1, 2015, and  shall govern in all proceedings in civil cases o thereafter commenced and, o insofar as just and practicable, all proceedings then pending.” Current Rule Proposals – Status © AIPLA

 Commencing an Action  Pleadings and Motions  Parties  Disclosures and Discovery  Trials  Judgment  Remedies Etc. Overview of the Rules © AIPLA

“These rules …. should be construed, [and] administered, and employed by the court and the parties to secure the just, speedy, and inexpensive determination of every action and proceeding.” Rule 1 (as amended) © AIPLA

Pleadings © AIPLA

Rule 8(a)(2) requires that a plaintiff provide a “short and plain statement of the claim showing that the pleader is entitled to relief,” which requires that the complaint “ ‘give the defendant fair notice of what the... claim is and the grounds upon which it rests.’ Twombly General Pleading Standards – Today © AIPLA

To avoid dismissal under Rule 12(b)(6), the complaint must contain sufficient factual allegations “to raise a right to relief above the speculative level.” Rule 8's pleading standard “does not require ‘detailed factual allegations.’” Iqbal, quoting Twombly. General Pleading Standards – Today © AIPLA

Rule 8 “simply calls for enough fact to raise a reasonable expectation that discovery will reveal evidence” of the alleged violation.” Twombly The Complaint should have “factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Iqbal General Pleading Standards – Today © AIPLA

Rule 84 states: “The forms in the Appendix suffice under these rules….” In a complaint for direct patent infringement, Form 18 provides the pleading standard. Form 18 does not determine the sufficiency of pleading for claims of induced and contributory infringement. See Bill of Lading Pleading Patent Infringement – Today © AIPLA

Form 18 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 (permissive). Pleading Patent Infringement – Today © AIPLA

Rule 84 and the forms will be abrogated (cancelled). The Twombly and Iqbal pleading standards will apply to pleadings of direct patent infringement. Proposed Changes in Pleadings © AIPLA

These changes are important because:  Allegations of patent infringement should be better focused from the beginning, and  It may be easier to defend against trolls. More detailed patent pleading requirements are now being considered by Congress.  Congress may direct the courts to adopt rules requiring more detailed patent pleadings. Proposed Changes in Pleadings © AIPLA

Discovery © AIPLA

Revised scope of permitted discovery. Tighter limits on discovery requests. Relaxed requirements relating to ediscovery and inadvertent failures to comply. Increased judicial management. Proposed Changes in Discovery © AIPLA

“These rules …. should be construed, [and] administered, and employed by the court and the parties to secure the just, speedy, and inexpensive determination of every action and proceeding.” Rule 1 (as amended) (again) © AIPLA

Rule 26(b)(1) will be amended to require that discovery should be “ proportional to the needs of the case, considering  the importance of the issues at stake in the action,  the amount in controversy,  the parties’ relative access to relevant information,  the parties’ resources,  the importance of the discovery in resolving the issues, and  whether the burden or expense of the proposed discovery outweighs its likely benefit.” Scope of Discovery (1) © AIPLA

Rule 26(b)(2)(C) will require that “the court must limit the frequency or extent of discovery otherwise allowed … if it determines that: … (iii) the burden or expense of the proposed discovery is outside the scope permitted by Rule 26(b)(1).” © AIPLA Scope of Discovery (2)

Rule 26(c), governing protective orders will be amended to expressly permit a court to order “ allocation of expenses ” as a condition for permitting disclosures or discovery that might otherwise be burdensome. © AIPLA Scope of Discovery (3)

References © AIPLA

Ashcroft v. Iqbal, 556 U.S. 662, 29 S.Ct. 1937, 173 L.Ed.2d 868 (2009) (“Iqbal”). Bell Atl. Corp. v. Twombly, 550 U.S. 544, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) (“Twombly”). In re Bill of Lading Transmission & Processing Sys. Patent Lit., 681 F.3d 1323, 1334 (Fed. Cir. 2012) (“Bill of Lading”). Proposed rule amendments: urtorders/frcv15_5h25.pdf urtorders/frcv15_5h25.pdf References © AIPLA

Thank You! 24 John B. Pegram Senior Principal Fish & Richardson P.C. New York