Think choice of grammar or poor word choice is not relevant in patent claims? Think again. Indifferent word selection nearly sunk this infringement action as well as the patent. Judge Christopher A. Boyko of the Northern District of Ohio recently tackled the difficult issue of patent indefiniteness following IPXL Holdings, L.L.C. v. Amazon. com, Inc., 430 F.3d 1377 (Fed. Circ. 2005), in the case of WAGO Verwaltungsgesellschaft MBH v. Rockwell Automation, No. 1:11-cv-00756, 2012 WL 775683 (N.D. Ohio March 7, 2012). The WAGO decision, however, is notable as much for what it didn’t address as for what it did. 

The relevant facts are these. The plaintiff (“WAGO”) sued Rockwell Automation (“Rockwell”) for infringement of U.S. Patent No. 5,716,241 (“the 241 patent”), for input/output devices for data bus. As part of its answer, Rockwell moved for judgment on the pleadings pursuant to Rule 12 (c), arguing that the patent was invalid because language of the principal independent claims was fatally indefinite for including the phrase “configuring the device.” Rockwell contended that this was the language of a method patent and not an apparatus patent, as the plaintiff claimed. The term “configuring” is a gerund, and therefore denotes action. Thus, the claim “impermissibl[y] mix[ed] ‘method’ and ‘apparatus’ elements.” Given that the Federal Circuit held in IPXL, 430 F.3d at 1384, that a single claim cannot cover both a method and an apparatus, Rockwell argued that WAGO’s claim was accordingly indefinite. Rockwell also relied upon the recent decision in Rembrandt Data Techs., LP v. AOL, LLC, 641 F.3d 1331, 1339 (Fed. Cir. 2011).

In response, WAGO first argued that whether the claim at issue was indefinite or not, it was premature for the court to decide the issue inasmuch as the parties had not yet battled over the construction of the claims. The court was not persuaded, however, explaining that the record was adequate to determine whether the disputed claims were indefinite or not, citing Intellect Wireless, Inc. v. Kyocera Communications, Inc., Case No. 08 C 1350, 2009 WL 3259996 (N.D. Ill. Oct. 8, 2009). The court next addressed whether WAGO’s patent was valid under 35 U.S.C. § 112. Despite the fact that the court was less than enamored of WAGO’s grammar and sloppy use of the term “configuring” in the claim, the court denied Rockwell’s motion for judgment on the pleadings, explaining it was “not convinced sub-optimal drafting automatically denotes mixed subject matter and indefiniteness.” Thus, WAGO lives to fight on, at least for a while.

There is a lesson here, however: it is imperative that patent counsel be highly perspicacious in its choice of language in setting forth patent claims. Rockwell unabashedly admitted that its motion rested on the use of WAGO’s choice of grammar, and the court was almost persuaded. Inexact grammar, or more accurately, indifferent word selection, nearly sunk not only WAGO’s infringement action, but its patent. Despite admonitions to the contrary, sometimes it actually is better to use two or more words when one will do – if clarity is at risk. 

But proper syntax is not the only notable subject mentioned in Judge Boyko’s decision. In its opposition, WAGO also argued that Rockwell’s motion for judgment on the pleadings must fail because WAGO’s complaint satisfied the sufficiency standard under Rule 8 given that the complaint conformed to Form 18 contained in the Appendix to the Federal Rules of Civil Procedure. WAGO pointed out that Rule 84 expressly states that forms in the Appendix “suffice under these rules and illustrate the simplicity and brevity that these rules contemplate.” Fed R. Civ.P. 84. Therefore, WAGO maintained, following Form 18 was enough. Rockwell, however, had not challenged the sufficiency of WAGO’s complaint, and so the court declined to scrutinize this issue. But maybe it should have.

Even though WAGO’s complaint went into some detail about the history related to the patent and described the Rockwell device WAGO contended infringed its patent, the complaint did not go into much detail explaining how that device infringed the ‘241 patent. It is presently unclear whether identifying the infringing product and the claims it infringes is enough to satisfy the pleading mandates set forth in the Supreme Court’s decisions in Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007), and Ashcroft v. Iqbal, 556 U.S. 662, 129 S.Ct. 137 (2009). In those cases the Court held that the federal rules require something more than conclusory allegations to proceed with an action. Claims must have “facial plausibility,” meaning that “the pleaded factual content allows the court to draw a reasonable inference that the defendant is liable for the misconduct alleged.” Iqbal, 129 S.Ct. at 1949. Without including at least that minimal amount of factual detail to establish liability, complaints are subject to dismissal. The Court did not except patent cases from this ruling. In fact, it suggested just the opposite when the Court ruled in Iqbal that the Twombly pleading standard did not apply just to antitrust cases.

Nonetheless, even after Twombly and Iqbal some federal courts have held that a direct infringement complaint short on facts but otherwise conforming to Form 18 is sufficient under Rule 8. See, e.g., Microsoft Corp. v. Phoenix Solutions, Inc., 741 F. Supp. 2d 1156 (C.D. Cal. 2010); Biax Corp. v. Motorola Solutions, Inc., 10-cv-0313, 2012 WL 502727 (D. Colo. Feb. 15, 2012). But district courts are not unanimous in that view. Some courts, noting that Form 18 as well as Rule 84 considerably predate Twombly and Iqbal, have required more than what Form 18 provides. See, e.g., Anticancer, Inc. v. Xenogen Corp., 248 F.R.D. 278, 282 (S.D. Cal 2007); Via Vadis, LLC. v. Skype, Inc., Case No. 11-507, 2012 WL 261367 (D. Del. Jan 27, 2012). 

One would guess the days are numbered for the vitality of Form 18. Think Beta max. There is no particular or justifiable reason why a plaintiff in a patent infringement case should be held to a lesser pleading standard than other plaintiffs in other cases — or other plaintiffs in non-infringement patent cases. See Tyco Fire Prods, L.P. v. Victaulic Co., 777 F. Supp.2d 893, 905 (E.D. Pa. 2011) (granting plaintiff’s motion to dismiss defendant’s bare-bones invalidity counterclaim). Given what would seem to be an inevitable change in pleading practice, plaintiff’s counsel would be well-advised to take the time in drafting a complaint to set forth a reasonably thorough factual recitation of the alleged infringement, such as identifying the products alleged to infringe, how they infringe, and when they infringed. You will save your clients time and money in the long run.