U.S. Federal Court
Rule Changes
John B. Pegram
Fish & Richardson P.C.
Serving the
and
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Communities
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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.
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AIPLA 2015
U.S. Court Rules – In General
 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
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Current Rule Proposals – Status
 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. §§2071-74)
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Current Rule Proposals – Status
 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.”
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Overview of the Rules
 Commencing an Action
 Pleadings and Motions
 Parties
 Disclosures and Discovery
 Trials
 Judgment
 Remedies
Etc.
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Rule 1 (as amended)
“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.”
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Pleadings
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General Pleading Standards – Today
 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
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General Pleading Standards – Today
 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.
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General Pleading Standards – Today
 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
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Pleading Patent Infringement – Today
 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
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Pleading Patent Infringement – Today
 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).
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Proposed Changes in Pleadings
 Rule 84 and the forms will be abrogated
(cancelled).
 The Twombly and Iqbal pleading
standards will apply to pleadings of direct
patent infringement.
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Proposed Changes in Pleadings
 These changes are important because:
 Allegations of patent infringement
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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.
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Discovery
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Proposed Changes in Discovery
 Revised scope of permitted discovery.
 Tighter limits on discovery requests.
 Relaxed requirements relating to
ediscovery and inadvertent failures to
comply.
 Increased judicial management.
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Rule 1 (as amended) (again)
“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.”
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Scope of Discovery (1)
 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.”
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Scope of Discovery (2)
 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).”
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Scope of Discovery (3)
 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.
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References
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References
 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:
http://www.supremecourt.gov/orders/co
urtorders/frcv15_5h25.pdf
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Thank You!
John B. Pegram
Senior Principal
Fish & Richardson P.C.
New York
Pegram@fr.com
www.fr.com
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