Drafting a Motion to Dismiss a Patent Infringement Complaint for Failure to State a Claim under Rule 12

By: John DeFosse FRIED FRANK, HARRIS, SHRIVER & JACOBSON LLP

THIS ARTICLE EXPLAINS THE STRATEGIC AND PRACTICAL considerations associated with filing a motion to dismiss claims of patent infringement under Rule 12(b)(6) of the Federal Rules of Civil Procedure and discusses the legal grounds that are commonly raised in such motions to dismiss, including grounds for dismissing claims of:

• Direct infringement
• Induced infringement
• Contributory infringement
• Willful infringement

Strategic and Practical Considerations in Determining Whether to File a Motion to Dismiss

Whether a viable legal basis exists to file a motion to dismiss a claim of patent infringement is addressed below under Grounds for Seeking Dismissal of Claims of Direct Infringement, Induced Infringement, Contributory Infringement, and Willful Infringement. However, even where there is a valid legal basis for filing a motion to dismiss, defendants should consider a number of other strategic and practical questions before deciding to move forward with a motion to dismiss.

Will the Plaintiff Be Able to Easily Overcome Deficiencies by Filing an Amended Complaint?

If you file a motion to dismiss that identifies a bona fide defect in a complaint, a plaintiff may simply respond by amending the complaint and correcting the defect.¹ Moreover, even if the court grants a motion to dismiss, it will generally also grant a plaintiff leave to amend the complaint and correct any defects absent a reason to withhold such leave.² Thus, not all defective complaints warrant a motion to dismiss. For example, a complaint may fail to allege that the accused product contains an element of a claim that is conventional in the art. Although such an omission would render a claim of infringement susceptible to a motion to dismiss, this defect could easily be corrected and litigation would proceed.

To read the full practice note in Lexis Practice Advisor, follow this link.

Jonathan R. DeFosse is a litigation partner in Fried Frank’s Washington, D.C. office. Mr. DeFosse’s practice focuses on intellectual property litigation and counseling involving a wide range of product areas, including automotive technologies, consumer electronics, telecommunications, website design, cloud computing, and medical devices.

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1. Fed. R. Civ. P. 15(a)(1)(B). 2. Foman v. Davis, 371 U.S. 178, 182, (1962); see also Fed. R. Civ. P. 15(a)(2). Fed. R. Civ. P. 15(a)(2).