Judge Gilstrap Explains the Pleading Standards for Direct and Indirect Patent Infringement in the Eastern District of Texas

Judge Rodney Gilstrap recently issued an opinion explaining the pleading standards for direct and indirect patent infringement.  The opinion was issued in Lone Star Document Management, LLC v. Atalasoft, Inc., 2012 WL 4033322 (E.D. Tex.).  Atalasoft is one of many related cases in which Lone Star has alleged infringement by e-discovery companies of U.S. Patent 6,918,082.

As lead trial counsel for Lone Star, I have a unique perspective on its patent infringement actions pending in the Eastern District of Texas.  In Atalasoft, one of the defendants, Compulink Management Center, Inc., d/b/a Laserfiche, moved to dismiss Lone Star’s complaint for failure to state a claim under Federal Rule 12(b)(6).  The Court denied the motion to dismiss Lone Star’s claims of direct infringement and inducement, and allowed Lone Star 14 days to replead its claim for contributory infringement.

Among the highlights from Judge Gilstrap’s opinion:

  • A claim for direct infringement pleaded in conformity with Federal Rule of Civil Procedure Form 18 is sufficient to avoid dismissal for failure to state a claim.  This 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, or 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.
  • The notice requirement in Form 18 can be satisfied by serving the complaint.
  • To  state  a  claim  for  indirect  infringement through inducement,  a  plaintiff  need  not  identify  a  specific direct infringer if it pleads facts sufficient to allow an inference that at least one direct infringer exists.  This was satisfied by the allegation that the defendant “has purposefully and voluntarily placed infringing products in the stream of commerce with the expectation that its products will be purchased by end users in the Eastern District of Texas.”
  • A plaintiff alleging contributory infringement must plead  facts  that  support an  inference  that  the components  sold  or  offered  for  sale  have  no  substantial  non-infringing  uses.

A copy of the opinion can be found here.

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