What Goes Into a Patent Infringement Complaint. Episode 106

Overview of the Litigation Process

In the past few episodes, I’ve talked about the litigation process. I started with a broad overview of patent litigation and then discussed the first step, which is either sending a cease and desist letter or receiving one. In this episode, I’m talking about the complaint. The complaint is the first formal step in a patent litigation lawsuit. It’s the point where you actually file something with the court stating that you are suing another party for patent infringement.

Changes in Complaint Requirements

Things have changed in recent years regarding how much detail of patent infringement must be included in a complaint for it to be considered valid. You used to be able to be very general and simply say that the other party sold products embodying the patented invention. This was a very bare-bones approach that was allowed. However, some court decisions—and a subsequent rule change—have made it much clearer how detailed you need to be. I’ll get to that later.

Disclaimer and Practical Advice

I’ve always intended this podcast to be very practical—as if you’re doing everything yourself. There’s a disclaimer at the end of every episode that I’m not giving legal advice for your particular situation, and that’s especially true in litigation. Don’t try to litigate on your own. But if you’re working with an attorney, this podcast will hopefully help you understand what your attorney is doing and why, so you can ask better questions. In this episode, I’m going to walk through a sample complaint: what it includes and why. Every case is different, so there’s no one-size-fits-all patent complaint.

First Page of the Complaint

The first page of the complaint includes basic information about who is filing it, where it’s being filed, and what the complaint is about. I know that might sound a little strange, like you’re a child “complaining” about something, but legally, you can think of it as stating what you allege the other party has done.

Different courts across the country have different rules about formatting, such as font and layout. On typical pleading paper, at the top left, you’ll list the attorney’s name(s), state bar number(s), email address(es), and phone number(s), followed by “Attorneys for Plaintiff.” The plaintiff is the party alleging that someone is infringing a patent.

Below that, centered, you’ll have the name of the court—for example, “In the United States District Court for the Central District of California” or “Northern District of California,” depending on where you’re filing.

Case Caption and Complaint Type

Below that, on the left side, you’ll typically see a box. At the top, you’ll list yourself or your company. For example, “XYZ Incorporated, a California corporation, Plaintiff.” Below that, you’ll put “v.” (short for “versus”) followed by the name of the alleged infringer: “ABC Incorporated, a California corporation, Defendant.” That’s all that goes into that box.

Then, on the right, you’ll indicate the type of complaint. Complaints can be for personal injury, breach of contract, etc. If it’s a patent case, you’ll write “Complaint for Patent Infringement,” and below that, if applicable, “Demand for Jury Trial.” This all appears on pleading paper, which has line numbers and other formatting elements required by the court.

Introduction of the Complaint Content

On the next page, you’ll typically have a heading like “Complaint for Patent Infringement,” followed by a simple sentence such as:

“XYZ Company files this complaint for patent infringement and demand against ABC Company and alleges as follows:”

The Parties

In this section, you write a little about who the parties are. You’ll likely include the name of your company, where it’s incorporated, and the address of your principal place of business. In the next paragraph, you’ll describe what you believe about the company you’re suing: their name and address, for example.

Jurisdiction and Venue

This section explains what court has the authority to hear your case. If it’s a patent case, state courts are not allowed to hear it—only federal courts can. So, you’ll state that jurisdiction is proper under the Patent Act, which grants federal courts original jurisdiction over patent matters.

Venue refers to the specific federal court in which the case is filed. For example, if both you and the defendant are located in California, can you sue in a federal court in Alabama? Sometimes yes, sometimes no—but you need to justify why the particular venue is appropriate.

Let’s keep it simple for this example and say you filed in the Central District of California. You’d write that venue is proper because both companies are headquartered in the geographic region covered by that court.

Your Innovations

This section can outline what your innovations are. You might explain what problem your invention solves in the industry, how successful your product has been, how much money you’ve invested in development, and the general value of your company. Essentially, you want to show the court that your product and company matter.

Asserted Patents

This section lists the patents that you believe have been infringed. You should include the patent number, title, and state that a true and correct copy is attached to the complaint as Exhibit 1.

You should also explain how your company has rights to the patent—whether it was filed in the company’s name, assigned by the inventors, or acquired through a purchase. Then, briefly describe what the patent is about. For example: “an avocado slicer that functions as three tools in one.”

Notice to Defendants

Here, you’ll provide a timeline of your communications with the defendant. Mention when you sent the cease and desist letter, and that the defendant has continued to make and sell the product. List the products you discussed in your letter or conversation, and the specific dates you spoke or attempted to negotiate a license. Be detailed—especially if you want to assert willful infringement, which may entitle you to treble damages (three times what you would otherwise be owed).

Defendant’s Products

In this section, you describe the products the defendant is selling that you believe infringe your patent. Include images or screenshots from their website as exhibits, and be detailed in explaining what the products do. But don’t discuss infringement yet—this section is just about describing their products.

Defendant’s Infringement of Plaintiff’s Patents

Now you assert that the defendant is infringing your patents. This might be a short section where you simply state that certain products are infringing.

Count 1: Direct Infringement

This is a subsection of the previous section. You’ll label it “Count 1: Direct Infringement of U.S. Patent No. X.”

In the paragraphs that follow, you explain how the defendant is making, using, importing, or selling your patented invention without permission. You list the infringing products again and explain why they infringe—for instance, by describing how their product performs patented functions.

You’ll also describe how their actions are harming your business—by causing you to lose sales, for example.

Additional Counts

If you have more than one patent or the defendant is infringing in multiple ways, you can add additional counts (e.g., indirect infringement, contributory infringement). You might end up with five, ten, or more counts, depending on the situation. Sometimes trademark claims are included too, but we’re focusing on patents here.

Note that this “Counts” section used to be more lenient, but now courts expect a higher level of detail.

Prayer for Relief

This section outlines what you want the court to do. Common requests include:

• Entry of judgment holding that the defendant has infringed your patents

• A preliminary and permanent injunction preventing further infringement

• An award of past damages, no less than a reasonable royalty

• A determination that the infringement was willful, entitling you to treble damages

• A finding that the case is exceptional, which could entitle you to attorney’s fees

• An accounting of all infringing sales and revenues, including post-judgment interest

• A catch-all: “such further and other relief as the court may deem proper and just”

Final Steps in Filing

The attorney signs the complaint. If you’re requesting a jury trial, you’ll also include a separate page demanding a jury trial, and sign and date that as well.

Service of Process

After filing the complaint with the court, you must serve it on the defendant. This is typically done through a process server who hand-delivers the complaint to someone at the defendant’s headquarters, although there are other acceptable methods.

Generally, the defendant has 21 days to respond. Don’t ignore a complaint—talk to an attorney right away. Often, both parties agree to extend deadlines early in the process. If one party is too rigid about extensions, that attitude usually backfires later. So unless there’s a compelling reason not to, be cooperative when it comes to reasonable extensions.

Until next time, I'm Adam Diament, and keep on inventing!