Summary
requiring plaintiff to amend complaint to identify specifically which of defendant's products allegedly infringed plaintiff's patents
Summary of this case from Bay Industries, Inc. v. Tru-Arx Manufacturing, LLCOpinion
Civ. No MDL 1298; Ref., C.A. 99-3118, SECTION: "G" (2).
February 22, 2001.
MEMORANDUM AND ORDER
Background
On December 26, 2000, Papst Licensing GmbH Co. KG ("Papst") filed its complaint for patent infringement against International Business Machines Corporation ("IBM"). Papst alleges that IBM "has made, used, sold, or offered to sell to customers in the United States or imported into the United States products that embody the elements of at least one claim" of the twenty patents specifically identified in the complaint by patent number and issue date. Papst does not identify the IBM products which allegedly infringe the patents.
See Paragraphs 26 and 27 of Papst's Complaint for Patent Infringement, filed Dec. 26, 2000.
In response to the complaint, IBM has filed under FRCP 12(e) a motion requesting a more definite statement of which IBM products are alleged to infringe the patent claims asserted against it.
Discussion
FRCP 12(e) provides that if a pleading ". . . is so vague or ambiguous that a party cannot reasonably be required to frame a responsive pleading, the party may move for a more definite statement before interposing a responsive pleading."
IBM asserts and Papst does not contest that there are a total of 503 patent claims in the twenty patents at issue in this lawsuit. Whether a particular product infringes a particular patent claim first requires the interpretation of the claim, and then a comparison of the interpreted claim to the allegedly infringing product. Markman V. Westview Instruments, Inc., 52 F.3d 967, 976, aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). Under Papst's complaint, IBM will be required to interpret 503 claims, and then compare them to any IBM product that contains a hard disk drive. IBM does not object to interpreting 503 claims. However, it does object to having to compare those claims to all of its products containing hard disk drives.
IBM filed its Rule 12(e) motion on January 31, 2001. On February 1, 2001, counsel for Papst wrote a letter to counsel for IBM, forwarding a document that lists on a patent-by-patent basis the IBM hard disk drives that Papst alleges are infringed. Several hundred IBM hard disk drives are described by model and part numbers. There are as many as one hundred allegedly infringing products listed for some patents, and only one listed for another patent. Papst prefaces its list by informing IBM that it does not consider the list to be exclusive:
Papst Licensing's charges of infringement are not limited to the IBM hard disk drives that are specifically identified herein. Rather, Papst Licensing's charges of infringement are intended to include all IBM hard disk drives that have a construction that is similar from an infringement standpoint to that of the IBM hard disk drives that are specifically identified herein.
Upon receipt of this list, IBM offered to withdraw its 12(e) motion if Papst would stipulate that its infringement allegations would be limited to the products specifically identified in the list. IBM and Papst have apparently been unable to reach a stipulation.
Papst argues that its complaint complies with the sample patent infringement complaint provided in Federal Form 16. It is apparent, however, that the number of patents and products in the case before me are far greater than those contemplated in the sample complaint, which would justify a request for greater specificity.
Papst further contends that it filed a similar 12(e) motion against Minebea in related action no. 99-3118, which was denied. However, in that motion, Papst sought to have Minebea identify the particular claims of each patent which Minebea claims were invalid. IBM is not making such a request. IBM is willing to interpret each of the 503 claims of the twenty patents, but it seeks to limit the number of comparisons it will have to make to IBM products by obtaining a more specific description of the alleged infringing products.
I find that Papst's complaint must be amended to specifically identify the IBM products which it alleges infringe upon one or more claims of each of the twenty patents.
Accordingly,
IT IS ORDERED, that IBM's FRCP 12(e) motion for a more definite statement is GRANTED;
IT IS FURTHER ORDERED, that Papst amend its complaint on or before March 20, 2001, in order to specifically identify on a patent-by-patent basis the IBM products which it alleges infringe upon one or more of the claims of each of the twenty patents.