By James Juo.

In Bot M8 LLC v. Sony Corp. of Am., No. 20-2218 (Fed. Cir. July 13, 2021), the Federal Circuit revisited once more the pleading standards for patent infringement, and held that a plaintiff is not required to plead infringement on an element-by-element basis.

Citing In re Bill of Lading Transmission & Processing System Patent Litigation, 681 F.3d 1323, 1339 (Fed. Cir. 2012) and Nalco Co. v. Chem-Mod, LLC, 883 F.3d 1337, 1350 (Fed. Cir. 2018), Judge O'Malley (the only former district court judge sitting on the Federal Circuit) began by writing:

Once more, we address the stringency of pleading requirements in cases alleging patent infringement. Once more, we explain that patentees need not prove their case at the pleading stage.… And we, once more, explain that, while a patentee's pleading obligations are not insurmountable, a patentee may subject its claims to early dismissal by pleading facts that are inconsistent with the requirements of its claims.

Here, Bot M8 alleged Sony's PlayStation 4 (PS4) infringed six patents; five of which remained at issue on appeal. Affirming in part and reversing in part, the Federal Circuit upheld the dismissal of two patents for failing to state a plausible claim, reversed the dismissal of two other patents, and affirmed summary judgment that the asserted claim of the fifth patent was invalid under Section 101.

The district court had instructed counsel for Bot M8 to “explain in [the] complaint every element of every claim that you say is infringed and/or explain why it can't be done.” The Federal Circuit, however, held that a plaintiff “is not required to plead infringement on an element-by-element basis.” This does not mean that a plaintiff can assert a plausible claim for infringement by reciting the claim elements and merely concluding that the accused product has those elements. Rather, “[t]here must be some factual allegations that, when taken as true, articulate why it is plausible that the accused product infringes the patent claim.” The complaint needs to provide “fair notice” of the infringement claim.

The claims of the first patent-in-suit (the `540 patent) required “a board including a memory in which a game program … and an authentication program … are stored” separate from “a motherboard” (“the board limitation”). Sony argued that the complaint actually alleges “away” from infringement by asserting that the purported “authentication program” is stored on the PS4 motherboard. The Federal Circuit agreed, noting that Bot M8's “kitchen sink” complaint “contains too much rather than too little, to the point that Bot M8 has essentially pleaded itself out of court.”

A possible solution here could have been to “plead in the alternative,” as Rule 8(d) allows pleading different statements of a claim “alternatively or hypothetically” which may state separate claims or defenses “regardless of consistency.” But each alternative must meet the plausibility standard, and the Federal Circuit noted that “Bot M8's allegations were not pled in the alternative.” In telling a single kitchen-sink story, Bot M8 effectively disproved infringement here.

The second patent-in-suit (the `990 patent) was directed to a “mutual authentication” program for video games. “While Bot M8 points to different storage components in the allegedly infringing devices, it never says which one or ones satisfy the mutual authentication limitation.” The Federal Circuit concluded that Bot M8's allegations “do not plausibly allege that gaming information and a mutual authentication program are stored together on the same memory.”

The third and fourth patents-in-suit (the `988 and `670 patents) require a control device that executes a “fault inspection program” and “completes the execution of the fault inspection program before the game is started” (the “fault inspection limitation”). Bot M8's complaint identified twelve different error codes that the PS4 displays upon boot up and prior to the game starting, which were specific factual allegations that supported a plausible claim that the PS4 completes its execution of the fault inspection program before the game is started. The Federal Circuit held that this was sufficient as Bot M8 need not “prove its case at the pleading stage.”

As for the fifth patent-in-suit (the `363 patent), the Federal Circuit affirmed the district court's Section 101 invalidity determination that the claim “recites the abstract idea of increasing or decreasing the risk-to-reward ratio, or more broadly the difficulty, of a multiplayer game based upon previous aggregate results” where the claim leaves open how to accomplish this and “merely recites result-oriented uses of conventional computer devices.”

The patent litigation attorneys at Thomas P. Howard, LLC know how to write claims and plead patent cases.