In a November 21, 2016, order, the Honorable Janis L. Sammartino of the Southern District of California dismissed The Scripps Research Institute’s (TSRI) patent infringement claims without prejudice because TSRI failed to satisfy the recently heightened pleading standard for direct infringement. In setting out the relevant standard, the court noted that “Form 18”—a basic patent infringement form complaint that was previously appended to the Federal Rules of Civil Procedure, but eliminated on December 1, 2015—no longer applied. Instead, as the court had previously held, the pleading standard set out in the Supreme Court’s Twombly and Iqbal decisions now governed claims for patent infringement. The court held that, under Twombly, a complaint for patent infringement “must plausibly allege that a defendant directly infringes each limitation in at least one asserted claim.” The court did not elaborate on how much specificity is required to demonstrate that each limitation of an asserted claim is “plausibly met” by the accused products, but it did clarify that its holding “does not require a patentee to plead with the specificity required in its infringement contentions.” Notably, the court also held that a plaintiff need only plausibly allege infringement of a single claim for the complaint to survive, and it is not required to identify all asserted claims and all infringing products in its initial pleading. However, “all of a patentee’s asserted claims for infringement must eventually appear in its complaint, amended or otherwise.”
The court concluded that TSRI failed to meet the pleading standard adopted by the court after the abrogation of Form 18. In its analysis, the court appeared to give substantial weight to the fact that TSRI did not specifically address all of the limitations of the asserted claims in its allegations. The asserted claims are directed to a “bifunctional molecule,” which, according to TSRI, is used to manufacture DNA microarrays. In its complaint, TSRI identified Illumina’s BeadChip as an infringing product and generally described the characteristics of that product. Based on this description, TSRI concluded that the bifunctional molecule used to manufacture the BeadChip product directly infringed its patent. However, TSRI’s allegations did not specifically address all of the limitations in the asserted claims. In particular, as the court emphasized, the defendant identified “several limitations in claim 1 that are not encompassed—much less addressed—by Plaintiff’s allegations.” The court agreed with the defendant that the asserted patent “does not cover just any bifunctional molecule; its claims all require a bifunctional molecule with a specific structure.” The court therefore found that TSRI failed to meet the pleading standard for direct infringement and dismissed TSRI’s direct infringement claims without prejudice.
The Scripps Research Institute v. Illumina, Inc., 16-cv-661 (S.D. Cal. Nov. 21, 2016) (Sammartino, J.)