Pleading Infringement does not Require Claim Element-by-Element Pleadings and Proving Internet Publications that are Prior Art

Our weekly SoCal IP Institute meeting on Monday, July 26, 2021 will be a presentation by Angelo Gaz and discussion of a CAFC finding that pleading infringement does not require claim chart level assertions and a PTAB finding that a patent attorney’s signature is not a substitute for evidence sufficient to establish documents as prior art.

In BOT M8 v. Sony (CAFC 2021) (BOT M8 v Sony), the district court dismissed Bot M8’s infringement claims against Sony’s PlayStation 4.   On appeal, the Federal Circuit has reversed-in-part.  While plausibility is required, the court repeated its prior statement that the plaintiff “need not prove its case at the pleading stage.” Bill of Lading (Fed. Cir. 2012).

Regarding infringement, the court found that a complaint may be sufficient without an element-by-element infringement analysis. “A plaintiff is not required to plead infringement on an element-by-element basis.”  Rather, the focus of complaint sufficiency is notice — a complaint needs to provide fair notice of what activities by the defendant constitute infringement.

The court then tried to draw some lines:

  • Insufficient: merely alleging an entitlement to relief (as was done in Form 18)
  • Insufficient: reciting claim elements and “merely concluding that the accused product has those elements.”
  • Sufficient: providing factual allegations that, when taken as true, articulate why it is plausible that the accused product infringes.

In Ex parte Zhang (PTAB 2021) (Ex parte Zhang), the PTAB has reversed — finding that cited references are not prior art at all in a design patent case.

Two references were internet publications purportedly published online two-years before Zhang’s application filing date.  However, the PTAB found insufficient evidence proving their publication dates.

Here, an anonymous third party, through counsel, provided the USPTO with copies of two webpages in a foreign language … each paired with an uncertified English translation. Both documents and translations were submitted by a third party requester in a very unclear, grainy or pixelated manner and the text and details over the figures are very difficult to discern.

The submitted material do include printed dates, but the PTAB found them unclear and insufficient without any corroborating evidence regarding context or accuracy. Further, no evidence was submitted showing that the sites were publicly accessible as of those dates, and the pages are no longer available on the internet.

There is simply no explanation or verification of the source, date or accessibility of the information presented on these documents. While we can put some weight in the duty of a signatory of a registered patent attorney in accordance with 37 C.F.R. § 11.18 that statements of fact are “believed to be true,” we simply cannot find the evidence sufficient to establish the documents as prior art.

We will discuss these cases at our weekly SoCal IP Institute with any who wish to join us on a video conference on July 26, 2021 at 1:00 pm. Simply email elisham @ (remove the spaces which were added to to avoid spammers) to RSVP. This activity is approved for 1 hour of California MCLE credit.