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Wisconsin Court: Absent Unusual Circumstances, Patent Complaint Must Include Identification of Asserted Claims and Accused Product

In a patent case filed in the Western District of Wisconsin, Defendant Digecor, Inc. moved to dismiss plaintiff Hunts Point Ventures, Inc.’s complaint for failing to identify the asserted claims or the accused product. In granting the Defendant’s motion, the Court (J. Crabb) reiterated her well established practice of requiring such information in a complaint absent the unusual circumstance where the patent contains only a single claim and the defendant makes only a single product.

Judge Crabb acknowledged that it previously has held that a plaintiff’s failure to identify the claims or the accused products “places an undue burden on the defendant, who must wade through all the claims in a patent and determine which claims might apply to its product to give a complete response.” Moreover, “if a defendant does not have notice of the asserted claims, it has not notice at all. If it does not know what it is accused of infringing , it cannot possibly prepare a defense.” Analogizing patent cases to civil rights cases, the Court succinctly explained that “it is the plaintiff’s initial burden to inform the defendant what it did to violate the plaintiff’s rights.”

In opposing the motion, the plaintiff argued that its complaint was similar to Form 18 of the Federal Rules of Civil Procedure. Conceding that Form 18 does not explicitly require the complainant to include the asserted claims or a particular product, the Court pointed out that some courts and commentators have questioned whether the forms can be reconciled with Twombly and Iqbal. Ultimately, the Court determined that it did not need to resolve the question of whether Form 18 is consistent with Twombly and Iqbal because the complaint at issue “is not sufficient under any standard.”

“In circumstances in which a defendant could determine the basis for the plaintiff’s infringement contentions with relative ease, a complaint containing only the information set forth in Form 18 may provide proper notice. For example, when the plaintiff is asserting a patent with a single claim against a defendant that makes or sells a single accused device, additional detail is not necessary. However, when the patent includes multiple claims and the defendant manufacturers and sells multiple accused products, it does not give the defendant adequate notice simply to allege that some unidentified product of the defendant infringed some unidentified claim.”

In granting the motion to dismiss, the Court did so without prejudice noting that district courts generally give the plaintiff at least one opportunity to amend her complaint. In addition, the Court stated that “to the extent plaintiff is not aware of all of the potentially infringing products at this time, it is free to file additional amended complaints within the schedule set by the magistrate judge in the preliminary pretrial conference order if it becomes aware of new claims after conducting discovery.” The Court concluded that because Rule 11 requires a plaintiff to conduct a reasonable investigation of claims before filing its complaint, if it does not have a reasonable belief that a particular product violates a particular claim at or after the time it files a complaint, then it is questionable whether the plaintiff has complied with that rule.


This case illustrates the on-going struggle that some district courts have with reconciling Form 18 with the rationale that a plaintiff must give a defendant sufficient notice of its claim to inform a defendant what it did to violate the plaintiff’s patent rights. While some courts, like the one here, require identification of the asserted claims and accused product, other courts, have required less detail. See e.g., Realtime Data, LLC d/b/a IXO, v. Morgan Stanley, 721 F.Supp.2d 538 (E.D. Texas June 10, 2010).

Hunts Point Ventures, Inc. v. Digecor, Inc., Case No. 11-CV-319-bbc (W.D. Wisconsin August 24, 2011)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Greg Cordrey at 949.623.7236 or