TO: Professor Risch
FROM: Meghan Hanlon
DATE: November 10, 2007
RE: McZeal v. Sprint Nextel Corp., 501 F.3d 1354 (C.A.Fed. (Tex.), 2007)
Facts:
Alfred McZeal, Jr., pro se, sued Sprint Nextel Corporation and Nextel Communications, Inc. alleging patent and trademark infringement. McZeal alleged that Sprint Nextel infringed on his service mark “International Walkie Talkie.†McZeal also contended that Sprint Nextel infringed on his patent (U.S. Patent No. 6,763,226) through the use of the Motorola i930 cell phone.
Procedural History:
McZeal filed a motion for a temporary restraining order, a preliminary injunction, a permanent injunction, and a request for an expedited hearing. The district court started a hearing shortly after McZeal filed. During the hearing, Sprint Nextel moved to dismiss for failure to state a claim. The district court found that McZeal’s complaint did fail to state a claim, saying, “There just aren’t any facts.†McZeal appealed. The Circuit Court vacated and remanded the case.
Holding:
A court reviewing the case of a pro se party can be lenient with procedural matters, like pleading requirements. Federal Rule of Civil Procedure 8(a) (2) requires only “a short and plain statement of the claim showing that the pleader is entitled to relief,†in order to “give the defendant fair notice of what the ... claim is and the grounds upon which it rests.â€
Federal Rule of Civil Procedure Form 16 gives a sample complaint for a patent infringement claim. The elements needed are: 1) an allegation of jurisdiction; 2) a statement that the plaintiff owns the patent; 3) a statement that defendant has been infringing the patent “by making, selling, and using the device embodying the patentâ€; 4) a statement that the plaintiff has given the defendant notice of its infringement; and 5) a demand for an injunction and damages. A patentee only needs to plead facts that would be sufficient enough to put a potential infringer on notice as to what he has to defend. The patent holder in an infringement suit is thus not required to specifically include each element of the claims of the asserted patent.
The Third Circuit found that McZeal listed all the required elements in his complaint in enough detail to allow Sprint Nextel to submit an answer. McZeal asserted ownership of the patent, named Sprint Nextel as a defendant, cited his patent as infringed, and described how Sprint Nextel infringed the patent (by performing or having all the basic elements in the patent and other infringement under the doctrine of equivalents).
As to the trademark infringement claim, the district court held it invalid because it was generic. The Circuit Court vacated this determination because whether a claim is generic is a question of fact and should not have been decided prematurely.
Judge Dyk’s concurring-in-part and dissenting-in-part opinion:
Dky agreed with the majority’s decision to vacate and remand in respect to the trademark infringement claim. But he disagreed with the decision to do the same with the patent infringement claim. He believes that when a plaintiff asserts a doctrine of equivalents claim must have specific allegations of infringement by the defendant. And the plaintiff should investigate the accused device to see how comparable the defendant’s product is to the plaintiff’s. All in all, Dyk says, he would have affirmed the district court’s finding that McZeal did not plead with enough particularity to continue his case, especially not for a doctrine of equivalents claim.
FROM: Meghan Hanlon
DATE: November 10, 2007
RE: McZeal v. Sprint Nextel Corp., 501 F.3d 1354 (C.A.Fed. (Tex.), 2007)
Facts:
Alfred McZeal, Jr., pro se, sued Sprint Nextel Corporation and Nextel Communications, Inc. alleging patent and trademark infringement. McZeal alleged that Sprint Nextel infringed on his service mark “International Walkie Talkie.†McZeal also contended that Sprint Nextel infringed on his patent (U.S. Patent No. 6,763,226) through the use of the Motorola i930 cell phone.
Procedural History:
McZeal filed a motion for a temporary restraining order, a preliminary injunction, a permanent injunction, and a request for an expedited hearing. The district court started a hearing shortly after McZeal filed. During the hearing, Sprint Nextel moved to dismiss for failure to state a claim. The district court found that McZeal’s complaint did fail to state a claim, saying, “There just aren’t any facts.†McZeal appealed. The Circuit Court vacated and remanded the case.
Holding:
A court reviewing the case of a pro se party can be lenient with procedural matters, like pleading requirements. Federal Rule of Civil Procedure 8(a) (2) requires only “a short and plain statement of the claim showing that the pleader is entitled to relief,†in order to “give the defendant fair notice of what the ... claim is and the grounds upon which it rests.â€
Federal Rule of Civil Procedure Form 16 gives a sample complaint for a patent infringement claim. The elements needed are: 1) an allegation of jurisdiction; 2) a statement that the plaintiff owns the patent; 3) a statement that defendant has been infringing the patent “by making, selling, and using the device embodying the patentâ€; 4) a statement that the plaintiff has given the defendant notice of its infringement; and 5) a demand for an injunction and damages. A patentee only needs to plead facts that would be sufficient enough to put a potential infringer on notice as to what he has to defend. The patent holder in an infringement suit is thus not required to specifically include each element of the claims of the asserted patent.
The Third Circuit found that McZeal listed all the required elements in his complaint in enough detail to allow Sprint Nextel to submit an answer. McZeal asserted ownership of the patent, named Sprint Nextel as a defendant, cited his patent as infringed, and described how Sprint Nextel infringed the patent (by performing or having all the basic elements in the patent and other infringement under the doctrine of equivalents).
As to the trademark infringement claim, the district court held it invalid because it was generic. The Circuit Court vacated this determination because whether a claim is generic is a question of fact and should not have been decided prematurely.
Judge Dyk’s concurring-in-part and dissenting-in-part opinion:
Dky agreed with the majority’s decision to vacate and remand in respect to the trademark infringement claim. But he disagreed with the decision to do the same with the patent infringement claim. He believes that when a plaintiff asserts a doctrine of equivalents claim must have specific allegations of infringement by the defendant. And the plaintiff should investigate the accused device to see how comparable the defendant’s product is to the plaintiff’s. All in all, Dyk says, he would have affirmed the district court’s finding that McZeal did not plead with enough particularity to continue his case, especially not for a doctrine of equivalents claim.