Legal Question in Intellectual Property in California

For a patent infringement case, in the Northern District of California-San Jose Division, I was issued a "Notice to Dismiss" by the defendant for "failure to state a claim upon which relief can be granted" pursuant to FED. R. CIV. P. 12(b)(6) or, in the alternative, to strike pursuant FED.R. CIV. P. 12(f).

At the time I submitted my claim to the court, I did understand that it was not strong but, as of today, I do have facts that pertain to infringement on my patent but, I have to prepare what is called; "Motion to Proceed"

The defendant(s) lawyer who prepared the "Notice to Dismiss" quoted "Bell Atl. Corp. v. Twombley, 550 U.S. 544 and Ashcroft v. Iqbal,_ U.S._, 129 S. Ct. 1937 (2009)

From reading the defendants "Notice to Dismiss" I am sure that I can challenge and perhaps win the argument and be granted "Motion to Proceed" However, my fear is that I cannot quote the examples such as he does (above) because I do not have a legal background. I do however, have access to the University of California-Berkeley, Boalt School library and I am sure that I can find what I need the library. BUT, IN ORDER TO PREPARE THIS "Motion to Proceed" WOULD I HAVE TO QUOTE LAWS AS THE DEFENDING ATTORNEY OR, COULD I PREPARE IT BASED ON JUST THE FACTS OF INFRINGEMENT?

What I am claiming damage wise is; 35 U.S.C. 154(d), sections 102(a), (b) and 103(a). My "Motion to proceed" is due on May 31st 2011 and I am afraid that I will not have it finished by then, IS THERE SOME TYPE OF LEGAL PROCEDURE TO ASK THE JUDGE FOR MORE TIME TO PREPARE A "Motion to Proceed"? or, should I be able to find every thing I need today, within the law library?

If so, what publications would I use, in order to win the argument?


Asked on 5/27/11, 8:31 am

2 Answers from Attorneys
Patrick Tracy Patrick J. Tracy, Esq, P.E.,

The best thing you can do is to hire an attorney to assist you. Patent law can be a very complex area of law. To proceed "pro se" you are leaving yourself very vulnerable.

Good luck!

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Answered on 5/27/11, 8:49 am
Bryan Whipple Bryan R. R. Whipple, Attorney at Law

The Iqbal and Twombley cases are both landmark U.S. Supreme Court cases that many legal scholars believe make it easier for large corporations and high-ranking government officials to shrug off semi-weak lawsuits at an earlier stage of proceedings. If you put the case names into a Google, etc. search, you'll find lots of scholarly articles interpreting these holdings, as well as the texts of the decisions themselves.

You have been served with a motion to dismiss, which is not uncommon in Federal Court, and the 12(b)(6) dismissal motion is somewhat akin to a demurrer in California state court. In your case, apparently the motion is made on the ground that your lawsuit fails to allege sufficient facts to state a "cause of action," so that, even if your allegations were 100% true, they would be insufficient for the court to give you a judgment.

My hunch is that you may have said (in effect) "Defendant XYZ Corp. may be infringing my patent." It would be better, perhaps, to plead "The following facts show that XYZ Corp. is infringing my patent...." and then allege "facts" than you can't necessarily prove now, but perhaps can prove after discovery.

I can't teach a course in pleading or 12(b)(6) motion practice on LawGuru, but in order to avoid dismissal you will have to prepare, file and serve an Opposition to Motion to Dismiss within the time limits and in accordance with Federal motion-practice rules. Your Opposition should attempt to show why the defects and shortcomings claimed in the motion really don't exist, of if they do, why the complaint is nevertheless sufficient to state claims upon which the court could provide relief.

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Answered on 5/27/11, 9:25 am


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