How do I: Respond to a Complaint in a Patent Infringement Suit in a Federal Court

How do I: Respond to a Complaint in a Patent Infringement Suit in a Federal Court

By Lester Horwitz and Ethan Horwitz

This chapter from Patent Litigation: Procedures and Tactics addresses the procedure for responding to a complaint in a patent infringement suit in a federal court. The chapter is devoted primarily to the procedural aspects of the first responsive appearance.

The chapter first considers the manner of response, which is governed by Rule 12 of the Federal Rules of Civil Procedure. The chapter also discusses the time and manner of serving and filing; deadlines and the availability of extensions of time; and the consequences of answering, including the waiver of challenges to jurisdiction and venue. The chapter next considers the content of the answer, including the denials and affirmative defenses required by Rule 8; the hazards of failing to file a denial; motions under Rule 12 which may be raised prior to filing a responsive pleading; and the defenses which can be asserted later as well as those which cannot. Finally, the chapter discusses the consequences of victory in the trail court by the patent owner and the importance of the tactical weapon, available to the accused infringer, of the counterclaim for declaratory judgment.

Patent Litigation: Procedure & Tactics (Matthew Bender) discusses all stages of patent litigation, including the filing of the suit, pretrial pleadings and investigation, claim construction and Markman hearings, trial and evidentiary matters, examination of experts, standards for establishing inequitable conduct, jury instructions, damages, and injunctive relief. It also provides tactical strategies for infringement suits, as well as checklists of black letter law for claim construction, infringement, validity, doctrine of equivalents, and prosecution history estoppel. subscribers can access the full text of Patent Litigation, Procedure and Tactics.

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For a detailed discussion of prefiling issues, see Chapter 1, Prefiling Considerations.

For a discussion of the complaint, see Chapter 2, Filing the Suit.

For a discussion of additional pretrial matters, see Chapter 4, Preliminary, Ancillary, and Collateral Matters; Chapter 4A, Pretrial Organization; and Chapter 5, Pretrial Investigation.

For a discussion of patent litigation checklists, see Chapter 10, Checklists Relating to Patent Litigation.


See Chisom on Patents (Matthew Bender) for expert guidance on the law of patentability, validity, and infringement of patents.

See  Moore's Federal Practice (Matthew Bender) for fully annotated and practice-oriented coverage of every detail of procedure in federal civil cases, following the sequence of the Federal Rules of Civil Procedure.