When representing a defendant responding to a Complaint in federal court, intellectual property attorneys are faced with many strategic choices. For purposes of this post, we will assume that jurisdiction and venue are incontestable. One tactic would be to simply file an Answer denying the allegations and engage in full blown discovery. Another typical maneuver is to attack the pleadings by filing a motion to dismiss or Rule 12b6 as its known in the FRCP. An often overlooked option is the summary judgment.
Of course, there is no one size fits all answer. Assorted legal and factual scenarios call for different legal tools. Every case has its own DNA. That being said, I have found that the 12b6 motion tends to be overused while the summary judgment tends to be underused. Many times, your defense clients are better served by a summary judgment motion rather than a 12b6 motion.
I think the reason that the 12b6 motion tends to be over-utilized is that it is a way to “dip a toe in the water” before diving in. The defense can get a feel for the judge’s attitude about the case with little perceived downside. There are no facts or evidence to dig into because all allegations in the Complaint must be accepted as true. That leaves the four corners of the Complaint and case law. The motion is essentially a research project. As such, it is potentially a cost efficient way for disposing of a case.
So why wouldn’t you want to bring a 12b6 motion out of the gates? The main reason is that the plaintiff is almost always given at least one if not two chances to amend the Complaint after the motion is granted. As a defendant, you risk educating the plaintiff on its pleading deficiencies. Unless the amended pleading contradicts previous allegations (sham pleading), you will have likely given the plaintiff a roadmap to get the case to trial. As such, even if you ultimately prevail, your client is in for hundreds of thousands of dollars in defense costs.
In many instances, we have found the better course is to file a summary judgment in response to Complaints. This has many advantages. First, it locks in the pleadings. A plaintiff with a legally or factually deficient Complaint is stuck with it (unless the plaintiff figures out the deficiencies on its own and moves to amend). Second, it is aggressive and you are likely to surprise the plaintiff. Often plaintiffs have not fully prepped their case before filing. Its the spaghetti against the wall approach. This means that the plaintiff often has not fully investigated preliminary facts or thought through its legal theories. Therefore, you may be able to leverage your summary judgment with a rule 11 letter to inflict further incentive for a quick and advantageous settlement. Third, the plaintiff will likely not have the factual evidence it needs to prevail on summary judgment. As such, it will be forced to file a motion under rule 56 for summary judgment discovery. While the plaintiff is likely to be granted such discovery, such discovery is typically very narrow pertaining only to the crucial summary judgment issues. If the summary judgment is focused solely upon the law – then discovery may not even be necessary. At a minimum, you put tremendous pressure on the plaintiff and smoke out its case very early even if your summary judgment is not ultimately successful.