By Dennis Crouch
Rates Technology and James Hicks v. Mediatrix Telecom (Fed. Cir. 2012)
James Hicks represented Rates Technologies (RTI) in the litigation against the accused infringers (including Mediatrix) in the Eastern District of New York. During discovery, the court found that RTI had failed to adequately answer several interrogatory answers and, as a litigation sanction, dismissed the case and fined RTI and Hicks $43k each. RTI did not appeal. However RTI’s attorney Hicks did appeal – arguing that he should not be personally sanctioned because the information needed to answer the interrogatory was not within his personal possession and because the discovery orders were not directed personally toward him. The Federal Circuit rejected those arguments.
The primary contention interrogatory at issue is perhaps the most basic for any patent infringement case. The question is:
Separately for each claim of the Patents-in-suit that [RTI] contends is infringed, state the basis for that contention, including … identification on an element-by-element basis of the component … of each accused Mediatrix product that allegedly satisfies each element.
RTI apparently never answered this question.
Pre-Filing Information Insufficient: Before filing a patent infringement lawsuit, the plaintiff’s attorneys are required to conduct some amount of reasonable inquiry to comply with Rule 11 of the Federal Rules of Civil Procedure. This typically includes an element-by-element analysis to ensure that the accused products actually infringe the asserted patent. Of course, before filing, the scope of a plaintiff’s knowledge is often limited. The patentee likely lacks technical information associated with the accused products (as well as full knowledge of the defendants’ product lines). Thus, a full infringement contention normally requires some amount of discovery from the accused infringer. Further complicating this cat-and-mouse game of discovery is the fact that plaintiffs prefer to delay fully explaining their infringement contentions in order to maintain flexibility in the litigation and to keep opposing counsel guessing.
One solution proposed by Peter Menell, et al., in their newly updated Patent Case Management Judicial Guide is to require infringement and invalidity contentions be exchanged early in the case – certainly before claim construction. Most local patent rules follow that process and judges then use the contentions in thinking about the claim construction and also to limit discovery. The problem with this approach is that the claim construction tends to significantly alter the case and may well require amendments to the contentions.
Again, I recommend those interested in sanctions to check out Despatch Industries Limited Partnership v TP Solar, Inc., C D CA, Case No. 2:11-CV-2357 R (FMO) in which the Court granted total fees and sanctions of $361,590.03 against the Plaintiff, its MN Counsel, and its local CA counsel, inter alia, for lack of due diligence before filing litigation. Check the Court’s Order granting fees under 35 USC 285 and sanctions under FRCP Rule 11 dated Nov 28, 2011, court document 155. The briefs of the Defendant are instructive and can be found in CM/ECF system under that case #; if you need the doc numbers, let me know.
Plaintiff appealed to the CAFC, but ultimately dropped the appeals after settlement. Plaintiff’s Motion for Vacatur of the Sanctions Order was denied by the District Court.
While I always use an agent in the US I am nevertheless curious about the following
> During discovery, the court found that RTI had failed to adequately answer several interrogatory answers
(my emphasis)
Why do you have to answer answers? And what then about questions?
I’m aware of what the “whole point of discovery” is. I’m also aware of the pre-filing requirements of Rule 11. It’s simply not “reasonable” to argue that you need discovery to find out if you even have a colorable claim. Interpreting the FRCP to do “substantial justice” doesn’t cover the cases where P’s throw anything and everything up against the wall to see if anything sticks. And it’s not “unreasonable” to expect P’s to pay D’s costs for defending against cr#p that had no chance of sticking.
Nice tinfoil hat you Donkey.
Speaking of sanctions:
link to uspto.gov
Under the AIA, the Office must commence a disciplinary proceeding not later than the earlier of: (i) ten years after the date on which the misconduct occurred; or (ii) one year from the date on which the misconduct was made known to the USPTO. Regarding (ii), the final rule specifies the timing for commencing the one-year time period is the date on which the Director of the Office of Enrollment and Discipline receives a grievance forming the basis of the complaint.
Has the Office commenced proceedings against the prosecutor(s) of the Therasense patents? If not, why not?
I think MM’s answer is that if you advanced 2, 3 or 4 alternative claim constructions, and then abandoned 1, 2 or 3 of them, then you should have to pay the accused infringer’s costs in defending against those 1, 2 or 3. So maybe you should pick ONE good claim construction argument to pursue and stick with that, rather than proposing 2, 3 or 4, or more, and driving up D’s costs.
Yes, that’s pretty much it. Just a matter of fairness and preventing patent trolls from engaging in Total A—-olery, which they excel that.
suckie Last I checked
LOL. What happened, suckie, the last time you checked into whether you could patent a mental process by tossing in an old conventional step?
Right. 9-0.
Oops.
See the post below about “unreasonable” and keep in mind the whole point of discovery.
Guessing at what Mooney is proposing is a fool’s game.
It’s not my idea. I was making a guess at what Mooney was proposing. And I’m aware that we don’t have a “loser pays” system, and I’m not proposing one. We do, however, have the FRCP which allows a party to request costs if the other party is unreasonable.
You assume that MM is interested in equity and reasonableness.
Heaven forbid that discovery alter a position.
The FRCP were completely rewritten, effective December 1, 2007, under the leadership of a committee headed by law professor and editor of Black’s Law Dictionary, Bryan A. Garner, for the avowed purpose of making them easier to understand. The style amendments were not intended to make substantive changes in the rules.[1]
Effective December 1, 2009 substantial amendments were made to rules 6, 12, 13, 14, 15, 23, 27, 32, 38, 48, 50, 52, 53, 54, 55, 56, 59, 62, 65, 68, 71.1, 72 and 81. While rules 48 and 62.1 were added. Rule 1 (f) was abrogated. The majority of the amendments affect various timing requirements and change how some deadlines are calculated. The most significant changes are to Rule 6.
Before the FRCP were established, common-law pleading was more formal, traditional, and particular in its phrases and requirements. For example, a plaintiff bringing a trespass suit would have to mention certain key words in his complaint or risk having it dismissed with prejudice. In contrast, the FRCP is based upon a legal construction called notice pleading, which is less formal, is created and modified by legal experts, and is far less technical in requirements. In notice pleading, the same plaintiff bringing suit would not face dismissal for lack of the exact legal term, as long as the claim itself was legally actionable. The policy behind this change is to simply give “notice” of grievances and to leave the details for later in the case. This acts in the interest of equity by concentrating on the actual law rather than the exact construction of pleas.
Last I checked, the US does not have a “loser pays” system which sounds like your “abandoner pays” idea.
I think MM’s answer is that if you advanced 2, 3 or 4 alternative claim constructions, and then abandoned 1, 2 or 3 of them, then you should have to pay the accused infringer’s costs in defending against those 1, 2 or 3. So maybe you should pick ONE good claim construction argument to pursue and stick with that, rather than proposing 2, 3 or 4, or more, and driving up D’s costs.
But MM may not have meant that at all. Who knows?
anon, Rule 11 and sanctions are the way to go, I agree. I wish our litigation counsel had used it more. Every patent lawsuit filed against a former client resulted from my simple request as a condition of settlement that they give us even one claim chart showing infringement of any product. As you might expect, in most cases, there was no attempt to even comply. In one or two, we were provided charts where the critical element (from the PH) was all but ignored (you know, sandwiched in a larger paragraph where some of the paragraph was shown, but the critical element ignored.)
Come to speak of it, such claim charts are common in reexamination request. Critical elements are ignored or misconstrued by the requestor. But the mild mannered examiner does not know this without having the issues briefed to him by the PO. Thus, most reexamination requests are granted because the PO is silenced.
“Not at all.”
Nice non-answer
T O O L
You really are dense, aren’t you MM?
Anon clearly draws a distinction between the tool and its use.
Anon is correct on both fronts:
The tool is good.
The tool is not used enough.
T O O L
How would pleading in the alternative (last I checked, still a valid legal move) affect your desire to bound patentee’s contentions?
Not at all.
suckie Are you questioning the factual basis of my statement?
I’m making the indisputable point that your comment (“My post merely indicates that Rule 11 is a good tool”) was false. Nothing new about that, suckie.
How would pleading in the alternative (last I checked, still a valid legal move) affect your desire to bound patentee’s contentions?
“9-0”
Nice non-sequitur. Very Michael R. Thomas of you.
MM,
Are you questioning the factual basis of my statement?
Stop trolling (especially when the facts work against you).
suckie My post merely indicates that Rule 11 is a good tool.
False. See, e.g., your comment re: “out of control” litigation …. is far under 2% of active patents)”.
Nice try, though. Too bad the Internets remember stuff, suckie.
9-0.
LOL.
Merely an observation, but the individual who was sanctioned is a partner in a general practice law firm, is the sole individual associated with its IP practice area (rather extensive statement of what the practice area involves, none of which is associated with prosecution), is not admitted to practice before the USPTO, and for all practical purposes appears to limit practice to litigation.
People decry the absence of techinical expertise on the part of jurists. Why this does not apply with equal force to attorneys eludes me.
Ah, my personal troll has awoken from his beauty rest.
MM, your habit of premature celebration is showing again. Your post is once again insubstantial, insulting and in point of fact, errant.
My post merely indicates that Rule 11 is a good tool. I made no comment as to the historical use of that tool as indicated in the question made in response to my post. I would posit that the tool has not been used enough. The thread is a sign that the tool is being used and I agreed with the message by Prof. Crouch.
Stop your noisy trolling and try to think before you post.
One solution proposed by Peter Menell, et al., in their newly updated Patent Case Management Judicial Guide is to require infringement and invalidity contentions be exchanged early in the case – certainly before claim construction. Most local patent rules follow that process and judges then use the contentions in thinking about the claim construction and also to limit discovery. The problem with this approach is that the claim construction tends to significantly alter the case and may well require amendments to the contentions.
Rather than using the patentee’s infringement contentions to “think about” claim construction, the patentee should be considered bound by those contentions and, to the extent that the patentee later offers up a claim construction which disagrees with any earlier proposed infringement contention, the patentee should immediately be sanctioned for all of the defendant’s attorney fees spent responding and/or rebutting the withdrawn infringement contentions.
Is there a study of how many FRCP Rule 11 sanctions are granted per year in the roughly 2000 patent suits filed per year, and whether those sanctions were sufficent to be effective
LOLOLOLOL.
I love the smell of burnt anonsuckie in the morning.
Is there a study of how many FRCP Rule 11 sanctions are granted per year in the roughly 2000 patent suits filed per year, and whether those sanctions were sufficent to be effective?
Rule 11 is a better area for the courts to control inappropriate and “out of control” litigation (which by the way is far under 2% of active patents).
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