Section 285 Does Not Support Deterrence Based Fee Enhancement; Next Stop Rule 11 Sanctions

This is the second post on the attorney-fee-case of Lumen View v.  The original post focused on the Federal Circuit’s holding that (1) the exceptional case finding was appropriate but (2) it was improper to double the awarded attorney fees for the purpose of added deterrence.  In making its determination, the Federal Circuit looked to the Patent Act that authorizes only “reasonable attorney fees” to the prevailing party in an exceptional case.

In a one-sentence statement at the end of its vacatur, the Federal Circuit suggests that the district court might instead consider sanctions under Rule 11 of the Federal Rules of Civil Procedure. “Whether the court wishes to utilize Rule 11 or any other statutory framework is of course up to the district court.”

In Octane Fitness, the Supreme Court noted the partial overlap between Section 285 fees and R. 11 sanctions.  Section 285 does not particularly require sanctionable conduct but does require that the recipient be the ‘prevailing party.’

Importantly for the discussion here, Rule 11 particularly authorizes sanctions designed “to deter repetition of the [sanctioned] conduct or comparable conduct by others similarly situated.”  Here, the district court (supported by the Federal Circuit) has already found the complaint at least recklessly baseless and that may be enough to legally support a deterrence-based sanction.  The court’s next move may be to issue an order to show-cause under R. 11(c)(3).



About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

40 thoughts on “Section 285 Does Not Support Deterrence Based Fee Enhancement; Next Stop Rule 11 Sanctions

  1. Meet Bruce Sunstein, also part of the Eileen Shapiro lovefest:

    link to

    Bruce: [Shapiro has a] “deep understanding of how intellectual property provides business leverage.”

    Yes, her understanding is really, really “deep”, Bruce. Because it takes a “genius” to figure out how to tr0ll a junk patent, right?

    1. Seriously, if these self-congratulatory born-yesterday know-nothings didn’t exist, you’d almost want to invent them just for the laughs. Thankfully we don’t have to do that. They’re right out there in the open.

    2. From the 2010 link:

      ” Many lawyers, as well as some professional groups such as AIPLA, argue that the best way to deal with bad patents is to invalidate them on grounds of obviousness or lack of novelty. But the Internet Retailers and other groups, such as the Computer and Communications Industry Association, say that isn’t enough and want a clearer limit placed on patentability. Because the high cost of patent litigation gives patent trolls so much leverage, kicking out individual business method patents on grounds of non-obviousness or lack of novelty is an expensive and never-ending exercise, Brann and other critics argue. Courts should rule that they’re not appropriate subject matter for a patent grant, period.

      But that argument failed to convince a majority of justices on the Supreme Court.”

      MM, Bilski created such chaos that many believed that the Supreme Court actually authorized the patenting of business methods — when claimed as computer implemented. Alice killed the latter notion, but still folks are not convinced that business methods are categorically banned and are still filing suits on them. Do you think this is a reasonable position given that it was Stevens dissent that argued for an outright declaration that business methods were non statutory?

      1. Ned: folks are not convinced that business methods are categorically banned and are still filing suits on them. Do you think this is a reasonable position

        According to Bruce Sunstein, filing patents on junky “do it on a computer” biz methods is what constitutes “deep undertanding”. Heck, Steve Lundberg’s awesome patent firm filed dozens of such patents! I guess if you’ve got money to burn, why not just waste it on laugh-worthy junk? And then pretend to be super serious and objective while you defend both that junk and the toxic tr0lls who peddle it (making sure, of course, that your head is firmly buried in the sand the entire time — after all, you wouldn’t want to stumble across some computer scientist saying something totally crrrrrrrazy like “software is logic”).

        Short answer: of course it’s not a reasonable position. Since the term “business method” was never defined by the majority in Bilski, there is no reasonable argument that the Supreme Court “authorized” such claims. There is certainly a great argument against them if you start from the understanding that abstract junk isn’t eligible for patenting. But understanding the difference between abstractions and the structurally distinguishable universe is something that confounds super serious people like Bruce and Steve in addition to so many software patent-loving s0ckpuppets who can’t reason their way out of a paper bag.

        1. So, you mean the term “business method” is kinda like “abstract idea” (or something that’s “significantly more” than the “abstract idea”), not defined so no one really knows what it means? Now, why do you think the Supreme Court would do such a stu pid thing and not define a term everyone has to use according to their rules?

          1. PB: So, you mean the term “business method” is kinda like “abstract idea” (or something that’s “significantly more” than the “abstract idea”), not defined so no one really knows what it means?

            Not at all. We’ve been discussing biz methods for years hear and everyone has a very good idea about what the term means. You can use different words to define the term, of course, but in a nutshell a business method is a method reciting the use of existing technology (e.g., pencils, books, file cabinets, calulators, computers, databases, etc) or logic, and whose primary purpose is to (i) effect or augment the sale or transfer of tangible or intangible goods or services; (ii) create/manage accounts/inventories related to same; (iii) create/manage relationships between entities.

            I think that about covers it. If I’m missing some major category of ineligible biz methods, let me know. Note that I’ve left out of my definition methods that use logic to produce data where that data might be transferred or used by the producer. That cr@p falls on its own.

            1. everyone has a very good idea about what the term means

              Apparently, you (still) do not.

              Nor do you (or Ned) grasp the fact that it was Congress in their authority that recognized business methods as legitimate – at a category level – notwithstanding that ALL individual claims of that category must still be vetted – JUST LIKE ALL OTHER claims – when Congress provided a limited defense against a subset of business method claims.

              If – as both you and Ned would have it – that business methods were ineligible to begin with, then the response of Congress could not have been a limited defense against a subset – NO such defense would have been needed.

              This is but one of many aspects of the law that have LONG been on the table for a meaningful discussion.

              The blight of ig noring these aspects and merely attempting the propaganda of repeated drive-by monologues needs to be attended to.

              1. “anon” Congress in their authority that recognized business methods as legitimate – at a category level

                In case you missed it the first time: some “business methods” are “legitimate” and protectable with patents.

                Most aren’t. But some are. And I’ve already explained which ones are “legitimate.” Yay Congress.

        2. ..and yet again Malcolm wants to make an issue out of an optional claim format choice with his “structurally distinguishable universe” malarky, ig noring what Congress actually wrote, because he “feels” like some field of rye needs his protection.

          1. “structurally distinguishable universe” malarky

            Remember when “anon” spent years here using hundreds of different s0ckpuppets to peddle his malarkey about the absolute prohibition on claim dissection that (surprise!) doesn’t exist and never did?

            I remember it very well, just like I’m surely going to remember this sorry chapter in the neverending story of “How Wrong Can Anon Be This Time?”

            1. Nothing but the usual mindless dust kicking from you Malcolm.

              How is your transparency challenge with Dr. Noonan coming along, you almighty hyp0crite?

              Then you can tell me how my post correctly noting an optional feature of the law belongs to this “How wrong” thingie.

              What a chump.

    3. Sprung from law firms out on highway nine,
      Chrome wheeled, fuel injected, and steppin’ out over the line
      H-Oh, Baby junk Pats rip the bones from their backs
      they’re death traps, it’s a suicide rap
      We gotta get paid while we’re young
      `Cause trolls like us, baby we were born to run….

  2. The super serious software patent luvver Steve Lundberg will surely have a sad when those sanctions are handed down:

    link to

    Here is another injustice of this story: Eileen C. Shapiro, the inventor of the so-called troll patent in question, is no slacker. She has an undergraduate degree from Brown University and an MBA from Harvard University. According to her LinkedIn profile, she holds 14 patents and has been actively involved in many start-ups. Is this really an example of some undeserving “troll” inventor with no right to exclusive rights in her inventions? Is it so improbable that someone that likely has a genius level IQ would be awarded a valuable patent for her ideas, which mind you appear to have come to her a good while ago before the site was even a notion in its founder’s imagination.

    Leave Eileen Shapiro alooooooone! Waaaah! Waaah! She’s a “genius”! She has a business degree from Harvard! She knows what a computer is! Waaah!!

    1. link to

      Lundberg and his firm personally have some 40 to 50 patents of their own pending, many for information technology designed to manage intellectual property.


      How’s that portfolio looking these days, Steve?

  3. link to

    I reached out to Shapiro directly to ask her a few questions about her interest in the patent and let’s just say she was not thrilled. I asked Ms. Shapiro if she held any economic interest in the patent and she repeatedly recited the same thing, “I was a co-inventor of the patent but no longer own the patent.” In other words, she refused to answer the question and claimed not to know the lawyer I was referring to. Later that day, we received another phone call from Wasserbauer. Wasserbauer claimed that we had committed a “hate crime” against Shapiro and were in violation of the discovery process, which was false. He then told us we had until the end of the day to settle the case or face criminal charges for harassment.

    Thank goodness Shapiro and Wasserbauer aren’t the kind of folks who would engage in lamebrained s0ckpuppetry on a patent blog.


        1. Ah.
          Multiple banned words, it appears.

          What if I do this, and suggest that the space after the first word be deleted and the obvious changes to the two X’s be made…

          arstechnica .com/tech-policy/2013/10/patent-trXll-asks-judge-for-gag-order-to-shXt-up-findthebest/

  4. The l0wlife inventors on this patent, Eileen Shapiro and Stephen Mintz, are the listed inventors on at least a dozen other g@rbage patents. Try to believe this incredible pile of d00d00 for starters:

    1. A method for structured generation and distribution of a news release, the method comprising:

    a. separately specifying content of each of a plurality of pre-determined sections of the news release, the predetermined sections and their ordering determining in part a desired format for the news release;

    b. storing, in a digital storage medium, the content specified for each of the sections;

    c. assembling the news release by retrieving from the storage medium each of the stored sections in a manner consistent with the desired format; and

    d. providing, to a promoter of the news release, feedback information that is responsive to the news release.

    Kudos to FindTheBest, by the way, for taking a stand. They could likely have paid these c0ckroaches off without batting an eye (others did) but instead they did everyone a favor.

    link to

    “I’ve been in this industry for 30 years,” O’Connor says. “Ideas are cheap. That’s not where the value is in tech. Turning it into a company or into a product, that’s how you create value.”

    In fact, O’Connor believes the patent system should be eliminated altogether, at least in the software and hardware worlds.

    Time to cue up the junk patent cheerleader squad so they can tell us that “O’Connor doesn’t know anything about start-ups or technology.”

    1. Turning it into a company or into a product, that’s how you create value.”

      Great. You do know the difference between a negative and a positive right, and that US patents are NOT about positive rights, right?

      It’s not the “doesn’t know anything about start-ups or technology” here that you should be concerned about Malcolm – it’s about your willingness to misrepresent the law because of you feel about a certain art field.

      Not incoincidentally, an art field that is MOST open to the widest levels of people (kind of opposite your usual schtick about one-percenters and all).

      1. Anon, seriously, you have to get off this “taking” issue. It is laughably wrong. As you note from the congressional history presented to Congress that the only constitutional objection alleged by those adverse to IPRs in 2011 was that they amounted to a taking. A professor of law from Stanford wrote a letter to Congress pooh-poohing that as a serious Constitutional issue. I agree. Even making that argument as the reason why IPRs are wrong fundamentally misses the issue and hurts anybody trying to make a point about the constitutionality of IPRs.

        Taking, is like taking title. Short of that, it is like infringement. One pays for taking title or for infringement.

        Revoking a patent for invalidity, however, is not a taking.

        1. Ned, seriously?

          LOL – we see here the corollary of Ned’s “6-is-a-genius-because-he-agrees-with-me

          There is NO fundamental “miss” of an issue, just because you refuse to talk about that issue.

          Care to actually point out and discuss why this is not a taking? (your “taking title” is a clear miss – see the New York rooftop case concerning takings).

          What exactly is this “pooh-poohing” academic’s position? You do realize that academics can be – and often are – wrong, eh?

          And why do you think that “ONLY” your issue must be the only issue regarding constitutionality?

          Get off your high horse. ENGAGE in an actual discussion.

        2. Further Ned – you over-gen eralize and under-appreciate the point here.

          Revoking a patent for invalidity, however, is not a taking.” is NOT the point that I am stressing.

          The initiation aspect is NOT a revocation – I have deliberately (and critically) noted that the initiation aspect is separate from ANY further decision on the merits.

          Maybe instead of whinging and avoiding the issue that I present, you actually PAY ATTENTION….

            1. let’s try again…

              Ah, I see that angle – and grant you that such a particular infringement (as opposed to a gen eral concept of infringement) would be a taking.

              But then, do you not see that a regulatory taking does not involve either “title” or infringement?

              1. “anon” a regulatory taking

                Is that like when an adminstrative agency diminishes the rights of the public by mistakenly granting hundreds of thousands of junk patents?

  5. “It’s about time” is the understatement of the year so far. Tr0lls like the patentee in this case should have been sanctioned out of existence years ago.

    But had these facts come before the Federal Circuit a decade ago, we would have had hand-wringing over the “scourge” of Rule 11 sanctions and some absurd platitudes about the “technology” being “promoted” by the activities of these transparent b0tt0m-feeders.

    Here’s the ridiculous “do it on a computer” junk in question, in case you need a laugh:

    1. A computer-implemented method for facilitating evaluation, in connection with the procurement or delivery of products or services, in a context of at least one of (i) a financial transaction and (ii) operation of an enterprise, such context involving a first class of parties in a first role and a second class of counterparties in a second role, the method comprising:

    in a first computer process, retrieving first preference data from a first digital storage medium, the first preference data including attribute levels derived from choices made by at least one of the parties in the first class;

    in a second computer process, retrieving second preference data from a second digital storage medium, the second preference data including attribute levels derived from choices made by at least one of the counterparties in the second class;

    in a third computer process, for a selected party, performing multilateral analyses of the selected party’s preference data and the preference data of each of the counterparties, and computing a closeness-of-fit value based thereon;

    in a fourth computer process, using the computed closeness-of-fit values to derive and provide a list matching the selected party and at least one of the counterparties.

    If any of the patent-worshipping geniuses around here need me to translate this for you, just ask. Or you could ask a reasonably intelligent 14 year old.

  6. CAFC was probably right to limit the use of 285 so that it’s not punitive – the statute isn’t really meant to provide punitive measures – but it’s clear that in this case the plaintiff is properly going to get slapped with Rule 11 sanctions to the same end, viz. deterrence. All I can say is, it’s about time.

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