Using 285 Against Lawyers of the Loser

I have an article about to come out (I bet it’s in your mailbox) about whether or not Section 285 permits courts to award fees directly against lawyers.

Turns out it’s an open question with good arguments on both sides.

Sony just argued that an award against Dorsey & Whitney and its client, a losing patentee, should be affirmed. The oral argument in Sony v. Biax is here.  A story (I hope not behind a paywall) is here.

Stay tuned. I’ll let y’all know when my article is available, and I’ll post it here once it is in fact in print (I’m obligated to let the ABA go first).

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

4 thoughts on “Using 285 Against Lawyers of the Loser

  1. 1

    Look forward to seeing your article when it is available. In the meantime, FYI, I ran across the following recent DCT opinion applying 1927 to make a patentee’s trial counsel jointly and severally liable for a 285 attorney fee award.
    Intellect Wireless, Inc. v. HTC Corp., No. 09 C 2945, 2015 WL 136142, *4-*5 (N.D. Ill. Jan. 8, 2015) (finding that the pa-tentee’s trial counsel was jointly and sever-ally liable for a § 285 attorney fee award under 28 U.S.C. § 1927 because the patent-ee’s counsel knew of the false declaration submitted to the PTO that was the basis of the inequitable conduct finding that supported the § 285 fee award before suit was filed and had further presented that false testimony at trial and on appeal, the court also finding that the patentee’s trial counsel’s failure to disclose certain documents about its knowledge of the false declaration justified an adverse inference – “The court may award attorney fees under 28 U.S.C. § 1927 ‘when an attorney has acted in an ‘objectively unreasonable manner’ by engaging in ‘serious and studied disregard for the orderly process of justice,’ pursued a claim that is ‘without a plausible legal or factual basis and lacking in justification,’ or ‘pursue[d] a path that a reasonably careful attorney would have known, after appropriate inquiry, to be unsound.’ [The inventor] Daniel Henderson clearly knew that he had not invented (or reduced to practice) a wireless picture phone or wireless identification device in 1993, notwithstanding contrary statements to the PTO (and coincidentally false representations to the Smithsonian Institution apparently to strengthen his litigation position). He revealed this to his patent attorney in 2007 and specifically to Niro in 2009 if not before. Relying on the adverse inference to be drawn from Niro’s failure to disclose documents, it is found that Niro was aware of the false statements prior to the filing of the present lawsuit. Therefore, Niro is liable for all reasonable attorney fees and expenses incurred by HTC, not just those incurred after the November 6, 2009 email from Henderson to Niro. The false presentation of Henderson’s activity and knowledge justifies making Niro jointly and severally liable with IW for attorney fees and costs.” – citations and footnote omitted)

    1. 1.1

      Thank you. I’d seen news reports about that case. I looked at 1927 (and other statutes) regarding joint and several liability, and recall/think I recall that 1927 couldn’t be used against clients… but I don’t’ trust my memory and neither should you!

      1. 1.1.1

        Based on the statute’s language, 1927 appears limited to lawyers.
        “Any attorney or other person admitted to conduct cases in any court of the United States of any Territory thereof who so multiplies the proceedings in any case unreasonably and vexatiously may be required by the court to satisfy personally the excess costs, expenses, and attorneys’ fees reasonably incurred because of such conduct.” 28 U.S.C. § 1927

        Another interesting case to consider where 285 fees assessed against the client and 1927 fees were sought against the patentee’s lawyer is Advanced Magnetic Closures, Inc. v. Rome Fastener Corp., 607 F.3d 817, 833-34 (Fed. Cir. 2010) (although affirming § 285 fee award against patentee based on litigation misconduct, reversing sanction under § 1927 making the patentee’s trial counsel jointly liable with the patentee for the fee award since the district court failed to make the specific findings of bad faith required by Second Circuit law, and appeared to apply an objective standard regarding the trial counsel’s continuing to pursue the infringement claim, where Second Circuit precedent require subjective bad faith)

        If you are interested, I have collected cases addressing § 1927 applied in the patent context in the Annotated Patent Digest in § 33:63 – Under 28 U.S.C. § 1927. You can accesses the APD via Westlaw.

        Rule 11 fee sanctions can be applied to both the patentee and the lawyers. See APD § 33:52 Sanctions may be Assessed Against Patentee, Counsel, or Both.

        Sanctions under FRAP for a frivolous appeal can be jointly imposed. In re Oximetrix, 748 F.2d 637, 644 (Fed. Cir. 1984) (party and counsel sanctioned with joint and several liability for attorney’s fees and costs as a result of frivolous appeal)

        I can’t recall seeing 285 being used to impose joint liability on patentee’s counsel, hence I look forward to seeing your paper when its available and the outcome of the Sony case.


          Thanks, Bob. I found a couple cases poking around at 285 and joint and several liability, but none actually analyzed it. It’s an interesting question – could go either way and a lot of policies implicated.

          I’ll post the piece as soon as I can.

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