How not to Bring a Rule 11 Motion in a Frivolous Patent Suit

Here is a fun one.  Lawyers are defending their client in a patent case.  They conclude that prosecution history disclaimer precludes infringement.  So, they email to the patentee’s counsel a Rule 11 motion raising the issue, and do not file the motion. They wait the required 21 days.  Then they file it.

Problem is… they waited a year to serve the motion. Courts hold that the motion should be served as soon as practicable.  As a result, the court held the motion was properly denied as having been served in an untimely fashion.

The opinion, Dragon Intel. Property, LLC v. AT&T Serv., Inc., 9Civ. A. No. 13-2061-RGA (D. Del. July 12, 2016) is here.

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 “How not to Bring a Rule 11 Motion in a Frivolous Patent Suit

    1. 3.1


      The judge is Richard Andrews. He has a reputation in Delaware of not hesitating to grant 285 or Rule 11 motions. I believe he is a former prosecutor (which may account for his no nonsense attitude). The fact that he denied this motion speaks volumes about how out of bounds defense counsel was on this one.


  1. 2

    Many fee motions are complete shakedowns and judges will allow almost any billable hour against a patentee, especially if that patentee is a NPE.

  2. 1

    Of course they did!

    Because they were counting on conning the Judge into giving them “fees” for the rest of the year that they ….sat on the motion but were billing for everything else. This tactic is used all the time by big D firms – they ask for an order declaring the case is frivolous, and after that then try to shoehorn every possible hour they billed under the accounting. By waiting as long as possible they hope to get reimbursed for all those hours they were charging their clients.

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