Darryl M. Woo of Fenwick & West LLP examines Rule 11 in the context of filing a patent infringement suit for Practising Law Institute's All-Star Briefing. He writes:
Filing a patent infringement suit requires more than simply reviewing your patent portfolio and taking educated guesses about the accused product or service. Under Rule 11 in the context of patent infringement actions, an attorney must conclude that there is a reasonable basis for a finding of infringement of at least one claim of each patent asserted prior to filing the infringement claim. View Eng'g, Inc. v. Robotic Vision Systems, Inc., 208 F.3d 981, 986 (Fed. Cir. 2000). At a minimum, this requires an attorney (a) to interpret the asserted patent claims; and (b) to compare the accused device(s) or method(s) with those claims before filing a claim alleging infringement. Q-Pharma, Inc. v. The Andrew Jergens Co., 360 F.3d 1295, 1300-01 (Fed. Cir. 2004). While the attorney may consult with the client, she must perform an independent claim analysis and not simply give blind deference to her client. Antonious v. Spalding & Evenflo Companies, Inc., 275 F.3d 1066, 1072 (Fed. Cir. 2002); see also Judin v. United States, 110 F.3d 780, 784 (Fed. Cir. 1997) ("Attorney acted unreasonably in giving blind deference to his client and assuming his client had knowledge not disclosed to the attorney.")
The Second part of the "reasonable inquiry" test focuses on whether the attorney conducted an adequate factual investigation of the accused products before filing the infringement claims. The View Engineering court imposed Rule 11 sanctions where a patentee relied solely on advertisements and statements made by the alleged infringer to its customers, but failed to directly review the product. See 280 F.3d at 986. In Network Caching, a district court held that looking at indirect sources of information (such as marketing materials, white papers, and other product documentation) fails to satisfy the pre-filing investigation requirements described by View Engineering. 2003 U.S. Dist. LEXIS 9881 at *19. The court acknowledged that such materials had some level of technical discussion, but read View Engineering and Judin as requiring a direct examination of the accused products before filing suit. Id. *20. (The court noted that the patentee's "failure to examine the accused products is both preposterous and unjustified.)
Nevertheless, patentees are well advised to obtain, or at least attempt to obtain, a sample of the accused device before filing an infringement suit. In the earlier Judin case, the court vacated the district court's denial of sanctions where the patentee and his attorney merely "observed from a distance the accused device in use," when they could have purchased the device for a minuscule price compared to the cost of litigation. Judin, 110 F.3d at 782; see also Q-Pharma, 360 F.3d at 1302 (court mentioned that Q-Pharma had acquired a sample of the lotion_; cf Hoffman La-Roche, Inc. v. Invamed, Inc., 213 F.3d 1359 (Fed. Cir. 2000)(pre-filing investigation reasonable where patentee inquired about an accused method of manufacturing a product, where the patentee had not other way of learning whether method infringed. (The [Judin] court noted, "Th[e] explanation for not obtaining, or attempting to obtain, a sample of the accused devices...was described by the [district] court as 'lame'." 110 F.3d at 783)
Read the full briefing here.
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