Patent Law

An April 1, 2008 post by Lawrence M. Sung, Ph.D., Partner, Dewey & LeBoeuf LLP and Professor & Intellectual Property Law Program Director, University of Maryland School of Law titled, "How the Federal Circuit Looks at a Pre-Filing Investigation of Patent Infringement When Reviewing a Motion for Attorney Fees under 35 U.S.C. 285" appears at LexisNexis' Patent Law Center.

The adequacy of a patentee plaintiff?s pre-infringement suit investigation follows one path in the normal case, but quite a different path when a motion for attorney fees under 35 U.S.C. § 285 is in play. This commentary, written by Lawrence M. Sung, Ph.D., addresses the potential unintended consequences of seeking redress for an inadequate pre-filing investigation solely under the rubric of a motion for attorney fees under 35 U.S.C. § 285. Dr. Sung writes:

Federal Rule of Civil Procedure, Rule 11 ? provides for sanctions for a failure to conduct a reasonable inquiry into the legal and factual bases of claims. ? Another procedural path to seek redress for a [patent infringement] plaintiff?s deficient pre-filing investigation is through a motion under 35 U.S.C. § 285, which grants the district court discretion to award reasonable attorney fees to the prevailing party in exceptional cases. A case may be deemed exceptional when there has been some material inappropriate conduct related to the matter in litigation. This includes conduct that violates Fed. R. Civ. P. 11, but also includes willful infringement, fraud or inequitable conduct in procuring the patent, misconduct during litigation, and vexatious or unjustified litigation. A key difference between motions under Fed. R. Civ. P. 11 and § 285 is that Fed. R. Civ. P. 11 motions must comply with the Rule?s safe harbor provision, but § 285 motions need not.

On appeal, the Federal Circuit reminded that the determination of whether a case is exceptional and, thus, eligible for and warranting an award of attorney fees under § 285 is a two-step process in which the district court must (1) determine whether there is clear and convincing evidence that a case is exceptional, a factual determination reviewed for clear error, and (2) if so, then determine in its discretion whether an award of attorney fees is justified, a determination that the Federal Circuit reviews for an abuse of discretion. If there is clear and convincing evidence that a plaintiff has brought a baseless or frivolous suit against an accused infringer, that is a sufficient basis to require a district court to deem the case exceptional under § 285.

Excerpts of the post are available here, but access to the full article requires a subscription.