Patent Law

I just received my print issue of the Summer 2008 edition of the IPL Newsletter, a publication of the ABA Section of Intellectual Property Law. This issue is not yet available online, but ultimately will be available here.

The above titled article by C. Erik Hawes and James L. Beebe of Morgan, Lewis & Bockius LLP states, in part:

Patent litigation can be an expensive proposition -- as any litigant or in-house IP lawyer can attest. Depending on the amount in dispute and the particular venue, the total cost for litigating a patent infringement suit can run as high as $10 million. With the median damage award in patent cases at nearly $4 million, an award of attorney fees can have a significant impact in the total amount a successful plaintiff is able to recover. Alternatively, an award of attorney fees to prevailing defendant can compensate for years of time and effort -- and money -- spent defending against unfounded infringement allegations.

...a Rule 11 violation also can serve to justify finding a case exceptional under § 285. Because of the burden-shifting mechanism pointed out by the Federal Circuit in Digeo v. Audible, situations where counsel would move for attorney fees under § 285 should, under the right circumstances, also include a request for sanctions under Rule 11 fees.

The authors provide two cases to illustrate this point.

Clearly, Rule 11 and § 285 are not coextensive. Several recent decisions demonstrate that when filing a motion for attorney fees, patent litigators would be well advised to consider filing the request under Rule 11 (and possibly other provisions such as 28 U.S.C § 1927), in addition to invoking § 285.