Patent Law

Esther Lim writes an article titled, "Reasonable prefiling investigation and the test for rule 11: the "I would have if I could have" test" in the July 1, 2006 issue of the IP Litigator.  The following is excerpted:

Armed with a patent and suspicion of infringement, a patentee must form a reasonable basis for bringing an infringement action. While appearing simple, Rule 11 of the Federal Rules of Civil Procedure imposes a threshold prefiling investigation that might not be so clear about what satisfies the requisite inquiry. Failure to make an adequate prefiling investigation can lead to a violation of Rule 11, and trial courts may grant sanctions, including expenses and attorney fees. A party facing sanctions risks suffering more harm than mere monetary penalties and losing the case; the hazards of angering judges and tarnishing reputation can persist well beyond the lawsuit. Therefore, a wise patent holder will be sure to meet or exceed the requirements for prefiling investigation.

Recent case law provides some guidance on how a patentee should conduct a proper prefiling investigation to satisfy Rule 11. While the Federal Circuit has not drawn bright-line rules for a reasonable prefiling inquiry, it has consistently required some infringement analysis by counsel, but it has explicitly not required claim charts, (1) chemical analyses, (2) or "perfect infringement evidence." (3) This article will discuss the applicable sections of Rule 11 and survey recent case law to clarify the requirements a patentee must meet before asserting patent rights in court.

Patentees can obtain some legal protection against a Rule 11 violation with a prelitigation opinion that analyzes the strengths and weaknesses of a patent before filing suit. A prelitigation opinion may fulfill the Rule 11 obligation to make a reasonable inquiry before filing a lawsuit alleging that the accused product falls within the claims of the patent. Even if the patentee ultimately loses the infringement case, reliance on a competent prelitigation opinion can be evidence that the patentee pursued or defended the suit in good faith based on reasonable factual and legal analyses.

Read a more complete summary of the article here as well as access a listing of local libraries in your area that have the full article available.