Attorneys must be cautious before filing a patent infringement lawsuit. Often times a client will allege that its patent is being infringed by a competitor. However, an attorney has a duty to conduct an investigation to determine if this is actually the case. An inadequate analysis may put both a client and its attorney at risk. In this article, I will discuss the pre-suit investigation required for a patent infringement lawsuit and the ramifications of failing to conduct an adequate investigation.
Before filing a patent infringement lawsuit, an attorney must make a “reasonable inquiry” to determine if an accused device infringes the patent claims upon which a suit will be based. In some cases, a reasonable inquiry can be very time consuming and costly. However, as will be explained below, a thorough pre-suit investigation is critical and any costs and time associated with it far outweigh the ramifications of failing to conduct a reasonable inquiry.
At a minimum, a reasonable inquiry includes analyzing a patent to construe the scope and meaning of terms used in the claims, obtaining a sample of the suspected infringing product (or some other technical information of the suspected infringing product) and preparing claims charts to compare the suspected infringing product or process to analyze if the suspected infringing product either directly, by the doctrine of equivalence, or contributorily infringes on the claims of a patent.
Obtaining a sample or other technical information of all the components of a suspected infringing product is an important part of the pre-suit investigation. Both a client and the attorney representing the client can be subject to both monetary and disciplinary sanctions by a court if a reasonable pre-suit investigation is not conducted pursuant to Rule 11 of the Federal Rules of Civil Procedure. In fact, courts have sanctioned attorneys for failing to conduct a reasonable investigation pre-suit even if the claims are later proven meritorious. E.g., Ultra-Temp Corp. v. Advanced Vacuum Systems, Inc., 189 F.R.D. 17 (D.C. Mass 1999); see also Eskimo Ice Corp. v. Nautic-Kold, Inc. et al., No. 02 Civ. 60059 at 15 (S.D. Fla. 2004).
According to the relevant part of Rule 11:
The signature of an attorney or party constitutes a certificate by the attorney or party that … to the best of the attorney’s or party’s knowledge, information and belief formed after reasonable inquiry it is well grounded in fact and is warranted by existing law or a good faith argument for the extension, modification, or reversal of existing law; and that it is not interposed for any improper purpose…. If a pleading, motion, or other paper is signed in violation of this rule, the court, upon motion or upon its own initiative, shall impose upon the person who signed it, a represented party, or both, an appropriate sanction, which may include an order to pay … a reasonable attorney’s fee.
Rule 11 Fed. R. Civ. P. (emphasis added).
Under Rule 11, there is an affirmative duty to investigate both as to law and as to fact before a paper is filed. Courts have held that observing a device or process may not satisfy the “reasonable investigation” standard. For example, the plaintiffs in S. Bravo Systems, Inc. v. Containment Technologies Corp., 96 F.3d 1372, 1375, (Fed.Cir.1996) sued for infringement of its patent. The S. Bravo Systems, Inc. court held that a pre-suit inquiry including observing the devices and reviewing literature regarding the patent without interpreting the claims and comparing the suspected devices failed to meet the Rule 11 investigation requirement.
By way of another example, the court in Eskimo Ice Corp. v. Nautic-Kold, Inc. et al., sanctioned the plaintiff and their attorneys in that lawsuit. The Eskimo Ice Corp. court held that an objectively reasonable attorney would not believe that the accused device infringed each claim element of claim 1 of the patent. The Eskimo Ice Corp court reasoned that the pre-suit investigation failed to meet the reasonable inquiry standard because the pre-suit investigation conducted by the attorneys revealed no way of knowing how certain mechanics of the suspected infringing device operated. The Eskimo Ice Corp court reached its conclusion despite the fact that the attorneys observed the suspected infringing device, hired a private investigator to investigate the device and the device cost several thousands of dollar to purchase.
Courts have also found that an inquiry after a suit is filed will not cure a violation of Rule 11 even if an expert is able to make “colorable” arguments demonstrating infringement. Judin v. United States, 110 F. 3d 780 (Fed. Cir. 1997); S. Bravo Systems v. Containment Technologies Corp., 96 F. 3d 1372 (Fed. Cir.1996); Ultra-Temp Corp. v. Advanced Vacuum Systems, Inc., 189 F.R.D. 17 (D.C. Mass 1999); Refac International, Ltd. v. Hitachi, Ltd., 141 F.R.D. 81 (C. D. Cal. 1991). In Judin, the Federal Circuit found that a failure to conduct an adequate pre-filing investigation was sanctionable regardless of whether or not it would have led to the claim not being filed and held that a violation of Rule 11 was not cured by the fact that, after filing the complaint, the plaintiff consulted with an expert and was able to make ‘colorable’ arguments in response to a motion for summary judgment on non-infringement. Judin, 110 F.3d at 785.
As demonstrated above, an adequate pre-suit investigation is critical before filing a patent infringement lawsuit. Failing to conduct an adequate pre-suit investigation before filing a patent infringement lawsuit can put both the client and its attorneys at risk. The attorneys at The Plus IP Firm have represented both plaintiffs and defendants in patent infringement lawsuits. If you or your client need a pre-suit investigation conducted, or need to file or defend against a patent infringement lawsuit, then attorneys at The Plus IP Firm are available to assist you. The Plus IP Firm have offices located throughout Florida. For more information about the The Plus IP Firm click HERE.