Reasonable Prefiling Investigation and the Test for Rule 11: The "I Would Have if ICould Have" Test

IP LitigatorJuly/August 2006

Lim, Esther H.Article

Authored by Esther H. Lim

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

Recent case law provides some guidance on how a patentee should conduct a properprefiling investigation to satisfy Rule 11. While the Federal Circuit has not drawn bright-linerules for a reasonable prefiling inquiry, it has consistently required some infringementanalysis 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 11and survey recent case law to clarify the requirements a patentee must meet beforeasserting patent rights in court.

Complying with Rule 11

All pleadings, motions, papers, and representations to the court must meet the requirementsof Rule 11 or risk triggering sanctions against the offending parties and their attorneys. Apatentee planning to take action against a suspected infringer should be especially attentiveto Rule 11 (b), which states that a person, by presenting to the court "a pleading, writtenmotion, or other paper is certifying that to the best of the person's knowledge, information,and belief, formed after an inquiry reasonable under the circumstances," (1) the purpose ofthe paper or pleading is not improper; (2) the legal assertions are not frivolous; and (3) thefactual contentions have or are likely to have evidentiary support.4 Under Rule 11 (c), acourt may impose sanctions against parties or attorneys that have violated Rule 11(b).5

Generally, the Federal Circuit has analyzed prefiling requirements of Rule 11(b) in patentinfringement cases under the constraint of non-frivolousness6 and as two separaterequirements: legal and factual.7 If the court determines that a party or attorney has violatedRule 11 (b), "the court may award to the party prevailing on the [motion for sanctions]reasonable expenses and attorney fees incurred in presenting or opposing the motion."8Currently, trial courts have discretion to grant expenses or fees to the prevailing party. Therecent history of Rule 11 amendments shows that the discretion to sanction parties was leftto the trial courts by design.

Recent Amendments to Rule 11

Since 1983, two amendments to Rule 11 have affected the trial courts' discretion to sanctionparties and attorneys. The 1983 amendments imposed nondiscretionary sanctions forviolating Rule 11. The amendments stressed the need for prefiling inquiry into both legal andfactual aspects of the claim to satisfy the rule's affirmative duty.9 The amendments wereexpected to increase the effectiveness of Rule 11 in deterring filing abuses by making thefiling standard more stringent than mere "good faith" and by encouraging courts to imposesanctions against violators.10 The drafters of the amendment tried to broaden Rule 11'sreach to a greater range of circumstances.11 The current form of Rule 11 results from the1993 amendments, which, among other changes, made sanctions discretionary. TheAdvisory Committee had the dual goals of broadening the scope of Rule 11 duties whilereducing the number of motions for sanctions presented to the courts. By removingdiscovery requests and motions from the reach of Rule 11 sanctions, the Committee hopedto narrow the rule for its intended purpose—deterrence, rather than compensation.12Indeed, the Federal Circuit held that a court should tailor Rule 11 sanctions to the situationon a case-by-case basis.13

Prefiling Investigation Requirements in Patent Infringement Cases

The Federal Circuit reviews district court decisions on sanctions in patent cases according tothe law of the regional circuit.14 This results in the application of regional circuit-specificdefinitions of frivolous claims. In practice, however, the prefiling investigation standard forpatent infringement is not circuit-specific because courts apply Federal Circuit law todetermine the reasonableness of the prefiling investigation made by the patentee and itsattorney.15

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

To avoid violating Rule 11, a prelitigation opinion should examine (1) whether thecompetitor's product or method infringes the patent; and (2) whether there are bases thatcast doubt on the validity and enforceability of the patent. The infringement part of theprelitigation opinion should consider as many of the issues as possible that one wouldexpect to be considered by the court. The opinion should analyze claim construction issuesand then compare the construed claims to the device or process under scrutiny. The opinionshould analyze whether the competitor's device or process infringes the patent either literallyand under the doctrine of equivalents. If possible, the prefiling investigation should alsoinclude testing of the actual accused product. The patent holder may also consider directingthe patent attorney to analyze whether any additional parties, such as suppliers ordistributors, are potentially guilty of contributory infringement or inducing infringement andshould be added as parties to the suit. Prelitigation opinions often also analyze the validityand enforceability of the patent or patents upon which the suit is contemplated. An opinionthat concludes that there is good reason to believe a competitor is infringing a valid patentheld by the client can provide the client with a good-faith basis to file an infringement suit.

The American Bar Association's Intellectual Property Law Section (ABA-IPL) consideredadvocating in 1996 that prelitigation opinions be a requirement before a patentee could filean infringement suit. The prelitigation opinion would need to conclude that there wasinfringement of a valid and enforceable patent before filing a complaint. The proposal read:

Resolved: That the ABA Section on Intellectual Property Law favors in principle that prior tobringing suit on a patent that all patent owners must obtain a favorable written opinion bycompetent counsel because the patent may 'possibly' be invalid, not infringed orunenforceable by reason of inequitable conduct.

The ABA-IPL was concerned that case law such as Underwater Devices Inc. v. Morrison-Knudsen Co., [717 F.2d 1380 (Fed. Cir. 1983)], unfairly favored patentees by requiring onlypotential infringers to investigate others' patent rights, but not requiring patentees to conductsome prefiling investigation before subjecting defendants to expensive litigation. That is,defendants had an affirmative duty not to infringe the known patent rights of others, andplaintiffs should have an affIrmative duty to conduct prelitigation investigation. The proposalwas never adopted, but courts continue to order Rule 11 sanctions and willful infringementfindings to parties who fail to conduct adequate prefiling investigations or make objectivelyunreasonable arguments.

Courts have held that sanctions for failure to comply with Rule 11 may be awarded againstparties and their attorneys. In View Engineering, Inc. v. Robotic Vision Systems, Inc., [208F.3d 981 (Fed. Cir. 2000)], the Federal Circuit strongly suggested that a written infringementopinion, before filing, would have avoided Rule 11 sanctions:

Before filing counterclaims of patent infringement, Rule 11, we think, must be interpreted torequire the law firm to, at a bare minimum, apply the claims of each and every patent that isbeing brought into the lawsuit to an accused device and conclude that there is a reasonablebasis for a finding of infringement of at least one claim of each patent so asserted. Thepresence of an infringement analysis plays the key role in determining the reasonableness ofthe pre filing inquiry made in a patent infringement case under Rule 11.16

To be successful, the party seeking sanctions for an inadequate prefiling investigation isrequired to show that the opponent failed to do something that it reasonably could havedone before filing.17 Courts have found investigations unreasonable when there were: (l) noattempt to obtain a sample of the infringing device and compare it to claims;18 (2) noindependent infringement analysis by counsel;19 and (3) no reverse engineering or attemptto acquire technical specifications from the alleged infringer.20 For a patent holder to betterunderstand the Federal Circuit's boundaries for a reasonable prefiling investigation, it isuseful to examine its decisions reviewing sanctions under Rule 11. An analysis of five recentcases follows.

Recent Cases

Q-Pharma v. Andrew Jergens (2004)In Q-Pharma v. Andrew Jergens, Q-Pharma filed suit against Jergens for infringement of itspatent on a method of administering a chemical, Coenzyme QlO, to treat damaged skin.21After some discovery, Q-Pharma learned that the accused product, Curel (R) CoQ,contained so little Coenzyme Q10 that it did not infringe the patent in suit.22 The patenteesought a voluntary dismissal with prejudice, and Jergens later brought a motion for sanctionsunder Rule 11.23 The district court denied the motion.24

On appeal, Jergens argued that three acts by Q-Pharma supported its contention that Q-Pharma's prefiling investigation did not meet the requirements of Rule 11.25 It contendedthat Q-Pharma's claim construction was frivolous, that Q-Pharma acted unreasonably byrelying on advertising and labeling of Coenzyme QlO to determine whether the claims readon the product, and that Q-Pharma should have known that its patent was invalid prior tofiling.26 The Federal Circuit disagreed.

First, the Federal Circuit stated that before filing the suit, the attorney at a minimum mustinterpret the relevant claims of the patent and compare the infringing device with thoseclaims.27 While commenting that Q-Pharma's claim construction was broad, the court reliedon the attorney's declaration that he interpreted and analyzed the patent claims,specification, and file history to reach a reasonable, non-frivolous infringement analysis.28 Inso holding, the court noted that a claim chart is not required for a prefiling infringementanalysis and that the correctness of Q-Pharma's claim construction was not relevant.29

Second, the court found that Q-Pharma reasonably relied on the accused product label andadvertisement listing Coenzyme QlO as an ingredient and touting its therapeutic effects.30Indeed, Q-Pharma's non-frivolous claim construction did not place a minimum on therequired amount of Coenzyme QlO. Chemical tests on the sample, the court held, were notnecessary because the patentee compared the accused product with the claims.31

Third, the Federal Circuit rejected Jergen's assertion that Q-Pharma should have known thatits patent was invalid before filing suit.32 In light of the statutory presumption of patentvalidity33 and several licenses taken on the patent, the court found Q-Pharma's expectationof validity reasonable.34

The court in Q-Pharma accordingly found that the district court had not abused its discretionin declining to sanction the patentee for the failure to investigate its claims before filing suit.Although it expressed some dissatisfaction with the patentee's claim interpretation,35 thecourt stressed that "the key factor in determining whether a patentee performed areasonable prefiling inquiry is the presence of an infringement analysis," which could besimply "a good faith, informed comparison of the claimsof a patent against the accusedsubject matter."36

Hoffman-La Roche v. Invamed (2000)Hoffman-La Roche (Roche) sued Torpharm for statutory infringement of a patent on theprocess for manufacturing a drug sold as TICLID, resulting from Torpharm's abbreviatedNew Drug Application.37 Before filing the suit, Roche had sought information from Torpharmabout its process for making the drug, as well as its suppliers' processes, but Torpharmdeclined to supply any information.38 Torpharm did supply samples of its drug, but noinformation on the manufacturing process.39 Roche, unable to determine the manufacturingprocess from the samples, filed an infringement suit.40 Thereafter, the parties signed anondisclosure agreement, and Torpharm disclosed its manufacturing process to Roche,prompting Roche to voluntarily dismiss the infringement suit.41 After the dismissal,Torpharm moved for Rule 11 sanctions and attorney fees against Roche for inadequateprefiling investigation.42

The district court denied sanctions, reasoning that Roche tried to investigate the claim andthat a prefiling inquiry need not be successful to be reasonable.43 After contacting Torpharmfor manufacturing information, the only choices left to Roche were to assumenoninfringement or file suit.44 The Federal Circuit found that Roche conducted a moreextensive inquiry than was required by contacting Torpharm and seeking disclosure of itsmethod.45 "It is difficult to imagine what else [Roche] could have done to obtain factsrelating to Torpharm's alleged infringement of their process patents. Torpharm has pointedto nothing else that it believes they could or should have done."46

The court's decision in Hoffman-La Roche illustrates that the boundaries of a reasonableprefiling investigation under Rule 11 is case-specific and fact-intensive. Had there beenother plausible ways for Roche to conduct its prefiling inquiry, the court may have reached adifferent outcome.

View Engineering v. Robotic Vision Systems (2000)

View and Robotic are competitors in the field of three-dimensional scanning technology.47Four months after View filed for a declaratory judgment of invalidity and noninfringement ofone of Robotic's patents, Robotic counterclaimed that View's product infringed eight of itspatents.48 After some discovery, Robotic withdrew some of the infringementcounterclaims.49 View moved for Rule 11 sanctions, asserting that Robotic had noreasonable basis for accusing View of infringing the eight patents.50 The Federal Circuitaffirmed the district court's grant of sanctions against Robotic.51

In particular, the Federal Circuit held that the patentee's attorney did not conduct areasonable inquiry into the legal and factual bases of the claim before filing.52 Roboticbased its factual claim of infringement on its Vice President's conclusion after viewing View'sadvertisements and hearing of View's statements to customers, but without any access tothe accused product.53 Robotic's attorney also made no inquiry into the counterclaims butrelied only on the client's belief54 The court found that inquiry to be unreasonableconsidering that the attorney had four months after View filed for declaratory relief to hire anexpert to analyze the accused machines, inquire with Robotic's sales employees, orconstrue the 120 patent claims at issue to determine which claims are likely infringed.55

Performing a prefiling assessment on the basis of each infringement claim is extremelyimportant. In bringing a claim of infringement, the patent holder, if challenged, must beprepared to demonstrate to both the court and the alleged infringer exactly why it believedbefore filing the claim that it had a reasonable chance of proving infringement. Failure to doso should ordinarily result in the district court expressing its broad discretion in favor of Rule11 sanctions, at least in the absence of a sound excuse or considerable mitigatingcircumstances.56

Judin v. United States (1997)In 1972, Judin was issued US Patent No. 3,656,832 on a method of optical imaging.57Before filing, he observed bar-code scanners in use at a post office and, with the benefit ofsome knowledge of trade show publications and commercial literature, contacted hisattorney, Van der Wall, who also observed the scanners from a distance.58 Relying onJudin's industry experience for an analysis of infringement, Van der Wall filed a complaintwithout trying to access the accused devices or inquire about their operation.59 Months afterfiling, Judin consulted with an expert who provided a comparison of the accused devices tothe claims, after which Judin filed an infringement analysis and a claim chart.60 The trialcourt found that Judin and Van der Wall failed to inquire about two critical elements of theclaim at issue, but that the prefiling examination was not sanctionable, though it was "greatlytroubl[ing]."61

The Federal Circuit reversed the trial court, finding that neither Judin nor Van der Wall madea reasonable inquiry.62 Judin did not make an effort to find out whether the key claimlimitations were infringed and did not have any explanation for why he did not try to obtain asample of the accused device.63 The court also found that the patent attorney wasunreasonable to rely solely on his client's knowledge without making any investigation of hisown.64 Judin's postfiling consultation with the patent expert did not cure the Rule 11violation because it occurred after the filing of the complaint.65

Certain Point of Sale Terminals and Components Thereof (2005)In this case, the patentee, Verve, sued seven different respondents in the InternationalTrade Commission for infringement of two claims of its patent for credit-card processingterminals.66 Verve and its counsel were sanctioned in the amount of $1 Million underCommission Rule 21O.4(c), which is patterned after Rule 11.67 The Administrative LawJudge found that Verve performed no claim construction on its patent for point of saleterminals. 68 Notably, the ALl found no support in the cited portions of the deposition

transcripts for Verve's contentions.69 The ALJ also found that Verve's counsel conducted noindependent prefiling investigation, although one of the attorneys in the firm submitted adeclaration to that effect.70 Moreover, the ALJ did not rely on the declaration because it wassubmitted late, long after its response to the motion for sanctions and after all other briefinghad been submitted.71 There was no support in the evidence that Verve reviewed theaccused products or literature, or that it performed a proper claim construction beforefiling.72 Merely relying on a client without conducting an independent investigation into thelaw and facts "goes beyond mere negligence and demonstrates recklessness and badfaith."73

There was also no satisfactory evidence to show that the patentee reasonably investigatedany of the respondents' products to determine infringement.74 In the case of onerespondent, Verve observed one point-of-sale terminal, obtained literature on another, andproceeded to file claims on a series of products for infringement.75 In the case of anotherrespondent, Verve never obtained the accused product to analyze or test before filing; had itmerely observed the machine in operation, it would have been on notice that furtherinvestigation was required.76 The ALl found these acts to be in bad faith because Verveassumed, without justification, that all of the accused products infringed its patents.77 WhenVerve asserted that it did test the devices, it lacked acceptable evidence to support itsassertions.78

In this case, Verve made several misleading and deceptive statements to the ALI The ALlnoted, for example, that Verve cited documents in support of its factual assertions that didnot actually support the statement. In its complaint, Verve represented that it had 40employees (it had none) and gave the address of a P.O. Box at a UPS store as its principalplace of business.79 This ITC case illustrates activity that is not only outside the bounds of areasonable prefiling investigation, but a violation of Rule 11 and ABA Model Rule ofProfessional Conduct 3.1.

Other Prefiling Investigation Issues

35 U.S.C. § 285Parties who move for sanctions under Rule 11 for lack of an adequate prefiling investigationoften also move for attorney fees under 35 U.S.c. § 285.80 Section 285 provides that thecourt may, in exceptional cases, award reasonable attorney fees to the prevailing party.81Exceptional cases are those when a party engages in vexatious or unjustified litigation orfrivolous suits82 or when the party acted in bad faith. The Federal Circuit has not beenwilling to find bad faith when there was a voluntary dismissal of the suit;83 therefore, if apatent holder discovers new information after filing, she probably will remain in compliancewith § 285 by dropping the suit soon thereafter. An exceptional case can occur, however,when the patentee knew or should have known by reasonable investigation that the suit wasgroundless.84

Apart from the requirements under Rule II, courts have not imposed any prefilinginvestigation requirement under § 285.85 Although the standards seem to be similar, theburden of persuasion may be slightly higher to succeed under § 285.86 The District ofMassachusetts plainly held that the failure to conduct a prefiling investigation, without more,does not constitute the basis for an "exceptional case" under § 285; rather, the claim alsomust be frivolous or baseless.87

28 U.S.C. § 1927Section 1927 states the following:

Any attorney or other person admitted to conduct cases in any court of the United States orany Territory thereof who so multiplies the proceedings in any case unreasonably andvexatiously may be required by the court to satisfy personally the excess costs, expenses,and attorneys' fees reasonably incurred because of such conduct.88

The Federal Circuit has held that prefiling investigation is irrelevant to § 1927 because thelatter applies to sanctions for the multiplication of proceedings after initiating the lawsuit.89

Local Patent RulesCertain district courts have adopted local rules specific to patent litigation, many providingthe framework for the initial disclosure of information. In the Western District ofPennsylvania, all of the information produced is governed by a default protective order,thereby ensuring the confidentiality of the initial disclosures. The Western District's localpatent rules, along with those of the Northern District of California, the Northern District ofGeorgia, and the Eastern District of Texas also prescribe the disclosure of a claim chartidentifying specific claim elements and the accused products. Because the local patent rulesapply only after the suit is filed, they technically do not alter the obligation for a reasonableprefiling investigation. But the rules clearly delineate the information that will be requiredsoon after filing and demand that the accused infringers supply technical documentation forreview. When patentees are unable to gather enough information to know whether anaccused product may infringe, they can presumably file suit in order to compel theproduction of enough information during the discovery process. Because the local rulesoblige the parties to disclose this type of information, it might be presumed that if thepatentee could not reasonably get the information another way, her prefiling inquiry wasadequate. This may lead to less waste in litigation costs by reaching a quick resolution whenthe claims turn out to be untenable.

Challenges to Adequate Prefiling Inquiry

For certain types of patents, conducting an adequate prefiling investigation can be difficult.That is especially true of process patents and some business method patents where it canbe impossible to determine whether the accused is actually infringing the patentee's claimswithout additional information from the accused. In the case of a process patent for apharmaceutical, a sample of pills will not necessarily reveal the manufacturing method usedto produce them.90 Without such information, the patent holder can make only informedguesses about infringement. After filing, the holder of a process patent can invoke 35 U.S.C.§ 295, which shifts the burden of proof from the patentee to the accused infringer of aprocess patent where certain conditions are met.91 Section 295, however, does not affectthe patentee's prefiling obligations.

Software patents also pose an obstacle for an attorney conducting a prefiling investigationbecause reverse engineering software can result in a violation of 17 U.S.C. § 1201 (TheDigital Millennium Copyright Act). The Digital Millennium Copyright Act prohibits reverseengineering of computer programs except for the purpose of "interoperability" or interfacingwith another program. It states in relevant part:

(f) Reverse engineering.

(1) Notwithstanding the provisions of subsection (a)(l)(A), a person who has lawfullyobtained the right to use a copy of a computer program may circumvent a technologicalmeasure that effectively controls access to a particular portion of that program for the solepurpose of identifying and analyzing those elements of the program that are necessary toachieve interoperability of an independently created computer program with other programs,and that have not previously been readily available to the person engaging in the

circumvention, to the extent any such acts of identification and analysis do not constituteinfringement under this title.

(2) Notwithstanding the provisions of subsections (a)(2) and (b), a person may develop andemploy technological means to circumvent a technological measure, or to circumventprotection afforded by a technological measure, in order to enable the identification andanalysis under paragraph (1), or for the purpose of enabling interoperability of anindependently created computer program with other programs, if such means are necessaryto achieve such interoperability, to the extent that doing so does not constitute infringementunder this title.92

More than one decision granting sanctions under Rule 11 have suggested that a lack ofreverse engineering was a contributing factor to the unreasonableness of a patentee'sprefiling investigation.93 Thus, those holding patents in the field of software or computerscould face an impossible choice between satisfying Rule 11 and complying with § 1201.94

Suggestions for Reasonable Prefiling Inquiry

The determination of a reasonable prefiling investigation under Rule 11 is a fact-specificanalysis. When the patentee has very little information about the alleged infringement, buthas made all reasonable attempts at acquiring the information, the court tends to find noviolation.95 When the patentee's attorney relies fully on the client's analysis of infringement,without more, the court has found the investigation inadequate.96 Even when access hasbeen an obstacle, the Federal Circuit has suggested that the patentee should be able toshow some attempt to analyze the technology; and if that attempt fails, the patentee shouldshow that it made some effort to acquire samples, inspection, or technical specificationsfrom the accused infringer.97 In other words, the patentee must show that it would haveobtained the information if it could have done so within reason.

Because courts have analyzed Rule 11 violations with emphasis on the particular facts of thecase, an attorney should exhaust all reasonable roads of investigation before filing suit. Anon-exhaustive list of suggestions for satisfying the reasonable inquiry follows:98

1. Construe the claims following standard claim construction canons.

2. Gather evidence on the accused device:

A. Testing, reverse engineering, or consulting sales personnel;B. Contact the accused infringer and suppliers for information on the accused product orprocess;C. Review available literature on the accused device;D. Hire experts to analyze the allegedly infringing device against the claims;E. Research at trade shows; andF. Check regulatory filings.

3. Compare the evidence on the accused device with reasonably construed claims.

Aside from the requirements of Rule 11, attorneys should also consider the ABA Model Ruleof Professional Conduct 3.1 as a guide for how much investigation to conduct before filingsuit. Similar to Rule 11, ABA Model Rule 3.1 requires that a lawyer bring a proceeding onlywhen there is a non-frivolous basis in law and fact. As the Federal Circuit stated in ViewEngineering, a lawyer who fails to confirm that basis in law and fact does not act to protectthe client's interests.99 If an attorney is prepared to show that she exhausted possibilities

and has an objectively reasonable belief that the claims are nonfrivolous, she should be incompliance with Rule 11 and ABA Model Rule 3.1.

Suggestions for Accused Infringers

A party in the position of potentially defending a claim of patent infringement would be wiseto share information with patentees to the extent that the information would ultimatelydiscourage the patentee from filing. In situations when the pertinent information isconfidential, the accused infringer can propose a nondisclosure agreement to ensure thatthe information remains secret but is still available to show that the patentee's claims arewithout merit, thereby ending the dispute before additional costs accumulate. Courts are notlikely to grant motions for sanctions and attorney fees for lack of adequate prefiling inquirywhen the alleged infringer withheld information requested by the patentee if that informationwould persuade the patentee to dismiss the claims.100

In Q-Pharma, Jergens refused to disclose the contents of its Curel lotion during discoveryuntil Q-Pharma filed a motion to compel. Jergens then replied with a motion for summaryjudgment, in which it revealed that its lotion contained only a trace amount of the patentedenzyme, triggering Q-Pharma to abandon its suit.101 Had Jergens disclosed that itsaccused product contained less than 0.00005 percent of Coenzyme QlO.Q-Pharma couldhave dropped the suit before extensive discovery. Instead, Jergens filed counterclaims forantitrust violations and declaratory judgment on the patent, most of which weredismissed.102 In denying Jergens's motions for sanctions, the court relied in part onJergens's conduct. "Jergens itself contributed to the expense and inconvenience of thelitigation by not promptly disclosing the minuscule amount of Coenzyme QlO in itsproduct."103

The cases illustrate that the conduct of the party filing suit is not necessarily the onlyconsideration in assessing the reasonableness of the prefiling inquiry in a patentinfringement suit. A potential defendant should be mindful that her actions before filing andduring discovery may well have a bearing on the outcome of a motion for sanctions againstthe patentee for an inadequate prefiling inquiry.

Endnotes1 Q-Pharma, Inc. v. Andrew Jergens Co., 360 F.3d 1295, 1301 (Fed. Cir. 2004).

2 Id. at 1302.

3 Hoffman-LaRoche Inc. v. Invamed, Inc., 213 F.3d 1359, 1362 (Fed. Cir. 2000).

4 Fed. R. Civ. P. Rule 11(b).

5 Fed. R. Civ. P. Rule 11(c).

6 Q-Pharma, 360 F.3d at 1300.

7 Antonius v. Spalding & Evenflo Cos., Inc., 275 F.3d 1066, 1071-1072 (Fed. Cir.2002).

8 Fed. R. Civ. P. Rule 11(c).

9 Fed. R. Civ. P. Rule 11 Advisory Committee's note.

10 Id.

11 Id.

12 Id.

13 Power Mosfet Tech. v. Siemens AG, 378 F.3d 1396, 1415 (Fed. Cir. 2004).

14 Q-Pharma, 360 F.3d at 1299.

15 See, e.g., Q-Pharma, 360 F.3d at 1299-1301; Power Mosfet, 378 F.3d at 1406-1407.

16 View Eng'g, Inc. v. Robotic Vision Sys., Inc., 208 F.3d 981 (Fed. Cir. 2000).

17 Hoffman-La Roche, 213 F.3d at 1364.

18 Judin v. United States, 110 F.3d 780, 784 (Fed. Cir. 1997).

19 View Eng'g, 208 F.3d at 985.

20 Judin, 110 F.3d at 785.

21 Q-Pharma, 360 F.3d at 1297.

22 Id. at 1298.

23 Id.

24 Id.

25 Id. at 1300.

26 Id.

27 Id. at 1301.

28 Id.

29 Id.

30 Id. at 1301-1302.

31 Id. at 1302-1303.

32 Id. at 1303.

33 35 U.S.C. § 282 (2000).

34 Q-Pharma, 360 F.3d at 1303.

35 Id. at 1301.

36 Id. at 1302.

37 Hoffman-La Roche, 213 F.3d at 1361.

38 Id.

39 Id.

40 Id. at 1363.

41 Id. at 1362.

42 Id. at 1361.

43 Id. at 1363.

44 Id.

45 Id.

46 Id. at 1364.

47 View Eng'g, 208 F.3d at 982.

48 Id.

49 Id. at 982-983.

50 Id. at 982.

51 Id. at 984.

52 Id. at 987.

53 Id. at 984-985.

54 Id. at 985.

55 Id. at 986.

56 Id.

57 Judin, 110 F.3d at 781.

58 Id.

59 Id. at 782.

60 Id.

61 Id. at 783.

62 Id. at 784.

63 Id. at 784-785.

64 Id.

65 Id.

66 In the Matter of Certain Point of Sale Terminals and Components Thereof, Inv. No. 337-TA-524, Order No. 48, 6-7 (Int'l Trade Comm'n June 7, 2005).

67 Id.

68 Id. at 10-11.

69 Id.

70 Id. at 12-14.

71 Id.

72 Id.

73 Id. at 14.

74 Id. at 14-20.

75 Id. at 15.

76 Id. at 17.

77 Id. at 15.

78 Id. at 19.

79 Id. at 23-24.

80 See, e.g., Q-Pharma, 360 F.3d at 1295; Hoffman-La Roche, 213 F.3d at 1360.

81 35 U.S.C. § 285 (2000).

82 Beckman Instruments v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1991).

83 Q-Pharma, 360 F.3d at 1304.

84 Haynes Int'l, Inc. v. Jessop Steel Co., 8 E3d 1573, 1579 (Fed. Cir. 1993).

85 See, e.g., Ulead Sys., Inc. v. Lex Computer & Mgmt. Corp., 351 E2d 1139, 1150 (Fed.Cir. 2003); Resqnet.com, Inc. v. Lansa, Inc., No. 01 Civ. 3578(RWS), 2005 U.S. Dist. LEXIS594, at *85 (S.D.NY Jan. 13,2005).

86 Q-Pharma v. Andrew Jergens Corp., No. COI-1312P, 2002 U.S. Dist. LEXIS 27222, at*12 (W.D. Wash. Nov. 18,2002); Ultra-Temp Corp. v. Advanced Vacuum Sys., Inc., 189ER.D. 17,21-22 (0. Mass. 1999).

87 Ultra-Temp, 189 ER.D. at 21.

88 28 U.S.C. § 1927 (2000).

89 MEMC Electronic Materials, Inc. v. Mitsubishi Materials Silicon Corp., No. 04-1396,04-1513,2005 U.S. App. LEXIS 17956 (Fed. Cir. Aug. 22, 2005).

90 Hoffman-La Roche, 213 F.3d at 1361.

91 35 U.S.C. § 295 (2000); Jeffrey 1. D. Lewis & Art C. Cody, "Unscrambling the Egg: Pre-Suit Infringement Investigations of Process and Method Patents," 84 J. Pat. & Trademark OffSoc'y 5 (2002).

92 17 U.S.C. § 1201 (2000).

93 See, e.g., View Eng'g, 208 F.3d at 986; Judin, 110 F.3d at 782; Refac Int'l Ltd. v. HitachiLtd., 141 F.R.D. 281, 286 (C.D. Cal. 1991).

94 Jeffrey D. Sullivan & Thomas M. Morrow, "Practicing Reverse Engineering In An Era OfGrowing Constraints Under The Digital Millennium Copyright Act And Other Provisions," 14Alb. L.1 Sci. & Tech. 1 (2003).

95 Hoffman-La Roche, 213 F.3d at 1365-1366.

96 View Eng'g, 208 F.3d at 986.

97 Judin, 110 F.3d at 784.

98 Lewis & Cody, supra n.91.

99 View Eng'g, 208 F.3d at 986.

100 Hoffman-La Roche, 213 F.3d at 1365-1366.

101 Q-Pharma, 360 F.3d at 1298.

102 Q-Pharma v. Andrew Jergens Corp., No. COI-1312P, 2002 U.S. Dist. LEXIS 27222, at*6-7.

103 Id.

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