Good comments - the vision of democratization (or ...

2009-04-06T10:50:04.081-07:00

Good comments - the vision of democratization (or whatever) of the law is a good one, but it will be interesting to see how the theory hits the ground.

Thanks for your comments on my blog as well.

Venkat

Via Rule 11 of the Federal Rules of Civil Procedur...

2009-04-06T09:13:27.121-07:00

Via Rule 11 of the Federal Rules of Civil Procedure all actions brought in federal court have a pre-filing investigation requirement. Rule 11 demands that before any claim is asserted, the party asserting the claim must have performed an "inquiry reasonable under the circumstances" as to the legal and factual merits of the claim. Fed. R. Civ. P. 11(b). The Supreme Court has instructed that Rule 11 "imposes on any party who signs a pleading, motion, or other paper – whether the party's signature is required by the Rule or is provided voluntarily – an affirmative duty to conduct a reasonable inquiry into the facts and the law before filing, and that the applicable standard is one of reasonableness under the circumstances." Business Guides, Inc. v. Chromatic Communications Enterprises, Inc., 498 U.S. 533, 551 (1991) (interpreting Rule 11 pre-1993 amendments). The Court also recognized that "the legal inquiry that can be reasonably expected from a party may vary from case to case" and party to party, such that "what is objectively reasonable for a client may differ from what is objectively reasonable for an attorney." 498 U.S. at 550.

In patent litigation, the requirement is vigorously enforced (I don't know about other areas of the law). Thus, before filing a patent infringement lawsuit, counsel for the patent holder must conduct an investigation into the merits of the claim of infringement. Such an investigation should include an independent examination by counsel of the accused product, an analysis of the patent claims, including a claim construction analysis that accounts for the prosecution history, and a comparison of the construed claims to the accused product. The Federal Circuit has stated "In bringing a claim of infringement, the patent holder, if challenged, must be prepared to demonstrate to both the court and the alleged infringer exactly why it believed before filing the claim that it had a reasonable chance of proving infringement. Failure to do so should ordinarily result in the district court expressing its broad discretion in favor of Rule 11 sanctions, at least in the absence of a sound excuse or considerable mitigating circumstances." View Engineering, Inc. v. Robotic Vision Sys., Inc., 208 F.3d 981, 986 (Fed. Cir. 2000) (affirming Rule 11 sanctions in the amount of attorney’s fees totally almost $100,000 imposed against patent counsel for filing infringement counterclaim on eight patents without having seen the accused product or conducting a independent formal or informal claim construction and infringement analysis for each asserted patent claim but basing the infringement claims on the accused infringer's advertising and the knowledge of an employee of the patentee as to the patents).

Following the language of Rule 11, the investigation demanded for a patent action only requires something "reasonable under the circumstances." Hence, unlike the proposed Oklahoma law, a patentee does NOT have to get a formal written opinion of counsel from a patent-law expert and/or a technical expert before filing suit. But the counsel filing the infringement complaint must personally make a sufficiently adequate investigation (this requires that the counsel have an adequate knowledge of patent law). The counsel cannot blindly take his or her client's word that an accused product infringes, but must make its own assessment that there is infringement. Judin v. United States, 110 F.3d 780, 784 (Fed. Cir. 1997) (reversing denial of Rule 11 sanction due to patent counsel's unreasonable conduct in blindingly deferring to his client's opinion of infringement without conducting its own comparison of the claims with the accused product). Getting a formal written opinion can help to insulate a patentee and it counsel from a charge of bad faith litigation to defend against a request for attorneys fees under the Patent Act or defend against an state law unfair competition claim based on an allegation that the patentee brought a frivolous infringement suit in bad faith as a means to unfairly compete against the accused infringer.

In the foregoing context, the Rule 11 pre-filing investigation requirement does not appear too onerous or cost prohibitive. To me, it seems to strike a reasonable balance between requiring a full blown analysis and the costs of permitting a do-nothing approach. Of course, patent litigation typically is a very costly proposition and usually involves sophisticated corporate litigants. Thus, it likely does not implicate the same public policy concerns when ordinary citizens are seeking redress for professional malpractice. [Posted by Robert Matthews, Jr. of Latimer, Mayberry & Mathews IP Law, LP at LegalOnramp.com]

SeattleLitigationJournal

Good comments - the vision of democratization (or ...

Via Rule 11 of the Federal Rules of Civil Procedur...