Patent Law

In a comment posted by Robert Matthews, Jr. of Latimer, Mayberry & Mathews IP Law, LP at LegalOnramp.com in response to a February 23, 2009 post by Eric Johnson at his Seattle Litigation Journal:

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).

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).

Read the original post and Mr. Matthews full comment here.