85 F. Supp. 3d 133
D.D.C.2015Background
- Unitronics prevailed in earlier litigation (Gharb I), where the court held Unitronics did not infringe U.S. Patent No. 6,552,654 and entered a permanent injunction (Jan. 30, 2008) barring Gharb from asserting infringement or interfering with Unitronics’ customer relations based on that patent.
- The Federal Circuit affirmed the non-infringement judgment and injunction on appeal.
- Despite the injunction, Gharb filed multiple new complaints (including Gharb III and Gharb IV in 2014) and numerous repetitive motions alleging infringement of the same patent and related grievances.
- Unitronics moved for contempt and sanctions in the original Gharb I proceeding and moved to dismiss the two new cases under Rule 41(b) (failure to comply with court orders).
- The district court held a show-cause process, reviewed Gharb’s filings, and found they repeatedly reasserted the barred claims and included meritless accusations (e.g., about hidden trademarks and false statements).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Gharb violated the Jan. 30, 2008 injunction | Gharb continued to assert infringement of the ’654 patent in new complaints and motions (arguing Unitronics infringed and seeking damages). | Unitronics argued these filings violated the injunction and sought contempt and sanctions. | Court found Gharb in contempt for repeatedly bringing claims barred by the injunction. |
| Whether Gharb’s new complaints should be dismissed | Gharb maintained infringement and related claims (and accused individuals of wrongdoing). | Unitronics moved to dismiss under Rule 12(b)(6)/41(b) as barred by injunction and res judicata. | Court dismissed Gharb III and Gharb IV to the extent they alleged or referenced the ’654 patent; denied related motions by Gharb. |
| Whether attorney fees are warranted | Gharb did not contest that his filings required defense; he sought relief instead. | Unitronics (and IMI) sought fees as contempt compensation and under 35 U.S.C. § 285 (exceptional case). | Court awarded fees: (1) contempt-based fees to compensate Unitronics for responding to violations; (2) concluded the suits were "exceptional" under § 285 and granted entitlement to fee petitions. Unitronics and IMI to file fee petitions. |
| Whether pre-filing restrictions are appropriate | Gharb argued access to courts (and filed many responses) but did not justify refiling barred claims. | Unitronics sought an injunction requiring leave to file future suits about the ’654 patent. | Court imposed a narrowly tailored pre-filing injunction: Gharb must obtain leave and show the new complaint is distinct and attach the proposed complaint; unauthorized filings will be summarily dismissed. |
Key Cases Cited
- Broderick v. Donaldson, 437 F.3d 1226 (D.C. Cir.) (recognizing inherent contempt power of federal courts)
- FG Hemisphere Assocs., LLC v. Democratic Republic of Congo, 637 F.3d 373 (D.C. Cir.) (federal courts’ contempt authority)
- Am. Rivers v. United States Army Corps of Eng’rs, 274 F. Supp. 2d 62 (D.D.C. 2003) (federal orders must be obeyed absent successful appeal)
- Food Lion, Inc. v. United Food & Commercial Workers Int’l Union, 103 F.3d 1007 (D.C. Cir.) (civil contempt sanctions intended to coerce compliance/compensate)
- Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (U.S.) (§ 285 exceptional-case standard; flexible totality-of-the-circumstances test)
- In re Powell, 851 F.2d 427 (D.C. Cir.) (criteria for imposing pre-filing injunctions)