*1 Patent Act “inade- by the provided dies quate.”
VI. Conclusion above, court affirms the reasons this
For the district court. judgment
AFFIRMED
Costs party
Each shall bear its own costs.
RAYLON, LLC, Plaintiff-Appellee, INNOVATIONS, DATA
COMPLUS
INC., Defendant-Appellant, America, Inc. and Casio Com-
Casio Co., Ltd.,
puter Defendants-Ap-
pellants,
Symbol Inc., Technologies,
Defendant-Appellant, Safety, Inc., Tripod
Advanced Public Systems, Technologies
Data Zebra Tag Corporation,
Corporation, EZ Fu-
jitsu America, Fujitsu Japan Inc. and
Ltd., Defendants. 2011-1355, 2011-1356,
Nos. 2011- 2011-1358, 2011-1359. of Appeals,
United States Court
Federal Circuit.
Dec. standing parties we hold that third are not address the additional issues raised 4. Because judicial entitled to review under the APA of appeal. Free-Flow on patents, decisions to issue we need not PTO *2 D. Scott Hemingway, Hemingway & LLP, Dallas, TX, Hansen argued for the plaintiff-appellee. On the brief was Aman- Abraham, da Firm, Marshall, Roth Law TX. Emerson,
John R. Haynes Boone, LLP, Dallas, TX, argued for the defen- dant-appellant Complus Innovations, Data Rule 11 sanctions. The district were Debra J. tions for him on the brief Inc. With court also denied defendants’ motions for McComas, Edward Tiller and Sean Donald attorneys’ fees and costs under 35 U.S.C. O’Neill. M. *3 285, citing its Rule 11 decision. Defen- & Stimpson, D. Sills Cummis Scott the denial of sanctions and appeal dants York, York, ar- P.C., New of New Gross attorneys’ fees. For the reasons set forth Casio Com- defendant-appellants gued for below, part, part, affirm in vacate in we Ltd, him on the et al. With puters Co. proceedings. for further and remand M. Lieb and David were Katherine brief Lee. C. Background Feller, Feller, &
Mitchell S. Sobel York, York, argued for defen- New New pat- assignee is the '589 Technologies, Inc. Symbol dant-appellant ent, a which is directed to hand-held iden- was Jonathan M. him on the brief With issuing investigating tification and ticket Sobel. object of the invention is to system. The affordable, system that provide an durable MOORE, REYNA, PROST, Before spends time a reduces the amount of user Judges. Circuit identifying issuing tickets to individu- maintain als and allows the user to visual by for the court filed Circuit Opinion throughout contact with the individual Concurring opinion filed Judge PROST. ticketing process. identification and '589 REYNA. Judge Circuit ll.64-65; patent col.2 col.3 ll.34-48. The PROST, Judge. Circuit a system containing is described as hous input there is an assem (“Raylon”) brought ing three within which Raylon, LLC data, alia, bly elongated In- Complus entering Data for slot for against, suits inter novations, receiving Amer- identification forms that have (“Complus”), Inc. Casio a. Co., Ltd., ica, magnetic elongated aperture for Computer tape, Inc. and Casio interior, “Casio”), Symbol housing’s Technol- access to the trans (collectively remotely Inc, (collectively, assembly ceiver to communicate (“Symbol”) “defen- ogies, dants”) printer assembly for computer, Eastern District of Texas. with tickets, piv and a that “is Raylon alleged infringe printing that all defendants 6,655,589 otally display 1-17 of Patent No. mounted on claims U.S. (“'589 assembly.” input data entered into the patent”). The district consoli- See, Abstract; e.g., col.1 ll.26— dated the three suits. After combined 40; 1.14; Fig adopted the court defendants’ col.1 ll.66-co1.2 col.3 ll.18-33. hearing, construction, perspective ure 1 is a granted summary judg- schematic favor, system: and denied their mo- ment their
With to Figure reference ed preferred aperture providing the access into said display embodiment’s 39 “may pivotally be interior of said housing; mounted housing may on the 12 and be assembly input an for inputting data positioned generally adjacent first person, assembly about a said input housing end 13 of 12.” Id. col.5 ll.58- being said housing, mounted on said representative patent Claim is input assembly including a data read- system: ed ing means for reading the computer 1. A system for an investigating identi- tape readable magnetic on the identifi- fication of a person issuing and for tick- card; cation ets, the comprising identification a card assembly remotely a transceiver for having computer a magnetic readable communicating a computer, with said tape card, secured on the computer assembly being transceiver mounted tape containing readable magnetic perti- in said interior of said housing; relating nent data person dis- display displaying a for data entered played card, on the identification said input assembly, into said display said system being computer connectable to a being pivotally mounted on said transmitting for sys- data between said housing; computer, tem and system said be- printer assembly being mounted ing to a data cable of a connectable said interior of housing print- said for system computer, comprising: said ticket; ing a and wherein said printer interior, a housing having an said assembly includes housing having an slot elongated
selectively indicia, receiving receiving substrate for identification card, housing having elongat- said including said substrate ex- end through ap- elongated disagreed, said reasonable. maintain- tendable housing, in said patent supported erture a broad claim construction the accused means for indicia printer printing products infringed every each and claim of substrate, and on said patent. Specifically, Raylon al- advancing means for said substrate leged literally that the accused all devices means respect said “display being pivotally met the mounted advanced such substrate housing” they on said because element elongated aperture said though display each had “a that is mounted on said said when pivoted can be housing and relative to the prints means indicia on said sub- angle or user’s orienta- viewer’s visual strate. 4223; 4912; In tion.” J.A. J.A. 5768. added). Id. (emphasis Inde col.7 ll.9-44 words, theory under in- other re pendent system claims 16 and 17 also fringement with a fixed-mounted being “display pivotally cite a the ‘pivotally screen meets mounted on ll.55-57; Id. limitation. col.8 housing” said *5 housing’ pi- said limitation when the user ll.20-22. col.9 elbow, wrist, by moving vots the device his in the In filed three suits joint. or other for Dis- Court the Eastern U.S. District Markman In hearing, advance against integrators trict Texas software of Raylon and proposed both defendants con- component manufacturers of product and of, alia, inter “display being piv- structions ticket-writing and enforcement various on said otally housing,” mounted “a devices, Ca- including Complus, handheld assembly being mounted in said interior of sio, suit, Raylon In Symbol. and each and housing,” housing having said “said directly that defendants’ devices asserted for elongated selectively receiving slot 1-17 of infringe claims the '589 identification card.” also filed Defendants equiva- under the of literally and doctrine in each suit. motions for sanctions lents, in- others to that defendants induce court the three The district consolidated contributorily fringe, and that defendants construction, purposes for of claim suits patent. all claims of the De- infringe summary judgment, and sanctions. dismiss, judgment moved to for fendants summary judg- or for pleadings, 2, 2010, December the district court On ment; court denied or these postponed only The hearing. held a consolidated claim pending motions construction. “display being pivotal- construed was term ly housing.” Raylon mounted on said con- During spring Casio and to sent letters to strued the term mean “an electronic other defendants several Raylon, to a visual expressing housing their concerns device attached for the 11(b)(2) information, presentation display ca- complaints violated Rule 11(b)(3) alia, because, Ray- pable being moved relative to pivoted and Rule inter perspective.” un- the viewer’s Defendants positions lon’s claim construction constructions, all of proposed intrinsic evidence and its various supportable from mounted” infringement positions regards “pivotally to which excluded reader, incapable that are display, magnetic strip any displays and fixed or Ray- rejected un- The district court pivoting.1 elements of the asserted claims were Casio, positions. Tag proposed a in fixed Defendants 1. Defendant EZ construction be Fujitsu display Complus, to not the limitation requires the construed construction, of de- non-infringement its citation ment of in favor noting that Ion’s support not fendants. Based on the court’s construc- specification to the did such that overly “pivotally broad claim construction tion of the mounted” term2 and bounds of all the have products “streteh[es] its construction the fact that accused willing screen, I am beyond what court reasonableness a fixed the district Accepting defen- accept.” J.A. 3681. that none of the products held accused construction, the district infringe. dants’ literally The district court also in their favor. granted summary judgment products’ found that the accused fixed hearing by deny- court concluded the The not infringe screens do under the doctrine defendants’ Rule 11 sanc- motions for equivalents because the fixed do screens tions. perform substantially not func- same way tion in the same the same achieve holdings were me- The district court’s a pivotally display, result as orders. morialized later-issued On Raylon’s theory “pivotally would read the 9, 2011, issued an March the district court limitation mounted” out of the claims. reflecting its denial of Rule sanc- order order, tions. In that the district court judgment After final was entered on objective the Fifth Circuit’s stan- quoted 23, 2011, March defendants motions filed “Raylon’s dard and stated that while attorneys’ fees pursuant and costs arguments § and the 35 U.S.C. U.S.C. theory do stretch the bounds of reason- powers. joint inherent In order court’s ableness, rejected Raylon’s and the Court 31, 2011, on October the district court de- *6 they line.” positions, do not cross the motions. It Raylon’s nied the found suits analyzed Raylon’s 4. The court then settle- objectively were not baseless the same for damages ments and to determine model reason it denied Rule 11 The sanctions. Raylon whether filed suit to recover nui- rejected arguments court also defendants’ sance value whether settlements or Raylon’s pursuing that conduct good numbers were “indicative of the faith claims litigation baseless constituted mis- brought.” nature with which the case similarly conduct. The court denied fees Raylon’s Id. It found model proffered “not under costs On October patent case,” for a large suggesting that court entered an amended final Raylon’s “earlier were not so settlements judgment. appeal. Defendants unreasonable as to indicate that its or
believed case was weak frivolous.” Discussion basis, On this Id. the district court con- appeal, challenge On defendants the dis- that this cluded was not a situation where trict court’s denial of Rule 11 sanctions cost of litigation “the is more of a attorneys’ and of fees. each We address driving force than patent- the merits of the issue in turn. in-suit,” so it denied the motions without considering the A. merits of the suit. J.A. 6. Rule Sanctions 23, 2011, expressly
On March requires the district court Rule 11 that an attor- granting summary judg- motion, issued order ney presenting pleading, or oth- requiring display "display being pivotally as to be mounted to the on said housing housing display such that the are housing” display term as mount- “the must be pivotal respect with to each other. housing ed on the so that the may pivot respect oth- to each hearing, a result of 2. As the consolidated dis- er.” J.A. 7029. above, cussed the district court construed the (5th KPMG, certify that he Inc. v. before the court paper er (“A Cir.2006) inquiry reasonable un- district abuses dis- performed “an has (1) imposes cretion if it based on that he can sanctions the circumstances” such der (2) (1) law an erroneous view of the or being presentéd verify that “it is not clearly erroneous assessment the evi- as to ha- any improper purpose, such for dence.”). rass, delay, or unnecessary cause needless- (2) litigation,” “the
ly increase the cost of
argue
Defendants
that
the denial of
by existing law
claims ... are warranted
sanctions should be reversed be-
by
argument
or
a nonfrivolous
extend-
cause
district court
abused its discre-
law;”
ing, modifying,
reversing existing
or
They
tion in two
regards.
argue
(3) “the factual contentions have evidentia-
applied
wrong
district court
stan-
or,
ry
likely
... will
have eviden-
support
subjective,
objective
dard —a
rather than
opportuni-
after a reasonable
tiary support
evaluating Raylon’s
one—in
conduct. De-
discovery.”
ty
investigation
for further
or
argue
fendants
that under the proper stan-
11(b)(1)-(3). As the 1993 ad
Fed.R.Civ.P.
dard, Raylon’s claim construction and in-
visory
explains,
note
this rule
committee
fringement
regards
contentions with
to the
‘stop-and-think’
be
“requires litigants
(as
“pivotally mounted” limitation
well as
factual
initially making legal
fore
con
court)
others not addressed
the district
11 advisory
Fed.R.Civ.P.
com
tentions.”
unreasonable. Defendant
amendments,
note to 1993
mittee
Symbol
alleges
also
that the district court
explain
F.R.D.
584-85. The notes
by failing
abused its discretion
to consider
“emphasize[
to the
changes
]
that the
rule
arguments. Specifically, Sym-
some of its
by subjecting litigants
duty
of candor
argued
Raylon’s
bol
construction of a
potential
insisting upon
sanctions for
housing”
in “said
to include a
longer
after it is no
tenable.” Id.
position
any housing, including
auxil-
frivolous;
iary
Symbol
housing, was
also
reviewing
In
a district court’s deci
argued
infringement allega-
sanctions,
deny
apply
sion to
Rule 11
we
*7
against
products,
tions
its
of
none which
regional circuit.
the law of the
Eon-Net
printer,
contain a
were frivolous.
1314,
Flagstar Bancorp,
LP v.
653 F.3d
(Fed.Cir.2011). The Fifth Circuit re
In
agree
1328
We
with defendants.
the Fifth
Circuit,
a
determining
views denial of sanctions for
abuse of
when
whether there
violation,
discretion.
v. Food Max
was a Rule 11
“the
Whitehead
standard
of
(5th
Miss., Inc.,
796,
attorney
332 F.3d
802
under
Cir.
which
is measured is an
2003) (en banc);
objective,
subjective
see Cooter & Gell v. Hartmarx
not
standard of rea-
384, 405,
rp.,
Co
496 U.S.
under
S.Ct.
sonableness
circumstances.”
(1990).
2447,
Whitehead,
A
whether it good suit in faith or to tion. That sentence states: “Even still *8 obtain nuisance value settlements —contra- object another present of the invention is Fifth dicts Circuit law place and has no provide a new identification investigat 11 analysis. the Rule The district court ing and issuing system permits ticket denied Rule 11 sanctions through the lens police officer to maintain visual contact law, of an erroneous view of the and thus stopped person of a investigating while Skidmore, abused its discretion. 455 F.3d whether person any the has warrants or at 566. suspended patent license.” col.3 ll.42-46. Applying the objectively reason standard, agree
able
we
with defendants
any
Neither this sentence nor
in-
other
(and
that Raylon’s claim construction
thus
supports Raylon’s position
trinsic evidence
contentions)
were frivolous.
that the term “pivotally mounted” is rela-
law,
Claim construction is matter of
so tive to the user rather than to the device’s
attorney’s
that an
proposed
Rather,
claim con- housing.
every
each
claim
ly
litigant, relying on the
requires
“display being
single
reasonable
patent
the '589
in the
housing.”
specification
support
on said
'589 sentence
its
mounted
pivotally
ll.55-57;
ll.29-31;
col.9 position,
col.8
would believe its claim construc-
col.7
patent
added). Throughout
succeed;
therefore, Raylon’s
tion could
(emphasis
ll.20-22
patentee
the
describes
claim
specification,
the
construction
frivolous
thus
11(b)(2).4
containing
display
invention as
the
sanctionable under
housing.”
on the
Id.
pivotally
“is
mounted
“pivotally
In addition to the
ll.38-39;
l.11;
Abstract;
col.3
col.1
col.2
limitation,
par
mounted”
defendants —in
ll.29-30;
display pivotally
ll.59-60. A
col.5
ticular, Symbol argued that several other
—
identified
mounted on the
is even
claim constructions were frivo
important
as one of the
patentee
the
reasoning.5 Despite
lous based on similar
col.2 ll.14-
of the invention.
Id.
features
presence
arguments
of these
in defen
1,
only
schematic of the
Figure
16.
briefs,
claim
dants’ Rule
embodiment,
display
shows a
preferred
briefs,
judgment
and a motion for
on the
pivot
relative to the
is mounted
pleadings, the district court failed to even
which it is attached. Further-
housing on
11 analy
touch on these terms
its Rule
more,
history,
throughout
prosecution
sis. The district court’s failure to consider
display
“piv-
patentee
described
as
arguments
these
was an abuse of discre
housing.”
on said
No oth-
otally mounted
Wasserstein,
Copeland
tion.
v.
Perella &
display
of the
relative to the
placement
er
Co.,
(5th Cir.2002)
472,
278 F.3d
484-85
pros-
in the
housing is described
(“It
that,
is well settled
to conduct our
Thus,
history.
Raylon’s claim con-
ecution
review, we must be able to understand the
only
re-
pivotally
struction —that
disposition
district court’s
of the sanctions
pivotable
be
relative to
quires
motion.”);
Sys.,
S. Bravo
Inc. v. Contain
contrary to all the intrinsic
the user —is
Corp.,
ment Techs.
96 F.3d
and does not conform to the stan-
evidence
(Fed.Cir.1996) (“When
requesting par
dard canons of
construction.
ty
strong showing
makes a
that Rule 11
7025-26;
Q-Pharma,
see
Inc. v. Andrew
(Fed.Cir.
occurred, however,
Co.,
may
violations
have
Jergens
360 F.3d
MarcTec,
2004);
provide
explana
district court should
some
LLC v. Johnson &
cf.
Johnson,
(Fed.Cir.2012)
disregarding
proffered
tion for
show
Ltd.,
Hitachi,
Ltd. v.
(finding
position
ing.”);
a claim construction
ob-
Int’l
Refac
(Fed.Cir.1990).
Ray
jectively baseless where “no reasonable
printer assembly
construction of “a
principles
enunciated
lon’s
application
being mounted in said interior of said
Phillips
Corp.,
struction. interior, piv the is housing display has tion of the court. v. district Judin United (Fed.Cir.1997). housing,” States, and the otally 780, mounted “on said 110 785 F.3d “in inte printer assembly is mounted said a remand these cases for determina- We specification The is housing.” rior of said of an appropriate tion sanction. claims, with ex completely consistent the “object present that an plaining Attorneys’ B. Fees and Costs system a “which provide
invention” is to a interi- housing that includes an includes argue that the dis Defendants printer or.” col.3 ll.17-19. The assem Id. attorneys’ trict court denied improperly turn, in interior of bly, in “is mounted the 285, § under fees and costs 35 U.S.C. ll.30-33; housing.” Id. col.3 see also the qualify exceptional that these cases un as ll.25-41; l.13; col.5 col.1 col.1 l.66-col.2 A exceptional der the statute. case is (same). only con ll.66-67 The reasonable § under if there inap 285 has been some is that the is mounted struction relating the in propriate conduct to matter and the is on the inside litigation. Mfg., v. Brooks Furniture Inc. housing. same Inc., Int’l, 1378, Dutailier 1381 argued con- Raylon’s attorney (Fed.Cir.2005). that claim litigation Absent miscon subject struction “is kind of arcane [an] in securing patent, duct misconduct the lawyers gets ordinary that like me trou- “(1) § case exceptional is under 285 if ble lot times.” J.A. 14048. There is subjective litigation brought the is bad the nothing arcane about location the (2) faith, objectively litigation the is printer assembly in the invention. claimed Similar the baseless.” Id. to evaluation Raylon’s position the could be 11, under to litigation objec Rule be entirely different from the tively baseless, allegations “must be objectively un- components rest of the litigant such no reasonable could rea independent and an reasonable violation sonably expect success on the merits.” respect Symbol, Rule 11 with to whose Dominant Semiconductors Sdn. Bhd. v. products printer entirely. lack a On re- GmbH, (Fed. 1254, 524 OSRAM mand, weigh Ray- the district court should Cir.2008). district The court found that multiple arguments with lon’s frivolous re- litigation there was no misconduct. In spect Symbol’s products crafting to when evaluating whether cases other an appropriate sanction. exceptional, wise the court relied exclusive ly on it Rule order find a party’s
When conduct violates litigation “objectively was not 11(b), baseless.” may Rule “an impose ap court 11(c)(2). we Since reverse district court’s hold propriate sanction.” Fed.R.Civ.P. violation, to a regards Rule 11 “may Rule 11 be sanctions set at level longer rely district court can no on its ‘sufficient to deter con repetition of such analysis Rule find the comparable duct or conduct sim others ” Jones, baseless not met. ilarly prong situated.’ We remand to Clinton 520 U.S. reconsider, n. district in light 117 S.Ct. 137 L.Ed.2d (1997) 11(c)(2)). decision, our cases (quoting Fed.R.Civ.P. whether these are ex sanctions, Determining so, § any, ceptional doing what if to im- 285.6 In under implicates higher § We leave district court’s of attor- duct under denial level of neys’ culpability fees costs under 28 U.S.C. than and defendants have *10 Establishing attorney Raylon’s undisturbed. miscon- misconduct not established rises (“the 6,655,589 Patent No. pat- consider all of con- U.S. court should ent”). At duct, regard hearing the conclusion of ad- including its assertions construction, dressing summary mount- claim “pivotally other than to limitations sanctions, judgment, and motions for ed,” Symbol. eight by as raised defendant defendants, including appellants Complus Innovations, Inc., America, Data Casio Inc. Conclusion Co., Ltd., Computer (collectively and Casio court abused its discretion The district “Casio”), Symbol Technologies, Inc. Rule 11 motions. denying in defendants’ “defendants”), (“Symbol”) (collectively, holding court’s reverse the district We prevailed respective on their motions for 11 violation and remand there was no Rule summary judgment noninfringement. determine, in the to the district court instance, proper first sanction. Because argued a Rule 11 Casio motion on behalf § on the court’s evaluation of 285 relied its of defendants. Casio asserted that analysis, Rule 11 we vacate the district devices were missing accused certain limi- costs, attorneys’ court’s denial of fees and patent. tations claimed the '589 Casio and remand for the court to reconsider gave Raylon that it stressed advance no- in light motions of our deci- defendants’ infringement allegations tice that its were sion. merit, further, objectively without were unreasonable.
AFFIRMED-IN-PART, VACATED- IN-PART, REMANDED AND Symbol joined argument regard- Casio’s pivotal mounting display, but
REYNA, Judge, concurring. Circuit also moved for sanctions under Rule 11 disregarded because had claim lan- majority opinion I concur with the guage requiring that a be inside of I separately the result reached. write pivotally to which the make clear that when a court finds a Rule display is attached. involving 11 sanction based on conduct allegation pursuit patent infringe- In the face of strongly defendants’ objec- ment claims that been found have objective argued assertions of unreason- unreasonable, tively compelled, the court is ableness, Raylon maintained that its al- if by party, so moved to undertake a reasonable, legations were § thorough inquiry detailed and and including grounds it relied on I analysis. slightly my deviate from col- attorneys expert advice of who that, leagues majority given conducted a At pre-suit investigation. case, record in this I would reverse and hearing, the claim construction instead exceptional declare this an case and limit advancing arguments based on the the remand to determination appropri- claims, plain language of its asserted ate sanctions. Raylon offered that construc- proposals premised tion on the Landscape Legal
I. interpretations “rather unusual that are put In three that were later on claim terms separate suits sometimes consolidated, Raylon, (“Raylon”) practitioners.” al- LLC Federal Circuit leged infringed that numerous defendants Cir.2010). required by Bryant
to the level 1927. See Miss., (5th Military Dep't
1372 Inc., Maxxam, district court denied the motions for cumstances.” FDIC v. 523
The (5th Cir.2008). 566, contrast, By At later in a F.3d 586 hearing, sanctions. (1) order, § precedent our asks the district deter- 285 whether written faith, brought subjective is bad Raylon’s litigation “stretched positions mined (2) reasonableness,” litigation objectively but and whether the the bounds of is 4; Mfg., Brooks Furniture Inc. v. “objectively frivolous.” J.A. J.A. baseless. not Int’l, Inc., 1378, analyzing the Dutailier 393 F.3d 1381 Rather than reason- 14052. (Fed.Cir.2005). Raylon’s proposed of con- ableness in the context of the intrinsic structions attorneys 11 Rule directs to focus on record, its rul- supported the district court obligations their responsibilities as of- by weighing the reasonableness of ing representa- ficers of the court in making agreements against settlement tions, also operating while as an enforce- damages Majority Op. model. See 1366 any ment mechanism to correct “unusual 6); (citing J.A. J.A. 14053-14054. The dis- party circumstances” where a an “pursued court’s written concluded that trict order illegitimate purpose to or to increase costs 11 be only Rule sanctions would warranted party regardless weight harass a of of “[wjhere it is clear lacks any that a case Maxxam, purpose filing suit.” 523 infringement theory credible and has been F.3d at 586 11 reach (explaining that Rule brought only to coerce a nuisance value pleadings es those which an constitute added). J.A. 5 (emphasis settlement.” legal purpose by discouraging abuse of tactics); Casio, dilatory abusive also Jen Prevailing parties Complus, see Dallas, Inc., kins v. Methodist Symbol Hosp. moved for an award fees and a 255, (5th Cir.2007) (“As 478 265 exceptional declaration that stat this case is Advisory ed Note pursuant § to 35 The Committee U.S.C. 285. district 11, lawyer required ‘stop-and- § Rule objective inquiry court tied its 285 think’ ... making legal Rule 11 before or factual inquiry earlier sanctions and de- contentions.”) (quoting Advisory to find Commit exceptional. clined the case The (1993 tee on Fed. R.
1373 by grounds this as been violated on related to ute described court sub- has been prevailing advanced, the for compensation party positions stantive taken or then monetary outlays prosecution in the or also, its the district must when court so Soya See Cent. Co. v. defense of the suit. by compre- the in a parties, engage moved Co., 1573, 723 F.2d 1578 Geo. A. Hormel & view, § inquiry. my hensive 285 In a (Fed.Cir.1983). purpose a is distin Such § inquiry compelling 285 is where the case 11, Rule which addresses guishable from beyond progresses pleading stages the and § recog- general, in because 285 conduct party’s by prece- a to abide unwillingness that nizes strain meritless particular the dent claim construction lends controlling judicial par- on and patent litigation bears escalation avoidable costs. LP v. ty Flagstar Eon-Net resources. (Fed.Cir. 1314, F.3d 1327 Bancorp, 653 Bad Faith III. Record Inferences 2011) unnecessarily the burden of (noting Having challenged that the determined engage court in requiring a “district meritless,1 a litigation objectively is court it claim construction before is excessive subjective may litigant’s examine the motivation. paten- the lack of merit the able to see Investors, Pro l Estate Real Inc. f' Mathis, allegations”); infringement tee’s Indus., Inc., v. Columbia Pictures 508 that (explaining Congress at 758 857 F.2d 49, 1920, 123 60-61, 113 U.S. S.Ct. L.Ed.2d a prevailing § to make defen- codified 285 (1993). presumption 611 There is a gross injustice). following dant “whole” infringement the assertion of is made in contexts, In is non-patent litigant faith, Furniture, good 393 F.3d Brooks at misleading for sometimes sanctioned (internal omitted), 1382 citation but even Metals, court, Specialty Inc. e.g., Precision so, we examine the record with care to 1346, (Fed.Cir.2003), U.S., 1357 F.3d 315 determine, among things, other whether a exhibiting sloppiness during or for during faith party good demonstrated Spiller v. Ella proceedings, course of the Eon-Net, See process. Ctr., 339, 919 F.2d 347 Smithers Geriatric at If record 653 F.3d 1325. indicates (5th Cir.1990) unprofession- (“slipshod and convincing and clear evidence work”). in patent invoking al But cases in patentee manifestly unreasonable as weigh are often asked to courts sessing pressing infringement alle allegations are whether the substantive so may then infer that gations, a court grounded are not in they weak that fact claims were faith. Eltech brought bad See, e.g., Eng’g, and legally tenable. View Indus., Inc., Sys. Corp. v. PPG Inc., Sys., Inc. F.3d v. Robotic Vision (Fed.Cir.1990). 805, 810-11 (Fed.Cir.2000). 981, 986 precise Our cases not established a have Here, notwithstanding whether sanc- exceptional definition “bad faith” pursuant tions issued to Rule are recognize case context. We enactment both, offending § or conduct is equitable § as a excep- “bad faith I governing intertwined with law. on awarding tion” to the American Rule pat- that if the circumstances in a believe Mathis, to an finding alleged infringer, ent that Rule 11 has fees case result objective recently the district denied the This court held base motion. underly Raylon's I question of law based Because find claim construction lessness is meritless, question High positions mixed of law fact. ob- mark, Inc., Mgmt. jective analysis compel Sys., Health the same result Inc. v. Allcare would (Fed.Cir.2012). regardless de novo The of whether we reviewed Highmark not issue for clear decision did until after error. (internal omitted), Raylon’s pursuit citation F.2d at 758 unreason- allegations compelled able the conduct of closely aligned “bad faith” as discuss *13 exceptional inquiry. an case While reason- finding of “a unfairness”: minds able can—and often do—differ as to attorney’s of for the payment fees [T]he proper given construction of a claim regarded penalty is not to be victor as a term, it go is unreasonable minds that to patent infringement to win a for failure conjure extraordinary lengths to and ad- of in The exercise discretion favor suit. through of stages legal vance various an allowance should be bottomed of such proceeding unsupported arguments that finding or of unfairness bad upon are also prec- inconsistent with established losing in the of party, faith conduct in edent order to non-infringing accuse equitable other or some consideration Here, specific devices. circumstances force, grossly of similar which makes it which, if taken aggregate, potential- in the unjust that the winner of the particular give an ly Raylon rise to inference that law be left to suit bear burden his allega- demonstrated awareness that its prevailing own counsel fees which liti- support. tions lacked normally gants bear. v. Crystal Rohm & Haas Co. Chemical Early A. Notice (em Co., (Fed.Cir.1984) F.2d Here the likelihood of success on in- added) Act) phases (discussing 1952 Patent fringement could projected have been sim- Theatres, Perkins, (quoting Park-in Inc. v. by examining ply the accused devices and (9th Cir.1951)). Against 190 F.2d comparing element-by-ele- those features backdrop, interpret this I “bad faith” as claim-by-claim ment and with disclo- synonymous with a unrea- patent holder’s in the patent. sures Rather than pursuit infringe- sonable continued of an acknowledge its that claims could not sur- ment that demonstrably claim has been vive, Raylon positions built its case on that intent, shown to be based on “wrongful misapply Federal Circuit precedent.3 The recklessness, gross negligence.” Pho- record that Raylon establishes was not nometrics, Co., Inc. v. Westin Hotel knowledge unaware as to of its substantive (Fed.Cir.2003) (quoting shortcomings because it was faced with 811). Eltech, at early summary judgment, motions for judgment motion for on the noted, pleadings, and agree join As I have I with and motions sanctions that identified the majority’s analysis strong and result in infringement flaws theories. But, Rule sanctions. unlike the majority, court, I believe that the district Indeed, Casio its memorialized concerns instance, fully the first should have ex- by writing Raylon to early the case plored the existence inference bad regarding allegations, the merits of its but provide faith.2 These consolidated cases appears Raylon it that no took curative grounds fertile for a determination that measures and proceeded through claim subjective 2. The district court limited its scant weak contentions was basis analysis general enough inquire intent statements further as to bad faith. there was no material misconduct because of probability having a low of the case been Although Raylon 3. noted at the claim con- brought to force a settlement. J.A. 13. These hearing that struction it considers Federal general unusual,” incomplete following statements are teachings Circuit "somewhat it is acknowledgement Raylon's guidelines— bound still to adhere to those positions construction rulings litiga- "stretched the bounds even when suit such do not Recognition strategy. reasonableness.” J.A. tion See J.A. 14049. (“As “pivotally display” limitation undeterred. J.A. 3139 one, you day since repeatedly told we have person because a could move the entire allegations are viola- these it was held in the hand. device while user’s 3141-43; 11.”); J.A. tions of Rule Yet, clarifies, majority well as the this (counsel 3145-46; correspon- J.A. 3153-54 position is inconsistent the intrinsic discussing perceived violations dence Raylon rely cannot on a disclosures 11). sug- early notice at least This single, inapposite specifica- sentence duty “stop gests had *14 think,” meaning tion to redefine the of the claim. investigate posi- whether its baseless, opt- but it objectively tions Majority Op. Fig- 1368-69. As shown in incongru- with the ignore grappling ed to ure was mounted on the display the the by comparison visual ence raised in that it housing such a manner could be plain language the accused devices with up or down with no pivoted movement the claims. housing. patent the Illustrations of the Display” “Pivotally figures empha- next to the accused devices B. Mounted objective size the unreasonableness of flatly fixed Raylon contended that the Raylon’s infringement allegations. could meet displays of the accused devices by it specification litigant teaches that would believe could succeed patent The '589 pivotally display “pivot” up is attached to the and down linking housing housing as a result the to the arm.4 movement of the user’s up or down. '589 pivot be made able 1). (depicted Figure in
patent col.5 ll.58-61
Assembly”
C. “Interior
Printer
contrast,
By
readily apparent
it is
Raylon also asserted all seventeen
position
in a flat
accused devices are fixed
patent against printer-
claims in the '589
not,
it
and lack a
nor is
Symbol
by contending
less
devices
that an
of, being pivotally mounted on the
capable
external
separate
to a
of the
attached
housing.
meaning
Given the clear
elements,
housing
satisfy
requir-
the limitation
no
reasonable
would
posi-
briefing,
by relying
an untenable
pointed
Raylon mis-
on
4. As
out in the
by
patent speci-
language
'589
represented the claim
substitut-
tion that was refuted
—
12239-40; 12247; 12253;
ing "pivotable”
place
"pivotally
fication. See J.A.
proceeded
12273-74.
mounted” limitation —and
to claim
assembly
faith,
of a
good
be mounted in that “consisted
informed
housing.
comparison
patent
of the claims of a
the interior of the
To maintain
against
subject
the accused
matter.”
allegations, Raylon disregarded
¶
¶¶
3972, 9;
3969-71,
at
see also id.
1-5.
“said”
meaning
presented
of the word
as
Raylon
supplement
did
comparison
not
assembly being
claims: “a printer
explanation
expert
as to what the
mounted in said interior of said
relying upon
Symbol
was
or how the
de-
printing
ticket.”
col.7
end,
might infringe.
vices
In the
(claim 1)
added).
(emphases
ll.32-33
As
reality
never
conceded
unavoidable
require,
cases
refers back to an
our
“said”
Symbol
models did not
No-
infringe.
earlier use of that term the claim. Inta
tably, Raylon
rea-
continued
defend the
min,
Magnetar
Ltd. v.
Tech. Corp., 483
its allegations
appeal,
sonableness of
(Fed.Cir.2007);
Bell
including during
argument
the oral
before
Research,
Inc. v.
Commc’ns
Vitalink
this
Argument,
court.
at
Oral
available
(Fed.
*15
Corp.,
F.3d
621
Commc’ns
http://www.cafc.uscourts.gov/oral-
Cir.1995). Here,
housing”
“said
is refer
argument-recordings/all/raylonMml.
ring back
use
“housing”
to
earlier
of
interior,”
elongated
that describes “an
“an
Expert
D. Undue Reliance
slot,”
elongated aperture.”
and “an
Declarations
patent
Despite
col.7 ll.17-20.
the known
focusing
Instead
on why
pre-suit
of
its
requirements,
glosses
Raylon
over the
investigation
a
application
was
reasonable
relationship
well-defined
the
between
inte
Phillips,
argues
of
Raylon
allega-
that its
printer,
housing,
rior
remaining
the
and
in good
tions were
faith
it
made
because
claim elements.
was
by pre-suit
informed
advice it received
The disconnect between the accused de-
patent
from a
practitioner it
considered
vices and the
language
claim
should have
law,
expert. Applicable
however, clearly
apparent,
been
but
have no
we
indication states that
patent practitioner’s
state-
to
Raylon’s expert’s
as whether
conducted
claim
regarding
ments
the meaning of
a visual
of
Symbol
examination
the
devices
terms are entitled to no weight. Syman
and the
printers.
stand alone
See J.A.
Intern., Inc.,
Corp.
tec
v. Computer Assocs.
3975-82;
Again, the
fig-
3991-4008.
above
(Fed.Cir.2008)
1289 n. 3
clearly
ures
preferred
show that
Co.,
(citing Sinorgchem
Shandong
Int’l
v.
patent,
embodiment of
printer
the '589
Comm’n,
Trade
511 F.3d
n. 3
housed within
Raylon
the device.
argues
(Fed.Cir.2007)). Similarly, patent practi
attaching
stand alone
to the
unqualified
tioners are
to
opine on
Symbol device
the claim
satisfies
that the
Sundance,
issue of infringement. See
Inc.
be located in the
of the
Ltd.,
Fabricating
DeMonte
device.
1356, 1362(Fed.Cir.2008).
analysis
The absence of
regarding the
The majority has
ascertained that
Symbol
immediately
devices
raises doubt
necessary
Ray-
sanctions were
because
credibility Raylon’s
as
assertions.
lon did not
claim
follow standard canons of
example,
For
in responses to defendants’
arguments
its
not
motions for summary judgment, counsel
reasonably
by
rec-
supported
the intrinsic
Raylon
only
made
the limited state-
ord. To
findings
date there have been no
Symbol
ment that accused
devices were
as to
adequacy
presuit investiga-
analyzed by Raylon’s patent expert and tion and
it
in a
whether
was conducted
Symbol
provided
ignore
was
manner
charts
intended
or overlook
patent
forth in
the inventor set
his
her
infringement allegations.
of the
weakness
communicated,
patent
first to the
ex-
pre-
surrounding
circumstances
The
ultimately
public.”
aminer and
to the
Bell
plain-
whether
including
investigation,
suit
Howell,
ing that way in the effort
would stand *16 language perspec- to the
to link the claim Dr. J.A. 4001-02.
tive of the viewer. to cre- attempt no reasonable Sharp made COMINT SYSTEMS CORPORATION EyeIT.com, Inc., Venture, ate a nexus between asserted and Joint heavy Plaintiff-Appellants, devices. and the accused an uninformative continued reliance on and and question into whether the declaration calls Associates, & Netservices good faith. predicated statements LLC, Plaintiff, of extrinsic declara- Raylon’s elevation prece- again ignores Federal Circuit tions STATES, Defendant-Appellee, UNITED minimum, dent, which, requires at discrepancies that lie at the ba- structural allegation be ex- sis of an Corporation, NetCentrics intrinsic evidence. according plained Defendant-Appellee, Mgmt. Prod. Co.
Bell & Howell Document (Fed.Cir. 701, 706 Sys., v. Altek 132 F.3d 1997) (“Patents interpreted should be on Digital Management, Inc., Defendant, record, not on of their intrinsic the basis testimony of such after-the-fact ‘ex- Corporation, Defendant. PowerTek part no in the creation perts’ played patent.”) (citing prosecution No. 2012-5039. Tech., Co., Inc. v. Cardinal IG Southwall Appeals, United States Court (Fed.Cir.1995)). I sub- Federal Circuit. may faith mit that an inference of bad Dec. conclusions are stead- expert arise where meaning fastly upon “inject a new relied inconsistent with what
into terms that is
court did
Notes
Civ. P.
provide
district
not
detailed find-
Amendments)).
11 con
ings regarding
litigation
Sanctionable Rule
whether the
was
distinguishable
objectively
judgment
duct is
from a
baseless or whether
the merits because
brought
litigation
subjective
addresses the
bad
collateral issue of
ruling generally
attorney
faith. The
“whether the
concluded that
judicial
and,
so,
has
if
Raylon’s pivotally
display posi-
process,
abused
were not
what sanction would be
Coot
appropriate.”
tions
baseless and
384,
v.
litigation
Corp.,
was no
er & Gell Hartmarx
U.S.
there
misconduct that
2447,
S.Ct.
warranted
faith.