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

IP Litigator
July/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 basis for bringing an infringement action. While appearing simple, Rule 11 of the Federal Rules of Civil Procedure imposes a threshold prefiling investigation that might not be so clear about what satisfies the requisite inquiry. Failure to make an adequate prefiling investigation can lead to a violation of Rule 11, and trial courts may grant sanctions, including expenses and attorney fees. A party facing sanctions risks suffering more harm than mere monetary penalties and losing the case; the hazards of angering judges and tarnishing reputation can persist well beyond the lawsuit. Therefore, a wise patent holder will be sure to meet or exceed the requirements for prefiling investigation.

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

Complying with Rule 11

All pleadings, motions, papers, and representations to the court must meet the requirements of Rule 11 or risk triggering sanctions against the offending parties and their attorneys. A patentee planning to take action against a suspected infringer should be especially attentive to Rule 11 (b), which states that a person, by presenting to the court "a pleading, written motion, 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 of the paper or pleading is not improper; (2) the legal assertions are not frivolous; and (3) the factual contentions have or are likely to have evidentiary support.4 Under Rule 11 (c), a court 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 patent infringement cases under the constraint of non-frivolousness6 and as two separate requirements: legal and factual.7 If the court determines that a party or attorney has violated Rule 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."8 Currently, trial courts have discretion to grant expenses or fees to the prevailing party. The recent history of Rule 11 amendments shows that the discretion to sanction parties was left to the trial courts by design.

Recent Amendments to Rule 11

Since 1983, two amendments to Rule 11 have affected the trial courts' discretion to sanction parties and attorneys. The 1983 amendments imposed nondiscretionary sanctions for violating Rule 11. The amendments stressed the need for prefiling inquiry into both legal and factual aspects of the claim to satisfy the rule's affirmative duty.9 The amendments were expected to increase the effectiveness of Rule 11 in deterring filing abuses by making the filing standard more stringent than mere "good faith" and by encouraging courts to impose sanctions against violators.10 The drafters of the amendment tried to broaden Rule 11's reach to a greater range of circumstances.11 The current form of Rule 11 results from the 1993 amendments, which, among other changes, made sanctions discretionary. The Advisory Committee had the dual goals of broadening the scope of Rule 11 duties while reducing the number of motions for sanctions presented to the courts. By removing discovery requests and motions from the reach of Rule 11 sanctions, the Committee hoped to narrow the rule for its intended purpose—deterrence, rather than compensation.12 Indeed, the Federal Circuit held that a court should tailor Rule 11 sanctions to the situation on 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 to the law of the regional circuit.14 This results in the application of regional circuit-specific definitions of frivolous claims. In practice, however, the prefiling investigation standard for patent infringement is not circuit-specific because courts apply Federal Circuit law to determine the reasonableness of the prefiling investigation made by the patentee and its attorney.15

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

To avoid violating Rule 11, a prelitigation opinion should examine (1) whether the competitor's product or method infringes the patent; and (2) whether there are bases that cast doubt on the validity and enforceability of the patent. The infringement part of the prelitigation opinion should consider as many of the issues as possible that one would expect to be considered by the court. The opinion should analyze claim construction issues and then compare the construed claims to the device or process under scrutiny. The opinion should analyze whether the competitor's device or process infringes the patent either literally and under the doctrine of equivalents. If possible, the prefiling investigation should also include testing of the actual accused product. The patent holder may also consider directing the patent attorney to analyze whether any additional parties, such as suppliers or distributors, are potentially guilty of contributory infringement or inducing infringement and should be added as parties to the suit. Prelitigation opinions often also analyze the validity and enforceability of the patent or patents upon which the suit is contemplated. An opinion that concludes that there is good reason to believe a competitor is infringing a valid patent held 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) considered advocating in 1996 that prelitigation opinions be a requirement before a patentee could file an infringement suit. The prelitigation opinion would need to conclude that there was infringement 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 to bringing suit on a patent that all patent owners must obtain a favorable written opinion by competent counsel because the patent may 'possibly' be invalid, not infringed or unenforceable 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 only potential infringers to investigate others' patent rights, but not requiring patentees to conduct some prefiling investigation before subjecting defendants to expensive litigation. That is, defendants had an affirmative duty not to infringe the known patent rights of others, and plaintiffs should have an affIrmative duty to conduct prelitigation investigation. The proposal was never adopted, but courts continue to order Rule 11 sanctions and willful infringement findings to parties who fail to conduct adequate prefiling investigations or make objectively unreasonable arguments.

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

Before filing counterclaims of patent infringement, Rule 11, we think, must be interpreted to require the law firm to, at a bare minimum, apply the claims of each and every patent that is being brought into the lawsuit to an accused device and conclude that there is a reasonable basis for a finding of infringement of at least one claim of each patent so asserted. The presence of an infringement analysis plays the key role in determining the reasonableness of the 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 is required to show that the opponent failed to do something that it reasonably could have done before filing.17 Courts have found investigations unreasonable when there were: (l) no attempt to obtain a sample of the infringing device and compare it to claims;18 (2) no independent infringement analysis by counsel;19 and (3) no reverse engineering or attempt to acquire technical specifications from the alleged infringer.20 For a patent holder to better understand the Federal Circuit's boundaries for a reasonable prefiling investigation, it is useful to examine its decisions reviewing sanctions under Rule 11. An analysis of five recent cases follows.

Recent Cases

Q-Pharma v. Andrew Jergens (2004)
In Q-Pharma v. Andrew Jergens, Q-Pharma filed suit against Jergens for infringement of its patent on a method of administering a chemical, Coenzyme QlO, to treat damaged skin.21 After 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 patentee sought a voluntary dismissal with prejudice, and Jergens later brought a motion for sanctions under 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 contended that Q-Pharma's claim construction was frivolous, that Q-Pharma acted unreasonably by relying on advertising and labeling of Coenzyme QlO to determine whether the claims read on the product, and that Q-Pharma should have known that its patent was invalid prior to filing.26 The Federal Circuit disagreed.

First, the Federal Circuit stated that before filing the suit, the attorney at a minimum must interpret the relevant claims of the patent and compare the infringing device with those claims.27 While commenting that Q-Pharma's claim construction was broad, the court relied on 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 In so holding, the court noted that a claim chart is not required for a prefiling infringement analysis 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 and advertisement listing Coenzyme QlO as an ingredient and touting its therapeutic effects.30 Indeed, Q-Pharma's non-frivolous claim construction did not place a minimum on the required amount of Coenzyme QlO. Chemical tests on the sample, the court held, were not necessary 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 that its patent was invalid before filing suit.32 In light of the statutory presumption of patent validity33 and several licenses taken on the patent, the court found Q-Pharma's expectation of validity reasonable.34

The court in Q-Pharma accordingly found that the district court had not abused its discretion in 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 the court stressed that "the key factor in determining whether a patentee performed a reasonable prefiling inquiry is the presence of an infringement analysis," which could be simply "a good faith, informed comparison of the claimsof a patent against the accused subject matter."36

Hoffman-La Roche v. Invamed (2000)
Hoffman-La Roche (Roche) sued Torpharm for statutory infringement of a patent on the process for manufacturing a drug sold as TICLID, resulting from Torpharm's abbreviated New Drug Application.37 Before filing the suit, Roche had sought information from Torpharm about its process for making the drug, as well as its suppliers' processes, but Torpharm declined to supply any information.38 Torpharm did supply samples of its drug, but no information on the manufacturing process.39 Roche, unable to determine the manufacturing process from the samples, filed an infringement suit.40 Thereafter, the parties signed a nondisclosure 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 inadequate prefiling investigation.42

The district court denied sanctions, reasoning that Roche tried to investigate the claim and that a prefiling inquiry need not be successful to be reasonable.43 After contacting Torpharm for manufacturing information, the only choices left to Roche were to assume noninfringement or file suit.44 The Federal Circuit found that Roche conducted a more extensive inquiry than was required by contacting Torpharm and seeking disclosure of its method.45 "It is difficult to imagine what else [Roche] could have done to obtain facts relating to Torpharm's alleged infringement of their process patents. Torpharm has pointed to 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 reasonable prefiling investigation under Rule 11 is case-specific and fact-intensive. Had there been other plausible ways for Roche to conduct its prefiling inquiry, the court may have reached a different outcome.

View Engineering v. Robotic Vision Systems (2000)
View and Robotic are competitors in the field of three-dimensional scanning technology.47 Four months after View filed for a declaratory judgment of invalidity and noninfringement of one of Robotic's patents, Robotic counterclaimed that View's product infringed eight of its patents.48 After some discovery, Robotic withdrew some of the infringement counterclaims.49 View moved for Rule 11 sanctions, asserting that Robotic had no reasonable basis for accusing View of infringing the eight patents.50 The Federal Circuit affirmed the district court's grant of sanctions against Robotic.51

In particular, the Federal Circuit held that the patentee's attorney did not conduct a reasonable inquiry into the legal and factual bases of the claim before filing.52 Robotic based its factual claim of infringement on its Vice President's conclusion after viewing View's advertisements and hearing of View's statements to customers, but without any access to the accused product.53 Robotic's attorney also made no inquiry into the counterclaims but relied only on the client's belief54 The court found that inquiry to be unreasonable considering that the attorney had four months after View filed for declaratory relief to hire an expert to analyze the accused machines, inquire with Robotic's sales employees, or construe 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 extremely important. 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.56

Judin v. United States (1997)
In 1972, Judin was issued US Patent No. 3,656,832 on a method of optical imaging.57 Before filing, he observed bar-code scanners in use at a post office and, with the benefit of some knowledge of trade show publications and commercial literature, contacted his attorney, Van der Wall, who also observed the scanners from a distance.58 Relying on Judin's industry experience for an analysis of infringement, Van der Wall filed a complaint without trying to access the accused devices or inquire about their operation.59 Months after filing, Judin consulted with an expert who provided a comparison of the accused devices to the claims, after which Judin filed an infringement analysis and a claim chart.60 The trial court found that Judin and Van der Wall failed to inquire about two critical elements of the claim at issue, but that the prefiling examination was not sanctionable, though it was "greatly troubl[ing]."61

The Federal Circuit reversed the trial court, finding that neither Judin nor Van der Wall made a reasonable inquiry.62 Judin did not make an effort to find out whether the key claim limitations were infringed and did not have any explanation for why he did not try to obtain a sample of the accused device.63 The court also found that the patent attorney was unreasonable to rely solely on his client's knowledge without making any investigation of his own.64 Judin's postfiling consultation with the patent expert did not cure the Rule 11 violation 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 International Trade Commission for infringement of two claims of its patent for credit-card processing terminals.66 Verve and its counsel were sanctioned in the amount of $1 Million under Commission Rule 21O.4(c), which is patterned after Rule 11.67 The Administrative Law Judge found that Verve performed no claim construction on its patent for point of sale terminals. 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 no independent prefiling investigation, although one of the attorneys in the firm submitted a declaration to that effect.70 Moreover, the ALJ did not rely on the declaration because it was submitted late, long after its response to the motion for sanctions and after all other briefing had been submitted.71 There was no support in the evidence that Verve reviewed the accused products or literature, or that it performed a proper claim construction before filing.72 Merely relying on a client without conducting an independent investigation into the law and facts "goes beyond mere negligence and demonstrates recklessness and bad faith."73

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

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

Other Prefiling Investigation Issues

35 U.S.C. § 285
Parties who move for sanctions under Rule 11 for lack of an adequate prefiling investigation often also move for attorney fees under 35 U.S.c. § 285.80 Section 285 provides that the court may, in exceptional cases, award reasonable attorney fees to the prevailing party.81 Exceptional cases are those when a party engages in vexatious or unjustified litigation or frivolous suits82 or when the party acted in bad faith. The Federal Circuit has not been willing to find bad faith when there was a voluntary dismissal of the suit;83 therefore, if a patent holder discovers new information after filing, she probably will remain in compliance with § 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 was groundless.84

Apart from the requirements under Rule II, courts have not imposed any prefiling investigation requirement under § 285.85 Although the standards seem to be similar, the burden of persuasion may be slightly higher to succeed under § 285.86 The District of Massachusetts 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 also must be frivolous or baseless.87

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

Any attorney or other person admitted to conduct cases in any court of the United States or any Territory thereof who so multiplies the proceedings in any case unreasonably and vexatiously 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 the latter applies to sanctions for the multiplication of proceedings after initiating the lawsuit.89

Local Patent Rules
Certain district courts have adopted local rules specific to patent litigation, many providing the framework for the initial disclosure of information. In the Western District of Pennsylvania, all of the information produced is governed by a default protective order, thereby ensuring the confidentiality of the initial disclosures. The Western District's local patent rules, along with those of the Northern District of California, the Northern District of Georgia, and the Eastern District of Texas also prescribe the disclosure of a claim chart identifying specific claim elements and the accused products. Because the local patent rules apply only after the suit is filed, they technically do not alter the obligation for a reasonable prefiling investigation. But the rules clearly delineate the information that will be required soon after filing and demand that the accused infringers supply technical documentation for review. When patentees are unable to gather enough information to know whether an accused product may infringe, they can presumably file suit in order to compel the production of enough information during the discovery process. Because the local rules oblige the parties to disclose this type of information, it might be presumed that if the patentee could not reasonably get the information another way, her prefiling inquiry was adequate. This may lead to less waste in litigation costs by reaching a quick resolution when the 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 can be impossible to determine whether the accused is actually infringing the patentee's claims without additional information from the accused. In the case of a process patent for a pharmaceutical, a sample of pills will not necessarily reveal the manufacturing method used to produce them.90 Without such information, the patent holder can make only informed guesses 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 a process patent where certain conditions are met.91 Section 295, however, does not affect the patentee's prefiling obligations.

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

(f) Reverse engineering.

(1) Notwithstanding the provisions of subsection (a)(l)(A), a person who has lawfully obtained the right to use a copy of a computer program may circumvent a technological measure that effectively controls access to a particular portion of that program for the sole purpose of identifying and analyzing those elements of the program that are necessary to achieve 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 constitute infringement under this title.

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

More than one decision granting sanctions under Rule 11 have suggested that a lack of reverse engineering was a contributing factor to the unreasonableness of a patentee's prefiling investigation.93 Thus, those holding patents in the field of software or computers could 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-specific analysis. When the patentee has very little information about the alleged infringement, but has made all reasonable attempts at acquiring the information, the court tends to find no violation.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 has been an obstacle, the Federal Circuit has suggested that the patentee should be able to show some attempt to analyze the technology; and if that attempt fails, the patentee should show that it made some effort to acquire samples, inspection, or technical specifications from the accused infringer.97 In other words, the patentee must show that it would have obtained the information if it could have done so within reason.

Because courts have analyzed Rule 11 violations with emphasis on the particular facts of the case, an attorney should exhaust all reasonable roads of investigation before filing suit. A non-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 or process;
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; and
F. 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 Rule of Professional Conduct 3.1 as a guide for how much investigation to conduct before filing suit. Similar to Rule 11, ABA Model Rule 3.1 requires that a lawyer bring a proceeding only when there is a non-frivolous basis in law and fact. As the Federal Circuit stated in View Engineering, a lawyer who fails to confirm that basis in law and fact does not act to protect the 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 in compliance 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 wise to share information with patentees to the extent that the information would ultimately discourage the patentee from filing. In situations when the pertinent information is confidential, the accused infringer can propose a nondisclosure agreement to ensure that the information remains secret but is still available to show that the patentee's claims are without merit, thereby ending the dispute before additional costs accumulate. Courts are not likely to grant motions for sanctions and attorney fees for lack of adequate prefiling inquiry when the alleged infringer withheld information requested by the patentee if that information would persuade the patentee to dismiss the claims.100

In Q-Pharma, Jergens refused to disclose the contents of its Curel lotion during discovery until Q-Pharma filed a motion to compel. Jergens then replied with a motion for summary judgment, in which it revealed that its lotion contained only a trace amount of the patented enzyme, triggering Q-Pharma to abandon its suit.101 Had Jergens disclosed that its accused product contained less than 0.00005 percent of Coenzyme QlO.Q-Pharma could have dropped the suit before extensive discovery. Instead, Jergens filed counterclaims for antitrust violations and declaratory judgment on the patent, most of which were dismissed.102 In denying Jergens's motions for sanctions, the court relied in part on Jergens's conduct. "Jergens itself contributed to the expense and inconvenience of the litigation by not promptly disclosing the minuscule amount of Coenzyme QlO in its product."103

The cases illustrate that the conduct of the party filing suit is not necessarily the only consideration in assessing the reasonableness of the prefiling inquiry in a patent infringement suit. A potential defendant should be mindful that her actions before filing and during discovery may well have a bearing on the outcome of a motion for sanctions against the patentee for an inadequate prefiling inquiry.

Endnotes
1 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. LEXIS 594, 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., 189 ER.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 Off Soc'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. Hitachi Ltd., 141 F.R.D. 281, 286 (C.D. Cal. 1991).

94 Jeffrey D. Sullivan & Thomas M. Morrow, "Practicing Reverse Engineering In An Era Of Growing Constraints Under The Digital Millennium Copyright Act And Other Provisions," 14 Alb. 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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