How Far Is Too Far? Unreasonable Claim Constructions Can Lead To Sanctions

Once a patent infringement lawsuit is filed, much time and effort is devoted by the parties and the court to arrive at the appropriate interpretation of the claims. But how important is it to think about claim construction arguments before filing suit? In Source Vagabond Systems Ltd., v. Hydrapak, Inc., the Federal Circuit recently reiterated that it is very important for counsel—and the patent owner—to ensure that all infringement arguments raised are based on claim construction positions that are reasonable and legally sound. 753 F.3d 1291, 1301 (Fed. Cir. 2014). Failure do so, which can also amount to a failure to perform a reasonable prefiling investigation, can lead to a violation of Rule 11 that may result in sanctions including expenses and attorney fees.

Because it is not uncommon for prosecution or counseling attorneys to engage in the early development of potential infringement positions, knowing the basic framework of Rule 11 is helpful. Rule 11 was drafted to curtail meritless claims that "burden[] courts and individuals alike with needless expense and delay." Cooter & Gell v. Hartmarx Corp., 496 U.S. 384, 398 (1990). Generally, Rule 11 requires an attorney to make an objectively reasonable inquiry into the facts and law prior to filing and to refrain from pursuing an action that is not objectively reasonable based on the facts. Failure to meet these requirements can trigger sanctions against the offending parties and their attorneys. More particularly, Rule 11(b)(2), mandates that in any filing the attorney certifies that the attorney made a reasonable inquiry that the claims, defenses, and other legal contentions are warranted by existing law. Source Vagabond, 753 F.3d at 1292 (citing Fed. R. Civ. P. 11(b)(2)). In addition, Rule 11(b)(3) also requires attorneys to certify that they have made a reasonable inquiry into whether their factual contentions have evidentiary support. Id. The Federal Circuit has held that in the context of patent infringement cases, Rule 11 requires an attorney, among other things, to interpret the patent claims at issue before filing a patent infringement complaint. Antonius v. Spalding & Evenflo Cos., Inc.,275 F.3d 1066, 1072 (Fed. Cir. 2002). Because claim construction is a matter of law, an attorney's proposed claim construction is subject to the requirement that all legal arguments be non-frivolous. Thus, while the attorney may consult with the client as the claim construction positions are...