Litigants -- pick your battles wisely; Rube Goldberg's Self-Operating Napkin more interesting than sanctions motion

PPS Data sued Athenahealth for patent infringement.  Athenahealth thought PPS didn't do a thorough enough pre-suit investigation, and filed a Rule 11 motion seeking sanctions.  PPS responded that it investigated the accused product and reasonably believed it read on the claims.  In responding to Athenahealth's sanction motion, PPS made a   request for "counter-sanctions" against Athenahealth and its counsel for filing a "frivolous" Rule 11 motion.  Athenahealth, of course, responded.  PPS next filed a motion to strike a paragraph from that response, to which Athenahealth filed another response.  You can imagine how pleased the Court was to receive this barrage.

First, the Court dispensed with the law.  An adequate pre-suit investigation in a patent case requires a plaintiff to: (1) investigate the legal basis of the patent infringement claims (i.e. interpret the claims to be at issue); and (2) conduct a comparison of the accused product and the asserted claim(2).  

Here, neither party presented the Court with Plaintiff's pre-suit claim interpretation -- thus the Court could only conclude that such construction was reasonable.  As to the comparison of the accused product, PPS relied on Athenahealth's public statements about its products.  Athenahealth challenged this with the affidavit testimony of its managing director.  This was not persuasive.  As my trial advocacy professor often stated, "that goes to the weight, not admissibility."  The Court saw things the same way: 

To the extent that affidavit can be seen as a repudiation of Defendant's public statements about its product, the affidavit may call into question the accuracy of those statements or, perhaps, the credibility of the managing director.  It does not, however, cast doubt on the reasonableness of Plaintiff's reliance on Defendant's public statements.

Having now denied Athenahealth's sanctions motion, the Court addressed the various briefings.  I see no reason to try to improve on the Court's language, so I quote it below:

Putting to one side the original motion for sanctions, the Court must now turn to several papers that related to Defendant's motion in a Rube Goldberg-like manner. [FN - The Official Rube Goldberg Website]
* * *
All-in-all, the Court finds Rube Goldberg's cartoon of a Self-Operating Napkin more entertaining than the Rube Goldberg-like web of papers submitted in this case.  Although both parties have likely spent a great deal of time and money preparing these submissions, neither party has benefitted.  The Court has spent too much time addressing them.  For future submissions, counsel should note that this Court, like the U.S. Court of Appeals for the Seventh Circuit, "is not inclined to award sanctions in favor of a party that cannot be bothered to follow the rules itself."  Heinen v. Northrop Grumman Corp., 2012 WL 372988, at *2 (7th Cir. Feb. 7, 2012).
Furthermore, as this case remains in its early stages, counsel are advised that the effect of launching a litigation nuclear arsenal directed at peripheral issues not genuinely intended to advance the case toward resolution in an efficient, meaningful way will greatly diminish the credit given by the Court to future filings.  Choose your battles wisely lest the early salvos cost you the war.

Motion for sanctions denied.

PPS Data, LLC v. Athenahealth, Inc., Case No. 3:11-cv-746 (M.D. Fla. Feb. 23, 2012) (J. Dalton, Jr.)

Pro Se Litigants - Be Warned - Futile Demonstrations Will Not Last Long

Pearle Vision sued an individual (his wife and related corporate entitle) for unauthorized operation of a two "Pearle Vision" stores.  Pearle Vision moved for a preliminary injunction.  Defendants responded without counsel, with the following notice:

Now coming is the man george-leslie, formerly of the Haffner family, by Limited Appearance and not by general appearance, reserving all rights, by necessity, for the protection of freedom, rights, titles, and interests in this civil action. The sole purpose of this limited appearance is to honor this court and at all pertinent times by acting under Variation of Agreement, in good-fath, with clean hands, with no intention of contempt, delay, or obstruction of the due process of the law, but for the purpose of maintaining the domestic, private, and public international order. Moreover, limited appearance is made in an effort to facilitate the peaceful and immediate-settlement of any and all stated disputes or claims, charges) [sic] and to further facilitate the immediate satisfaction, closure, and discharge of GEORGE L. HAFFNER pertaining to this account . . . and any other related account(s).

Additional documents were filed with similar language.  The defendants next filed two boxes of documents with the Court.  The corporation never appeared, so Plaintiff sought (and obtained) default.  The individual defendants returned to the Court with more documents.  The Court was not entertained.  Rule 55 provides that if party fails to defend itself, default is appropriate.   While no explicit definition is provided for "otherwise defend," such actions include attacking service, moving to dismiss, and seeking summary judgment.  Nothing the defendants had done fell into this type of activity:

None of the documents filed by Haffner and Mabry reveals an intent to “defend” the suit. Indeed, the documents reveal no intent whatsoever. Failing to conform with the prescriptions of Rule 8 by either responding “to the substance of the allegation” or stating a defense in “short and plain terms,” Haffner and Mabry fail to “plead or otherwise defend.” See 10 MOORE’S FEDERAL PRACTICE § 55.02 (3d ed. 2010) (“[D]efault promotes efficient administration of justice by requiring a responding party to conform with the requirements set out in the Federal Rules in a timely fashion.”).  Haffner and Mabry have defaulted.

Default granted, with Pearle Vision invited to brief damages for the Court.

Luxottica Retail North America, Inc. v. George L. Haffner Enterprises, Inc., Case No. 8:11-cv-2433 (M.D. Fla. Dec. 16, 2011) (J. Merryday)

Amended Pleading (Rule 15(a)(1)) vs. Supplemental Pleading (Rule 15(d)) -- Are they different?

Yes.

MacNeil IP (an Illinois company) sent a cease and desist letter to Kramer America (a Florida company) informing Kramer of a number of patents owned by MacNeil and asserting that Kramer infringed one of those patents.  As is the risk whenever you send a letter accusing another of infringement, Kramer responding by filing a declaratory judgment lawsuit, asking the Court to declare that Kramer did not infringe the patent MacNeil had accused it of infringing.

MacNeil responded by doing two things.  First, it provided Kramer a covenant promising that it would not sue Kramer for the patent MacNeil previously accused Kramer of infringing.  This had the net effect of removing subject matter jurisdiction as no controversy existed between the parties related to that patent any longer.  (For a discussion on this approach, see my post on Super Sack.)  MacNeil also filed a patent infringement case in Illinois, charging Kramer with infringing some of MacNeil's other patents.

Kramer responded to the covenant not to sue by filing an Amended Complaint, pursuant to Fed. R. Civ. P. 15(a)(1), asking now for a declaration that it did not infringe the patents MacNeil sued over in Illinois.  MacNeil objected, and asked the Court to strike the "Amended Complaint" as not being an amended complaint at all.  Instead, MacNeil argued the "Amended Complaint" was a "Supplemental Complaint" pursuant to Rule 15(d), which Kramer needed leave of court to file.

Rule 15(a)(1) allows a party to file an amended pleading, without leave of court, within a 21-day time period (which Kramer was within).  Rule 15(d), on the other hand, allows a party to file a supplemental pleading setting out any transaction, occurrence, or event that happened after the original pleading was filed.  But a party must first receive permission from the Court to file such a supplemental pleading.

MacNeil further argued that the "Amended Complaint" could not supplement the original complaint under Rule 15(d) because, while there was subject matter jurisdiction for the original complaint as, at the time it was filed, there was a controversy between the parties related to the patent at issue therein, there was not subject matter jurisdiction at the time the original complaint was filed related to the other patents because they had not been asserted against Kramer.

The Court refused to strike the Amended Complaint, and instead invited MacNeil to file a motion to dismiss the Amended Complaint under this subject matter jurisdiction analysis.  MacNeil did precisely that.

MacNeil's cease and desist letter stated:

We ... are writing to you concerning the ... vehicle floor mat that you manufacture, sell, offer to sell and import.  MacNeil owns multiple patents directed to vehicle floor trays, including U.S. Patent Nos. 7,401,837; 7,316,847; 7686,370; 7607,713; 7,444,748; 7686,371; and 7,784,848. ....
It has come to our attention that your use, manufacture, sale, offers to sell and importing of the ... mats infringes at least one of the MacNeil IP LLC patents.  See U.S. Patent No. 7,401,837 attached hereto....

While MacNeil provided a covenant not to sue on the '837 patent, MacNeil did sue Kramer for infringement of the '370 and '819 patents.

The issues presented are different for the '370 patent and the '819 patent.  First, the '370 patent is identified in MacNeil's letter.  The '819 is not.  Second, the '819 patent is related to a mechanism for affixing a floor mat to a vehicle floor, and not to a floor tray itself.  Thus, the Court determined that subject matter properly exists for the declaratory judgment case related to the '370 patent.  But the declaratory judgment count concerning the '819 patent (and related trade dress and unfair competition issues) did not present a justiciable issue at the time the complaint was filed because they had not been asserted.

[NOTE: This presents an interesting timing issue to me.  Kramer has subject matter jurisdiction here in Florida on one patent claim.  The day after it filed its declaratory judgment case here, MacNeil filed a patent infringement case in Illinois asserting another patent (not previously identified in its letter).  But MacNeil's letter says that Kramer allegedly infringes "at least one of" MacNeil's patents.  So Kramer amends its complaint to name the two others MacNeil sued on in Illinois.  One of those cases can stick because that patent number happened to be mentioned in the cease and desist letter, but the other can't because it wasn't mentioned?  This seems to give MacNeil grounds to go back to Illinois -- the second filed jurisdiction -- and seek to proceed there on the second patent.  Thus, 2 different court will be addressing the same parties in similar patents at the same time.  Perhaps the next round of motions here will shake that issue out.  We'll see.]

Kramer America, Inc. v. MacNeil IP, LLC, Case No. 6:11-cv-1489, (M.D. Fla. Dec. 8, 2011 (motion to strike amended complaint) Feb. 3, 2012 (motion to dismiss amended complaint)) (J. Presnell)

Is A Patent Claim's Preamble Limiting? Following the Guideposts...

Enpat sued a number of entities (in separate cases) for infringing U.S. Patent No. 6,328,260, a patent related to a wing spar modification kit to be used for strengthening wings on certain amphibious airplanes.  Asking for claim construction, one defendant argued that the preamble of the first independent claim was limiting.  Enpat disagreed, arguing instead that the preamble merely recited an intended use.

The preamble of claim 1 reads:

A modification kit for retrofitting a wing spar on an amphibious airplane, said airplane having a root rib, and said wing spar comprising a wing-spar cap angle that is attached to a wing spar web, said wing spar web having an upper edge and a lower edge and an inboard end that attaches to said root rib, a first series of wing-attach bolt-holes that is provided in said upper edge and a second series of wing-attach bolt-holes that is provided in said lower edge of said wing spar web, wherein said root rib is angled relative to a vertical plane of said amphibious airplanes, and wherein said inboard end of said wing spar has an inboard-end angle that corresponds to an angle of said root rib, said modification kit comprising:

The Court recognized that no litmus test exists for determining whether or not a preamble is limiting.  Instead, a number of "guideposts" should be followed.  If the preamble merely describes "the use of an invention" while the body of the claim sets forth a "structurally complete invention," the preamble is not limiting.  But the preamble may be limiting if (1) the applicant clearly relies on it during prosecution as distinguishing the invention over the prior art; or (2) a particular disputed phrase within the preamble provides the antecedent basis for a limitation within the claim.

After laying out this law, the Court concluded that the '260 patent and its file history did not rely on the preamble language as a basis for distinguishing the invention from the prior art.  The defendant sought to capitalize on a scrivener's error in the claim body language.  The claim body referred to the limitation "said wing spar."  Defendant pointed to the preamble as the only antecedent basis for "wing spar."  While no qualm could be had with that statement, the Court saw through it:

While a cursory reading of claim 1 confirms [Defendant's] statement, a fair reading of claim 1 in the context of the entire Patent reveals that "said wing spar" in the body of claim 1 should read "said wing spar web."  Read without the scrivener's omission of "web," one need not resort to the preamble to find any antecedent basis for the "wing spar" referenced in the body of the claim.

Defendant's second approach was to point to limitations in dependent claim 10 that had their antecedent basis in the preamble.  Enpat agreed.  The Court thus found the preamble limiting only for claim 10 (and not the broader independent claim 1).

Enpat, Inc. v. Shannon, Case No. 6:11-cv-84 (M.D. Fla. Nov. 30, 2011) (J. Presnell)

Prevailing Party for bill of costs -- Look at the overall objective of the litigation

I've previously written about the Voter Verified v. Premier Election Solutions, Inc.  First, Judge Fawsett determined that you can't infringe a surrendered patent.   Later, she determined that one of the claims at issue was invalid for obviousness.

Since then, the parties briefed additional summary judgment issues regarding infringement.  The Court agreed with defendants that a finding of non-infringement of certain claims was appropriate at the summary judgment stage.  The Court also later dismissed one of the defendant's invalidity counterclaims, without prejudice.  The result was that final judgment was entered against the plaintiff finding there was no infringement concerning two of the patents at issue.  Final judgment was also entered against one of the defendants relating to its invalidity counterclaim.  Defendants next filed a Proposed Bill of Costs.

Fed. R. Civ. P. 54(d)(1) provides that a "prevailing party" shall recover its costs.  Allowable costs, per the statute, are:

(1) Fees of the clerk and marshal;
(2) Fees for printed or electronically recorded transcripts necessarily obtained for use in the case;
(3) Fees and disbursements for printing and witnesses;
(4) Fees for exemplification and the costs of making copies of any materials where the copies are necessarily obtained for use in the case;
(5) Docket fees under section 1923 of this title;
(6) Compensation of court appointed experts, compensation of interpreters, and salareis, fees, expenses, and costs of special interpretation services under section 1828 of this title.

Defendants sought costs relating to depositions.  Plaintiff objected, arguing that: (1) Defendants weren't "prevailing parties;" and (2) Defendants hadn't filed the depositions in the Court record, and thus they were not recoverable.  The Court was not persuaded.

Prevailing Party

Determining who is the prevailing party is not a calculation of which side won more of its claims than the other.  Rather, the Court must look at the "relation of the litigation result to the overall objective of the litigation."  The Court dispensed with this step quickly:

The overall objective of the present litigation was for [Plaintiff] to obtain a finding that the Defendants infringed the asserted patents.  While Defendants raised a number of different defenses to [Plaintiff's] allegations and several of those defenses failed, [Plaintiff] did not meet its objective.  In the end, Defendants were found not to have infringed any of the 149 patent claims asserted by [Plaintiff].  Accordingly, Defendants are "prevailing parties" within the meaning of Rule 54(d).

Depositions Need Not Be Filed With The Court To Be Recoverable Costs


A prevailing party need not file a deposition transcript with the Court in order to recover its costs.  Rather, the test is the test defined in the statute -- if the deposition transcript was "necessarily obtained for use in the case," it's recoverable.

Generally, deposition costs of a losing party's witnesses are recoverable.  To avoid the general rule, the losing party must demonstrate that the deposition was not related to an issue in the case at the time of the deposition:

When challenging whether costs are properly taxable, the burden lies with the losing party, unless the knowledge regarding the proposed cost is a matter within the exclusive knowledge of the prevailing party.

Plaintiff didn't carry that burden here, so the costs were recoverable.

Plaintiff's objections to Defendant's bill of costs Overruled.

Voter Verified, Inc. v. Premier Election Solutions, Inc., Case No. 6:09-cv-1968 (M.D. Fla. Oct. 24, 2011) (J. Fawsett)

Judge Lazzara Takes Senior Status -- No More Patent Cases

As many of you already know, Judge Lazzara took senior status on December 16, 2011. As part of this transition, he is no longer presiding over new patent cases.  See his standing order below.

Judge Lazzara Senior Status Standing Order - 811-mc-132-ral