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Rule 11 issues in patent infringement filings

By Lawrence B. Ebert, Esq.

GERALD N. PELLEGRINI, appearing pro se against Analog Devices (represented by Wilmer Cutler Pickering Hale and Dorr LLP)
took a beating in a case decided by the CAFC on 5 June 08.

The case brings up the issue of Rule 11 in filing assertions ofpatent infringement:

as the district court noted, this court has explained that
[i]n 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.
View Eng?g, Inc. v. Robotic Vision Sys., Inc., 208 F.3d 981, 986 (Fed. Cir. 2000).

-->Buried in a footnote in the case is the text:

Mr. Pellegrini argues that the district court?s analysis was flawed because,
inter alia, the district court incorrectly stated that Analog?s article did not mention the
ADMC chips. Analog acknowledges that the district court incorrectly stated that the
Analog article did not mention the ADMC chips.

-->The Eolas/Microsoft case came up:

Additionally, Mr. Pellegrini seemingly attempts to justify his failure to raise this argument
during his prior appeal by stating that the March 2005 request was ?filed shortly after
(fifteen days) the law came into effect in [Eolas Technologies Inc. v. Microsoft Corp.,
2008-1091 10 399 F.3d 1325 (Fed. Cir. 2005)] that ?software code? may be a ?proper subject of relief?
under section 271(f).?

Contrary to Mr. Pellegrini?s suggestion, however, the Eolas decision did not
change the law regarding whether software qualifies as a ?component? under § 271(f);
rather, it interpreted what § 271(f) has always meant. See id. at 1338-40 (interpreting
§ 271(f) to ?decide whether software code made in the United States and exported
abroad is a ?component[] of a patented invention? under section 271(f)?); cf. Rivers v.
Roadway Express, 511 U.S. 298, 312-13 (1994) (?A judicial construction of a statute is
an authoritative statement of what the statute meant before as well as after the decision
of the case giving rise to that construction.?). While Mr. Pellegrini may not have
previously thought that a copy of software may, in some circumstances, be considered
a ?component? for purposes of § 271(f), that does not excuse his failure to make that
argument to the district court or this court when he previously litigated his claim that
Analog infringed under § 271(f) relating to the combination of its foreign-made ADMC
chips with other components in a brushless motor.

Microsoft v. AT&T Corp., 127 S. Ct. 1746 (2007) also appears.

The CAFC cited Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379, 1383 (Fed. Cir. 1999) on issue preclusion, etc.
matters.

Full post as published by IPBiz on June 06, 2008 (boomark / email).